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CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys

June 2018 / Volume 47 / Number 6

The problem with secret prior art Careers in Ideas – Raising awareness of IP with students Chris Burnett

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Brexit Studies lands the EUIPO in hot water Jennifer McDowall

Pre-qualification supervised practical training Victoria Swan

Doctrine of equivalents challenged in Singapore

Not-so-secret diary of a CIPA President Andrea Brewster

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Contents

UP FRONT

ARTICLES

EDUCATION

3

14

Doctrine of equivalents challenged in Singapore

52

Careers In Ideas

Gladys Mirandah & Jehanna Ruth Huerto

54

Trainee Patent Examiners

The problem with secret prior art

55

Michael Caine

55 56 61 62 64 67

Study Guide to the Patents Acts (2018) Informals’ update Bolar and related exemptions FD4 Study Guide Institute events Non-institute events Life Sciences Conference

Awards and elections

Chief Executive's report Lee Davies 4

Council Minutes

Lee Davies

NEWS 6

8

General Data Protection Regulation CIPA’s Head of Media wins Award Overseas report

8

Combating misleading mail

9

IPTA conference – Melbourne

7

Amanda R. Gladwin IPO update

10

28

State Emblems

Jennifer McDowall

Sanam Habib

DECISIONS

PERSONAL

32

51

IP Inclusive update

57 58 60

Announcements The not-so-secret diary Going Remote

64

Obituary – Tim Roberts

Patent decisions

Beck Greener 33

Rules of Procedure of the EPO Boards of Appeal

34

IPO decisions

David Pearce & Callum Docherty EPO decisions

Andrea Brewster

Bristows 36

Trade marks

Lucy Holloway

Bird & Bird

IPReg Training Protocol

Victoria Swan

US update: improper Markush grouping

Finnegan 31

Stephen Jones

CIPA consultation response Patents Committee 12

16

Chris Burnett

50

Designs

Benjamin Kavanagh

THE PINKS 68

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International; Support; Courses & Events; Recruitment JUNE 2018

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UP FRONT

CIPA JOURNAL Editor Deputy Editors Publications Committee Production and advertising Design Cover design Contact

Alasdair Poore Sean Gilday; Jeremy Holmes Bill Jones (Chairman) Iain Ross, 020 3289 6445, sales@cipa.org.uk Neil Lampert Jonathan Briggs editor@cipa.org.uk

Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third-party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions.

CIPA CONTACTS

Stephen Jones President

Julia Florence Vice-President

Tony Rollins Immediate Past-President

Chris Mercer Honorary Secretary

Committee Chairs Administrators Vicky Maynard; Business Practice (joint with CITMA) Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs and Copyright Alicia Instone; Education and Professional Standards Simone Ferrara; IP Commercialisation Catriona Hammer; Informals Sara Jane Paines; Internal Governance Bobby Mukherjee; International Liaison Richard Mair; Life Sciences Simon Wright; Litigation Vicki Salmon; PEB Rob Taylor; Patents Tim Jackson; Protected Titles Lee Davies; Media and Public Relations Jerry Bridge-Butler; Regulatory Affairs Chris Mercer; Textbooks & Publications Bill Jones; Trade Marks Keith Howick. Membership Team Leader Dwaine Hamilton Membership Officer Frances Bleach Events Co-ordinators Grace Murray, Emma Spurrs Chief Executive Lee Davies Head of Media and Public Affairs Neil Lampert Executive Assistant Charlotte Russell Communications Officer Kristina Grinkina Head of Education Georgina Sear Qualifications Manager Angelina Smith Head of Finance Spurgeon Manuel Finance Officer Paul Brown Office Supervisor Lea Weir-Samuels General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

© The Chartered Institute of Patent Attorneys 2018 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314 2

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Awards and elections MemCom Conference Awards As strange as it may sound, there are membership associations for people who work in membership associations. We all look forward to the annual MemCom conference and awards, held in May each year, where we are able to learn from each other and celebrate the achievements of those who work in associations. This year, it was my great pleasure to be one of the two chief executives kicking off the event, with a debate on the future of membership associations. With Anne Franke, chief executive of the Chartered Management Institute (CMI), I used the voyage of an oil tanker to chart the association sector’s journey through choppy seas and a succession of storms. Delegates then spent a day exploring issues such as how membership associations remain relevant to members, the use of data and technology in membership associations and how associations can lobby and influence successfully on behalf of their members, before heading off to the awards ceremony. I am delighted to be able to report that CIPA’s Head of Media and Public Affairs, Neil Lampert, won the Outstanding Achievement award for his work on the ‘business as usual’ campaign following the UK referendum and for his leadership of CIPA’s media and communications strategy. This award gives the opportunity to offer public recognition to somebody who has truly made an outstanding contribution to the sector or the profession. Congratulations Neil! A particularly special moment came when IP Inclusive won the award for the best equality or diversity campaign. IP Inclusive stalwarts and CIPA Fellows Parminder Laly and Christopher Burnett collected the award on behalf of the founding organisations of IP Inclusive, Volume 47, number 6

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CIPA, CITMA, FICPI UK and the IP Federation. The award recognises the role played by professional associations in promoting equality and diversity in the profession. The judges were particularly impressed by IP Inclusive’s ‘buy in’ across the range of IP professions and careers and its initiatives, which lead the way in terms of promoting equality or diversity within IP professions. Well done IP Inclusive!

Council Elections It is that time of year when we think about electing CIPA’s next President, Vice-President and members of Council.

Lee Davies

a President to serve from 1 January 2020 – who will serve as Vice-President from 1 January 2019 – and sufficient Fellows to make up the number of ordinary members of Council to 24. In this scenario, the call for nominations will close not less than 28 days before the AGM, with Council publishing of a list nominations. If the Bye-laws are not approved at the General Meeting or if we do not receive confirmation that the amendments have been approved by the Privy Council in good time, we will hold an AGM under the existing Bye-laws on a date to be determined by Council, most likely in October or

A particularly special moment came when IP Inclusive won the award for the best equality or diversity campaign. This year it is complicated by the fact that we are in the process of amending the Bye-laws, but I thought I would set out the two different scenarios. If the amended Bye-laws are approved at the General Meeting on 6 June, I will immediately forward the required documents to the Privy Council. I hope to receive confirmation that the amendments have been approved by the Privy Council in good time for an Annual General Meeting to be held in October or November of this year. Once the Bye-laws come into effect, the current Vice-President, Julia Florence, will succeed automatically to the presidency on 1 January, 2019, under the transitional provisions. At the AGM we will need to elect

November. The Vice-President, President and members of Council elected at the AGM will take up office with immediate effect. Julia has confirmed that, this scenario being the case, she will stand for election as President. The call for nominations will close at an Ordinary General Meeting to be held at least 21 days before the AGM. Irrespective of the outcome of the General Meeting to amend the Bye-laws, CIPA will be looking for nominations for Council and for the presidential offices and now is a good time to start to think about these. If you are thinking about standing for election or would like to find out more about the work of Council or the Officers, please do get in touch with me. JUNE 2018

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COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday, 4 April, 2018 at 14:30 Item 1: Welcome and apologies Present: S.F. Jones (President, in the Chair), J.A. Florence (Vice-President), A.J. Rollins (Immediate Past President), A.R. Brewster, J.D. Brown, R.J. Burt, P.G. Cole, M.P. Dixon, S Ferrara, C.M. Hammer, A.C. Instone, J.T. Jackson, R.P. Jackson, R.D. Mair (by phone), A. Mukherjee (by phone), B.N.C. Ouzman (by phone), A.D. Poore, G.V. Roberts and V.B. Salmon. Lee Davies (Chief Executive), Neil Lampert (Head of Media and Public Affairs) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: C.P. Mercer (Honorary Secretary), S. Harte, G.J. Iceton, E. NytkoLutz, T.W. Roberts and S.M. Wright.

Item 2: Conflicts of interest 86/18: There were no conflicts of interest.

he had taken the opportunity to set out CIPA’s position on ratification of the UPC Agreement and the need for the Brexit negotiations to include the UK remaining within the UPC after the UK leaves the EU. 89/18: Alicia Instone advised Council that she had attended further meetings with the UK IPO on trade marks and designs post-Brexit, but that the discussions were confidential for the time being. Alicia reminded Council that there was a deadline of 16 April in relation to the UK IPO’s consultation on proposed changes to UK law resulting from the Trade Mark Directive 2015. Council granted the Trade Mark Committee the power to act on behalf of Council in filing a consultation response. [See page 9 of last month’s Journal.]

Item 3: Minutes 87/18: The Minutes of the Council meeting held on Wednesday, 6 March, 2017 were approved, following amendment.

Item 4: Brexit 88/18: Stephen Jones reported to Council that the stakeholder meeting with Sam Gyimah MP, Minister of State for Universities, Science, Research and Innovation, had taken place on 29 March, 2018, but that the detail of the discussion was confidential. Stephen added that a number of the invited stakeholders, including CIPA and CITMA, had met prior to the meeting to discuss the potential topics. Stephen said that, whilst he could not go into the details of the meeting with the Minister, the Unitary Patent, the UPC Agreement, the transfer of trade marks and designs, SPCs, rights of representation at the EUIPO and future trade agreements had been on the agenda. Stephen advised Council that 4

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90/18: Catriona Hammer informed Council that the IP Commercialisation Committee was considering IP issues in relation to future trade agreements in advance of a meeting with the UK IPO. Catriona added that the Committee was liaising with the Patents Committee.

Item 5: Bye-laws 91/18: John Brown provided Council with an update on the review of the Bye-laws and introduced a paper setting out proposals for a Special Resolution to approve the amended Bye-laws to go to a General Meeting. Council agreed to hold a General Meeting to address the Special Resolution to approve the amended Bye-laws at Halton House at 5 p.m. on Wednesday 6 June, 2018, immediately following the Council meeting scheduled for that date. Council noted that the current Bye-laws require that the business of the General Meeting shall be limited to the Special

Resolution to approve the Bye-laws. Council agreed that, under Bye-law 59, voting shall be by ballot and that, as allowed under Bye-law 64, voting on the Special Resolution shall be by way of an electronic ballot. Council noted that, as provided for in Bye-law 59, where voting is by ballot, the Members of the Institute require not less than 30-days’ notice of the date of the General Meeting. Council determined that the rights of all classes of Members are affected by the proposed amendments to the Bye-laws and that, under Bye-law 59, Members of all classes of membership who are entitled to vote under Bye-laws 5, 6, 7, 8 and 9 respectively may vote and be included in the quorum. Council noted that, in order to constitute a quorum at the General Meeting, at least 15 Fellows shall vote and that no resolution for making, rescinding, or varying the Bye-laws shall be passed unless at least three-fifths of those voting vote for such resolution. Council noted that, under Bye-law 64, the General Meeting shall be a confirmatory meeting to receive the result of the ballot and agreed that the ballot shall close two days before the date of the General Meeting, on Monday 4 June, 2018, at 5 p.m. Council approved the wording of the Special Resolution (below) and the Explanatory Memorandum, setting out for Members the proposed amendments to the Bye-laws. Special resolution Subject to any minor amendments that may be required by the Lords of Our Most Honourable Privy Council, the Members of the Chartered Institute of Patent Attorneys hereby approve and adopt the amendments to the Bye-laws proposed by the Council of the Institute, as shown in the proposed new Bye-laws attached to this Special Resolution. The amended www.cipa.org.uk

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NEWS

Bye-laws shall come into effect on receipt of a certificate under the hand of the Clerk of Our said Privy Council. Actions: Lee Davies to issue the Notice of a General Meeting to amend the Byelaws to Members. Lee Davies to arrange for voting on the Special Resolution to be by electronic ballot, with a postal ballot for those members who opt out of electronic voting. Lee Davies to arrange for the General Meeting to take place immediately following Council on Wednesday, 6 June 2018. 92/18: Lee Davies advised Council that, irrespective of the outcome of the ballot on the Special Resolution to amend the Bye-laws, it was time to think about the election of Officers. Lee added that, under the proposed Bye-laws, the current VicePresident, Julia Florence, would become President automatically on 1 January 2019. Lee said that CIPA would need to elect a new Vice-President at its next AGM, most likely to be held in October of this year, who would take up office on 1 January 2019 and become President automatically on 1 January 2020. Lee said that he or any of the Officers would be happy to have a conversation with any Council member interested in standing for Vice-President. Lee said that he would prepare a notice for the Journal, but would delay publishing the notice until the outcome of the ballot on the Special Resolution was known.

Item 6: Regulatory update 93/18: Stephen Jones advised Council that IPReg had proposed that the composition of the panel for the appointment of a permanent Chair should be the Acting Chair of IPReg (chairing the panel), two IPReg Board members (probably lay), one CIPA representative, one CITMA representative and one external person, independent of IPReg, CIPA and CITMA. The Chair of the panel shall have a casting vote. Stephen informed Council that he had been copied in on correspondence from CITMA to IPReg, approving the proposed arrangements. Volume 47, number 6

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Council discussed the proposed arrangements and came to the view that the composition of the panel should be approved by the Legal Services Board (LSB) to ensure compliance with the Internal Governance Rules and to avoid any misunderstandings about the arrangements, which appear to have arisen as a result of the appointment of the previous Chair. Stephen Jones said that he would press for clarification of the LSB’s interpretation of the requirement that the recruitment panel be ‘independent’ and whether a panel composed as proposed by IPReg meets this requirement. Stephen added that he felt this was important given that IPReg would have an effective majority on the panel, through the casting vote of the Chair. Catriona Hammer said that it would be helpful if CIPA and CITMA were made aware of the name of the proposed external panel member in advance, to rule out any conflicts of interest. Stephen Jones said that he would make this point to IPReg and that he would also raise the importance of the IPReg panel members being lay members of the IPReg Board, as CIPA or CITMA may have a difficulty with a panel which contains a professional member. Andrea Brewster raised the matter of Caroline Corby’s resignation and the understanding that this was, in part, due to the candidate briefing materials not providing sufficient information about the amount of time and the commitment required by the role. Stephen Jones said that he would press for both CIPA and CITMA to have the opportunity to comment on the contents of the briefing pack. Stephen noted that the LSB had invited IPReg to contact them to arrange a meeting when they were in a position to discuss proposals for the recruitment process. Stephen added that he thought that a meeting of IPReg, CIPA and CITMA with the LSB might be useful in allowing matters to progress smoothly. Stephen Jones advised Council that, at a recent meeting with CIPA and CITMA, Steve Gregory reported on the recent

appointment of a new Board member, stating that the appointment had been made subject to a condition which prevented the appointee from applying for the position of Chair of IPReg. Council questioned the legitimacy and wisdom of such a restriction, if the new Board member would otherwise be a suitable candidate for Chair. Action: Stephen Jones to write to Steve Gregory setting out Council’s position on the proposed arrangements for recruiting the Chair. 94/18: Stephen Jones advised Council that IPReg was intending to confirm the reappointment of three Board members who were at the end of their respective terms: Steve Gregory (lay), Nick Whitaker (lay) and Keith Howick (professional). Council noted that IPReg’s constitution permits it to make such reappointments but was concerned that such reappointments meant that IPReg missed the opportunity to seek to add to the diversity of its Board, by allowing an open process for appointment to those positions, without precluding the possibility of the existing members standing and being reappointed as a result of such a process. Stephen Jones reminded Council that, in his letter to Steve Gregory on 14 February, 2018, he had drawn IPReg’s attention to the fact that the appointment of a new lay Chair would result in an imbalance of lay members on the Board. Stephen added that Council had agreed that it was only content for that to be the case as long as it was a temporary arrangement. Stephen said that the proposal to reappoint Board members for a full term of three years would not constitute a temporary arrangement. Council observed that one of the reappointed lay members could stand down upon the appointment of a new Chair, unless the Chair was appointed from one of those lay members. Alternatively, the terms of one of the lay members could be extended on an ad hoc basis until the appointment of the new Chair, as was done with the extension of JUNE 2018

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David Bream’s term. Stephen said that he would make reference to Council’s observations in his letter to Steve Gregory. 95/18: Tony Rollins said that IPReg was still failing to provide CIPA and CITMA with papers in advance of Board meetings, as required by the Delegation Agreement. Paul Cole added that he took the view that it was poor of IPReg to be in breach of the instrument of delegation in this way. Stephen Jones said that he had raised the matter with Steve Gregory and preferred not to complicate the letter on the recruitment process of the Chair with a reference to Board papers. Lee Davies said that he had raised this with Fran Gillon and that he would do so again at the next meeting of the three Chief Executives.

Item 7: IPO and EPO matters 96/18: Council noted that the EPO had deferred its proposals for User Driven Early Certainty (UDEC), following an unfavourable opinion from the Committee on Patent Law which had gone to the Administrative Council. 97/18: Tim Jackson advised Council that the Patents Committee was continuing its work on a response to the EPO’s consultation on the Rules of Procedure for the Boards of Appeal, which was due towards the end of April. Tim added that no further action was required by

COUNCIL • GDPR

Council, which had granted the Patents Committee the power to act on behalf of Council in submitting a response to the consultation. [See page 10.] 98/18: Tim Jackson informed Council that the Patents Committee had concerns about what would happen if an applicant failed to pay the new excess claims or excess pages fees, for example when filing form NP1 on national phase entry. Tim said that the Committee was taking up its concerns with the UK IPO.

Item 8: Committees and committee reports 99/18: Trade Marks Committee Council noted the report from the Trade Marks Committee. 100/18: International Liaison Committee Council noted the report from the International Liaison Committee. Tony Rollins updated Council on the plans for a roadshow in the United States in 2019. Tony said that the roadshow would most likely take place in the weeks of 15 and 22 April 2019, subject to the availability of Judge Birss. Currently the Committee was looking at staging three events, one in the West Coast Bay area (probably around Palo Alto), one in Washington (probably at AIPLA) and one in New York. Tony added that CITMA had agree to participate and that, along with Judge

Birss, he hoped to secure the involvement of the USPTO and the US judiciary. Tony said he was delighted that Patent Seekers had offered to sponsor the roadshow in return for an advertising presence along the lines of their sponsorship of UK regional meetings. Tony said the UK IPO had provisionally offered to meet the costs of two evening receptions. Council reiterated its support for the proposed roadshow. Council approved the appointment of Darren Smyth (EIP) and Rupert Knights (Dolleymores) to the Committee. 101/18: Congress Steering Committee Council noted the report from the Congress Committee. John Brown informed Council that Sir Colin Birss had agreed to speak at Congress. John added that the Committee had agreed a 5% increase in delegate registration fees and that the Membership Team would begin advertising Congress in the next few days. 102/18: IP Commercialisation Committee Council noted the report from the IP Commercialisation Committee. Council thanked the Committee for responding to the IPO’s Technical Consultation on Draft Regulations Concerning Trade Secrets. 103/18: Education and Professional Standards Committee Simone Ferrara expressed his concern

General Data Protection Regulation On 25 May, the General Data Protection Regulation (GDPR) came into force and as always CIPA is committed to managing and safeguarding the information it is given as a membership organisation. To support the changes, CIPA has published its Privacy Statement and Policy online, and encourages all members to take a moment to read. See www.cipa.org.uk/about-us/cipa-privacy-policy CIPA’s new online policy aims to provide clear information on how it handles and protects your personal information. CIPA believes that the lawful basis in which it processes your data is “legitimate interest”, as CIPA continues to deliver benefits and services of relevance or interest to those within the profession. At the same time, you have the right to request amendments to your communication preferences where possible. Please email mail@cipa.org.uk if you would like to find out more information or to request a change to your preferences. If you have any questions about the Privacy Statement or Policy please get in touch with CIPA at mail@cipa.org.uk. CIPA members can access more guidance on the GDPR in the members’ area of the CIPA website at http://www.cipa.org.uk/membership/member-news/gdpr-guidance/

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that little progress had been made on identifying a Chair for the Education and Professional Standards Committee, following his announcement that he was standing down. Lee Davies said that the Internal Governance Committee had considered Simone’s paper on the Education and Professional Standards Committee but that CIPA was not in the position to resource the Committee as suggested in the paper. Paul Cole expressed his interest in providing more support for the Committee. Andrea Brewster said that it was right that CIPA invested in education, if possible. John Brown expressed his concern that the Committee’s terms of reference were too broad, covering the scope of two or three committees. Stephen Jones said that he, the Officers and Lee Davies would discuss the matter outside Council with a view to determining an appropriate course of action.

Item 9: Officers’ reports 104/18: Council noted the Officers’ reports.

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Item 10: Chief Executive’s Report 105/18: Council noted the Chief Executive’s report.

Item 11: Applications for election 106/18: Fellows Council approved the following first time Fellow applications: Jan Erik Walter Scheuermann; Oliver James Poskett; Simon John Binnie; Adam Thomas Mark Raybould; Sara Louise Holland; Mark David Hopkin; Kieron O’Connell; Chris Cadman; Andrew Cockerell; Christopher Hartland; Alexandra Chua-Short; Mark Scott; Zachary Jelley. Council approved the following second time Fellow application: Jack Shepherd.

108/18: Associates Council approved the following first time Associate membership application: Thomas Oliver. Council approved the following second time Associate membership application: Mario Bitter.

Item 12: Resignations, etc 109/18: Council noted the report on resignations. 110/18: Lee Davies advised Council that the membership renewal period was drawing to a close and that he hoped to bring a report to the May Council meeting.

Item 13: Any other business 107/18: Students Council approved the following Student Membership applications: Charlotte Malley; Claire Lightfoot; Joshua Price; Neil Montgomery; Katrina Pellow; David Jasiewicz; Sinthuja Viyasar; Bethany Seccombe; Robert Holbrook; Elizabeth Hynes.

111/18: There was no other business.

Item 14: Date of next meeting 112/18: Wednesday, 2 May 2018. The President closed the meeting at 16:42. Lee Davies, Chief Executive

Head of Media wins Excellence Award

N

eil Lampert, CIPA’s Head of Media and Public Affairs, won an award for outstanding achievement at Memcom 2018, the leading conference and awards event for the UK’s membership sector. Neil, who joined the Institute in 2014, topped the category for Outstanding Achievement in a Membership or Marketing team, with the judges citing the importance and effectiveness of his public affairs work and his transformation of CIPA’s communications across all areas. Chief Executive Lee Davies said: “Since arriving at CIPA, Neil has dismantled the Institute’s tired approach to public relations and instead introduced leading edge media, public affairs and lobbying

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to significantly increase CIPA’s influence and convey our messages to the widest possible audience. I could not have achieved so much at CIPA without working alongside Neil.” It was a great night for the intellectual property sector. Neil received his award from the BBC’s Zeinab Badawi shortly after Parminder Lally and Christopher Burnett of IP Inclusive received the award for Best Equality or Diversity Campaign. IP Inclusive is an initiative to create more diversity and inclusion across the intellectual property professions and is supported by CIPA and many other UK IP bodies. The CITMA Review, the magazine of the Chartered Institute of Trade Mark Attorneys (CITMA), was highly commended in the Small Membership Magazine category.

On 16 May 2018, Neil Lampert, Head of Media and Public Affairs, receives the Memcom 2018 award for Outstanding Achieving in the Membership or Marketing Team from the BBC’s Zeinab Badawi.

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OVERSEAS • IPO

Overseas report International treaties Berne Convention (Protection of Literary and Artistic Works) On 28 March 2018, the Government of the Republic of India deposited a declaration according to which it avails itself of the faculties provided for in Articles II and III of the Appendix to the Berne Convention during the ten-year period, which expires on 10 October 2024. The declaration entered into force, with respect to India, on 28 March 2018. Lisbon Agreement (Appellations of Origin and their International Registration) On 9 March 2018, the Government of the Kingdom of Cambodia deposited its instrument of accession to the Geneva Act of the Lisbon Agreement. The instrument containes a declaration that in accordance with article 7(4) of the Geneva Act, the Kingdom of Cambodia wishes to receive an individual fee to cover its cost of substantive examination of each international registration. The date of entry into force of the Geneva Act will be notified when the required number of ramifications or accessions is reached. Madrid Protocol (International Registration of Marks) On 26 March 2018, the Government of the Republic of Afghanistan deposited its instrument of accession to the Madrid Protocol. The Protocol will enter into force, with respect to Afghanistan, on 26 June 2018. Locarno Agreement (International Classification for Industrial Designs) On 12 April 2018, the Government of the Islamic Republic of Iran deposited its instrument of ratification of the Locarno Agreement. The Agreement will enter into force, with respect to Iran, on 12 July 2018.

Nice Agreement (International Classification of Goods and Services) On 12 April 2018, the Government of the Islamic Republic of Iran deposited its instrument of accession to the Nice Agreement. The Agreement will enter into force, with respect to Iran, on 12 July 2018. Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 23 April 2018, the Government of the Republic of Uganda deposited its instrument of ratification of the Marrakesh Treaty. The Treaty will enter into force, with respect to Uganda, on 23 July 2018. On On 30 April 2018, the Government of the Kingdom of Lesotho deposited its instrument of ratification of the Marrakesh Treaty. The said Treaty will enter into force, with respect to Lesotho, on 30 July 2018.

Trade marks Moldova and Peru As of 7 May 2018, the State Agency on Intellectual Property of the Republic of Moldova and the National Institute for the Defense of Free Competition and the Protection of Intellectual Property of Peru will use the list of goods and services from the harmonised database (HDB) in TMclass. As a result, these are the two first non-EU IP offices that will use terms from HDB, one of the expected outcomes of the strategic project “Extension of tools” within EUIPO’s international cooperation projects. This project aims at extending the reach of the EUIPO’s tools beyond the EU for the benefit of global users. Dr Amanda R. Gladwin (Fellow), GSK

Combating misleading mail The IPO has asked that if CIPA members or their clients receive any examples of misleading mail to send them to the IPO. Where possible, please include the original envelope; the original envelope will help the IPO to work with the Post Office to track and suspend the postage license. Any such examples can be posted directly to Michele Hambridge, Head of the Corporate Team, Tribunal,Trade Marks & Designs Division, Intellectual Property Office, Concept House, Cardiff Road, Newport, South Wales NP10 8QQ or by email via the IPO’s Information Centre: Information@ipo.gov.uk. See examples of misleading invoices at www.wipo.int/madrid/en/fees/invoices.html

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INTERNATIONAL

IPTA conference – Melbourne

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IPA President Stephen Jones travelled to Melbourne in April for the Centenary Conference of the Institute of Patent and Trade Mark Attorneys of Australia (IPTA). Stephen met with Richard Baddeley and Michael Caine, President and Vice President, and with other officers and members of IPTA. The Institute had laid on a splendid display of memorabilia and records from the last hundred years, including a Presidential medal of office presented to IPTA by CIPA on the occasion of our own centenary in 1982. The meeting and associated events were well organised and attended with delegates and speakers from Australia, New Zealand (including Penny Catley, President of the New Zealand Institute of Patent Attorneys), IP Australia (including the Director General Patricia Kelly), WIPO (Francis Gurry, Director General), the UK and all over the world.. Stephen gave a short address to one of the conference sessions emphasising CIPA’s “Business as Usual” message in relation to Brexit. At the final gala dinner he presented IPTA, in honour of their Centenary, with a framed Victorian patent certificate with Great Seal attached, and made a short speech, extracts of which are reproduced below, emphasising the strong bonds of friendship and collegiality which exist between our countries and institutes. “On behalf of the Chartered Institute of Patent Attorneys and all your friends and colleagues in the UK and around the world, I extend sincere and hearty congratulations on your Centenary. One hundred years ago the world was coming towards the end of the great conflict of the First World War, which will be commemorated in other events later this year. As we Volume 47, number 6

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face further challenges in the world today, we hold on to the basic ideas and values which we share. Despite the upheavals of a hundred years ago, normal life continued, including the filing of patent applications, and the members of your Institute came together to promote those values and to better serve the public and the profession. In the UK we face our own challenges, some of which are out of our control and others are of our own making. Having made a decision to leave the European Union, rest assured that we will strive to maintain our good relationships with our friends around the world, both in Europe and beyond, and in due course the 40 years of our membership of the EU will be seen as but a brief interval in the broader sweep of history. In recognition of the friendship between IPTA and CIPA, it is my

pleasure to present you with this original patent dated 1875, slightly before either of our Institutes were founded. It bears the seal of Her Majesty Queen Victoria, appropriate for a presentation being made in the state which bears her name. On behalf of all the distinguished guests and visitors here present, I thank you for your kind and wonderful hospitality and propose a toast to the Institute of Patent and Trade Mark Attorneys of Australia, and to your next hundred years.” In the course of the dinner Stephen was presented with an award of his own, as being the first CIPA President to have taken part in the annual IPTA Fun Run, which despite its name, is taken very seriously by competitors from various firms. If any CIPA Past President disputes this claim, please apply to Stephen for a share of his prize – a chocolate frog.

IPTA President Richard Baddeley (left) with CIPA President Stephen Jones. Stephen presented IPTA, in honour of its Centenary, with a framed Victorian patent certificate. JUNE 2018

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Rules of Procedure of the EPO Boards of Appeal CIPA’s Patents Committee response to the EPO Boards of Appeal rules of procedure consultation.

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e love it when the EPO consults its users. Their track record is excellent and we are proud that, in the right circumstances, practitioner input is highly valued, the practitioner input is valued so highly, especially when it can solve significant problems downstream. So CIPA has leapt at the opportunity, as has a huge range of other organisations (IP Federation, FICPI, UNION, IP Inclusive, epi to name but a few), to look at the Rules of Procedure of the Boards of Appeal. The response itself is set out below and, as ever, is perhaps a little diluted because it needs to represent the views of a fairly diverse organisation. However, there are probably a few main bullet points to keep an eye on: •

The EPO wants to take the opportunity to clarify what appeals are about – that is, reviewing the correctness of the first instance decision. The wording that they have specifically chosen “to judicially review” is perhaps a little misleading and has been queried, but the principle seems sensible.

Off the back of this we are going to have to be much more careful about how we use the appeals process. At present, despite the efforts of the EPO Boards of Appeal over the years, people do tend to run appeals, occasionally, to cover the points they wish they had thought of earlier. That is not what they are about, and the UK courts have always been extremely rigorous on this. The EPO is going to make it much more difficult to introduce new requests, facts and evidence and even arguments at the appeal stage – how you operate at first instance is going to

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become ever more important, and the minutes of the first instance decisions are going to be vital for showing that the relevant material was already in the proceedings. •

The Boards of Appeal are going to always issue a preliminary non-binding opinion or equivalent. CIPA is asking that they issue a useful preliminary non-binding opinion. This should provide procedural expediency.

There is brief mention of case management, and the epi has majored on this point – CIPA is supporting it in terms of availability of parties, reduction of issues and anything else that is procedurally expedient. We point out that if people are going to spend all of their time objecting to newly introduced material, there is going to be a whole new tier of procedural wrangling, and again suggest that case management could solve this. We go further and ask whether the EPO could be harsher with its sanctions. Whilst practitioners may rue the reduction in latitude in appeal proceedings, we need to look at the benefits of both sides, and the general level of reputation and level of quality demanded.

CIPA’s response On 30 April 2018, the Patents Committee submitted its response to the consultation on the proposed revised Rules of Procedure of the Boards of Appeal first published draft dated 1 February 2018 Introductory comments

The EPO is going to sift through a huge number of submissions now and it may be some time before we see another draft of the Rules of Procedure of the Boards of Appeal, but anything that maintains quality, supports the principle of appeals and enhances efficiency must be welcomed in ensuring that the EPO continues to be a highly respected and viable patent granting organisation.

CIPA welcomes the proposal to revise the Rules of Procedure of the Boards of Appeal (“the Rules”), and supports revisions which have the effect of: •

reducing the pendency and backlog of appeal cases; • increasing efficiency, clarity and fairness of proceedings for all parties; • maintaining the independence of the Boards of Appeal; • increasing consistency between Boards, for both ex parte and inter partes appeals; and • increasing consistency between Boards and first instance Divisions, whilst maintaining the high quality of the Boards’ decisions. The Explanatory Remarks are helpful and CIPA wonders whether parts could be incorporated into the Rules themselves rather than in the form of an additional document. Specific suggestions are set out below, but are not exhaustive. CIPA agrees with expressing the primary object of appeal proceedings as set out at proposed revised Article 12(2), but feels that “to judicially review” is unclear and suggests reference to “to review of the correctness of” or similar. www.cipa.org.uk

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CIPA supports the view of IP Inclusive that the wording of the Rules should be gender neutral. In addition to the commentary below on specific proposals for revision, CIPA supports the general principle of the concept of enhanced case management as discussed, for example, in Mr Chris Mercer and Mr Maarten Nollen’s article [epi Information 01/18, March 2018, pages 14 to 17] regarding these proposals, and would urge further development of an appropriate process.

Specific comments The numbering below refers to proposed revised Rules. Article 4 (1) This article should confirm that the decisions on admissibility are made by the Board. Article 10 CIPA would support the introduction of a publicly available “list” of pending appeals within which individual appeals could be moved depending on for example acceleration status. This could provide transparency in cases such as the overload of a Board foreshadowed in the Explanatory Remarks. Examples of criteria for acceleration are set out in the Explanatory Remarks but should be recited as non-exhaustive examples in the Article itself, to avoid abuse. The Article should indicate the need for balance between parties in the case of inter partes proceedings. A case management conference could be used to achieve procedural efficiency and fairness in relation to discussions of acceleration. Article 12 (1)(a) Reliance on the first instance minutes is welcomed. For clarity of proceedings, and consistency between Boards and Divisions, the minutes of any first instance decision should be formulated so as to permit simplified application of Article 12(4) (identification of “amendment” of submissions). (2) As discussed above, CIPA finds the phrase “to judicially review” unclear and instead suggests reference to “to review of the correctness of” or similar. Volume 47, number 6

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(3) The term “objections” should be clarified as set out in the Explanatory Remarks. (4) The underlying purpose of the proposal to have three levels of convergence is supported to the extent that it permits the Boards to meet the objectives identified in the introductory comments above. However, especially in inter partes appeals, there is a risk that proceedings could be prolonged and made more complex by wrangling between parties and the Boards over admissibility. Identification of an amended “argument” may be particularly challenging. Effective use of enhanced case management, possible in conjunction with a more vigorous costs regime, could mitigate this risk. We would suggest consolidating the provisions in a single note. Article 13 (2) The wording is not clear enough. The rule should state explicitly that the Board may issue a communication setting a period after which the third level conditions apply. Article 15 (1) Mandatory issuance of pre-hearings comments is essential and welcomed. If these are representative of the entire Board’s preliminary views, the time taken in preparing them is likely to be more than regained in the subsequent efficiencies achieved. For example, they could serve as the basis of a highly effective case management procedure. Generally, close observance of Rule 116 EPC is, we believe, essential. (2) Omission of religious holidays is significant and potentially discriminatory. The Guidelines for Examination set out a list of criteria that appears to meet with general support; can this list not be replicated? Additionally, if the party is represented, as the serious reasons must relate to the representative and not the party, this could disadvantage parties who wish to attend oral proceedings but are unable to do so for one of the serious reasons.

(7) It is not clear that the option of an abridged written decision, even with all parties’ consent, is in the public interest, both in relation to information regarding the appeal in question, nor for creating jurisprudential guidance for future appeals. (9)(a) Further significant shortening of the period for issuing the written decision could improve efficiency. It should not be necessary to reflect on the decision which has already been made, nor its reasoning; on the other hand, writing it up in the immediate aftermath of the hearing while it was still “fresh” would seem procedurally wise. We believe that it should be mandated that the minutes should be provided at the same time, as a matter of best practice and in case a petition for review by the Enlarged Board is filed. Article 16 (1) The amendment is welcomed. CIPA understands that costs provisions are invoked only rarely, and recognises that procedurally they are complex to enforce. However, the abuses referred to in (1)(e) may increase as more procedural “tricks” now become available (disputes over admissibility, etc.) such that an investigation into more robust costs imposition and enforcement may be merited. Article 25 In view of the impact of the proposed changes to the Rules on first instance procedures, for example the increased difficulty of introducing “new” requests at appeal, greater lenience in the transitional provisions may be merited, for example in relation to acts committed at first instance prior to entry into force of the revised rules.

Conclusion CIPA would be happy to provide additional detail on any points raised above, in any appropriate form, and would welcome the opportunity for continued interaction and consultation on this important revision. JUNE 2018

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NEWS

IPReg

IPReg Training Protocol Practical Training Protocol for pre-qualification supervised practical training

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he qualification pathway to becoming a registered UK attorney includes both examinations and experience requirements (Regulation 4 of the Patent Attorney and Trade Mark Attorney Qualifications and Registration Regulations). The IPReg Accreditation Handbook seeks to provide equality of academic experience. A Working Group was set up to seek to help promote the same parity for the pre-qualification practical experience. The Working Group consisted of Keith Howick (Professional Patent Board Member and Chair), Alicia Chantrey (Professional Trade Mark Board Member), Kerry Tomlinson (Chartered Patent Attorney) and IPReg staff. We undertook a scoping exercise to identify training tools being used in other parts of the legal sector and to determine any resources dedicated to this area so as not to unnecessarily duplicate. It was determined that a non-prescriptive and voluntary Training Protocol template would be beneficial. This was to be based upon high-level arrangements and commitments to be made by a designated Training Principal (who this is will vary according to the firm structure and its

practical training arrangements) and the Trainee, with both parties seeking to work together in a constructive and supportive manner. Last summer, we circulated a draft document to CIPA, CITMA and the IP Federation, and then shared it with the CIPA Informals Committee and the Nottingham Trade Mark Professional Practice Skills course students. Trainee feedback was enthusiastic for both the principle of the protocol and the form it had taken. We consciously avoided providing a granularity of detail. It is intended the document can be altered and added to as required by the parties signing up to it, being made more detailed by firms/ trainees should they desire a more prescriptive document. The protocol template is intended to be a voluntary guidance tool, available for use by those who consider they would benefit from having a written framework in which to train/be trained. We realise some firms will already have their own fit-forpurpose training arrangements in place which may meet, exceed, or vary from, the provisions of the protocol due to circumstances and that such firms are not expected to adopt the protocol. For those who consider they

would benefit from it, the protocol template seeks to address the potential for inconsistency, due to individual circumstance, of level and breadth of practical training; to counter the potential variance of the time, support and attention which supervisors afford their trainees; and to ensure the scope of work experience areas afforded to trainees is appropriately broad and covers the areas and general and technical skills sets included in the IPReg Competency Frameworks. It aims to promote trainee awareness of the type of optimal training arrangements which could maximise their experience and help develop their competency within the workplace. We hope you will support our approach, welcome delivery of the IPReg Business Plan Practical Training commitments and promote the template as a useful tool for both trainees (such as those in their first job, or those working in a small firm) and their supervisors (perhaps those who are new to the supervisory role), and promote the need for, and benefit of, high-quality practical experience as part of the route to qualification as an attorney. Victoria Swan, IPReg Director of Policy

Useful links Patent Attorney and Trade Mark Attorney Qualifications and Registration Regulations http://ipreg.org.uk/wp-content/files/2012/08/Patent_Attorney__Trade_Mark_Attorney_Qualifications_and_Registration_Regulations_20092.pdf IPReg Accreditation Handbook https://ipreg.org.uk/pro/getting-qualified/examinations-and-exemptions/ipreg-accreditation-handbook/ IPReg Competency Frameworks https://ipreg.org.uk/pro/getting-qualified/training-and-supervision/ IPReg Code of Conduct https://ipreg.org.uk/wp-content/files/2012/08/IPReg_Code_of_Conduct_August_2017-website.pdf

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Pre-qualification Practical Training Protocol Template TRAINING PROTOCOL 1. The purpose of this Protocol is to set out the arrangements for the training of [Name here] (“the Trainee”) by [Name here] (“the Firm*”). 2. The arrangements set out in this Protocol are not intended to be contractually binding or to vary or otherwise have effect on the terms of the Contract of Employment dated [ ] between [Name here (the Trainee)] and [Name here (the Firm)]. 3. The Firm has designated [Name here] to be the Training Principal who will have primary responsibility for the training and supervision and mentoring and support of the Trainee. 4. The Training Principal will ensure that adequate arrangements for the Trainee are in place for: a. Training in and experience of the Skill Sets (and work streams) identified in the IPReg Competency Frameworks [Trade Mark/Patent] at all its stages (ensuring that the Trainee uses a suitable means to record their activities). b. Support for the Trainee when preparing to take any of the professional examinations. c. Training in the IPReg Code of Conduct. d. Day-to-day supervision, guidance and support. e. Attendance at suitable internal and (at the cost of the Firm) external training courses. f. Regular (informal and formal) monitoring and feedback (the Training Principal to seek input from other supervisors as appropriate). g. Prompt and fair resolution of any support needs identified or concerns raised by the Trainee (whether professional or personal). 5. In return the Trainee will: a. Diligently commit themselves to their training and development and to their preparation for the professional examinations to the standards of professionalism expected of them. b. Follow their supervisor’s instructions (or promptly report any concerns about those instructions to the Training Principal or other designated person). c. Attend any internal and (if paid for by the Firm) any external training courses stipulated by the Training Principal. d. Keep a record of work done in a form agreed with the Training Principal to demonstrate and discuss competence and areas for further development. e. Identify any support needs or concerns in a timely manner. 6. Both the Training Principal and the Trainee will seek to: a. work together in a constructive and supportive manner; and b. endeavour to resolve any disagreement. Signature of Trainee: …………………………….

Signature of Training Principal: ………………………………

*Where in-house, substitute appropriate terminology, such as “organisation”

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Doctrine of equivalents challenged in Singapore In Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2018] SGCA 18, the Singapore Court of Appeal reaffirmed the law on patent construction in Singapore and clarified the Singapore position in relation to the UK Supreme Court’s decision in Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48 (“Actavis”). The Singapore Court of Appeal also clarified the approach in granting of relief in the context of groundless threats of patent infringement proceedings. By Gladys Mirandah and Jehanna Ruth Huerto.

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ee Tat Cheng (the “appellant”) is the proprietor of Singapore Patent No 87795 (the “patent”). The patent concerns an “automotive accident recordal system and process”. The appellant commenced a patent infringement action against Maka GPS Technologies Pte Ltd (the “respondent”), who distributes and offers in-vehicle cameras (“the devices”) for sale. The respondent, in turn, denied the claim and contended that the patent was invalid and counterclaimed against the appellant for making groundless threats of infringement. The High Court found, inter alia, that the patent was valid, but had not been infringed (reported in Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2017] SGHC 48).

Appeal On question of infringement The Singapore Court of Appeal (the “Court”) analysed whether the patent had been infringed firstly by determining the scope of the monopoly conferred by the patent, and secondly, whether the devices disclosed all three disputed essential features of claim 1 of the patent, which was the relevant claim in this appeal. With regard to the scope of monopoly, the appellant contended that the decision in Actavis, which imported the “doctrine of equivalents” with regard to patent construction into UK law, ought to be applied in this case. To address the applicability of the doctrine of equivalents in Singapore, the Court traced the development of patent construction preActavis before considering whether the Singapore court should adopt the same position as the UK Supreme Court. Specifically, the Court identified that the law on patent construction and the determination of patent infringement in the UK pre- Actavis is largely governed by: 14

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a. the House of Lords’ decision in Catnic Components Ltd and another v Hill & Smith Ltd [1982] RPC 183 (“Catnic”); b. the UK Patents Court’s decision in Improver Corporation and others v Remington Consumer Products Limited and others [1990] FSR 181 (“Improver”); and c. the House of Lords’ decision in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 (“Kirin-Amgen”). Patent construction in Singapore has been aligned with these precedent-setting decisions prior to Actavis. The Court then considered the decision in Actavis and the reasons by which the Supreme Court for the very first time imported the “doctrine of equivalents” in the UK. It was stated that the rationale behind the UK Supreme Court’s adoption of the “doctrine of equivalents” was primarily to give precedence to article 2 of the Protocol on the Interpretation of article 69 of the European Patent Convention on the Grant of European Patents in governing the interpretation of section 125(1) of the UK Patents Act 1977. Although section 113 of the Singapore Patents Act mirrors section 125 of the UK Act, it is not the standard position of Singapore to follow legal compromises made by the UK to EU law. With that backdrop, the Court ruled that Actavis should not be applied in Singapore for the following reasons: a. The approach set out in Actavis is inconsistent with section 113 of the Singapore Patents Act as it extends the protection conferred by a patent to go beyond the scope of the claims in the patent, purposively construed. b. The purposive approach strikes the right balance between the need to afford fair protection to the patentee and the www.cipa.org.uk

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need to provide a reasonable degree of certainty to third parties. Applying Actavis, and thereby extending scope of protection, would shift this balance too far in favour of the patentee. c. Applying Actavis in Singapore may give rise to undue uncertainty, specifically through the ex post facto analysis that would be necessary to focus on how the patented invention works in practice, at the date of the alleged patent infringement, rather than focusing purely on what the patentee’s intended scope of monopoly was at the time of the patent application. In summary, the Court concluded that the correct approach to determine the scope of the protection conferred by a patent remains the purposive construction of the claims – what would the words used in the patent claims convey to the notional skilled person at the date of the patent application?

Analysis of the finding of non-infringement The three disputed features of claim 1 of the patent were: (i) the “ignition monitor”, (ii) the “means to send a signal”, and (iii) the “means to switch off at least one optical recorder after a fixed interval”. With regard to feature (i), two main issues were considered: (a) what constituted part of the ignition system; and (b) whether claim 1 required the ignition monitor to be directly wired to the primary circuit of the vehicle’s ignition system. The Court affirmed the High Court’s findings and rejected the appellant’s case on the first disputed essential feature for the following reasons: •

The notional skilled person would not understand the ignition system described in claim 1 to include the vehicle’s battery by reading the patent’s specification. The construction of claim 1 also suggests that the term “ignition monitor” would not include DC voltage from or produced by the vehicle’s battery. Claim 1 requires the ignition monitor to be directly connected to the ignition system of the vehicle, and not indirectly connected through the vehicle’s battery. As opposed to the invention in the patent, the current sensors in the devices are not monitoring “ignition voltage”.

In reference to feature (ii), the Court considered whether, on a purposive construction of claim 1, the mere supply of voltage or electrical power can constitute a “signal.” The Court again found that the High Court Judge’s interpretation was correct and rejected the appellant’s case for the following reasons: •

The notional skilled person would construe the term “signal” to be the conveyance of information or data.

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• •

The patent specification expressly distinguished between a “signal” and mere “power supply”. A finding that the transmission of voltage or electrical power itself is the “signal” would cast doubt on the validity of the patent.

Lastly, with regard to feature (iii), the Court considered how the notional skilled person would construe the term “optical recorder” in the context of claim 1 before construing how the term “switch off ” would be understood. The Court construed the term “optical recorder” borne out by the other claims and the specification of the patent to mean an optical capture device, such as a camera or camcorder. Given this construction of the term “optical recorder”, it follows that to switch off the optical recorder cannot refer to the locking of the storage medium, but must instead refer to the switching off of the optical capture device. The Court upheld the High Court Judge’s finding of noninfringement in relation to the three disputed essential features of claim 1 and dismissed the appeal.

Relief under section 77 of the Patents Act The appellant contended that the High Court Judge erred in granting injunctive relief to the respondent in respect of the finding of the appellant’s groundless threats of infringement proceedings. Following a review of section 77 of the Patents Act and section 200 of the Copyright Act, the Court disagreed with the High Court Judge’s finding that the grant of relief is mandatory once a claim for groundless threats of infringement proceedings has been made out. Instead, the Court clarified that the grant of relief in respect of groundless threats is ultimately discretionary, involving a fact-sensitive inquiry as to whether the action was warranted and whether any relief was required. The Court held that it was inappropriate to enforce an injunction against the appellant and thus allowed the appeal in this respect.

Conclusion After a detailed and elaborate analysis of the law on patent construction in the UK and Singapore, the Court has decided not to adopt the Actavis decision for the reasons stated above. The Court, by using purposive construction of the claims, also affirmed the judgment of the High Court. The Court’s rationale in overturning the High Court’s grant of an injunction as relief for groundless threats of infringement affirms the fact that the scope of this area of intellectual property law requires further clarification in Singapore. Gladys Mirandah is the director of Mirandah Asia. Jehanna Ruth Huerto is a Patent Executive at Mirandah Asia Singapore. See more at www.mirandah.com. JUNE 2018

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The problem with secret prior art Why the European approach to conflicting applications is most suited to a first-to-file system. By Michael Caine, Davies Collison Cave Pty Ltd

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he need for international harmonisation of substantive patent law was recognised by WIPO’s Standing Committee on the Law of Patents (SCP) in November 2000, leading the SCP to focus its efforts on concluding a Substantive Patent Law Treaty (SPLT)1. Despite numerous meetings and the preparation of a number of drafts of a possible SPLT, the negotiations were put on hold in 2006. In view of the continued interest of many WIPO member countries in progressing negotiations in relation to substantive patent law harmonisation, including all members of WIPO’s Group B, the Group B+ was established to move forward on substantive patent law harmonisation2. One topic currently being considered by Group B+ is conflicting applications. A conflicting application is a patent application having a filing date (or priority date) earlier than that of an application or patent under consideration, but which was published later. Efforts towards reaching an international consensus in respect of the treatment of conflicting applications have thus far failed. In the past, one of the main areas of contention in relation to the way conflicting applications should be treated was the insistence by the United States (US) that such applications should be considered as prior art for the purpose of assessing inventive step in addition to novelty. Such treatment of conflicting applications was considered to be unacceptable to all other countries operating under first-to-file principles. However, with the commencement of the America Invents Act (AIA) in 2011, and the replacement of the old first-toinvent patent system with a new “first-inventor-to-file” regime, it might be expected that one of the major stumbling blocks to reaching an agreement in relation to the treatment of conflicting applications would be removed. Unfortunately, this

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is not necessarily the case. Although the US has introduced a new patent law based primarily on first-to-file principles, the AIA carries with it some elements and principles from the old first-to-invent system. This includes the way conflicting applications are treated. Under the AIA not only are earlier filed but later published applications considered relevant for the assessment of both inventive step and novelty, as in the old first-to-invent system, but the grace period provisions included in section 102(b)(1)(B) and (2)(B) also appear to import firstto-invent principles. While the AIA is referred to as a “first-inventor-to-file” system, owing to the grace period provisions the patent is not always awarded to the first inventor to file. An inventor who publishes an invention and then seeks to rely on the grace period will prevail over an independent inventor of that same subjectmatter who files an application first, but within that grace period. Publication of the invention by the independent inventor during the grace period will also not interfere with the ability of the inventor who published earlier to obtain a patent for that invention. Both of these grace period provisions accord a right of priority to an inventor based on their publication of details of the invention, rather than the filing of an application in respect of that invention. Non-statutory obviousness-type double patenting is another carryover from the first-to-invent system, as well as being a carryover from the old pre-TRIPS law according to which patents received a 17-year term from the grant date. In order to have a meaningful and productive discussion in relation to the treatment of conflicting applications, it is important for those involved in the negotiations to have a comprehensive understanding of the fundamental differences between “first-to-invent” and “first-to-file” systems, particularly in relation to the way approaches to deal with www.cipa.org.uk

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conflicting applications have developed within these systems. It is important to note that the descriptors “first to invent” and “first to file” are in fact references to the way conflicting applications are treated according to the respective systems. It should therefore come as no surprise that laws and principles hat have been developed to satisfy one of these systems may not function as well in the other system.

First-to-invent system As the name suggests, a first-to-invent system, such as the previous US system, accords priority to the first inventor. Various practices and principles were developed over the years to ensure that first inventors received full protection for the inventions they had conceived and for which they sought protection. An earlier filed application that was unpublished at the time a later application was filed was true prior art, in the sense that it represented evidence that someone other than the

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later applicant had made the same or similar invention at an earlier time. Of course it was also possible to “swear behind” such earlier filed applications if the applicant could evidence having made the invention prior to the filing date of the earlier application. These earlier filed applications were considered to be “secret” prior art because they were not available to the public (or to the later inventor) at the time of filing the later application. The term “secret prior art” is an apt term to describe such earlier applications. Accordingly, in the first-to-invent system, it was necessary to find some inventive advance in the later application over and above the disclosure of the earlier filed application before the later applicant could be awarded a patent. This all seems fair and reasonable in a system designed to award patent rights to a first inventor. According to information published online by Ladas and Parry LLP on 7 May 20143, the US patent system has operated

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on first-to-invent principles for well over 100 years, and possibly since the first US Patent Act of 1790. In fact, according to the Ladas and Parry commentary, a mechanism was set up in 1870 for resolving disputes as to who had invented a particular invention which involved creating a new post of “Examiner in charge of interference”. Based on this long history of applying first-to-invent principles when dealing with conflicting applications, it is not unexpected that US practitioners had, and continue to have, difficulty accepting that such earlier filed but later published applications are not considered prior art at all in a first-to-file system. Once this important fact is appreciated, the approaches adopted in first-to-file countries or regions, such as Europe, should make far more sense to these practitioners.

First-to-file system It may come as a surprise to many that the United Kingdom (UK) only adopted a first-to-file system in 18834. Prior to 1883 patents were granted, not to the first applicant, but to the first applicant to prosecute their application through to grant. Once this patent was granted, it was no longer possible to grant another patent for that invention to an earlier applicant. This was the result of a decision In Re Bates and Redgate’s application, L.R. 4 Ch. 577. However, where both applications were filed on the same day, separate patents could be granted to both applicants. See In Re Dering’s patent 13 Ch 393. In view of the perceived injustice to the earlier applicant, the Patents Act was amended in 1883 to include a provision which accorded priority to the first applicant. According to section 13 of the Patents Act 1883, the granting of an initial patent to a later applicant did not prevent the granting of a patent for the same invention to an earlier applicant. However, it appears that once the patent was granted to the later applicant, the earlier applicant could not take any action to have that patent revoked. This situation was clarified in the Patents Act 19075 which introduced a prior-claiming approach to conflicting applications. According to this prior-claiming approach, the later applicant was required to subtract from their claims subject-matter claimed in a patent granted on an earlier application. However, if the earlier application or patent was abandoned, or the claims amended to remove the overlap, there was nothing to prevent the full scope of protection being granted to the later applicant. This type of prior-claiming approach to the assessment of conflicting applications was also applied in France and Germany up until the commencement of the European Patent Convention (EPC). The same approach was also used by other countries such as Australia, New Zealand and India. Under a prior-claiming approach, earlier filed but later published applications are not considered to be part of the state of the art or prior art base against which novelty and inventive step are assessed. In fact, according to a prior-claiming system, 18

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both the first and second applicants are considered to have made patentable inventions over and above the state of the art and, but for the avoidance of double patenting, are deemed equally deserving of patent protection. The problem, however, is that once a patent is granted to one of the applicants for a particular invention it would undermine the value of that patent if another patent for that same invention was granted to another party. Accordingly, under the prior-claiming approach prosecution of the later application was placed on hold pending the outcome of examination of the earlier application and the finalisation of the claims to be granted. Only then could the examiner determine the extent of the subject-matter that needed to be subtracted from the claims of the later application. If the earlier application did not proceed to grant, or if the granted claims did not include subject-matter within the scope of the claims of the later application, then nothing needed to be subtracted and the later applicant could obtain full protection for the invention they made. This system for dealing with conflicting applications was considered to strike the correct balance between the first and second applicants, allowing the second applicant to pursue protection for all subject-matter included within the scope of their claims that was not claimed by the earlier applicant. Since the earlier application was not part of the state of the art, there was no need to conduct any assessment as to whether the second applicant made any novel or inventive contribution over and above what was claimed or disclosed in the first applicant’s patent specification. While the prior-claiming system was popular in Europe before commencement of the EPC, it did have some drawbacks. One of the main drawbacks was delay. The later filing applicant was required to wait until the fate of the earlier application (or applications) was known before examination could be completed. The problem was compounded if serial divisional applications were filed. Another disadvantage, although not considered to be of great significance, was that the prior-claiming system did not allow an earlier applicant to dedicate their invention to the public by abandoning the patent application, since there was always the danger that the subject-matter could be monopolised by a later inventor who filed an application in respect of the same or a similar invention. These disadvantages of the prior-claiming system ultimately led to the adoption of the so-called “wholecontents-novelty” approach to the assessment of conflicting applications found in the EPC. More recently other countries such as Australia and New Zealand have replaced “prior claiming” with European-style “whole-contents-novelty” systems for the same reasons. However, prior to commencement of the EPC in 1977, there were earlier attempts to harmonise substantive patentability requirements throughout Europe, including approaches to the treatment of conflicting applications. www.cipa.org.uk

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Strasbourg Convention on Unification of Certain Points of Substantive Law on Patents for Inventions 1963 From 1961 to 1963 the Council of Europe, through the Bureau of the Committee of E#xperts on Patents, carried out work on the development of a Convention on Unification of Certain Points of Substantive Law on Patents for Inventions6.

Preliminary draft Convention Attached to the report of a meeting held in Paris on 16 and 17 March 19617 was a preliminary draft of such a Convention, which included three possible provisions for dealing with conflicting applications. These versions were proposed by

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experts from Scandinavia, the Federal Republic of Germany and the UK respectively. The three proposals were criticised as they extended consideration of the “prior arts” to the whole contents of the application from which they were derived instead of limiting consideration to the protection afforded by the patent granted on the earlier application.

Second draft Convention The next draft Convention attached to the draft report of the Committee of Experts on Patents dated 8 May 19618 included two provisions for dealing with conflicting applications, one in which the claims in a patent granted on an earlier application were considered to be comprised in the state of

The problem with secret prior art – Key points •

• •

It is generally agreed that the international patent system would benefit from some harmonisation of substantive patent laws, particularly in relation to the definition of prior art and the treatment of earlier filed but later published applications (“conflicting applications”) Although in concluding the European Patent Convention (EPC) in 1973, it was possible to reach a consensus among the 19 members in relation to the treatment of conflicting applications, no such consensus has been reached in WIPO patent law harmonisation forums involving the United States. The descriptors “first to file” and “first to invent” as applied to patent systems are short-hand references to the way conflicting applications are treated in those systems. It is therefore not surprising that principles and practices developed in a first-to-invent system may not be readily transposable into a first-to-file system. In particular, while conflicting applications represent “secret” prior art in a first-to-invent system they do not represent actual prior art in a first-to-file system. Although the United States has abandoned its first-to-invent system in favour of a new “first-inventor-to-file” system, the new system borrows several elements from the earlier first-to-invent system, particularly in relation to the treatment of conflicting applications and application of the grace period. The system introduced into the US with the America Invents Act is new, and it remains to be seen whether this hybrid system will work well in practice. The European “whole-contents-novelty” approach to the treatment of conflicting applications represents a further extension of the “prior-claiming” approaches popular throughout Europe prior to commencement of the EPC in 1977. These approaches acknowledge that both first and second applicants have made inventions over the prior art and are deserving of patent protection, but require the later applicant to subtract subject-matter disclosed (or claimed) in the earlier application from their claims to avoid double patenting. There is no assessment of whether the later applicant has made a novel or inventive contribution over the disclosure, or claims, of the earlier applicant. The whole contents is only deemed to be part of the state of the art for novelty so that the subject-matter to be subtracted from the later claims can be identified. The European whole-contents approach, while going further than necessary to avoid double patenting, has the advantage that it avoids the need to defer examination of the later application until the claims of the earlier application are finalised. The whole-contents approach also avoids creating a gap or “distance” between the claims of the patents granted on the earlier and later applications. Any such gap is likely to include subject-matter enabled by the later patentee, but for which protection is not obtained by either patentee. The subject-matter in the gap could be exploited with impunity by third parties to the detriment of both patentees. Group B+ should look more closely at the benefits (including simplicity) of the European whole-contents approach as a model system for international harmonisation of the treatment of conflicting applications. Adopting a system that has stood the test of time within a first-to-file system is preferable to adopting any new hybrid system that has not previously been put to the test.

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the art, and another optional provision by which the whole contents of the application or patent could be considered to be comprised in the state of the art. In either case, inventive step or obviousness was judged with reference to the state of the art without exception. In justifying inclusion of the broader optional clause the report indicated that it was merely an option for the States which they were in no way bound to exercise. There was a significant objection to the inclusion of the broader clause by Scandinavian experts who preferred limiting the provision to the granted claims of the earlier application9. This concern was emphasised in particular by the Swedish Society of Patent Agents who were “strongly opposed” to the broader alternative10. Various proposals and suggestions were made by representatives of European countries including an option suggested by the UK delegation to not just consider the subject-matter claimed in an earlier filed patent, but to also consider obvious equivalents and modifications of the claimed subject-matter11. This option was not adopted. The Committee of National Institutes of Patent Agents (CNIPA) was particularly concerned about any attempt to include unpublished matter in the state of the art. In a submission dated 7 May 196312 they argued: “no attempt, as in the draft of August 1962, to deal with the problem by artificially including unpublished matter in the state of the art can lead to a satisfactory result. If, for instance, everything disclosed in a patent of earlier date forms part of the state of art, then it becomes impossible to obtain a later patent protection for matter which, though so disclosed, is not the subject-matter claimed in the earlier patent.” In other words, CNIPA was strongly in favour of a priorclaiming approach to the treatment of conflicting applications.

Final Convention Eventually on 27 November 1963 the member state of the Council of Europe agreed to the following wording of articles 4 and 5 (with bolding added) which deals with earlier filed but later published applications13: Article 4: 1. An invention shall be considered to be new if it does not form part of the state of the art. 2. Subject to the provisions of paragraph 4 of this article, the state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of the patent application or of a foreign application, the priority of which is validly claimed. 20 CIPA JOURNAL

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3. Any Contracting State may consider the contents of applications for patents made, or of patents granted, in that State, which have been officially published on or after the date referred to in paragraph 2 of this article, as comprised in the state of the art, to the extent to which such contents have an earlier priority date. 4. A patent shall not be refused or held invalid by virtue only of the fact that the invention was made public, within six months preceding the filing of the application, if the disclosure was due to, or in consequence of: a. an evident abuse in relation to the applicant or his legal predecessor, or b. the fact that the applicant or his legal predecessor has displayed the invention at official, or officially recognised, international exhibitions falling within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and amended on 10 May 1948. Article 5: An invention shall be considered as involving an inventive step if it is not obvious having regard to the state of the art. However, for the purposes of considering whether or not an invention involves an inventive step, the law of any Contracting State may, either generally or in relation to particular classes of patents or patent applications, for example patents of addition, provide that the state of the art shall not include all or any of the patents or patent applications mentioned in paragraph 3 of article 4. Accordingly, it became optional whether or not a contracting State chose to consider the whole contents of an earlier filed later published application as being part of the state of the art. Even if a country did decide to include it as part of the state of the art, there was a further option to exclude it from any assessment of inventive step or obviousness.

European Patent Convention (EPC) During the period in which the Strasbourg Convention 1963 was negotiated a number of other conventions were under discussion dealing with harmonisation of classification, unity of invention, patent term and the like. Eventually work focused on establishing a European system for the grant of patents.

Preliminary draft Convention At its meeting in Brussels on 21 May 1969 the InterGovernmental Conference for the setting up of a European System for the Grant of Patents decided to draw up a draft Convention14. The first preliminary draft of the Convention included article 11(3) which stipulated that the contents of an earlier application for a European patent published on or after the filing date or priority date would be considered as www.cipa.org.uk

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comprised in the state of the art15. Article 13, which related to the assessment of inventive step, included two variants. The first variant specified that earlier filed but unpublished European applications were not to be considered in deciding whether or not there has been inventive step. The second variant indicated that such earlier filed applications could be used in the assessment of inventive step provided that each document was considered separately. The report published in association with the first preliminary draft Convention16 establishing a European System for the Grant of Patents specified that the rules of patentability in the draft convention had been taken from the Strasbourg Convention 1963. However, the report mentioned that some modification of the provisions dealing with earlier filed but later published applications had been made by the working party. One of the modifications was to specify that such prior applications are only taken into consideration when intended for the same country as the application that is being examined, while the other modification was to totally or partially exclude such applications from being considered in deciding whether or not there was an inventive step. Despite these modifications the report by the British delegation on articles 11 and 1317 pointed out that article 11(3) was “of course more severe than that adopted in, for example, the UK, German and French laws which adopt the test of prior claiming”.

Second preliminary draft Convention Following a meeting in Luxembourg from 20 to 28 April 1971, the Inter-Governmental Conference published a second preliminary draft of the Convention18. While there was no change to article 11(3), article 13 was amended to remove the second variant. Accordingly, earlier European patent applications of the type referred to in article 11, paragraph 3, were not to be considered in deciding whether there has been an inventive step. It appears from a report published in relation to the activities of the working party of the Inter-Governmental Conference that the decision to remove the second variant was made in a meeting held earlier in April 1970.

Preparatory documents for Munich Diplomatic Conference The versions of articles 11 and 13 (renumbered as articles 52 and 54), as they appeared in the preparatory documents drawn up for consideration at the Munich Diplomatic Conference for the setting up of a European System for the Grant of Patents to take place from 10 September to 6 October 1973, were in substantially the same form as they appeared in the second preliminary draft of the Convention19. A slight change was made to article 52(3), to specify that it was the content of the European patent applications (as filed) that was to be considered, and that the filing date of the European patent application must be prior to the filing date or priority date of the European patent application under consideration. No Volume 47, number 6

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changes were made to article 54, other than to take into account the renumbering of the articles. In the official compilation of submissions20 made on behalf of various countries and non-Governmental organisations in advance of the Munich Diplomatic Conference in relation to the various provisions of the draft EPC, it is notable that few submissions were made regarding articles 52 and 54. However, concern about the whole-contents approach was expressed by COPRICE (Comité pour la Protection de la Propriété Industrielle dans la Communauté Économique Européene). They stated21: “the majority of COPRICE considers that the ‘prior-claim approach’ is clearer and more equitable. This approach has been adopted in several laws which have recently entered into force, particularly in France. It represents a development which has taken place since the signing of the Strasbourg Convention. It is true that the Convention adopted the ‘whole-content approach’ but it is felt that subsequent developments which have led, instead, to the ‘prior-claim approach’ being adopted in several national laws could be applied in the European Convention.” They also indicated that a minority within COPRICE remained concerned that under a prior-claim approach “the state of the art can only be defined with certainty when the first European patent is granted since it is only then that the terms of the claims can be defined.” This minority also acknowledged that “ this difficulty is removed by the application of the “wholecontent approach” since the content of the first European patent application is determined when the application is filed.” Accordingly, while the majority of COPRICE had reservations in relation to the whole-contents approach, a minority recognised the shortcomings of the prior-claiming approach and appreciated the benefits of moving to a wholecontents approach. Of particular note and importance was a warning provided by CPCCI (Standing Conference of the Chambers of Commerce and Industry of the European Economic Community)22. While they could see the benefits associated with applying the wholecontents approach, they could also see that it could be a source of confusion. In this regard, they stated: “In the view of the Standing Conference, the state of the art must remain strictly defined by what has been made available to the public before the date of filing of the European patent application. The situation created by article 52, paragraph 3, could be a source of confusion, in particular since there is a danger that it will influence the application of article 54. The problem which article 52, paragraph 3, sets out to cover does not relate to the assessment of novelty but to a conflict between two applications; it is as such that it should be dealt with.” JUNE 2018

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This warning is just as important today as it was back in 1973. It is clear that the only reason that the whole contents of the earlier European application is to be considered to be part of the state of the art is to provide a mechanism for ensuring that the subject-matter disclosed in the earlier European patent application is subtracted from the claims of a later application. This is to ensure that the patent granted to the later applicant does not claim subject-matter disclosed in the earlier application. Although double patenting could be avoided by merely excluding the subject-matter claimed in the patent granted on the earlier application, the whole-contents approach goes broader than this and requires the later applicant to effectively exclude all subject-matter that could have been claimed in the earlier application. This approach is justified on the basis of expediency, because it avoids the need to wait for the earlier patent or patents to be granted before finalising the scope of the claims of the later application. However, it is important to appreciate that application of the whole-contents approach is not a true assessment of novelty. A parallel can be drawn with the “reverse infringement test” which is used in some jurisdictions, including Australia, for the assessment of novelty. The test is applied by considering whether carrying out the teaching of an earlier disclosure would inevitably result in infringement of a claim of a later filed patent. If there is infringement, then the earlier disclosure is considered to destroy the novelty of the claim. Accordingly, while the test applied is an infringement test, it is actually novelty which is being assessed. In a similar manner, applying the whole-contents approach to an earlier filed later published application is simply a mechanism for ensuring that any protection granted in respect of the later application does not encompass subject-matter taught in the earlier application. It is not an assessment of whether the second applicant made a novel contribution over the disclosure of the earlier application. Interestingly, the majority of the Standing Conference was of the opinion that any conflict between European patent applications filed on different dates should be limited to “the claims in the form in which they existed on the date on which the conflict arose”23.

Final Convention Ultimately, the only further amendment made to articles 52 and 54 before the EPC was finalised was renumbering them as articles 54 and 5624. Accordingly, in 1973 the working party, comprising Austria, Belgium, Britain, Denmark, Finland, France, Germany, Greece, Holland, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, Norway, Portugal, Spain, Sweden, Switzerland, Turkey and Yugoslavia, came to an agreement in relation to the way conflicting applications would be treated under the proposed European patent system. Of particular importance, a solution was found that treated earlier filed later published applications 22 CIPA JOURNAL

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the same regardless of who filed them, and did not require any protection against self-collision or terminal disclaimers.

Patent Law Treaty It appears from the records of WIPO that between June 1983 and June 199125 considerable work was carried out by a “committee of experts on the harmonization of certain provisions in laws for the protection of inventions” to conclude a proposed Patent Law Treaty. The preparatory work in respect of this Patent Law Treaty was completed in November 1990, and a diplomatic conference took place in The Hague from 3 to 21 June 1991 in an attempt to conclude this Treaty. Unfortunately, it is evident that agreement was not reached and the Treaty was not concluded.

Diplomatic conference in the Hague Although the draft Treaty considered at the diplomatic conference included in article 9 a provision which would implement “first to file” principles, article 13 left open the possibility that the whole contents of an earlier application which was published after the priority date or filing date could be treated as prior art for the purpose of determining whether the invention possessed an inventive step26. Article 13 also included a provision providing protection against self-collision in respect of such earlier applications, although a contracting party was free not to include protection against self-collision if the whole contents of the earlier applications was only considered to be prior art for the purposes of determining novelty. After the Chairman opened up discussion in relation to draft article 13, the Swedish delegate immediately proposed that the last sentence of paragraph (1)(a) in the text of article 13 be deleted27. This text allowed a contracting party to consider the whole contents of an earlier application for the purposes of determining inventive step. She then indicated that her delegation “was opposed to considering the whole contents of a former application to be prior art for the purpose of determining whether an invention satisfied the requirements of both novelty and inventive step (non-obviousness), instead of only for the purpose of determining the novelty of the invention.” She also stated that “the goal of harmonization would be defeated by the inclusion of optional provisions, such as the one found in the last sentence of sub-paragraph (a).” Interestingly, with the exception of the delegation of the US, all delegations supported the proposal of the delegation of Sweden for the deletion of the last sentence of paragraph (1)(a). The delegate from the US expressed the view that retaining the possibility to treat earlier filed but later published applications as prior art for the assessment of inventive step “was the only way to achieve true harmony in respect of the application of the principles of draft paragraph (1) as a whole.”28 He also indicated that “to achieve true harmonization, an earlier application must be considered as prior art from its filing date for the purpose of determining both novelty and obviousness. Such an approach www.cipa.org.uk

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would avoid patents being granted on inventions having only obvious differences over inventions claimed in earlier-filed patent applications.”29 None of the delegates expressed support for the stated position of the US. The German delegate explained that it would be particularly unfair to “deny patentability on the grounds of obviousness based upon prior art that the inventor could not have known about.”30 However, in response the US delegate countered that it was “equally unfair to apply it for the purposes of determining the novelty of that invention.” The US delegate stated that in both cases “it was secret prior art that was being applied and no distinction should be made in applying it also between novelty and non-obviousness.”31 This statement by the US delegate suggests a misunderstanding of the purpose of treating the whole contents of an earlier filed application as prior art for novelty only in a first-to-file system. As discussed above, the purpose is not to assess whether or not the second applicant has made a novel advance over the disclosure of the earlier application. Rather, the purpose is to ensure that a patent granted to the second applicant will not encompass subject-matter disclosed by the earlier applicant which may, or may not, eventually become the subject of a patent granted to the earlier applicant. In other words, the purpose is to avoid granting patents in respect of the same invention to different persons, and, as such, is not a matter of fairness. The novelty test, which involves treating information that has not been public as if it had been made public, is a simple method of determining what must be subtracted from the claims of the later applicant to avoid actual or potential double patenting. This point was made by the UK delegate who stated32: “the governing principle was that it was undesirable to have two patents for the invention granted to different persons. In such a case, the applicant who was the second should not get a patent. The question of obviousness raised different considerations. A rough justice was obtained by denying patentability to the second application which was novel over a first application, but there was no need to extend that rough justice to the question of obviousness.” The delegate from the European Patent Office supported the positions taken by the delegations of the UK and Germany. He also explained the importance of limiting the application of the “whole-contents” doctrine to the assessment of novelty to allow inventors to file later applications in respect of improvements over their initial inventions. The FICPI delegate made the point that experience with the “whole-contents” system under the EPC “had shown that such a system worked quite easily”. In the end the Chairman concluded that “with exception of the delegation of the United States of America, all delegations had supported the proposal of the delegation of Sweden which Volume 47, number 6

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thus would be part of the basis of further considerations in the diplomatic conference.”34 When the question of self-collision was discussed, it was pointed out by the Chairman that protection against selfcollision may not be needed if the last sentence of the paragraph (1)(a) was deleted. In the end, after much discussion, a decision was made by the Chairman to retain the protection against selfcollision in the draft Treaty in optional form35.

Substantive Patent Law Treaty In November 2000 WIPO’s Standing Committee on the law of Patents (SCP) decided to re-initiate work on harmonisation of matters of substantive patent law in an attempt to conclude a Substantive Patent Law Treaty (SPLT). One of the areas where the SCP was seeking to achieve harmonisation was in respect of the definition of prior art. It appears that the starting point for discussions was the 1991 draft Patent Law Treaty discussed above36. In the final draft of the SPLT discussed in a meeting of the SCP from 10 to 14 May 2004 the ability for earlier filed but later published applications to be considered as prior art for the purpose of assessing inventive step was removed. The consideration was limited to novelty37. Accordingly, discussions were clearly headed towards the adoption of a European style “whole-contents-novelty” approach to the treatment of conflicting applications. However, in 2006 efforts to conclude the SPLT within WIPO ceased.

Group B+ In view of the failure of the SCP to conclude the proposed SPLT, the Group B+ was established to further progress efforts to achieve international harmonisation of matters of substantive patent law. In 2014 a sub-group of B+ was set up to consider the potential for achieving international harmonisation in relation to a number of areas, one of which was conflicting applications. With the US moving to a first-inventor-to-file system, it was hoped that some of the issues which interfered with an agreement on the treatment of conflicting applications might no longer be applicable. In fact, it is now apparent from a review of the various documents relating to conflicting applications on the Group B+ website that, indeed, some progress has been made. However, it also appears that Group B+ is intent on developing a new hybrid scheme for the treatment of conflicting applications, rather than adopting a scheme presently in use, such as the European whole contents “novelty” approach, to achieve the best solution, or at least to achieve an acceptable compromise. More recently, Group B+ sought extensive feedback from the Industry Trilateral (IT3) group which was formed by representatives from industry bodies AIPLA, IPO, Business Europe and JIPA. The IT3 appears convinced that there must be some “distance” between the disclosure of an application and the claims of a later application38. However, the reasons why there must be such a “distance” have not been clearly articulated, JUNE 2018

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except that it seems to be an accepted fact within the IT3 that multiple patents granted in respect of closely related inventions is undesirable.

The Japanese “enlarged novelty” system One potential compromise position considered by Group B+ is the Japanese so-called “enlarged novelty” approach. Under the Japanese enlarged novelty approach the claims in a later application must be amended to exclude subject-matter which is substantially identical to subject-matter disclosed in an earlier but unpublished application. The Japanese system also includes protection against self-collision in such circumstances. However, if one examines the Japanese provisions, they appear to be drafted in a manner consistent with the European “whole-contents-novelty” approach to the treatment of conflicting applications. Article 29-2, which is the basis for the expanded novelty test, actually only requires the exclusion of subject-matter which is “identical” to subject-matter disclosed in the earlier application39. Article 29-2 does not use the expression “substantially identical”. Similarly, the double patenting provisions set out in article 39 also use the word “identical”, not “substantially identical”40. It is therefore evident that the “substantial identity” test is not statutory, but rather has been derived from jurisprudence and practice of the Japanese Patent Office (JPO). Clear problems exist with the Japanese approach to the treatment of conflicting applications and double patenting. For example, a claim directed to the free base of a pharmaceutically active agent is regarded as being “substantially identical” to a claim to salts of that active agent. Accordingly, in Japan it is not possible to pursue a first patent directed towards the free base of an active agent and then file a divisional application to obtain protection for salts. By focusing on the technical concept underlying the claims instead of claim scope the JPO considers the claims to be identical in accordance with article 39, even though the claims do not overlap at all. In most other jurisdictions, with the possible exception of Canada, there will be no difficulty in pursuing this type of divisional strategy. Even in the US a terminal disclaimer could be offered to obtain the second patent. The protection against self-collision results in a further anomaly. This protection allows an applicant in Japan to file two identical applications 18 months apart and, depending on whether or not any intervening prior art is identified, decide to continue with the later filed application and gain 18 months extra term, while allowing the earlier application to lapse. The protection against self-collision available in the US can also lead to this anomaly.

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original filing date, and which incorporate a “whole-contentsnovelty” approach to the treatment of conflicting applications. All patents, including any divisional or continuation-type applications, will expire at the same time allowing third parties to exploit the claimed inventions from that date onwards. USstyle patent term adjustments that have been springing up in the laws of countries entering into free trade agreements with the US have complicated the calculation of patent term, but these adjustments, where they occur, can be largely ignored since they do not generally result in a large range of expiry dates within a particular patent family. Any additional patents obtained by the patentee for “novel” modifications of those inventions will not include the subjectmatter described and claimed in the earlier filed patents, and will in any event expire within 18 months of the expiry date of the earlier patents. The introduction of a terminal disclaimer system to reduce the term of these later filed patents by less than 18 months is not justifiable, and would add unnecessary complexity to an otherwise simple and straightforward system. The terminal disclaimer system in the US also requires common ownership of the earlier and later applications to exist at the time the terminal disclaimer is requested, and to be maintained throughout the life of the patents. However, there is no evidence that allowing patentees to assign patents within a particular family to different parties is an actual, rather than perceived, problem. Again, requiring applicants to maintain common ownership of related applications would introduce an unnecessary complication into an otherwise simple international system for the treatment of conflicting applications.

Terminal disclaimers The issue of terminal disclaimers has been discussed within Group B+. However, terminal disclaimers are not required in patent systems that provide for a 20-year term counted from the 24 CIPA JOURNAL

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PCT applications Group B+ has also given consideration to whether PCT applications which do not enter national phase in a particular jurisdiction should be deemed to be part of the state of the art for that jurisdiction. However, if the internationally harmonised system for treating conflicting applications is based on a desire to prevent actual or potential double patenting, then there is no basis for recognising in a jurisdiction earlier filed PCT applications that do not enter national phase in that jurisdiction. After the national phase deadline has expired, such applications will lose their potential to conflict with a later filed application. Unlike the indeterminate, and potentially lengthy, delays in finalising the claims of earlier filed applications in a “prior-claiming” system which justified the change in Europe to a “whole-contents-novelty” system, the delay in entering national phase is relatively short and predictable. In any event, an examiner considering a later filed application more than 30 or 31 months after its earliest priority date would be readily able to determine whether an earlier filed PCT application had entered national phase in that jurisdiction. Accordingly, it is difficult to justify treating earlier filed PCT applications as part of the state of the art unless national phase has been entered in the particular jurisdiction.

What is the preferred approach? The best approach for dealing with conflicting applications in a first-to-file system is likely the simple and straight forward European approach, whereby the whole contents of an earlier filed but later published application must be subtracted from the claims of a later application. Protection against selfcollision and terminal disclaimers are not required under this framework. The B+ sub group on patent harmonisation set out some agreed principles regarding conflicting applications. These agreed principles were as follows: i. the grant of multiple patents for the same invention in the same jurisdiction should be prevented; ii. the patent system should allow for the protection of incremental inventions while ensuring that patent rights are not unjustifiably extended; iii. any system which allows incremental inventions to be patented should: a. balance the interests of inventors to protect incremental improvements on their own inventions with the interests of third parties to operate in the same field; and b. promote innovation and competition. The European approach best satisfies these agreed principles. Volume 47, number 6

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The European approach is by far the simplest approach devised for resolving conflicts with earlier filed but later published applications. Applying a novelty assessment to the earlier application provides a simple mechanism for identifying the subject-matter which must be subtracted from the later claims. There would also be no requirement for examiners to raise or justify inventive step objections based on such earlier applications, and applicants would not have to respond to such objections. Because all applicants are treated the same, there is no need for protection against self-collision. These are very desirable features of any system for dealing with conflicting applications. Novelty is a straight-forward test and that can be applied relatively consistently across jurisdictions. While the approach involves subtraction of more subject-matter from the later claims than required to avoid double patenting, it does not require subtraction of “equivalents”, which would complicate the analysis. However, a fair balance between the rights of the two inventors is achieved, and acknowledgment is made that both have made inventions over the actual state of the art. At the same time double patenting is avoided. The need to wait for the grant of claims in respect of the earlier application, as required by a prior-claiming approach, is also avoided. Of the various options proposed within Group B+, the European approach appears to be the one that best balances the interests of all parties. Group B+ may not have been correct in identifying the two “extreme” positions for the treatment of conflicting applications. While one extreme is applying an inventive step assessment to the earlier filed but later published application, the other extreme is not the European approach as suggested by Group B+. Rather, the other extreme is not applying the fiction that the unpublished earlier application is prior art, allowing the second application to proceed with its full contents, possibly limited to ensure that the later application does not include claims identical in scope to claims in the earlier application. The prior-claiming approach is less extreme than the European approach, only requiring the later applicant to delete from their claims the subject-matter which is the subject of claims granted in respect of an earlier filed but later published application. Accordingly, the European approach which requires the later application to subtract more subjectmatter than would be required to avoid double patenting could be considered to be a fair intermediate position. Treating earlier unpublished applications as “prior art” is a fiction. Since the US abandoned its first-to-invent system, there is no longer any such thing as “secret” prior art. In a first-to-file system, earlier applications are only treated as prior art so that a prior art test can be applied to determine what subject-matter must be subtracted from the second application. In this regard, expressions such as “secret prior art” and “whole contents novelty” are misleading. The inventive step, or obviousness, test is based on a desire to JUNE 2018

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prevent the patenting of things which would be obvious to those in the field at the relevant date due to their knowledge of their art. The earlier filed but unpublished applications are not known to the art at the priority date of the second application, and accordingly it is inappropriate to judge the contribution made by the second applicant as if he or she was aware of the contents of such an earlier application. This represents an unjustified and unwarranted extension of the fiction that the earlier application is prior art. The European approach avoids extending the fiction beyond what is arguably necessary to avoid double patenting, while allowing examination of applications to be carried out in an expedient manner. The European approach acknowledges that there may not be much difference between what has been accomplished by the first and second applicants. In fact, in many cases the second applicant could be the first inventor. In a first-to-file system it does not matter who conceived the invention first. Both first and second applicants have made substantially the same invention over the same prior art. Both have presumably carried out searches and formed the view that their inventions are novel and inventive and likely to receive patent protection. Both applicants have trusted the patent system, paid their attorney fees and official fees and filed their patent applications. They have also both fulfilled their end of the patent bargain by committing full and enabling disclosures of their inventions

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to the public, the second applicant being unaware of any reason why he should consider withdrawing his application prior to publication. If both filed PCT applications, then both trusted the ISR and IPRP, and for the second applicant, it is unlikely that the first application will have been identified as it is unlikely to have been published at the time the international search was carried out. Both applicants could well have invested in their businesses and the development of their inventions in the belief that they will receive patent protection. Both applicants have spent considerable sums of money entering national phase in respect of their PCT applications. The only significant difference is that the first applicant filed their application before the second applicant. In some cases, the second applicant will only learn of the first application during an opposition or revocation action, unless during national examination a top-up search was conducted to reveal the existence of the earlier application. The European approach minimises the negative consequences for the second applicant in these circumstances by only requiring the second applicant to subtract subject-matter actually disclosed by the first applicant. Applying an inventive step assessment to the first application will mean that the second applicant is in the same position as if the earlier application was published at the time the second application was filed. This favours the

Notes and references 16. http://aei.pitt.edu/8464/1/8464.pdf p.6 1. http://www.wipo.int/patent-law/en/draft_ splt.htm

17. http://aei.pitt.edu/8464/1/8464.pdf p.12

2. https://www.epo.org/news-issues/issues/ harmonisation/group-b-plus.html

19. http://aei.pitt.edu/41212/1/A5263.pdf p.62-66

3. https://ladas.com/education-center/a-briefhistory-of-the-patent-law-of-the-unitedstates-2/

18. http://aei.pitt.edu/8708/1/8708.pdf p.32 20. http://aei.pitt.edu/41191/1/A5243.pdf 21. http://aei.pitt.edu/41191/1/A5243.pdf p.140 22. http://aei.pitt.edu/41191/1/A5243.pdf p.162

4. https://archive.org/details/ patentsdesignsa01britgoog

23. http://aei.pitt.edu/41191/1/A5243.pdf p.164

5. http://www.legislation.gov.uk/ukpga/ Edw7/7/29/contents

25. ftp://ftp.wipo.int/pub/library/ebooks/ wipopublications/wipo_pub_351e.pdf

6. http://www.wipo.int/edocs/trtdocs/en/coe/ trt_coe.pdf

26. ftp://ftp.wipo.int/pub/library/ebooks/ wipopublications/wipo_pub_351e.pdf p.19-21

7. https://rm.coe.int/16807296c5

27. ftp://ftp.wipo.int/pub/library/ebooks/ wipopublications/wipo_pub_351e.pdf p.354

8. https://rm.coe.int/1680729664 9. https://rm.coe.int/1680729668 10. https://rm.coe.int/168072968c 11. https://rm.coe.int/1680729741 12. https://rm.coe.int/16807296ad 13. http://www.wipo.int/edocs/trtdocs/en/coe/ trt_coe.pdf 14. http://aei.pitt.edu/8464/1/8464.pdf p.5

24. http://aei.pitt.edu/8817/1/8817.pdf

28. ftp://ftp.wipo.int/pub/library/ebooks/ wipopublications/wipo_pub_351e.pdf p.355 29. ftp://ftp.wipo.int/pub/library/ebooks/ wipopublications/wipo_pub_351e.pdf p.355

32. ftp://ftp.wipo.int/pub/library/ebooks/ wipopublications/wipo_pub_351e.pdf p.356 33. ftp://ftp.wipo.int/pub/library/ebooks/ wipopublications/wipo_pub_351e.pdf p.357 34. ftp://ftp.wipo.int/pub/library/ebooks/ wipopublications/wipo_pub_351e.pdf p.358 35. ftp://ftp.wipo.int/pub/library/ebooks/ wipopublications/wipo_pub_351e.pdf p.361-362 36. http://www.wipo.int/meetings/en/details. jsp?meeting_id=4203 37. http://www.wipo.int/meetings/en/details. jsp?meeting_id=5084 38. https://www.epo.org/news-issues/issues/ harmonisation/group-b-plus.html Policy and Elements for a Possible Substantive Patent Harmonization Package (IT3) 39. http://www.japaneselawtranslation.go.jp/law/ detail/?id=42&vm=04&re=01 (Article 29-2)

30. ftp://ftp.wipo.int/pub/library/ebooks/ wipopublications/wipo_pub_351e.pdf p.355

40. http://www.japaneselawtranslation.go.jp/ law/detail/?id=42&vm=04&re=01 (Article 39)

31. ftp://ftp.wipo.int/pub/library/ebooks/ wipopublications/wipo_pub_351e.pdf p.356

41. http://www.epo.org/law-practice/case-lawappeals/pdf/g150001ex1.pdf

15. http://aei.pitt.edu/8512/1/8512.pdf p22

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first applicant more than can be reasonably supported. The second applicant should at least be able to obtain protection in respect of those features which contribute novelty over the invention disclosed by the first applicant. If the novel features provide an embodiment that falls within the scope of the claims of the first applicant, then there may be an opportunity for licensing, or cross licensing between the first and second applicants. Where the novel features provide an embodiment that falls outside the scope of the claims of the first applicant, there may be some area for the second applicant to exploit the invention without infringing the patent granted to the first applicant. This represents an acceptable compromise position. It is also important to take into account that denying the second applicant protection for the invention disclosed in their patent application, including their novel contributions over the first applicant’s disclosure, will allow the first applicant to adopt and use those contributions, incorporating these into their invention without needing to compensate the second applicant in any way. This is because the second applicant has published details of their invention without obtaining any protection for it. Accordingly there is no impediment to the first applicant adopting any or all useful improvements or modifications disclosed by the second applicant. It is advantageous to both the first and second applicants that there is no gap or “distance” between the protection they receive. The gap or distance referred to by the IT3 in their elements paper actually represents subject-matter enabled by the second applicant, but for which the second applicant does not receive protection. Any additional subject-matter that goes beyond novelty which must be subtracted from the second applicant’s claims will represent subject-matter effectively dedicated to the public, being available to third parties to exploit without answering to the first or second applicant. There is no need to require “distance” between the protection granted to the first and second applicants provided double patenting is avoided. It seems the IT3 has not given enough consideration to the consequences of requiring a distance or gap between the protection afforded to the two applicants. Although the European system allows the granting of patents in respect of incremental inventions, and there is no actual limit on the number of such patents that any given applicant may obtain, there is no evidence that this has caused any particular problem which requires an adjustment of the European approach to the assessment of conflicting applications. Similarly, there appears to be no credible evidence that the “whole-contents-novelty” approach as applied to the applications of different applicants has caused undue difficulties for users of the system. If there is indeed a problem in a particular jurisdiction with the number of closely related patents being granted to any given applicant, or to multiple applicants, then perhaps Volume 47, number 6

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other mechanisms might be employed to address such problems in those jurisdictions. For example, it may be that problems could be resolved by increasing the fees associated with filing and prosecuting patent applications, or renewal fees. It may also be possible to introduce rules dictating the conduct of litigation to ensure that it is carried out in good faith. Requiring “distance” between patents is an unnecessary component of an international approach to dealing with conflicting applications. Provided it is possible to fully recognise multiple and partial priorities within a single claim, in accordance with the principles of the decision of the Enlarged Board of Appeal in G1/15 , there should be no need to include any protection against self-collision. This represents another advantage of the European system. For the reasons set out above the current European system for treating conflicting applications meets all the agreed principles established by the B+ sub group. Accordingly, Group B+ should look more closely at the benefits (including simplicity) of the European whole-contents approach as a model system for international harmonisation of the treatment of conflicting applications. The approach also has the advantage of being tried and tested in a major jurisdiction. Most practitioners and users of the international patent system will be familiar with this system, and as such implementation as an international standard should be easy. Such a system also acknowledges the reality that so-called “secret prior art” is not prior art at all in a first-to-file system. Michael Caine is a Principal of Davies Collison Cave Pty Ltd, based in Melbourne.

List of abbreviations AIA – America Invents Act CNIPA – Committee of National Institutes of Patent Attorneys COPRICE – Comité pour la Protection de la Propriété Industrielle dans la Communauté Économique Européene CPCCI – Standing Conference of the Chambers of Commerce and Industry of the European Economic Community EPC – European Patent Convention SCP – WIPO’s Standing Committee on the Law of Patents SPLT – Substantive Patent Law Treaty WIPO – World Intellectual Property Organization

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US update: improper Markush grouping A new (old) rejection puts applicants between a rock and a hard place: MPEP recently revised to include improper Markush rejection. By Kassandra M. Officer, Timothy P. McAnulty, and Erin M. Sommers.

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n January 2018, the US Patent and Trademark Office (USPTO) published its latest revision of the Manual of Patent Examining Procedure (MPEP). With this revision, the USPTO introduced a new (old) ground of rejection – improper Markush grouping – which authorizes examiners to reject a claim for containing an improper listing of alternatives1. This rejection last had its own MPEP section in 1995, but was eliminated with the first revision of the Sixth Edition of the MPEP2. This new-old rejection has the potential to put patent applicants in a difficult situation, requiring them to carve up their patent claims into smaller chunks for examination or concede that the claimed alternatives are not patentably distinct. The first alternative is costly upfront, potentially requiring the filing of several applications to have the full scope of a claim examined. The second alternative could be detrimental down the line when, for example, a patent applicant appreciates the real value of one alternative over the other during testing after the application is filed. A “Markush” claim, named after the applicant in Ex parte Markush, recites a list of alternatively useable elements3. In Markush, the Commissioner of Patents held that: “where no generic expression exists by which a group of alternative elements can be claimed [,] applicants are permitted to recite the elements in the alternative4.” In the chemical arts, Markush language is frequently used to claim various substituents. For example, the MPEP provides the example R-OH, where R is methyl, ethyl, propyl, or butyl, leading to a claim that covers methanol, ethanol, propanol, and butanol. Other examples may include alternative process steps, or, as the MPEP notes, means for fastening a diaper, e.g., a hook, a loop structure, a snap, and a buckle.

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In this latest iteration, the MPEP instructs examiners to reject a Markush claim as containing an improper Markush grouping if the members of the grouping do not share a single structural similarity or a common use5. According to the MPEP, members of a Markush grouping share a single structural similarity when they belong to the same physical, chemical, or art-recognized class6. Members share a common use when they are disclosed in the specification or known in the art to be functionally equivalent in the context of the claimed invention7. The shared structural feature and common use must be considered on the basis of the claimed subjectmatter as a whole and not simply on the alternatives in the Markush grouping8. Thus, in the example of R-OH above, the two-prong analysis is conducted based on the similarity or common use of the parent alcohols – methanol, ethanol, propanol, and butanol – and not on the R group substituent of methyl, ethyl, propyl, or butyl. In this case, it may be a distinction with no real difference, but in the case of more complex chemical compounds, considering the compound as a whole may provide a viable option for overcoming the rejection. For example, in Harnisch, a case cited in the MPEP and discussed in more detail below, the appellate court held that claims to coumarin dye stuffs were proper Markush claims where each of the claimed compounds had a common coumarin core with variable substituents and the common use of being dyes. According to the MPEP, rejections based on an improper Markush grouping should be made in the first action on the merits after presentation of a claim with an improper Markush grouping9. The MPEP also instructs that if the examiner determines that one or more claims include an improper Markush grouping, the examiner should also require www.cipa.org.uk

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the applicant to elect an alternative or group of indistinct alternatives for search and examination (i.e., an election of species)10. Notably, the examiner need not examine the full scope of the claim that falls outside a proper Markush grouping11. Thus, once an examiner believes that a Markush group is improper, the examiner can confine the search and examination of the presented claim to less than its full scope, giving the USPTO incredible latitude in how to examine a claim with purportedly improper Markush groups. In addition, the MPEP instructs examiners to include suggestions for overcoming the rejection12. In particular, the MPEP instructs examiners to suggest a proper Markush grouping based on the specification or to suggest that the applicant set forth each alternative (or grouping of patentably indistinct alternatives) in a series of independent or dependent claims, which could then presumably be properly restricted under restriction practice13. The MPEP, however, cautions examiners not to suggest any grouping that would not satisfy the written description requirements of 35 U.S.C. §112(a)14. The MPEP indicates that an improper Markush grouping is a “rejection on the merits and may be appealed to the Patent Trial and Appeal Board15.” The current MPEP and resulting USPTO practice seems contrary to past guidance from its review court, which rebuked the effective practice of refusing to examine the

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full scope of a single claim. In In re Weber, the United States Court of Customs and Patent Appeals (CCPA, and precursor to the Federal Circuit) reversed and remanded the USPTO’s rejection of claims on the basis of “improper Markush claims and misjoinder under 35 U.S.C. §12116.” Misjoinder relates to the ability of the USPTO to require restriction between “independent and distinct” inventions. Here, the examiner rejected a single claim because it “embraced 24 enumerated independent and distinct inventions” and finally rejected the claims “as being improper Markush claims and for misjoinder under 35 U.S.C. §12117.” On appeal, the CCPA directed its opinion to whether the rejection was proper under §121 because the reasoning of the USPTO “shows that the analysis of the ‘improper Markush claims’ rejection was to be supportive of the rejection under §121 rather than alternative to it18.” The CCPA then held “that a rejection under §121 violates the basic right of the applicant to claim his invention as he chooses19.” In other words, while the USPTO has the authority to restrict the examination of an application to a single invention between claims, the CCPA held that it does not have an authority to reject a claim by refusing to examine the full scope of the claim as originally presented. The CCPA noted that: “As a general proposition, an applicant has a right to have Each claim examined on the merits. … If, however, a single claim is required to be divided up and presented in several applications, that claim would never be considered on its merits. The totality of the resulting fragmentary claims would not necessarily be the equivalent of the original claim. Further, since the subgenera would be defined by the examiner rather than by the applicant, it is not inconceivable that a number of the fragments would not be described in the specification20.” Although the CCPA remanded to the Board to consider the issue of whether the rejection was proper on the basis of improper Markush grouping, in a concurring opinion, Judge Rich asserted that it was his view that the USPTO “created a new kind of ‘improper Markush’ rejection based on 35 U.S.C. §121 which we are reversing21.” The new (old) rejection outlined in the current MPEP does not appear to be that different from what the CCPA struck down years ago, other than the USPTO identifying it as a “rejection on the merits.” Until this new (old) rejection finds its way back to the Federal Circuit, there may be another way to address an improper Markush rejection. There does not appear to be any federal court that has ever invalidated a claim based on an improper Markush grouping. In In re Harnisch, for example, the US Court of Customs and Patent Appeals (CCPA)22 reversed an examiner’s improper Markush grouping rejection23. In Harnisch, the claims were directed to coumarin compounds having the general formula:

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The claimed compounds were useful as dyestuffs24. The examiner rejected the claims under 35 U.S.C. §121 as containing an improper Markush grouping25. Recognizing that 35 U.S.C. §121 “does not form the basis for rejection of a claim26,” the Board reversed the rejection under 35 U.S.C. §121 and issued a new rejection under 37 C.F.R. §1.196(b) on the “judicially created doctrine” of improper Markush grouping27. According to the Board, the compounds were “so dissimilar and unrelated chemically or physically that it would be repugnant to accepted principles of scientific classification to associate them together as a generic group28.” While the CCPA “recognized the possibility of such a thing as an ‘improper Markush grouping,’” it acknowledged that improper Markush grouping does not have a specific

Notes and references 1. MPEP §706.03(y), Ninth Edition, Rev. 8, January 2018.

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statutory basis and that an applicant has the right to define what it regards as the invention as it chooses, so long as its definition is not indefinite or lacking written description or enablement support29. Reasoning that all of the claimed compounds were dyestuffs sharing a common coumarin core, the CCPA reversed the Board’s rejection30. According to the CCPA, the claimed compounds all belonged to a subgenus, as defined by the applicant, which was not repugnant to scientific classification31. The Markush grouping was therefore proper32. The USPTO’s own examples in the current MPEP section confirm the absence of precedent33. In fact, the only example of an improper Markush grouping that the USPTO provides in the MPEP is a hypothetical example “[b]ased [o]n PCT Search and Examination Guidelines Example 2334.” Given the limited precedent, it remains to be seen whether the Federal Circuit will affirm a USPTO rejection on this basis. Applicants should nonetheless keep the potential new (old) rejection in mind when drafting patent claims. To avoid the rock-and-hard place conundrum, applicants may want to draft their specification and claims with an eye toward restriction practice instead of being required to dissect a larger genus claim as an alleged improper Markush group. Kassandra M. Officer is an associate, Timothy P. McAnulty and Erin M. Sommers are partners in the Washington, DC office at Finnegan. See more details at www.finnegan.com.

13. See MPEP §803.02 (Markush claims may be subject to election of species but not restricted). See also In re Weber, 580 F.2d 455 (C.C.P.A. 1978), infra.

single claim or compelling its replacement by a plurality of narrower claims before examination on the merits would be made). 27. Harnisch, 631 F.2d at 717-18.

14. MPEP §706.03(y), Ninth Edition, Rev. 8, January 2018.

29. Id. at 721.

15. Id.

30. Id. at 722.

3. Ex parte Markush, 1925 C.D. 126 (Comm’r Pat. 1924)

16. Weber, 580 F.2d at 458.

31. Id.

17. Id. at 456.

32. Id.

4. Id.

18. Id. at 458.

5. Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications (“Supplementary Guidelines”), 76 Fed. Reg. 7162, 7166 (Feb. 9, 2011).

19. Id. at 458-59.

33. MPEP §706.03(y), Ninth Edition, Rev. 8, January 2018 (citing In re Harnisch, 631 F.2d 716 (CCPA 1980) (noting that “[t]he CCPA reversed the Board’s decision and held that the Markush grouping was proper”); Ex parte Dams, Appeal No. 1997-2193, 1997 WL 33123171 (BPAI 1997) (noting that “[t] he Board stated that the examiner erred by failing to treat the compounds of the claims as a whole”); Ex Parte Hozumi, 3 USPQ2d 1059 (BPAI 1984) (noting that “[t]he Board reversed the examiner’s improper Markush grouping rejection of claim 1, once again relying on the Harnisch decision”)).

2. Compare MPEP §706.03(y), Sixth Edition, January 1995, with MPEP §706.03, Sixth Edition, Rev. 1, September 1995.

6. MPEP §706.03(y), Ninth Edition, Rev. 8, January 2018. 7. Id.

20. Id. at 458. 21. Id. at 459, 461. 22. The US Court of Customs and Patent Appeals was abolished in 1982 when its judges and jurisdiction were transferred to the new US Court of Appeals for the Federal Circuit.

8. Id.

23. In re Harnisch, 631 F.2d 716 (CCPA 1980).

9. Id.

24. Id. at 716-17.

10. Id.

25. Id. at 717.

11. Id.

26. See In re Haas, 580 F.2d 461, 464 (CCPA 1978) (holding that 35 U.S.C. §121 may not be used as the basis for rejecting a

12. MPEP §706.03(y), Ninth Edition, Rev. 8, January 2018.

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28. Id. at 718.

34. MPEP §706.03(y), Ninth Edition, Rev. 8, January 2018.

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State Emblems Brexit Studies lands the EUIPO in hot water: When is a flag not a flag? By Jennifer McDowall

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ertain national symbols, such as flags, (which have been notified to the relevant authorities) are given special status in relation to trade mark applications in the UK and EU intellectual property offices. Trade mark applications containing those national symbols may be rejected unless consent has been obtained from the appropriate national authority. In this case, the “composite” flag challenged the EUIPO: the EUIPO objected that inclusion of a part of a flag in the trade mark amounted to use of a prohibited state emblem, an objection which was overruled on appeal. Brexit studies should be a hot topic – they are also getting the EUIPO into hot water. Birmingham City University applied for a trade mark for its Centre for Brexit Studies, amongst other things for education and instructional services (one assumes about Brexit). The mark incorporated the top left of the Union Jack flag, and bottom right of the EU flag. The EUIPO rejected the application on the basis that it “contains elements that consist of partial representations of flags protected under article 6ter of the Paris Convention” (under EUTMR article 7(1)(h)), and authorization of the relevant authorities had not been submitted. The examiner maintained that article 7(1)(h) EUTMR applied to trade marks which are identical to State emblems or “which are to a certain extent similar to them”, so that the right of the State to control the use of the symbols of its sovereignty is not adversely affected, and so that the relevant public is not misled about the origin of the goods and services. The latter was in spite of argument that the University’s name was the dominant element, such that there is little likelihood of confusion, and that a combination of the Union Jack and the EU flag is commonly used to represent Brexit, the EUIPO maintained the objection. Volume 47, number 6

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The University appealed. At this point consent had in fact been obtained from the ‘relevant authorities’ (so that the registration would have been allowed to proceed in any event), with the UK Chief Vexillologist commenting that “technically [the sign] is not even a Union Flag as it only shows 50% of the design”. Nevertheless, the Board of Appeal also found that neither the Union Jack nor the EU flag were included in the sign, but instead the sign contained a flag that does not exist and which no State in the world bears. The Board pointed out that article 6ter(1) (a) Paris Convention refers to ‘flags as elements of a trade mark’, and not to ‘elements of flags’, and that the examiner was incorrect in stating that this provision precludes the registration of trade marks when they are ‘to a certain extent similar’ to a State emblem. The Board considered the correct test to be a far stricter one: ‘the protection extends only to the emblem itself and to its imitation from a heraldic point of view’. In heraldic terms, the protected flag must be imitated as a whole. As such, the partial flags depicted in the disputed trade mark were not imitations of either flag. The Board also pointed out that the last sub-clause of article 6ter(1)(c) Paris Convention states that the provisions shall not apply where the sign does not suggest to the public that a connection exists between the organization concerned and the State emblem, and that the wording ‘University’ and ‘Centre for Brexit Studies’ clearly indicates no such connection. The Board upheld the appeal and annulled the contested decision. Jennifer McDowall is a Trade Mark Manager for Mills & Reeve LLP in Cambridge. JUNE 2018

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Patent decisions Infringement | Validity | Construction | Obviousness | Sufficiency (1) Anan Kasei Co. Ltd (2) Rhodia Operations S.A.S. v Molycorp Chemicals & Oxides (Europe) Ltd [2018] EWHC 843 (Pat); 23 April 2018 Mr Roger Wyand QC This decision relates to infringement proceedings brought by Anan Kasei Co. Ltd (now named Solvay Special Chem Japan, Ltd, “Solvay”) and Rhodia Operations S.A.S (“Rhodia”) against Molycorp Chemicals & Oxides (Europe) Ltd (now named Neo Chemicals and Oxides, “Neo”). The proceedings concerned Solvay’s European Patent No. 1435338 (“the Patent”) for which Rhodia was the exclusive licensee in respect of at least the UK and German designations. Solvay commenced these proceedings on 13 April 2016, alleging that Neo had infringed the UK and German designations of the Patent. Neo counterclaimed that Patent was invalid for obviousness and insufficiency. The Patent related to a method for the production of ceric oxide (also known as ceria) and ceric oxide catalysts for exhaust gas clarification. Ceric oxide containing materials are commonly used as co-catalysts for purifying vehicle exhaust gas. They have the property of absorbing oxygen under an oxidizing atmosphere and desorbing oxygen under a reducing atmosphere. This property enables them to purify noxious components in exhaust gases such as hydrocarbons, carbon monoxide and nitrogen oxide. Claim 1 of the Patent claimed a ceric oxide having a specific surface area of not smaller than 30.0 m2/g when subjected to calcination at 900°C for five hours. To function efficiently in exhaust purification devices, ceria oxide materials needed to have a high specific surface area at low temperatures and to maintain a high specific surface area at the high temperatures encountered in vehicle exhaust systems. In the prior art, ceric oxide had been used in combination with other oxides to stabilize its surface area at high temperatures.

Inventive step Neo alleged that the claims were obvious over US Patent No. 5712218 (“Chopin”) together with common general knowledge. Chopin related to mixed cerium/zirconium oxide catalysts having high/stable specific surface areas. There was conflict between the two parties concerning the identity of the skilled person and the common general knowledge. Following cross examination of the witnesses of expert and fact, the judge agreed with the claimants that the skilled person was someone with a particular interest in purifying vehicle exhaust gas. In terms of the common general 32 CIPA JOURNAL

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PATENTS: UK

knowledge, the judge found that the use of mixed oxides, particularly cerium zirconium mixed oxides to increase thermal stability formed part of the common general knowledge. The judge acknowledged the inventive concept of the invention to be the production of a ceria product that maintains a high specific surface area after being subjected to high temperatures. After considering the expert evidence from both sides, he identified the main differences between the inventive concept and the disclosure of Chopin. In particular, he noted that the Patent was directed to producing pure ceria with properties previously only obtained using mixed oxides whereas Chopin was directed at producing mixed oxides and not pure oxides. In addition, he noted that although Chopin disclosed the production of pure ceria by the method used to produce mixed oxides, it was only for the purpose of proving the crystal structure of the mixed oxides, and did not give the concentration of the starting solution or the relevant properties of the ceria produced. The judge concluded that it would have not been obvious to the skilled person to ignore Chopin’s teaching relating to mixed oxides and to use it to make pure ceria, or to adapt the method of Chopin so as to achieve a product within claim 1 of the Patent.

Sufficiency Neo advanced two main arguments in relation to insufficiency. The first concerned the requirement in claim 1 that a ceric oxide was an oxide “consisting essentially of ceric oxide”. Neo argued that as the specification did not contain any direction or explanation as to the meaning of the term “consisting essentially of ceric oxide”, the skilled person would have been unable to implement the invention or determine whether he was working with the scope of the claim. The judge identified two issues, the first being the issue of construction as to what did “consisting essentially of ” mean, and the second being whether that was sufficient on the facts of this case. The judge agreed with the claimants that the settled approach of the EPO as established in T1730/09 should be followed and that the term “consisting essentially of ” should be construed as meaning that apart from the components which were mandatory (i.e. the ceric oxide in this case), no other components could be present in the composition which materially affected the essential characteristics of the composition.

The UK patent court case reports are prepared by John Hull, Anna Hatt, Jonathan Markham, Matthew Ng and Sarah-Jane Poingdestre of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.

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PATENTS: UK • IPO

He then considered how to determine whether the product consisted essentially of ceric oxide. Neo argued that in order to do this, it was necessary for the skilled person to know the effect each of the “impurities” in the ceric oxide would have on the surface area and that this posed a problem since the effect of certain elements depended on the amount present and the method of producing the product. The judge believed this to be a “fuzzy boundary” rather than true insufficiency. He stated that there was often a limit at the edge of a claim where the precise limit was difficult to ascertain but that this did not lead to a finding of invalidity. Neo’s second insufficiency argument was that the breadth of the claim exceeds the technical contribution of the invention, referring to the principles set out by Lord Hoffmann in Biogen v Medeva [1997] R.P.C. 49. Neo argued that the claims of the patent were so called “free beer” claims as they were framed

simply by reference to known desirable properties of a product. The judge disagreed with Neo’s position, and found the claims to be sufficient.

IPO decisions

images more generally. The hearing officer therefore construed the claim as relating to a method that was suitable for a pathologist to carry out a diagnosis, in which images were displayed as claimed. Continuing to step two of the Aerotel test (consider the actual contribution), the examiner argued that the contribution was nothing more than software for presenting images in the manner claimed. The applicant argued that the contribution should not be assessed purely in terms of what was defined in the claims, but should include results of the invention, which related to an improved apparatus that allowed a pathologist to spend less time in coming to a diagnosis. The hearing officer disagreed with the examiner, as the contribution was independent from the application from which it was to be used. Just because virtual slide viewers were known did not make the contribution simply software for presenting general images. However, some of the advantages put forward by the applicant were those that arose when using any virtual microscope, and the contribution did not go so far as to encompass a new clinical insight or improved diagnostic method. The invention did not therefore make a contribution in medical terms regarding the clinical analysis a pathologist must undertake to make a diagnosis. The contribution was therefore regarded as an improved way of displaying virtual slides in a virtual microscope, which allowed a pathologist to work more efficiently. The applicant argued that this contribution was not excluded because it related in substance to a method of diagnosis, but the hearing officer considered that the contribution was in no sense

Patentability: section 1(2) Ventana Medical Systems, Inc. BL O/209/18 3 April 2018 The application related to a computer-implemented method of viewing microscope slides for a pathologist to carry out a diagnosis of a case, in which all the slides from a particular subject were displayed in a first region of an interface, a second region displaying one of the slides at higher magnification and a third region showing the same image at an intermediate magnification, the view being controllable by a user such that an area of interest from a slide in the first region could be shown at higher magnification in the second and third regions. The examiner objected that the claimed invention was excluded for being the presentation of information and a computer program as such. The examiner’s view, following step one of the standard Aerotel analysis (construing the claim), was that the virtual slide images in the claim were little more than standard computer graphic image files, and the fact that the slides were pathology slides had little or no effect on how they were stored or handled by the computer. The claimed invention should therefore, in the examiner’s view, be construed as relating to a method of displaying images generally, and not limited to a pathology context. The applicant argued that this construction omitted important features of the invention because claim 1 defined a method for use by a pathologist to carry out a diagnosis. The hearing officer agreed with the applicant, and considered that claim 1 should not be construed more broadly as a method for viewing images in general because this departed too far from the wording of the claim. There was also almost nothing in the description that lent weight to the view that the invention was directed to display of Volume 47, number 6

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Infringement Rhodia carried out tests on samples of Neo’s alleged infringing commercial products and concluded from these tests that the samples “consisted essentially” of ceric oxide. Neo challenged this conclusion on the basis that Rhodia’s expert witness had not taken into account any of the impurities listed on the certificates of analysis and that the analysis methods could not detect all elements. On the balance of probabilities, the judge concluded that there were no relevant additives present in Neo’s products and that the products infringed claims 1, 3, 4 and 5 of the Patent. In summary, the judge found the patent to be valid and infringed.

Patent decisions of the comptroller can be found on the IPO website via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/opinion-requests. David Pearce (Barker Brettell LLP) and Callum Docherty (Withers & Rogers)

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a method of diagnosis. Although the contribution involved the presentation of slide information in a new and more helpful way, the display related to the presentation of information, as did the choice of providing arrangements in first, second and third regions at different magnifications. There was no real world technical achievement outside of the information itself, as the contribution could be characterised as a better user interface, which did not deliver a technical effect. The contribution was therefore considered to be excluded as the presentation of information and a program for a computer as such, and the application was refused.

EPO decisions

Revocation: section 72

This was an appeal against an interlocutory decision of the opposition division (OD) upholding the patent as amended according to the first auxiliary request. The OD found that claim 1 as granted lacked novelty over D1, which disclosed a combination of catalysts of the formulae defined in claim 1, but only by reference to their trade names JEFFCAT® ZR-50B and JEFFCAT® ZF-10. On appeal the patentee argued that the technical information about the catalysts behind those trade names was not available to the skilled person at the relevant time and therefore D1’s disclosure was not enabled. This was particularly the case as JEFFCAT® ZR-50B was not available to the public at the publication date of D1, having changed its name to JEFFCAT® Z-130 by this time. The TBA found that the nature of the products behind the trade names JEFFCAT® ZR-50B and JEFFCAT® ZF-10 were made available to the public at the publication date of D1. D1 indicated that JEFFCAT® was a registered trade mark of Huntsman Petrochemicals Corporation so the skilled reader wanting to understand the meaning of these trade names could contact that company. Further the formulae of the catalysts was published in technical bulletins D2 and D3, as well as advertising for JEFFCAT® ZR-50B and JEFFCAT® ZF-10. Furthermore, the board held, following T0890/02, that the database of Chemical Abstracts represented the common general knowledge of the skilled person and this database included at the date of publication of D1 the chemical formulae behind the trade names. The fact by the publication date of D1 (October 2002) JEFFCAT®ZR-50B was marketed under the new trade name (JEFFCAT® ZR-130) was a factor to be taken into account in order to attribute to that technical term its proper meaning. However, in this case the chemical abstracts database was not updated until April 2004. Accordingly, at the publication date of D1 the skilled person still had easy access to the information concerning JEFFCAT® ZR-50B. Consequently, claim 1 of the main request was found to lack novelty over D1. In its first auxiliary request the patentee introduced a disclaimer within the meaning of G2/10 excluding certain combinations of catalysts including the combination disclosed in D1. While the amendment restored the novelty of claim 1 it was found to encompass embodiments that were obvious over the prior art.

Burren Precast Concrete Ltd v Carlow Precast Concrete Engineering BL O/246/18 20 April 2018 The claimant (Burren) initiated revocation proceedings in respect of Carlow’s patent. The defendant (Carlow) sought to strikeout parts of the claimant’s statement of case, arguing in particular that a challenge to the priority date of the patent had no relevance to the question of validity because none of the documents relied upon by the claimant fell within the priority period. The claimant accepted that the priority date was not material to its current case, but argued that striking out this part of the case could place it at a disadvantage later. The hearing officer did not accept the claimant’s arguments, because if the claimant had relevant prior disclosures in the priority period then it should have put them forward. Otherwise, it would be a waste of the defendant’s time to have to answer questions on priority. The hearing officer did, however, note that, should the defendant seek to challenge the publication date of any of the already submitted prior art such that the priority date became an issue, the claimant would be allowed to challenge that date. The defendant further argued that a section of the statement of case in which dependent claims were alleged to lack novelty and inventive step should be struck out. The section of the statement pointed to conclusions of the European examiner in the preceding European search opinion, but did not explicitly explain how documents cited in the European search opinion related to the claims of the patent. The defendant argued this section of the statement contained mere assertions rather than clearly defined pleadings. The hearing officer agreed, stating that it was necessary to clearly set out how each document related to the claims of the patent, even if the defendant was already aware of the documents from proceedings before the EPO. The hearing officer ordered the section dealing with the priority date to be struck out, and the section dealing with novelty and inventive step to be amended to properly plead the case. The hearing officer provided a preliminary view that the defendant should be awarded costs from the comptroller’s published scale. 34 CIPA JOURNAL

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Availability to the public – article 54(2) EPC T 2020/13: Catalyst blends for producing low thermal desorption polyurethane foams/ Evonik Degussa GmbH TBA decision of 12 October 2017 Chairman: D. Semino Members: F. Rousseau, C. Brandt, D. Marquis and R. Cramer

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State of the art – article 54(2) EPC T 2101/12: Method and system for providing an electronic signature/VASCO Data Security International GmbH TBA decision of 24 January 2018 Chairman: W. Sekretaruk Members: G. Zucka, M. Müller This was an appeal by the patentee against the decision of the Examining Division refusing grant of the patent on the basis that the subject-matter of claim 1 of all requests was not new. The subject-matter of the patent application related to providing a document with an electronic signature which involved the document for signature being shown to a trusted third-party server arranged outside the scope of authority of the provider of the document. The TBA found the prior art cited against novelty, D2, did not anticipate the patent. However, in the context of assessing inventive step, the TBA did not consider D2 the most suitable starting point and instead thought this should be the common general knowledge. The process of signing a will or contract at a notary’s office was common general knowledge in which the notary has the function of ‘trusted third party’ and therefore this should be the starting point for assessing inventive step. The patentee submitted that, following T 172/03, something can only be state of the art if it is related to a technological field or a field from which a skilled person would expect to derive technically relevant information. The TBA found that the wording of article 54(2) EPC contained no limitation according to which a non-technical process, such as the signing of a contract at the notary’s office, may not be considered state of the art. It agreed that its opinion was not in line with T 172/03, which suggested that the term ‘everything’ in article 54(2) EPC was to be understood as concerning such kind of information which is relevant to the same field of technology. However, the TBA considered that this interpretation in T 172/03 was incorrect. In its view the wording ‘everything’ in article 54(2) EPC is clear (in all three official languages) and requires no interpretation. The TBA also noted that if some generally known information is useful to the skilled person there is no reason why the skilled person would ignore it, regardless of whether or not it is technical.

PATENTS: EPO

The TBA held that claim 1 of all requests was not inventive over the common general knowledge. The TBA refused the request to refer questions to the Enlarged Board of Appeal.

Novelty – article 54(2) EPC T 1931/14: Combined cryogenic air separation with integrated gasifier/GE Energy (USA), LLC TBA decision of 21 February 2018 Chairman: A. de Vries Members: S. Oechsner de Coninck, T. Bokor The patentee appealed the OD decision that claim 1 of the main request lacked novelty over the prior art. The patent concerned a process for producing oxygen for use in an integrated gasifier combined cycle (IGCC) power generation system. The prior art disclosed the claimed process for producing oxygen and was suitable for use in an IGCC system. The TBA upheld the appeal. The OD had fallen into error by treating the requirement that the claimed process be used to fuel an IGCC system as a technical effect resulting from carrying out the claimed method rather than a functional limitation of the claimed method. The claim was a method claim, which is not comparable to a product claim. With such claims it is important to differentiate between stated purposes that define the application or use of a method, and those stated purposes that define an effect arising from performing steps of the method. Where the stated purpose defines the specific application of the method and is essential for achieving the stated purpose, the stated purpose represents a genuine technical limitation of the method. However, if the stated purpose is merely a technical effect that inevitably arises from carrying out the other steps of the claimed method, such a technical effect has no limiting effect. There was no divergence in the case law and this was consistent with T 848/93 and T 304/08. In this case the stated application to fuel an IGCC system represented a functional limitation of the claim. The prior art process did not disclose that it may be applied to fuel an IGCC system and the claimed subject-matter was therefore new in respect of the cited prior art. The TBA remitted the case to the OD for assessment of inventive step.

Legal Board of Appeal (LBA) and Technical Board of Appeal (TBA) decisions are available on the EPO website at https://www.epo.org/law-practice/case-law-appeals/recent.html and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from https://www.epo.org/law-practice/case-law-appeals/eba/number.html. A list of the matters pending before the Enlarged Board is included at https://www.epo.org/law-practice/case-law-appeals/eba/pending.html. Recent notices and press releases of the EPO are published at http://www.epo.org/service-support/updates.html and http://www.epo.org/news-issues/press/releases.html respectively, and recent issues of the Official Journal can be downloaded from https://www.epo.org/law-practice/legal-texts/official-journal.html. This month’s contributor from Bristows are Simon Spink, Adrian Chew and Nadine Bleach

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TRADE MARKS

Trade marks Decisions of the GC and CJ Application (and where applicable, earlier mark)

Ref no. CJ C-418/16

mobile.de GmbH, v EUIPO; Rezon OOD

– classes 35 and 42

28 February 2018 Reg 207/2009 Reported by: George Khouri

– advertising; business management; business administration; office function (35) – scientific and technological services, and research and related design services; industrial analysis and research services; design and development of computer hardware and software; legal services (42)

Comment The GC dismissed the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The invalidity applications were rejected on the basis that Rezon had not adduced proof of use. On appeal, the BoA took into account additional evidence adduced for the first time pursuant to article 76(2), finding that genuine use of the earlier mark had been shown and therefore annulled the earlier decision. As the parties had not put forward any arguments on the application of article 8(1)(b), the BoA referred the case back to the EUIPO. mobile.de appealed and the GC dismissed the appeals in their entirety. The CJ held that the submission of facts and evidence by the parties remains possible after the expiry of time limits to which they are subject. The EUIPO and BoA were in no way prohibited from taking such facts or evidence into account as article 76(2) afforded broad discretion to take into account additional evidence filed after the time limit. The CJ also rejected the submission that the GC breached article 64(2) by annulling the earlier decisions in their entirety, instead of annulling the decision insofar as the advertising services for which genuine use had been demonstrated. Pursuant to article 64(2), when the BoA remitted a case for further prosecution, the EUIPO was bound by the ratio decidendi of the BoA insofar as the facts were the same. As the A-G had observed, the EUIPO cannot, without undermining legal certainty, examine evidence of genuine use of the earlier mark for the services which were considered by the BoA without subsequently being challenged in an invalidity action before the GC.

The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the CJ and GC decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/home Abbreviations used: A-G=Advocate General; BoA=Board of Appeal; GC=General Court; CJ=Court of Justice of the EU; CTM=Community Trade Mark; EUIPO=European Union Intellectual Property Office; EUTM=European Union trade mark; IPEC=Intellectual Property Enterprise Court This month’s contributors are Katharine Stephens, Emma Green, Hilary Atherton and Ciara Hughes at Bird & Bird LLP.

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-151/17

Marriott Worldwide Corp. v EUIPO; Johann Graf 15 March 2018 Reg 207/2009 Reported by: Francesca Rivers

– services for providing food and drink; catering and providing food and drink for cafes, hotels and restaurants (43) – various goods in classes 14, 32 and 33

TRADE MARKS

Comment In invalidity proceedings, the GC annulled the BoA’s decision that the figurative marks at issue were not similar pursuant to article 8(1)(b). The GC held that the BoA had erred in its assessment of the visual and conceptual similarities between the marks at issue and had wrongly found that the signs were different. Visually, both signs featured similarly proportioned, black-on-white silhouettes of animal-like creatures viewed in profile in comparable seated positions. The visual similarities were not negligible, given that the average consumer would perceive each mark as a whole and would not proceed to analyse the various details. The GC held that the marks had at least low visual similarity. Conceptually, both marks evoked imaginary creatures with the merged characteristics of several animals, and on that basis presented a conceptual similarity of a degree which, at the very least, must be classified as low. The BoA was therefore wrong to reject the invalidity application pursuant to article 53(1)(a), on the basis of article 8(1)(b), and article 53(2)(c) on the basis of the incorrect assumptions it had made.

– services, inter alia, for providing food and drink; hotel services; restaurant, catering, bar and lounge services (43) – various services in classes 36 and 44 (EUTM and UK registrations) GC

MOBILE LIVING MADE EASY

T-235/17

– various goods and services in classes 5, 6, 7, 9, 11, 12, 19, 20, 21, 22 and 37

Dometic Sweden AB v EUIPO 22 March 2018 Reg 207/2009 Reported by: Ning-Ning Li

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The GC upheld the BoA’s decision that the mark lacked distinctive character pursuant to article 7(1)(b). The BoA was correct to find that the goods and services of the mark applied for formed a homogenous category, in that they all facilitated mobile life. It was sufficient that the goods at issue were capable of being installed in vehicles serving as accommodation, such as caravans, and that they contributed to the use or functioning of such vehicles, even though they might do so in varying degrees of intensity. The mark would not be perceived by the relevant public as an indication of the origin of the goods and services, but as an advertising slogan because it communicated a message that the goods and services were presented as ‘facilitating mobile life’. Furthermore, the mark did not include any unusual elements, beyond its promotional meaning, capable of conferring distinctive character which enabled the relevant public to memorise it easily as a trade mark.

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Application (and where applicable, earlier mark)

Ref no.

FITNESS

CJ C-634/16 P

EUIPO v European Food SA; Société des produits Nestlé SA

– dairy products; eggs, jellies, fruit, vegetables (29) – cereals; foodstuffs based on rice or flour (30) – various beverages (32)

24 January 2018 Reg 207/2009 Reported by: Rebekah Sellars

A-G Wathelet for the CJ C-84/17 P, C-85/17 P, C-95/17 P

Société des produits Nestlé SA v EUIPO; Mondelez UK Holdings & Services Ltd

– sweets, biscuits (30)

19 April 2018 Reg 207/2009 Reported by: Henry Elliott

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TRADE MARKS

Comment The CJ upheld the GC’s decision which annulled the BoA’s assessment of validity due to the BoA’s refusal to consider new evidence. The GC was correct to hold that the evidence submitted for the first time before the BoA did not have to be considered out of time by the BoA in all circumstances. Although the GC was wrong to find that Reg 207/2009 did not mandate a time limit for the production of evidence in invalidity proceedings on absolute grounds, the GC did not base its decision on this interpretation, but rather on the BoA’s error in refusing to consider evidence produced for the first time before it. The CJ held that there was no reason of principle which prevented the BoA from taking into account new facts and evidence produced for the first time before it. Indeed article 64(1) required the BoA to conduct a full, new examination as to the merits of any appeal. It could not be inferred from OHIM v Kaul (Case C-29/05 P, reported in April [2007] CIPA 215) that all the evidence adduced before the BoA should be regarded as belated in all circumstances as that case concerned a rule relating specifically to opposition proceedings. Further it was always possible for evidence to be submitted before the BoA for the first time to be in time, insofar as such evidence was intended to challenge the Cancellation Division’s reasons in the contested decision. In combined appeals against the GC’s decision in T-112/13 (reported April [2017] CIPA 45), A-G Wathelet opined that the GC’s decision that the mark applied for had not acquired distinctive character through use pursuant to article 7(3) and the decision to declare the mark invalid under article 52(2) should be upheld. All parties appealed, but Mondelez’s appeal was considered inadmissible on the basis that its action before the GC was not unsuccessful and it did not seek to set aside the operative part of the GC’s judgment, but only some of the grounds of that judgment. In order to demonstrate that a mark had acquired distinctive character, quantitatively sufficient and geographically representative evidence of such acquisition throughout the EU was required. This did not necessarily require evidence of such acquisition in each individual Member State but instead required evidence for each region of the EU. These regions had to be established for the goods and services covered by the mark in question. Nestlé had failed to provide sufficient evidence of acquisition of distinctive character in Belgium, Ireland, Greece, Luxembourg and Portugal and had failed to advance any evidence on national or regional markets that could be extrapolated from other Member States to cover these five Member States. As such, A-G Wathelet considered that the GC had no option but to annul the BoA’s decision on this basis.

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Ref no. GC T-25/17

Bernhard Rintisch v EUIPO; Compagnie laitière européenne SA 19 April 2018 Reg 207/2009

Application (and where applicable, earlier mark) PROTICURD

– pharmaceutical preparations; dietetic substances for medical purposes, dietetic preparations, dietary supplements, parapharmaceutical products, all for medical purposes (5) – milk powders, whey proteins; milk beverages, with milk predominating (29) PROTI PROTIPLUS

Reported by: Aaron Hetherington – milk products, namely milkprotein and whey-protein for mixing in foodstuffs; dietetic foodstuffs not for medical purposes, as included in class 29, namely food-preparations with high protein content for enrichment of foodstuffs; and namely protein, also supplemented with vitamins and or mineral salts as well as carbohydrates, always in particular in powder form (29) – preparations, particularly proteins, also supplemented with vitamins and or mineral salts as well as carbohydrates, each particularly in powder form, for beverage preparation (32) (German marks) GC T-15/17

Dimitrios Mitrakos v EUIPO; Miguel Torres, SA 20 April 2018 Reg 207/2009 Reported by: George Khouri Volume 47, number 6

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– non-alcoholic beverages; beer and brewery products; preparations for making beverages (32) – alcoholic beverages (except beer); preparations for making alcoholic beverages (33) LLAMA

– alcoholic beverages (excluding beer) (33)

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b). The BoA had implicitly, but nevertheless clearly, given reasons for its decision that the applicant had not demonstrated genuine use of the earlier marks for goods in class 29, but that such proof had been made out for goods in class 32. In so finding, the GC rejected an argument that the evidence showed that the applicant’s goods could be mixed with food stuffs. It clearly did not; additionally such an argument conflicted with the evidence on file from a previous hearing before the GC (T-382/14, reported November [2015] CIPA 48). In assessing whether there was a likelihood of confusion, the BoA had been right to find that that the class 5 goods were dissimilar to those in class 32. Unlike the ordinary nutritional purpose of the class 32 goods, the main purpose of the class 5 goods was to address medical problems. There was only a remote similarity between goods in classes 29 and 32. Whilst all goods contained protein, the nature, manufacturers, distribution channels and end consumers differed. The BoA was right to find a medium degree of similarity between the marks. The earlier sign featured in full at the beginning of the contested sign. However, the word ‘curd’ was not part of the English vocabulary of the Germanspeaking relevant public. It was not a descriptive element and so constituted an important difference between the marks. As a further consequence, the public would not recognise it as a descriptive suffix, as PROTICURD did not belong to a family of PROTI marks. In addition, the GC held that the relevant public’s attention would vary from average to above average and the distinctive character of the earlier marks was normal. As a consequence, there was no likelihood of confusion. The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). Submissions relating to the goods for which the applicant intended to use the mark were irrelevant and the BoA was correct to only consider the goods covered by the application as filed. In light of this, the GC upheld the BoA’s assessment that the goods in question were identical. The GC confirmed the BoA’s decision that the signs in question had a low degree of visual similarity and were conceptually different, but had a high degree of phonetic similarity. The GC added as the marks were phonetically similar to a non-negligible part of the relevant public, namely JUNE 2018

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Application (and where applicable, earlier mark)

Ref no.

TRADE MARKS

Comment the Spanish-speaking public, there was a likelihood of confusion. The BoA attached particular weight to the phonetic similarity over the visual differences as the goods in question would generally be purchased verbally in noisy places, such as restaurants, pubs, bars, nightclubs and discotheques. In addition, customers would often receive their drinks in a glass and not in the specific packaging of the drink product. It was not established that the phonetic similarities were counterbalanced by the conceptual difference between the signs.

GC

ONCOTYPE DX GENOMIC PROSTATE SCORE

T-354/17

– medical testing for diagnostic and treatment purposes in the field of cancer; providing medical information to medical professionals in the form of reports in the field of cancer (44)

Genomic Health, Inc. v EUIPO 23 April 2018 Reg 207/2009 Reported by: Aaron Hetherington

GC T-208/17, T-207/17

Senetic S.A v EUIPO; HP Hewlett Packard Group LLC 24 April 2018 Reg 2017/1001 Reported by: Robert Milligan 40 CIPA JOURNAL

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– ink; toners (2) – computer programs; software; printers; (9) – printed materials (16) – office furniture (20) JUNE 2018

The GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and 7(1)(c). The BoA had been correct to examine the descriptiveness of the individual constituent elements of the mark, in light of their dictionary definitions, since it had done so in view of the perception of the mark by the relevant public. Although there were multiple meanings for the constituent elements of the mark or a lack of dictionary definitions for those terms, the BoA had not erred in finding the mark to be descriptive. Even though the mark did not provide specific information on all the specific characteristics, at least that part of the public which comprised medical professionals, would perceive that the mark related to services which made it possible to detect, diagnose, and measure the genetic possibility of a prostate tumour, which was a characteristic. One possible descriptive meaning was enough. As regards the neologism ‘oncotype’, the BoA had been right to find that it was composed of elements that were descriptive of the services at issue. ‘Onco’ designated a tumour whilst ‘type’ designated a group of things which have a particular common characteristic. On the basis of the above, there was no requirement for the GC to consider article 7(1)(b). In an application for a declaration of invalidity under articles 59(1)(a) and 59(1)(b), the GC upheld the BoA’s decision that the marks were neither descriptive nor did they lack distinctive character pursuant to articles 7(1)(b) and 7(1)(c), and dismissed the claim that the marks had been applied for in bad faith. The BoA correctly found that it could not be generally asserted that a mark lacked distinctiveness or was descriptive simply because it consisted of one or two letters, without examining the specific relationship between the sign and goods and services in question. The GC confirmed that there was no direct and specific relationship between the contested marks and the goods www.cipa.org.uk

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Ref no.

Application (and where applicable, earlier mark) – business management (35) – financial services (36) – installation, maintenance and repair of electronic equipment (37) – provision of telecommunications services (38) – packaging, distribution and dispatch of goods (39) – training and seminars in fields of science, engineering, computer systems, health care and business (41) – computer programming services; rental and leasing of computers and electronic devices; engineering services (42)

GC T-831/16

Kabushiki Kaisha Zoom. v EUIPO; Leedsworld, Inc.

ZOOM

– cord and cable management devices, carrying cases for electronic equipment, stands for electronic equipment, battery chargers; none of the aforementioned products relating to music technology products (9)

24 April 2018 ZOOM

Reg 207/2009 Reported by: Louise O’Hara

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– apparatus for reproduction and recording of sounds, CD ROMs, electric wires and cables, fire safety equipment, scuba dividng equipment (9) – musical instruments (15)

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Comment and services in question and the contested marks had a minimum degree of distinctive character. The combination of two letters and figurative elements shown in the contested mark would not be commonly used or perceived as an indication lacking distinctive character, especially as it was possible that the ‘hp’ sign may be understood by the relevant public (being both professionals and the average consumer in the EU) as reference to the names Hewlett and Packard. In relation to the bad faith claim, the GC upheld the BoA’s decision that the marks were not applied for in bad faith as there was no evidence to the contrary.

The GC annulled the BoA’s decision dismissing an appeal against the Opposition Division’s decision which had partially upheld the opposition on the basis of article 8(1) (b). The GC held that, whilst the BoA had correctly assessed the majority of evidence filed in support of the earlier marks, the BoA erred in finding that genuine use of the mark had not been demonstrated in relation to power distribution, control machines and apparatus, electric wires and cables. The identity and high level of similarity of the marks was not disputed. The BoA had made arbitrary and irrelevant distinctions between goods and had erred in confining itself to finding a partial similarity of the goods covered by the marks at issue: the goods covered by the earlier marks were similar to all the goods covered by the mark applied for, being either identical or similar as a result of a link of complementarity. The BoA had relied upon this incorrect conclusion to determine that there was no likelihood of confusion. The GC held that, given the identical nature of the marks and the similarity of the goods at issue, there was a likelihood of confusion on the part of the public.

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Ref no. GC T-288/16

Convivo GmbH v EUIPO; Porcesadora Nacional de Alimentos C.A. Pronaca

TRADE MARKS

Application (and where applicable, earlier mark)

Comment

M’COOKY

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The marks were held to be visually and phonetically similar to an average degree, although they were not conceptually similar. On a visual comparison, the marks had in common the letter ‘m’ and the word ‘cook’, which was held to be distinctive for the section of the Spanish public that did not speak English. Further, the figurative elements of the earlier mark, being the blue background in the shape of an almond and the cook’s hat above the word ‘MR.’ were held to be purely decorative. These elements did not alter the dominant character of the term ‘cook’, and therefore their impact was held to be limited. The GC held that the additional letter ‘y’ at the end of ‘cook’ in the applied for mark would go unnoticed among the relevant public. On a phonetic comparison, the marks were found to be phonetically similar as they shared the sound of the letter ‘m’ at the beginning of the word elements of the marks and the word ‘cook’, which were also placed in the same order in the marks.

– pastry and confectionery, in particular cookies, sweets, wafers, waffles, cakes, etc (30) – services for providing food and drink; temporary accommodation (43)

26 April 2018 Reg 207/2009 Reported by: Christine Danos

– meat, fish, poultry and game; preserved, dried and cooked fruits and vegetables; eggs, milk and milk products (29) – coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flours and preparations made from cereals; bread, pastry, and confectionery, ices, etc (30) – agricultural, horticultural, and forestry products and grains not inlcuded in other classes; live animals; fresh fruits and vegetables (31) (Spanish mark)

CITMA New President ’s Summer Reception The Refinery New Street Square, 12 New Street Square, London EC4A 3BF Wednesday, 4 July 2018 Enjoy relaxed networking with friends and colleagues and taste fresh summer canapés at CITMA’s New President’s Summer Reception. The event will be marked by the inaugural speech of the new CITMA President – Tania Clark. Tania will set out her vision for CITMA and the profession over the coming two years. CITMA members – £59 (plus £11.80 VAT) Non-members – £69 (plus £13.80 VAT) Bookings can be made online at https://www.citma.org.uk/calendar/event/view?id=321

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Hybrid shape and colour marks are not registrable if they provide substantial value to goods Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV CJ (A-G Szpunar for the CJ); C-163/16; 6 February 2018 Following re-assignment of the case to the Grand Chamber, A-G Szpunar in his second opinion restated the view that article 3(1)(e)(iii), prohibiting the registration of shape marks where the shape to be protected gave substantial value to the goods, was also applicable to a sign combining colour and shape. Louise O’Hara reports..

Background In response to Van Haren’s use of red soles on its highheeled women’s shoes, Louboutin successfully brought trade mark infringement proceedings against Van Haren before the Rechtbank Den Haag (District Court of The Hague, Netherlands), based on Louboutin’s Benelux trade mark registered in respect of “high-heeled shoes (other than orthopaedic shoes)” in class 25. Van Haren challenged this decision, submitting that Louboutin’s mark was invalid pursuant to article 3(1)(e)(iii) of Directive 2008/95. The Louboutin trade mark at issue was a figurative mark described as consisting ‘of the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)’, as shown below.

To clarify whether the concept of ‘shape’ within the meaning of article 3(1)(e)(iii) extended to the colours as well as to the threedimensional properties of goods, the Rechtbank Den Haag requested a preliminary ruling. The case was referred to the Ninth Chamber and A-G Szpunar delivered his first opinion on 22 June 2017. The case was reassigned to the Grand Chamber as it raised an issue of Union law and the oral part of the procedure reopened. Addressing the issues raised in the second hearing on 24 November 2017, the A-G delivered an additional opinion to supplement his first opinion. First opinion The A-G concluded that article 3(1)(e)(iii) was to be interpreted as being capable of applying to a sign consisting of the shape of a Volume 47, number 6

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product and seeking protection for a certain colour. In addition, a mark’s classification as a position mark did not prevent the same mark from falling within the prohibition in article 3(1) (e)(iii). Further, the A-G highlighted that the risk of the monopolisation of essential characteristics of the goods was not limited to shape marks and could apply to other types of trade mark, such as position or motion marks, which might be indissociable from an aspect of the goods in question. In this regard, the A-G outlined two possible approaches relating to the analysis of the distinctiveness of such a mark, and expressed his preference for the first approach: 1. a broad interpretation of article 3(1)(e); or 2. consideration of the public interest in limiting the number of marks of this nature which qualified for protection. Although the matter was not expressly raised by the request for a preliminary ruling, the A-G also noted that the concept of a shape which ‘gives substantial value’ to the goods relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account. Additional opinion The A-G maintained that he considered the mark to be a hybrid of shape and colour, as opposed to being a colour mark per se. In particular, he held that the shape of the sole was not wholly abstract or of such negligible importance to suggest that the mark sought protection for a colour per se without any spatial delimitation; whilst the shape of the sole may change, it was still the sole of the shoe that was important and whatever shape it may be was delimited by the colour red. Further he doubted whether the colour could perform the essential function of the trade mark separately from the shape of the sole. He held that the introduction of the concept of a ‘position mark’ in article 3(3)(d) of Implementing Regulation 2017/1431 did not affect the applicability of article 3(1)(e)(iii) to such marks, as this legislation was designed to supplement a trade mark system which already countenanced the application of article 3(1)(e)(iii) to marks other than shape marks. Accordingly, article 3(3)(d) was not intended to act as a ‘definition’ of the type of trade mark which is incapable of being caught by article 3(1)(e) (iii). Whilst Implementing Regulation 2017/1431 differentiated between a ‘position mark’ and a ‘shape mark’ and a ‘colour mark’ (in article 3(3)(c) and (f) respectively) the differentiation did not affect article 3(1)(e)(iii) which referred not to a ‘shape mark’ but to ‘signs which consist exclusively of the shape which gives substantial value to the goods’. The A-G also referred to the article as amended in Directive 2015/2436 – article 4(1)(e)(iii) – which applied to signs consisting of ‘the shape, or another characteristic, which gives substantial value to the goods’. He restated his view that the lack of transitional provisions suggested that the law was the same under the both the old and the new Directive. JUNE 2018

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The A-G noted the parties’ submissions that article 3(1)(e) (iii) involved consideration of aesthetic characteristics valued by the public which may vary depending on current trends. He highlighted, however, that the assessment should be of the mark itself and that the trade mark proprietor’s reputation should not factor into the determination of whether the shape at issue gives ‘substantial value’ to the goods. Finally, the A-G considered that, if the Court decided that a position mark, like the Louboutin mark at issue, was not covered by article 3(1)(e)(iii), its registration must still be considered in light of the article 3(1)(e) factors, namely whether its registration would be contrary to the public interest in the availability of the characteristics of that mark. The key factor in determining the distinctiveness of a sign was not its classification as a figurative, three-dimensional mark or otherwise, but whether the mark was indistinguishable from the appearance of the goods in question. The A-G noted that a sign which was indissociable from the appearance of the goods in question would only be distinctive where that sign departed significantly from the norm or customs of the sector at issue. However, the A-G highlighted that the public interest in the unrestricted availability of characteristics sought and favoured by the public could not be ensured on a lasting basis under article 3(1)(b) of Directive 2008/95 because of the possibility of overcoming this ground for refusal or invalidity through acquired distinctiveness.

Claiming seniority Peek & Cloppenburg KG, Hamburg v Peek & Cloppenburg KG, Düsseldorf CJ (Second Chamber); C-148/17; 19 April 2018 Earlier national marks forming the basis of seniority claims are vulnerable to revocation or invalidity actions if they were not used before the date of being surrendered or allowed to lapse. Ciara Hughes reports.

In response to a request for a preliminary ruling from the Bundesgerichtshof (Federal Court of Justice, Germany) the CJ held that when an earlier national mark which had been surrendered or allowed to lapse but which still formed the basis of a seniority claim for an EUTM was the subject of an application to establish a posteriori the invalidity or revocation of that mark, the relevant date for determining whether the conditions for invalidity or revocation had been met was the date on which the earlier national mark was surrendered or allowed to lapse. The CJ held that it was clear from the wording and purpose of article 14 of Directive 2008/95 that it was intended to enable the Court to determine retrospectively whether the conditions for invalidity or revocation were met on the date on which 44 CIPA JOURNAL

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the earlier national mark was surrendered or allowed to lapse. Therefore, national legislation that required the conditions for invalidity or revocation to also be met on the date of the Court’s ruling on the application seeking to establish a posteriori that invalidity or that revocation, was incompatible with article 14. The interpretation of article 14 was supported by article 6 of Directive 2015/2436, which entered into force after the events under consideration. According to article 6, the only condition for establishing a posteriori the invalidity or revocation of an earlier national mark, was that the invalidity or revocation of the rights could have been declared at the moment when the mark was surrendered or allowed to lapse. The CJ also clarified that article 34(2) of Regulation No 207/2009 created a legal fiction intended to enable the proprietor of an EUTM to continue to enjoy the protection enjoyed by an earlier national mark which has been surrendered or allowed to lapse in the Member State where seniority had been claimed. However, this fiction did not allow the cancelled national mark to exist in the same form, and use of the sign at issue after that cancellation, would count towards use of the EUTM which was the subject of the seniority claim and not towards use of the cancelled national mark. As a result, if the earlier national mark was vulnerable to an invalidity or revocation action at the date on which it was surrendered or allowed to lapse, then subsequent use would not be able to rectify this defect: the earlier national mark would remain vulnerable to invalidity or revocation actions and any seniority claims attached to it could be lost.

Peaceful coexistence of marks within part of the European Union Ornua Co-operative Ltd (‘Ornua’) v Tindale & Stanton Ltd España SL (‘T&S’) CJ; Second Chamber; C-93/16; 20 July 2017 The CJ held that under articles 9(1)(b) and (c) the fact that conflicting trade marks coexisted peacefully in the territory of the EU, without giving rise to confusion, did not mean that a likelihood of confusion was automatically ruled out in another part of that territory. Co-existence was a relevant factor capable of being taken into account in the global assessment of likelihood of confusion and the existence of any link between the marks at issue. Robert Milligan reports.

Background Ornua sold dairy-related products and was the registered proprietor of the EUTM registration for KERRYGOLD and two figurative marks containing the same word element (collectively, ‘the KERRYGOLD Marks’). www.cipa.org.uk

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TRADE MARKS

T&S imported and distributed dairy goods in Spain, made by Kerry Group Plc, which were sold under the mark KERRYMAID. Kerry Group Plc owned UK and Irish national registrations for KERRYMAID. Ornua brought infringement proceedings in the Juzgado de lo Mercantil de Alicante (Alicante Commercial Court, Spain) against T&S on the basis that use of KERRYMAID amounted to an infringement of the KERRYGOLD Marks pursuant to articles 9(1)(b) and (c). The Court dismissed Ornua’s claim, finding that the word ‘KERRY’ referred to an Irish town known for breeding cattle and related dairy products and that the KERRYGOLD Marks had coexisted peacefully alongside KERRYMAID in Ireland and the UK. Owing to the unitary character of a EUTM, the Court held that the peaceful coexistence of the marks in two Member States extended to include the EU as a whole. Further, the Court placed relevance on the fact that the sign KERRYMAID was used in Spain for the purposes of marketing a product which had been marketed in other Member States for a number of years without challenge from Ornua. On appeal, the Audiencia Provincial de Alicante (Provincial Court of Alicante, Spain) referred various questions to the CJ.

Can acquiescence in the peaceful coexistence of the marks in the UK and Ireland be extended throughout the EU such that it constitutes ‘due cause’ for third parties to use the sign? The CJ held that where a mark has a reputation in a substantial part of the EU, that reputation extends to the whole of the EU. In contrast, it is not necessary for trade mark infringement to be proved in all Member States; on the contrary, infringement in a single Member State suffices. The CJ found that there was due cause for use of T&S’s sign in the UK and Ireland as Ornua had acquiesced. However, the fact that, in part of the EU, a trade mark with a reputation and a sign peacefully coexist, does not mean that in another part of the EU, where peaceful coexistence is absent, there is due cause legitimising the use of that sign. Therefore, the Spanish Court could not base its assessment of infringement on the peaceful coexistence in the UK and Ireland. Instead, the Spanish Court was required to make a global assessment of all the relevant factors.

Can the absence of a likelihood of confusion in the UK and Ireland be extended to other Member States? Endorsing the opinion of the A-G (reported in June [2017] CIPA 48), the CJ held that the fact the KERRYMAID marks did not give rise to a likelihood of confusion in Ireland and the UK did not, in itself, preclude a finding that such likelihood may have existed in another part of the EU. However, the CJ was of the opinion that peaceful coexistence in part of the territory of the EU was not an irrelevant consideration within the assessment of likelihood of confusion throughout the EU as a whole. The assessment of a likelihood of confusion required a global assessment of all the relevant factors which potentially related to the entire territory of the EU.

Schweppes SA v Red Paralela SL & Ots CJ (Second Chamber); C-291/16; 20 December 2017

Could the circumstances of the Member States in which coexistence occurred be considered? Agreeing with the AG, the CJ held that market conditions and sociocultural circumstances in part of the EU could be taken into account when considering infringement in another part, provided those factors did not significantly differ. As UK and Irish consumers had a particular affinity to the geographical indication KERRY contained within the KERRYGOLD Marks, T&S’s conduct and the standard of honest practices in industrial and commercial matters was to be analysed differently to those in Spain. T&S’s overall presentation of its product, how they distinguished their sign from Ornua’s mark, and any efforts made by T&S to distinguish its products from those of Ornua’s were also be to taken into consideration.

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Trade mark exhaustion where ownership split between different countries

Following the division in ownership of a trade mark, a national trade mark owner is prevented from opposing parallel imports of identically marked goods where those goods originate from the assignee in another Member State in circumstances where both the owners of the national marks have co-ordinated to promote a global trade mark image for the goods. Rebekah Sellars reports.

Background Cadbury Schweppes was the owner of a large portfolio of registered trade marks containing the word SCHWEPPES, which were registered as national word and figurative marks in each of the Member States of the EEA. In 1999, Cadbury Schweppes subsequently assigned rights in the SCHWEPPES marks in 13 Member States to Coca-Cola (including those registered in the UK) but retained its rights in Spain and the rest of the EEA. In 2014, Schweppes SA (the subsidiary that held the rights to use the SCHWEPPES marks in Spain) initiated infringement proceedings against various companies in the Red Paralela group to stop them from importing and distributing bottles of SCHWEPPES tonic water from the UK to Spain. Schweppes argued that marketing in Spain was unlawful given that the bottles were manufactured and put on the market by CocaCola, with whom they had no connection. JUNE 2018

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Red Paralela argued that the trade mark rights had been exhausted due to tacit consent and that Schweppes had undeniable legal and economic links with Coca-Cola in their joint exploitation of SCHWEPPES as a universal mark. The Barcelona Commercial Court stayed proceedings and referred four questions to the CJ relating to exhaustion of rights in the context of close commercial relationships such as the Schweppes/Coca-Cola relationship and the extent to which the proprietor’s consent existed when an assignee of a trade mark markets goods bearing that mark. Decision The CJ ruled that article 7(1) of Directive 2008/95, read in the light of article 36 TFEU, had to be interpreted as precluding the proprietor of a national trade mark from opposing the importation of identical goods bearing the same mark originating in another Member State in which it had assigned that mark to a third party if, following the assignment: •

the proprietor (either acting alone or maintaining its coordinated trade mark strategy with the assignee) had actively and deliberately continued to promote the appearance or image of a single global trade mark, thereby generating or increasing confusion on the part of the public concerned as to the commercial origin of the goods bearing the mark; or there were economic links between the proprietor and the assignee, inasmuch as they coordinated their commercial policies or reached an agreement in order to exercise joint control over the use of the trade mark, so that they could determine, directly or indirectly, the goods to which the trade mark was affixed and to control the quality of those goods.

The CJ’s starting point was Ideal-Standard GmbH & Anr v IHT Internationale Heiztechnik & Anr (C-9/93; 22.06.94) (“IHT”) which stated that where ownership of a trade mark is split, the essential function of a trade mark would be jeopardised if, failing any consent on the proprietor’s part, that proprietor could not oppose parallel imports. IHT explains that that principle is not altered by the fact that the marks had a common origin, provided that, from the date of assignment, each of the marks had independently fulfilled its trade mark function. The CJ commented that the proviso is not satisfied when the proprietor, either acting alone or maintaining a coordinated strategy with a new owner, has actively and deliberately continued to promote the appearance or image of a single global mark, thereby generating or increasing confusion of the part of the public as was the case in the current case. In such circumstances, where the trade mark would no longer fulfil its essential function within its territorial field of application, the proprietor could not rely on citing protection of that function as grounds for opposing parallel imports. It was for the national courts to make an assessment whether this was the case. 46 CIPA JOURNAL

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IHT also stated that parallel importation does not compromise the essential function of the trade mark where the proprietor is one and the same or economically linked. IHT referred to a licence agreement/ distribution agreement or ownership of trade marks in the different countries by companies in the same group; the decisive factor being the possibility of control over quality, not actual exercise of control. The CJ commented that it is a substantive rather than formal test and is fulfilled where, following division of a mark, the proprietors coordinated their commercial policies or reached an agreement in order to exercise joint control over the use of those marks, so that it is possible for them to determine, directly or indirectly, the goods to which the trade mark is affixed and to control the quality of the goods. Furthermore, if the parties coordinated their commercial policies or agreed to exercise joint control over the marks it would be held that any marketing of the trade marked goods had the consent of the other party. If proprietors were permitted to protect their territories from parallel imports, it would lead to a partitioning of the national markets which was not justified by the purpose of trade mark rights and unnecessary to preserve the essential function of the marks concerned.

Jurisdiction over trade mark use on websites AMS Neve Ltd & Ots v Heritage Audio SL & Anr* Lewison and Kitchin LJJ; [2018] EWCA Civ 86; 1 February 2018 The CA (Kitchin LJ giving the lead judgment) considered it necessary to make a reference to the CJEU seeking a preliminary ruling as to the proper interpretation of article 97(5). Specifically, whether the court of Member State A had jurisdiction to hear a trade mark infringement claim concerning an EUTM where the defendant was based in Member State B and the alleged infringing acts had been carried out in Member State B, but where the website in question targeted traders and consumers in Member State A. Abbas Lightwalla reports.

Background The original claim for trade mark infringement and passing off was brought by the owners of the trade marks in dispute and their exclusive licensee, AMS Neve, an English company that made and sold audio equipment. Heritage Audio was a Spanish company that sold and supplied audio equipment in Spain. AMS Neve claimed that Heritage Audio had, via its website, offered for sale and/or sold audio equipment in the UK by reference to signs confusingly similar to three registered trade marks: an EUTM for the digits “1073” and two UK registered marks for logos incorporating a sine wave. Heritage Audio did not www.cipa.org.uk

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dispute that they used the signs complained of but maintained that they had never advertised, offered for sale, sold or supplied any goods in the UK; they maintained that the relevant conduct, i.e. placing the offending signs on the website targeted at UK consumers, only took place in Spain. Accordingly, they applied for a declaration that the courts of England and Wales did not have jurisdiction to hear the claim. In his first instance judgment – [2016] EWHC 2563 (IPEC) – Judge Hacon held that the IPEC had jurisdiction in respect of the UK registered trade mark claim and a claim for passing off. However, he held that only the Spanish courts had jurisdiction in respect of the EUTM infringement claim, as the defendants had taken steps to put the offending signs on the website, or had taken a decision to that effect, in Spain. This conclusion was based on Judge Hacon’s interpretation of article 97(5), which states that infringement proceedings can be brought in the courts of a Member State in which acts of infringement have been committed or threatened, but under article 98 that court shall only have jurisdiction in respect of acts committed or threatened within that Member State. Reference to the CJEU AMS Neve appealed this part of Judge Hacon’s decision, contending that he had failed to understand and apply article 97(5) correctly. Kitchin LJ reviewed recent jurisprudence on the subject but noted that there had not yet been a CJ decision on the question. Kitchin LJ, therefore, decided that a reference to the CJ was necessary, requesting that the CJ give a preliminary ruling on the following three questions:

TRADE MARKS

Beverly Hills Polo Club Mark found infringed and partially revoked Lifestyle Equities C.V. & Anr v Sports Direct.com Retail Ltd & Ots* Judge Pelling QC; [2018] EWHC 728 (Ch); 20 April 2018 Judge Pelling QC held that: (i) Sports Direct’s importation of clothing in 2014 and 2015 bearing Lifestyle’s EU and UK registered trade marks infringed those marks, but that Lifestyle’s infringement claim in respect Sports Direct’s sale of clothing bearing the same marks in 2013 was precluded due to settlement terms included in a licence agreement between Lifestyle and a former member of the Sports Direct group, WCC; (ii) the sixth defendant (“Republic”) had induced WCC to breach the licence agreement; and (iii) Lifestyle’s UK registered trade mark should be partially revoked on account of non-use but Sports Direct’s counterclaim for revocation of Lifestyle’s EU registered trade mark for non-use was dismissed. Mark Livsey reports.

The first defendant was the owner of UK-registered and EUregistered trade marks for the following devices:

In circumstances where an undertaking is established and domiciled in Member State A and has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EUTM on a website targeted at traders and consumers in Member State B: i. Does an EUTM court in Member State B have jurisdiction to hear a claim for infringement of the EUTM in respect of the advertisement and offer for sale of the goods in that territory? ii. If not, which other criteria are to be taken into account by that EUTM court in determining whether it has jurisdiction to hear that claim? iii. In so far as the answer to (ii) requires that EUTM court to identify whether the undertaking has taken active steps in Member State B, which criteria are to be taken into account in determining whether the undertaking has taken such active steps?

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The second defendant was the exclusive licensee of these marks. The defendant companies were part of the Sports Direct sportswear retail group. Republic and WCC owned and operated USC (a men’s fashion store chain). In 2013, the first and second defendants sold clothing bearing Lifestyle’s marks. In June 2014, Lifestyle and WCC entered into a licence agreement governed by Dutch law under which WCC would, in exchange for royalties, import and sell Lifestyle’s branded goods in its USC stores. Clause 2.4.C of the licence agreement provided that all claims between the parties and their respective group companies were settled on a full and final basis. Between December 2014 and April 2015, Lifestyle’s branded goods were imported by the first defendant rather than by WCC. WCC went into administration in January 2015 and WCC’s part of the USC business (which included goods bearing Lifestyle’s marks already in USC’s stores) was sold to Republic. JUNE 2018

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DECISIONS

Infringement claim in respect of the 2013 sales The Judge held that it was clear from the language used in clause 2.4.C of the licence agreement that the parties intended that all claims and disputes between all members of all groups would be resolved by discharge and waiver. However, the language used did not clearly indicate whether the parties intended to confer a directly enforceable benefit on their respective group companies. Under Dutch law, the position adopted by the parties during negotiations could properly be referred to for the purpose of establishing the meaning the parties could have attached to clause 2.4.C of the licence agreement and what each party could have reasonably expected from the other party pursuant to that clause. The Judge found that it was inherently more likely that the parties intended that the discharge and waiver could be enforced directly by all members of their respective groups and that there was no evidence that established that either party would have reasonably expected that the benefit of clause 2.4C would be lost if one of the parties to the licence agreement entered administration. The effect of this was that the first and second defendants were entitled to directly rely on clause 2.4C of the licence agreement meaning that Lifestyle was precluded from pursuing its claim for trade mark infringement in relation to the 2013 sales. Infringement claim in respect of the 2014 and 2015 sales The Judge rejected Sports Direct’s defence that Lifestyle had consented to it importation of goods bearing the UK and EU Marks. This was on the basis that consent within the meaning of section 12 and article 15 (which must be expressed so that an intention to renounce the rights of the trade mark proprietor was unequivocally shown) had not been demonstrated (Zino Davidoff SA v A & G Imports Limited [2002] Ch 109 applied). As the licence contained in the licence agreement was personal and exclusive to WCC it followed that the importation of goods bearing the UK and EU Marks by Sports Direct infringed those marks. Did Republic induce WCC to breach the licence agreement? The test in OBG v Allan [2007] UKHL 21 was applied. This test provided that, for a claim for damages for inducing a breach of contract to be successful the claimant must prove that: (i) there had been a breach of contract; (ii) that the breach was intentionally caused by the defendant; and (iii) that the claimant had been damaged by the breach. The Judge found that Lifestyle had established those three requirements as the sale of the administration goods by WCC to Republic constituted a breach of the licence agreement, Republic was fully aware of that fact, and Lifestyle suffered damage as a result (as it was deprived of the opportunity of seeking royalties). Revocation of the EU and UK Marks The Judge applied Adobe Systems Inc. v Netcom Distributors and others [2012] EMTR 701 which provided that the UK court’s jurisdiction to revoke (or partially revoke) an EU trade mark 48 CIPA JOURNAL

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TRADE MARKS

for non-use was limited to cases where revocation will assist the counterclaiming party to defend an infringement claim. He also held that this principle applied with equal force to claims for partial revocation as it did to claims for total revocation. As such, the Judge found that the UK court did not have jurisdiction to consider a counterclaim relating to headgear or footgear. As regards clothing, the counterclaim failed as the defendants had admitted genuine use in relation to the same. As no jurisdictional issues applied in relation to revocation of the UK Mark for non-use and the use of the UK Mark was significantly narrower than that of the EU Mark, the UK Mark’s scope of protection was reduced to “men’s clothing excluding footwear and headgear”.

Form of Order Lifestyle Equities C.V. & Anr v Sports Direct.com Retail Ltd & Ots* Judge Pelling QC; [2018] EWHC 962 (Ch); 20 April 2018 After handing down his judgment on liability (reported above), Judge Pelling QC gave judgment on the appropriate form of Order. Hilary Atherton reports.

Liability of the second defendant The Judge held that the inducement and infringement claims against the second defendant failed. Although a Mr Nevitt held the position of Global Head of Commercial at the second defendant, no particular distinction tended to be drawn between the various entities making up the Sports Direct Group and, to the extent that he had caused or permitted any infringement or inducement, he did so in his capacity as one of the commanding minds of the first defendant. Scope of final injunction The Judge granted an injunction in the broad terms sought by Lifestyle, i.e. that the defendants should be prevented from doing any acts that would infringe Lifestyle’s relevant EU or UK marks. He rejected the defendants’ suggested qualifications, namely that the injunction should be limited to the administration goods. Scope of damages inquiry The Judge considered that it would not be fair for Lifestyle to be precluded from arguing that there had been damage to the reputation of its marks. As all issues of liability had been resolved at trial, this was a subject which should exclusively be dealt with in either an inquiry as to damages or an account of profits. www.cipa.org.uk

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DECISIONS

Costs Particularly because there were Part 36 offers in play, the Judge was of the view that to embark on a met hodology which involved imposing an order for costs for part of the trial of liability, then addressing the issues of costs that would arise after the date of a Part 36 offer, so far as liability was concerned, and then also to attempt to deal with costs in relation to any quantum inquiries was a recipe for complexity, prolixity and avoidable expense, both in terms of costs for the parties and resources so far as the court is concerned. Therefore, the appropriate course was to wait until after the quantum issues had been resolved before attempting to address questions of costs. Dissemination of information Lifestyle’s application for an order for dissemination of information concerning the judgment was refused. The Judge considered that such an order was unnecessary and disproportionate given that this was “a relatively straightforward trade mark infringement case involving a relatively narrow category of goods with modest commercial value”. Applications for permission to appeal The Judge rejected both sides’ applications for permission to appeal.

IPEC rejects tattoo shop’s claim of passing off by cactus shop’s use of PRICK Henry Martinez t/a Prick & Anr v Prick Me Baby One More Time Ltd t/a Prick & Anr* Judge Melissa Clarke; [2018] EWHC 776 (IPEC); 11 April 2018 In dismissing the claim, the Judge found that the use of the word “PRICK” by a cactus shop operated by Prick Me Baby One More Time did not amount to a material misrepresentation that the goods and services offered by it were those of the tattoo artist, Henry Martinez, or somehow authorised by or connected with him. Zoe Fuller reports.

Mr Martinez had operated a tattoo and piercing parlour in Shoreditch, London, called “Prick Tattoos” since 2001. He had created and applied tattoos to a number of celebrities, including Amy Winehouse. He also produced artistic works on media other than skin, which took inspiration from his tattoo work. The cactus shop, called “PRICK”, opened in 2016 just over one mile away from the tattoo parlour.

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TRADE MARKS

When considering the extent of Mr Martinez’s goodwill in the word “PRICK”, the Judge held that it extended to Mr Martinez’s visual artworks (which were tattoo-related) and was geographically limited to the London Boroughs of Hackney and Tower Hamlets; a relatively local area around the tattoo parlour which included the location of the cactus shop. The Judge went on to conclude that it was difficult to imagine two businesses with less closely related activities. She referred to Harrods v Harrodian School [1996] RPC 697 (where it was held that where there is no common field of activities, the burden of proving the likelihood of deception and resulting damage is a heavy one) and Stringfellow v McCain Foods [1984] RPC 501 (where it was held that the further removed the field of activities are, the less likely it is that any member of the public could reasonably be deceived into thinking that one business was connected with the other). The get-up of the shops and their online presence was entirely different; the cactus shop was light, bright, minimalistic and plant-filled, whilst the tattoo parlour was a “place of character, pomp and excess” with the walls filed with modern art, music memorabilia, phallic and antique collectibles. These dissimilarities in get-up were highly material to the Judge’s overall consideration of misrepresentation. As with the differences in the field of activities, the dissimilarities in get-up made it less likely that any member of the relevant public could reasonably be deceived into thinking that one business was connected with the other. The actual evidence of misrepresentation adduced by Mr Martinez was, in the Judge’s view, very thin and she gave little weight to it given that the witnesses were all closely connected with Mr Martinez and were not “consumers” for the purpose of establishing deception. Furthermore, the Judge considered much of this evidence to be unreliable. The remaining evidence could be distilled to only one instance of deception of a member of the relevant public which supported the allegation of a misrepresentation. Even that was not material, as the Judge found there was no evidence that the misrepresentation had damaged Mr Martinez’s goodwill or was likely to damage it in a serious way. Given the evidence from Mr Martinez was very limited and, further, the evidence on the part of the cactus shop was that nobody had ever asked them if they were connected to Mr Martinez, the Judge was satisfied that the use of the word “PRICK” by the cactus shop did not amount to a material misrepresentation. She found that with the name “PRICK”, the relevant public would be likely to come very quickly to an appreciation that the name referred to the specific properties of cacti or tattooing, as the case may be, appreciate the humour, and not go on to assume that there must be a connection.

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DECISIONS

Designs CJ – C-395/16

Doceram GmbH v CreamTec GmbH 8 March 2018; Reg 6/2002 Reported by: Benjamin Kavanagh (Fellow), CIPA Designs & Copyright Committee The CJ followed the Advocate-General’s proposal that design features solely dictated by a technical function are excluded from design protection under article 8(1) if technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard. Doceram manufactures technical ceramic components, such as welding pins. It owns a number of registered Community designs which protect various geometrical shapes of welding pin. CeramTec also manufactures welding pins. Doceram claimed that CeramTec’s welding centring pins infringe Doceram’s design registrations. CeramTec counterclaimed that Doceram’s design registrations are solely dictated by their technical function and are not valid. The German Regional Court agreed with CeramTec. On appeal by Doceram, the German Higher Regional Court referred two questions to the CJ in order to resolve divergent national court approaches to interpretation of article 8(1), which is an autonomous concept of EU law. In answer to the first question, the CJ stated that article 8(1)

DESIGNS

must be interpreted as meaning that, in order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard. This adopts the so-called “no aesthetic consideration” approach and rejects the “multiplicity of forms” test. As pointed out by the Advocate General, if this were not the case, someone could obtain several design registrations of different possible forms of product incorporating features of appearance exclusively dictated by function and, in doing so, benefit from protection equivalent to a patent with being subject to the conditions applicable to obtaining a patent. This would prevent competitors from offering a product incorporating certain functional features or limit technical solutions, thereby depriving article 8(1) of its full effect. In answer to the second question, the CJ stated that it is for the national courts to determine whether the relevant features of appearance of a product are solely dictated by technical function, within the meaning of article 8(1), by taking into account all the objective circumstances of each case. There is no need to base those findings on the perception of an “objective observer”, as suggested by the German Higher Regional Court, because this is not a requirement of the regulation. In conclusion, this judgment should clarify what constitutes a registrable design at an EU level. It emphasises the different purposes of registered designs and patents, the former being to protect the aesthetics of a product and the latter to protect technical features.

Gloves off for a Design Law Debate – David v Martin TIPLO is delighted to invite you to its June event Wednesday 27 June 2018 in The Large Pension Room, Gray’s Inn, London In a change of schedule Martin Howe QC will now be debating this ‘gloves off ’ debate with David Stone. They will be looking at recent case law on EU designs – particularly at the informed user, how to assess overall impression, how important is the freedom of the designer, and what impact technical function has. Join two of the leading thinkers on EU design law for this debate, refereed by a third – Sir Richard Arnold. 6.00pm – Registration and refreshments 7.00pm – Dinner followed by speakers Speakers: Chair: Sir Richard Arnold David Stone of Partner, Allen & Overy and Martin Howe QC of Barrister, 8 New Square Buy your tickets online: https://webcollect.org.uk/tiplo/event/david-v-david-gloves-off-for-a-design-law-debate 50 CIPA JOURNAL

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PERSONAL

IP INCLUSIVE • PEB

IP Inclusive update By Andrea Brewster OBE

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his year’s World IP Day on 26 April had as its theme "Powering change: Women in innovation and creativity". IP Inclusive took the opportunity to post a series of blogs celebrating women throughout the IP sector – inventors, creators, IP owners and users, and the professionals who advise and support them. In parallel, our BAME support group IP & ME ran LinkedIn® posts with various women answering questions about their careers in IP and the importance of gender diversity. Thank you to everyone who contributed. At the end of April, we submitted comments on the EPO’s draft new Rules of Procedure of the Boards of Appeal, pressing for more gender-neutral language to avoid reinforcing unhelpful stereotypes and biases. We also obtained IPReg’s agreement to recognising IP Inclusive training events in their CPD guidelines, a big step forward in raising awareness of, and engagement with, diversity and inclusivity: see https://ipreg. org.uk/pro/manage-your-professionaldevelopment/cpd-regulations/. Other good news is that the IP Inclusive initiative has been shortlisted for the 2018 Memcom membership excellence award for “Best Equality or Diversity Campaign”. The winners will be announced on 16 May [see page 3].

As I write, we’re gearing up for our Mental Health Awareness Week events. We kicked off with a survey on stress and mental health problems in the patent profession and the support needed to address them. If you haven’t yet done so, please visit https://www. surveymonkey.co.uk/r/XF7QJDX and add your voice. The survey is anonymous and confidential; we’ll report the overall outcomes later this year. Meanwhile, Monday, 21 May was the UN’s World Day for Cultural Diversity. We’re encouraging everyone to Do One Thing for Diversity and Inclusion: and share their photos and videos on social media using #Strengthindiversity. Other events coming up include the alwayspopular IP Inclusive/CIPA/CITMA/ FICPI-UK/AIPLA Diversity in IP breakfast on Friday, 15 June (which this year will focus on diversity “champions”) and a webinar on the business case for diversity on Thursday, 5 July. More details on our website blog http://www. ipinclusive.org.uk/blog. One of our projects this year is to upgrade the IP Inclusive website, to incorporate for example events listings and registrations and better access to our supporting resources. We need to raise about £9,000 for this, so if your organisation would like to help sponsor

the project (sponsors will be listed on the new site), please let us know as soon as possible. It’s a terrific PR opportunity as well as support for the IP Inclusive cause. Finally, please help us build on our recent Careers in Ideas launch. When you visit schools, universities and careers fairs, take our resources with you (download for free at http://careersinideas.org.uk/resources/) and borrow one of our pop-up exhibition banners, kindly funded by IP Federation. Or maybe you can help in other ways, for example volunteering case studies, starring in one of our “My career in ideas” video blogs or sponsoring the video production costs? Remember that everything you do for Careers in Ideas will help both your own organisation, and the IP professions as a whole, to attract a wider range of talent. 9 May 2018 IP Inclusive is open to all IP professionals and those who work with them. For more information, visit our website, www.ipinclusive.org.uk; follow us on Twitter (@IPInclusive, @ip_out, @bameipinclusive) or join one of our LinkedIn® groups. And if you’re interested in getting involved, please contact andreabrewstercipa@gmail.com.

PEB qualifying examination registration and results dates 2018: •

Examination registration closes – Friday 20 July 2018

Qualifying Examination dates – between Monday 1 October 2018 and Friday 5 October 2018

Result issued to candidates by email – Monday 4 March 2019

Results published on the PEB website – Wednesday 6 March 2019

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EDUCATION

CAREERS IN IDEAS

Careers in Ideas Chris Burnett (Fellow) reflects on the launch of Careers In Ideas, and the work ahead to raise awareness of IP with students.

O

n 10 April, a crowd of over 100 IP professionals, careers experts and students gathered at the Royal Society of Medicine for the launch of “Careers in Ideas”, a project set up in connection with IP Inclusive which seeks to increase awareness of the many IP-related careers available. Careers in Ideas-branded careers booklet, poster, PowerPoint presentation and website (http://careersinideas.org.uk/) were created, free for all to use, to be taken into schools and universities to introduce students to IP-related careers. Crucially, a large range of possible careers in IP are covered by the materials, from records and secretary roles, to attorneys and judges. Host and IP Inclusive leader Andrea Brewster introduced the event. She explained the need for diversity that underpins Careers in Ideas, which is in connection with IP Inclusive, and how many potentially great people are lost to the world of IP, since they have no awareness of IP and the possible careers available. Johnny Rich, a consultant in higher education, gave an enlightening presentation about the Careers In Ideas materials, which he produced alongside Duncan Grant of Ashridge Communications. Johnny explained how they identified specific things about IP careers that could be used to reach a wider audience and interest young people: creativity, ideas, changing the world, and impact and influence. This is how the name, Careers in Ideas, and our three taglines (we all have ideas, sometimes people pay for them, and that’s intellectual property!) were born. The way in which the message you want to give out is perceived was emphasised during a case study. The clear and positive message given by a leading brand of washing liquid contrasted sharply with advice for a particular career that jumped from “do you like science?” to “podiatry is awesome!”, leaving out numerous improbable and unsurmisable links in between. Clearly, if we are going to invigorate the next generation of IP stars, we will need to be a bit smarter than telling people that “patents rock!” or “trade marks are sick” or whatever it is kids say these days.

Panel discussion I was fortunate to chair a panel discussion with the very people who knew exactly how to make best use of the materials. The panel consisted of Johnny Rich, Keith Herrmann, Director 52 CIPA JOURNAL

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of Employability and Careers at University of Surrey, and my colleague at AA Thornton Julie Barrett-Major, a patent attorney who had also worked at the University of Essex and has extensive experience of talking to students. The panel provided a great insight, and left the audience in little doubt of the road ahead: if we are going to inspire the next generation with careers in IP, we are going to have to get them whilst they are young. Certainly, for best results students should not be introduced to IP much later than the first few years of secondary school. Johnny explained that once they have made a career decision, students often will not change their minds. We will need to influence their original decisions. Keith explained that careers paths are not linear. We should explain to young people that if they start along one path into the IP professions, they may still be able to cross over to another path. So, GCSE, A level and degree subjects may not tie someone down to a particular path. Caution is required however, since certain careers in IP require particular qualifications, such as a science or engineering degree, which requires the right choice of A-levels – if a student has a particular career in mind, they ought not to close the door early by taking the wrong subjects. When talking to younger students, there is little to be gained in talking exclusively about the careers themselves. The average 12-year old will probably only be aware of the careers of their family, their teachers, and what they see on TV. There is less awareness-raising needed for doctors, teachers… astronauts. Julie explained that the best way to engage with the students is to find out what interests them. IP surrounds us, so it is not hard to find examples the students relate to. Are they into music? You can talk about copyright, maybe how Robin Thicke’s song “Blurred Lines” didn’t blur Marvin Gaye’s lines. Are they into fashion? There are hundreds of copyright, design and trade mark aspects to discuss. They like their gadgets, their phones? The next great electronics attorney or tech transfer guru could be sat in front of you. Essentially, you can raise awareness of IP, and get the students thinking about everyday examples, without having to mention a single specific career. Down the line, when the students are thinking about career choices, they will be amenable to a career in IP if their minds are already switched on to what IP is, and the materials will be there to guide them. www.cipa.org.uk

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EDUCATION

Recruitment vs outreach There is a clear distinction between the two. Outreach is a long-term awareness-raising exercise. As Keith pointed out, it’s a 20-year game. Recruitment is an immediate-term attempt to fill a vacancy. Both are of course necessary, and a thorough and well-implemented outreach programme will aid recruitment immeasurably. You want to recruit the best possible person for the job? You can only do that if they actually apply. Get the outreach right, and the chances of the best people applying increases. Although it is preferable to target the young, sixth formers, secretarial college and university students could still be convinced to consider a career in IP. And, it will get easier with time. This all sounds so terribly daunting! Here’s the thing. In order to increase the pool of talented, diverse candidates, firms will not need to empty into every school in Britain and overnight become outreach workers. There are not that many jobs in IP every year to justify it. As few as 50 secondary school in the UK, having the right blend of ethnic and socioeconomic diversity, might be enough to sustain a decent pool of future talent. That’s less than one school a firm! But how to link up with a school? The key is for each firm to establish a working relationship with the school.

CAREERS IN IDEAS

Get to know the “gatekeeper”. Perhaps a member of staff has a child there? Or a family friend? Maybe you went there yourself (bearing in mind we are trying increase diversity, not entrench the opposite!). Schools have to provide careers advice, and providing a fun package that is relevant to what the students are learning at the time might go down well. Do they have a science week? Or a project related to business studies? Maybe they have other speakers from different fields in during careers week? The materials include a presentation that could be bolted on to that of another speaker. Speak to the school, find out what might work. Similarly, ties could be established with a local university. The IP world will benefit as a whole if every firm does their bit. Individual firms will benefit too. You will make new contacts, attract a broader pool of candidates, get good PR, and give staff speaking opportunities.

Next steps It is appreciated that this is a big ask of the IP professions. Collectively, we can do it. Collectively, we have produced some great materials that will aid the task of helping students. We are now looking for volunteers who can put their heads together and come up with perhaps some lesson plans, some great ideas for relatable subject-matter to talk to the students about. Perhaps people want specific training on how to talk to students… it take teachers years of training, so why should we suddenly manage it? Perhaps you want links to professional outreach groups to do the work for you, and save having to release a valuable staff member for a day. Perhaps you want help in choosing schools? We want to have this conversation. Please contact us at careers.in.ideas@gmail.com and we will discuss ways in which we can all help.

Thank yous We would like to offer our thanks to everyone who has helped us bring Careers in Ideas this far. Many firms have given their time and money to produce the website and materials, and nothing would be possible without their help. A big thank you goes to the following: A.A. Thornton & Co; Boult Wade Tennant; Carpmaels & Ransford; CIPA; CITMA; D Young & Co; Ellis IP; Dehns; IP Federation; Page White & Farrer; Haseltine Lake; Potter Clarkson; Powell Gilbert; TLIP. The final word should go to Elizabeth Jones, Managing Partner of Dehns, who co-sponsored the launch night: “Diversity in the IP professions is central to achieving a healthy future for all associated career paths in this area. It is clear that a great deal of hard work has gone into producing an engaging and practical online resource for those interested in IP as a career option. We are proud to be able to assist the promotion and future development of ‘Careers in Ideas’ through this event.” Volume 47, number 6

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CPD & EDUCATION

INFORMALS

Trainee Patent Examiner Hosting Event – 2018

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his year for the second time running, the IPO and CIPA Informals Committee organised 12 successful visits for trainee patent examiners to a variety of IP firms. The aim of the event was to mirror the annual CIPA Informals event and allow trainee patent examiners to see the other side of patent prosecution and gain insight into the role of a patent attorney. Accordingly, each visit was tailored by each firm, with majority of firms splitting the visits into morning sessions, lunch (including networking), afternoon sessions, followed by workshops and presentations. An activity which the trainees enjoyed was the drafting workshop arranged by many firms. As drafting does not fall in the patent examiner job description, the trainees found it both fascinating and exciting to see how claims come to life, allowing them to see patent applications in a different light. A further aspect of a patent attorney role which the examiners were not aware of is that of the client-attorney

interaction. As a patent attorney, our clients are our priority and correspondence is therefore tailored accordingly. This was something the trainees found interesting to see, with trainees saying that they gained an appreciation for why attorneys do certain things when it comes to responses and amendments. In summary, the events allowed trainee patent examiners to interact with trainee patent attorneys and exchange training experiences and differences, something which was appreciated by both sides. Overall, all the firms did an excellent job and successfully showed all the trainees what the job of a patent attorney entails. From being welcomed by CEOs, managing partners and senior partners to well-tailored presentations and insight into the patent attorney profession, all the firms showed great enthusiasm towards the event. The IPO and Informals Committee would like to take this opportunity and thank all the firms for kindly hosting the trainees. Sanam Habib Informals Patent Office Liaison

Feedback from trainee patent examiners: The Informals Committee is dedicated to make these events as productive and insightful as possible. We kindly received feedback from the trainee patent examiners for each visit. Below are some comments, which the IPO, the Informals Committee and the firms appreciated: “The visit was beneficial, the claims drafting workshop highlighted the difficulties in drafting which was interesting’’ “We gained an appreciation for why attorneys do certain things’’ “The firm really felt like a team’’ “Found the visit highly worthwhile and really interesting, the claims drafting workshop particular standing out’’ “It was also clear that the firm was interested in working with the IPO for the benefit of everyone, which was very positive’’ “Interesting to see how attorneys deal with clients, and foreign attorneys, as well as with correspondence from the IPO’’ “Really enjoyed the visit! It was well planned and felt quite personally tailored’’

The 12 firms involved in organising this event are listed below:

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CPD & EDUCATION

INFORMALS

Informals’ update There is no Yellow Sheet with the June CIPA Journal, but below is a brief update from the Informals. Football The CIPA five-a-side tournament is taking place this year on 27 July. The entry fee is £106. Please contact Sam Giles at Mathys & Squire to book a place. There is currently only one space remaining.

Foundation Lectures The CIPA Informals’ Foundation Lectures covered a wide range of material in May, from both the patent law side of our work to some more general topics on copyright IP law and basic English law. Simon Davies (D Young & Co) gave us a crash course on the “Patentability of Computer-Implemented Inventions”, taking us through the woes and challenges associated with applications coming close to (or within) excluded subjectmatter territory. Kathryn Eldridge (Kilburn & Strode) took us through the various methods available for attacking the validity of a patent in her lecture on “Attacking Patents”, including third-party observations, EPO oppositions and UK court proceedings. William Smith (Bird & Bird) continued in his talk on an “Introduction to Copyright”, an area not quite so patentable but still relevant to our practice in the broader context of IP law. Mike Leaning (IPO) provided us with an interesting look into procedures required for secret patents in his talk on “Security Provisions”, and Rayyan Mughal (Marks & Clerk) concluded May’s lecture series on the topic of “Company & Contract Law. Recordings and slides of these lectures are available in the members’ area of the CIPA website: http://www.cipa.org.uk/membership/informals/informals-lecture-series/foundation-2018. Tom Bell

Study Guide to the Patents Acts (2018) £56 non-members – £47 members, +PP for outside the UK Doug Ealey’s Study Guide to the Patents Acts sets out to achieve the opposite of such books as Visser and Hoekstra. Rather than provide exhaustive commentary on patent law for reference during the open book EQEs, it instead simplifies the law and commentary as far as possible to provide a bare-bones reference that can be readily learnt by students taking the closed-book UK finals. This book is designed to help prepare for the PEB FD1 (formerly P2) examination. The tenth edition has been updated to incorporate recent changes in law and to revise the guidance on taking the exam.

To order a copy please email publications@cipa.org.uk or visit www.cipa.org.uk/eshop/ or go to https://www.linkedin.com/grp/home?gid=4425194 to find out more on the FD1 / P2 Study Guide group on LinkedIn.

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CPD & EDUCATION

INSTITUTE EVENTS

Bolar and related exemptions – what do they protect? CIPA webinar; 13 February 2018. Speaker: Paul England

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he main discussion points of Paul England’s review were the provisions relevant to the UK before and after the new experimental use exemption (new-EUE) enshrined in The Patents Act 1977 of 1 October 2014, via sections 60 (6D) and (6E). Prior to this, the UK was subject to the legislation of the original-EUE (Patents Act 1977 section 60(5)) and the regulatory review defence in the EU Directive 2001/83/EC (the ‘Bolar’ exemption). The object of the new UK legislation was to clarify the extent to which conducting clinical trials to assess the safety and efficacy of a patented drug constitutes patent infringement. It is important to remember that all three pieces of legislation remain current, but that Bolar and the new-EUE apply only to medicines. Why do these various exemptions exist? For the pharmaceutical industry, bioequivalence and stability studies are required to obtain an abridged marketing authorisation (MA). Generic drug companies therefore might need to delay research until originator-patent expiry: a situation that also potentially extends the patent-holder’s monopoly. The original-EUE (and legislation

in other countries) provided neither a common legal framework nor clarity on whether such studies were covered. It was hoped that the EU Directive (Bolar) would provide the solution – ‘Conducting the necessary studies and trials with a view to the application of paragraphs 1, 2, 3 and 4 and the consequential practical requirements shall not be regarded as contrary to patent rights or to supplementary protection certificates for medicinal products’ – by covering activities conducted for the purpose of the abridged procedure, but it has been implemented differently in different EU member states. Under the original-EUE, and whilst especially relevant to drugs, the leading UK cases (Monsanto v Stauffer and Auchincloss) were linked to agrochemicals and established that permitted activities included trials conducted to discover something unknown, or to test an hypothesis, or to find out whether something which is known will work in different conditions. Trials not permitted by exemption were those carried out to demonstrate to a third party (for example, a regulatory body) that a product worked as claimed by the

Table: Drug regulatory process under EUE and Bolar – UK, Germany and the Netherlands United Kingdom

Germany

Netherlands

Bolar

original EUE

new EUE

Bolar

EUE

Bolar

EUE

?

(abridged)

(full)

?

(abridged)

(full)

Phase IV (post grant) clinical trials

?

probably

probably

Third-party supply of drug for MA

probably

probably

probably

?

Stockpiling products

Research tools

 MPAs

 for MAs

Batch release testing Clinical trials for MA Manufacturing/storing/ importing for clinical trials

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CPD & EDUCATION

maker, or uses not related to subject-matter, e.g. research tools, or uses that were “preponderantly” commercial. Turning to the impact of Bolar and pre-October 2014, the UK interpretation of the EU legislation was clarified by the IPO and the MHRA under a practice note indicating that its coverage was limited to the abridged MA procedure for generics and to EU authorisations only. Paul continued with a compare-and-contrast of four main EU countries Germany, France, Italy and the Netherlands’ approach to experimental use and interpretation of Bolar (drug) exemptions. It was clear that permitted activities differ. For example, the German Patent Act and two leading legal cases (Clinical Trials I and Clinical Trials II) allowed for a different interpretation (compared with the UK) of exempt activities including research not confined to that for scientific purposes but also for commercial purposes e.g. clinical trials. Interestingly and like the UK, non-patent related research tool use and bioequivalence studies are not exempt (because new knowledge is not being acquired). Subsequently, in Germany, Bolar was implemented in 2005 for medicines under section 11.2(b) of the German Patent Act and provided a considerably broader scope: ‘Studies and trials and the resulting practical requirements which are necessary in order to obtain an authorisation to market a medicinal product in the EU or to obtain authorisation for a medicinal product in one of the member states of the EU or in a Third Country’.

INSTITUTE EVENTS

This is broader than the UK Bolar exemption by not differentiating between generic and innovator drugs, and providing exemption for non-EU countries. Paul also touched on third-party supply of patent protected drugs by generic manufacturers for exempted activities, and described two related Düsseldorf legal decisions and the lack of CJEU-level adjudication owing to plaintiff withdrawal of their action. He then proceeded to compare the various activities necessary for the drug regulatory process under EUE and Bolar in the ‘big patent jurisdictions’ of UK, Germany and the Netherlands: see table. The new-EUE in the UK (introduced 1 October 2014, table; red column) is designed to make the UK a competitive location for conducting clinical trials. Note: this covers medicinal product assessment (MPA) only, and exists alongside all previous provisions. It covers activities including conducting clinical trials involving patented drugs to gain regulatory approval in the UK or elsewhere. Paul cautioned that the table is his interpretation of the new-EUE as it has not yet been tested in the courts. The IPO has also issued guidance. Paul concluded with a discussion on the possible impact of the Unified Patent Court (UPC) which will regulate Bolar via article 27(d) of the UPC Agreement. However, results are awaited of an EU Commission consultation on reform of the Bolar exemption (Upgrading the Single Market, October 2015) which could affect UPC interpretation even before the court opens. Alexis Harper (Associate)

Announcements

Gray’s Inn Road, London WC1X 8AQ. The IP Federation’s phone

UCL IBIL's 10th Annual Sir Hugh Laddie Lecture

may be some disruption to the phone service between 8 and 11

The 10th Annual Sir Hugh Laddie Lecture will take place on 20 June

June. Please contact via e-mail during this time: david.england@

2018, and Sir Robin would like to extend an invitation to attend to

ipfederation.com, admin@ipfederation.com

all CIPA Members. Entrance is free, but it is necessary to register, as places are limited. See: https://www.ucl.ac.uk/laws/events/2018/ jun/10th-annual-sir-hugh-laddie-lecture-hh-michael-fysh-qc-sc

number and e-mail remain the same. Please note that there

Freshfields Bruckhaus Deringer LLP has appointed Christopher Stothers (Associate) as a partner and Laura Whiting (Associate) as counsel in its patent litigation team in London.

Kilburn & Strode launch Innovation For All Foundation From this financial year, Kilburn & Strode will donate 1% of its annual

HGF Ltd announced that Kieran Killough (Fellow) and Susan

profit to charity, for the purposes of supporting organisations that

Keston (Fellow) were promoted to partner on 1 May 2018. HGF

provide opportunities in innovation, science and technology. The

has also opened an office in Westport in the West of Ireland.

Foundation will be managed by partners and staff of the firm,

HGF’s 16th office will be led by partner Craig Thomson (Fellow),

with external advice, as needed. Kilburn & Strode hopes this will

who will be supported by a team of Irish qualified patent and

encourage all firms who do not already make charitable donations

trade mark attorneys and the wider pool of talent throughout

to consider doing so.

HGF. Further details can be found at www.hgf.com.

From 11 June 2018, the IP Federation’s new address will be 60

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Letters for the Editor and announcements should be e-mailed to: editor@cipa.org.uk

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2016

The not-so-secret diary of a CIPA President

By Andrea Brewster

The ITMA Pee has beaten me to it. He has somehow managed to throw off his chains of office and cast them A P R around the neck of a new victim. I am cross that he got there before me, but I have to concede that because he has served a two-year term, his need may be marginally greater than mine right now. The new ITMA Pee is a trade mark attorneyette. I am looking forward to going drinking – I mean holding Presidential Summits – with her, like I did with the old ITMA Pee. Although obviously I do not mean old old, just out-of-date old. And anyway the new unbiased, inclusive me is happy to go drinking, I mean hold Presidential Summits, with anyone, of any age and any gender, outof-date or not, even a trade mark attorney who has only just become chartered, 125 years late. ITMA are clever because they also have a First VeePee and a Second VeePee and a Treasurer, all of whom move up one rung every two years until by the time they get to be Pee, they know everything and everyone and needn’t feel scared at all. At CIPA we prefer to take a random VeePee from nowhere, and a random Pee who has only just got the hang of being a random VeePee, and we throw them into the lions’ den (i.e. Council) and enjoy the spectacle. This means that anyone can be Pee (which is Good, from a diversity and inclusivity point of view), but also that anyone can be Pee (which is Bad, from a credibility point of view).

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The VeePee and I are giving a talk to some university law students. Our title is “IP at the coal face”. This means different things to each of us. For the VeePee, AP R who worked in Big Pharma, the coal face was a rich seam with a thriving colliery astride. For me, the coal face was more of a bucket and spade job. So, the VeePee tells the students about the value of IP to the economy, and about socio-economic models for incentivising innovation and growth. He explains different types of IP strategy, and options for monetising your intangible assets. He speaks of global licensing deals and high-stakes litigation. He shows pie charts and matrices, cites research papers and data.

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Then it is my turn. I tell them what it is like to be in private practice with a whole range of clients, from those who haven’t a clue about business plans to those who think they are the Devil’s work. Some of these clients, I say, have a good idea but no business. Others have a business but rubbish ideas, particularly when it comes to choosing distinctive trade marks or designing the next must-have consumer product. Some of them, to be honest, just pop by for a chat because they’re lonely. I speak about the clients who walk straight in from the farmyard with their latest invention, which is an apple-powered scarecrow with a gravity-defying anti-badger torpedo mechanism and an angular momentum-busting, Bluetooth®-enabled orientation widget, to whom I say “Hmm. Well. It’s a very nice scarecrow” and they say, “No, that’s not the scarecrow, that’s my dad.” In this way, I give the students a feel for the real-world application of IP and its impact on the Wess Curntry economy. Next, I take them through a case study I made up, in which I judiciously refrained from mentioning scarecrows and cider-based medicinal formulations, so as to safeguard client confidentiality. The VeePee reads my case study with his usual critical eye and says I have written it like a patent attorney exam paper. I ignore him because actually the case study is doing a very good job of illustrating the diverse IP and business issues that a real-life practitioner has to think about. It has also reminded the students how lucky they are to be studying law in a nice clean university, rather than getting their hands dirty at the intellectual property coal face. At 4 pm the students decide it is time to stop checking their WhatsApp® feeds and go for a drink. I ask if there are any further questions but they have already sussed I don’t have an awful lot of answers, so we all cut our losses. The VeePee and I head back to the coal face.

1.30 pm: I meet some IP lawyers and HR experts, in a large law firm that cares about diversity. They tell A P R me about community outreach, blind recruitment, internal support networks, Flexible Working Committees and other such namby-pambiness. Then I tell them about the patent profession, which thinks it doesn’t have a diversity problem and that unconscious bias is a nasty affliction that only other people, especially evil people, suffer from, and moreover that recoils from collecting diversity data in case somebody sees it.

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The nice people at the large law firm say: there, there; take some deep breaths and have some lunch. Then they say, bless them: we can help you spread the word about diversity (which isn’t a problem) and unconscious bias (which is only for other people), and we can lend you a room in which to do this if you like. And I am so grateful I almost weep on their shoulders. They are women, you see. Women are good at providing shoulders to snivel on. When we have all finished snivelling, the nice people tell me about Imposter Syndrome. This is apparently something many women suffer from. It is when you constantly worry you’re about to get found out for not being up to the job. I say: yes! I suffer from that! (Only they did find me out. So, I was right, see?) Also, I say: I work with quite a few men who genuinely are about to get found out but haven’t yet realised. I am biding my time, I say. We share a conspiratorial smile or two, and the rest of the lunch. 6 pm: This really is a day for namby-pambiness. My final engagement is a Women in IP reception. It is, of course, full of imposters. First we have some drinks. Then we share conspiratorial smiles about the men we know are about to get found out, especially those who rose to the top at a time when there were no women to compete with because the women were assumed to be busy sourcing biscuits. It is a strategic error to overlook the competitive potential of the people sourcing your biscuits. A lot of men are about to find this out. Then we have a talk by the STEMettes, who I have long thought have the coolest name ever, and whose job it is to persuade young girls that they really can build careers for themselves in STEM subjects. They have an uphill struggle, of course, what with the Imposter Syndrome, and with a lot of STEM-based careers involving being the only woman in the engine shed and having to socialise with lap dancers. The STEMette who speaks to us is full of energy and enthusiasm. But then, she is young, and that’s what you do when you’re young. She is looking for female role models, she says, in STEM careers. Her audience, many of whom are not so young, meet her gaze with a certain weariness. We are thinking: can an imposter really be a role model?

Unable to think of anything else celebratory to mark #WorldIPDay (Mr Davies and some of the other officers A P R are going to an IP Day party at the House of Commons, but I find parliamentary parties a terrible bore, darlings), I have summoned all my experience and compiled the following list of Best Things to Say to Your Clients. I bequeath it, free from encumbrances, for use by IP attorneys the world over, especially the ones in private practice. It is my personal #WorldIPDay gift.

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1. You know that great idea you want to tell the local newspaper about this afternoon? Please don’t. I have been known to draft a patent application in two hours, but it wasn’t my finest work. Also I would quite like to go home tonight. Volume 47, number 6

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2. You know that fantastic product you invented that no one’s ever made before? Check Google®. Second hit. If it isn’t the second hit you’re Googling it wrong. 3. You know you think all I’m going to do is fill in a WIPO form that you could download yourself for free? OK then: you do it. 4. You know you’ve been posting your drawings to yourself in brown envelopes, so as to prove you own the copyright? Whoever told you to do that was having a laugh. You need to get a black cat to sit on your drawings under a full moon, otherwise your copyright will never be valid. 5. You know you think it’s awful that I charge by the hour? Well guess what? So do your garage mechanics. Ask them to change the switch for the automatic rear boostificator and see what happens. 6. You know that up-and-downy part you said doesn’t suffer from friction? Oh yes it does. I have a friction detector in the end of my pen and it’s virtually going off the scale. 7. You know you want to patent your trade mark? Have a seat. *Sigh.* 8. You know you think you’ve got a worldwide patent? You haven’t. Trust me. 9. You know you want a worldwide patent? Well let’s have a little look at your business plan, shall we, specifically the bits about when you become profitable, and also the bits about where you’re going to market your Chipping Warmingsborough Festival t-shirts. 10. You know you made a list of potential trade marks? Shall we start by looking at the ones that don’t have the word BEST in them? Or PICTURE FRAME? Or SILVER-PLATED? 11. You know you said you probably don’t need regulatory approval for your all-natural flatulence remedy with extract of Cuprinol®? Let’s not chance it, eh? 12. You know you’re angry that I wasn’t available when you called this morning? I’ve been meaning to tell you: I have another client. Actually, I have several other clients. I know. Awful, isn’t it? Sorry. 13. You know that company you paid £5,000 to do your market research, patent your product and negotiate lucrative licensing deals? And you know that 20-page report they sent that looked just like the one they did for your mate but with different colour pie charts? No, I’m afraid I don’t think that’s just the introductory pack. 14. You know you said you copied the John Lewis® one? Could you un-say that please? 15. You know you think the IP system’s rubbish because you can’t afford to enforce your rights anyway? That is entirely my own personal fault. Please feel free to shout at me. 16. You know that company name you registered? Erm… 17. You don’t still want to patent your trade mark? OK. *Sigh.* Why not? 18. What do you mean, it also works the other way round??!! Could you not have told me that before? 19. No, I won’t be invoicing you for the coffee. Or the three hours of highly-qualified IP advice I’ve given you over the phone this week. I love my job so much I am happy to do it for free. Don’t worry about the rent and the salaries; I’m sure we’ll think of something. 20. Honest opinion? …Um, probably not, unless you can stop it making that farting noise. But I suppose you never know where the next James Dyson’s going to come from, do you? JUNE 2018

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PERSONAL

GOING REMOTE

Going Remote By Lucy Holloway (Fellow)

S

o far all of these articles have been about how working remotely has affected me. I’ve talked about what it’s been like working with my new “colleagues” in different countries and different time zones. I’ve talked about the challenges of achieving a decent work-life balance when everything around me is changing constantly. What I haven’t talked about yet is how it’s affected the folks back home. I can’t help but wonder if my absence is making their lives harder. I’d love to think it wasn’t. So far Remote Year has been a hugely positive experience for me – it would be great to think that somehow it was having a positive impact back home too. When I’m not halfway across the world (it’s Morocco this month) I’m part of a relatively large team at Barker Brettell that’s headed up by our senior partner. In the interest of scientific enquiry, I decided I’d do a quick survey. Don’t hold back, I told my colleagues, no names will be named. But please be honest and tell me truly: how much of an effect has my absence this year had on you? To my surprise, the prevailing answer has been not much at all. I’ve had no complaints from our (clearly charming, smart and awesome) paralegals. Yes, they’ve had to get used to scanning things in and emailing them to me when otherwise they would have left them on my desk, but we’re mostly paperless now so that’s not an enormous burden. They’ve also had to adjust to a slightly new system of diary management. On balance, though, that’s no harder than chasing round looking for files, and on the positive side my whole team can now see at the click of a button how busy I am... or not, as the case may be. My attorney colleagues have seen even less impact. Occasionally, they’ve had to press send on online filings if I’m wrestling with my VPN (I owe a couple of people thank you calzones for this – they know who they are). Sometimes they get picked on for urgent queries when it’s too late to get an answer from me. But other than that, all they’re missing is my sparkling feedback on their drafting and witty comments on official actions. The largest effect my absence has had has probably been on my trainee, who is, sadly, no longer my trainee. Face-toface contact is just so much better than talking over the phone, so it hardly seemed fair for me to keep responsibility for his training – plus if I’m in Vietnam and fast asleep when urgent input is needed that's less than ideal. The main loser in this

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situation is me. I no longer have his excellent assistance, whilst he’s now getting a new perspective on training from another qualified attorney at BB. So the impact on my own team has been relatively minimal, but what about the impact on the wider firm? Our head of IT, for instance, built me a virtual machine to remote into before I left back in January. He has also kindly put up with my many (but thankfully diminishing) VPN queries over the last few months. I was therefore somewhat trepidatious when I asked him how much of a hassle he’d found my remote escapade so far. To my surprise, I found myself described as an LMU (‘low maintenance user’). Apparently, supporting someone working in another country isn’t really any different from an IT point of view to supporting someone working from home in the UK – Laos or Lichfield, it’s all the same to him. For the most part it seems our firm has taken my working remotely in its stride. Why, then, when I asked my boss for his thoughts did I receive the terrifyingly ominous answer: “let’s talk on the phone”? Key facts: Morocco IPO: The Moroccan Office of Industrial and Commercial Property (OMPIC) – http://www.ompic.org.ma/en Equivalent of CIPA: No direct equivalent - new legislation in late 2014 made provision for OMPIC to hold a list of registered patent attorneys, and the criteria for entry onto the list. Number of Registered Moroccan Patent Attorneys: Not known Domestic patent applications by Moroccan applicants experienced a modest spike in 2013/2014, possibly in anticipation of the introduction of a new IP law at the end of 2014. Applications by foreign applicants have remained more or less constant over the last ten years, at about 800 national applications per year, and a similar number of PCT national phase entries. A European patent application filed on or after 1 March 2018 may now be validated in Morocco, providing a validation request is made and fee paid within the usual time limit for paying designation fees. It is not yet clear how many European applicants are taking advantage of this option.* * statistics courtesy of WIPO Statistics Database

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PERSONAL

When I opened that email I genuinely thought that was it. Despite my feeling that these last few months had been going well, he was going to say this year really wasn’t working out for BB, and they’d be asking me to come home. To my great relief, when finally, I worked up the courage to call him, that wasn’t what he wanted to say at all. My remote working was indeed going pretty well, he said. I’m working hard and more than hitting my targets. But even so, remote working just isn’t quite the same as being in the office. He wasn’t going to cut my year short, but nevertheless he’d rather I was back in the UK. I thought about why that might be for a while after that call, and I realised that targets aren’t the only things affected when you leave the office to work abroad – relationships are too. By far the most common feedback I’ve received from those back in the UK is, “I’m jealous”. Whether or not any of my colleagues would (or could) opt for this nomadic lifestyle, I can’t blame them for thinking it looks appealing. The perception that I’m on a year-long holiday will persist no matter how much I bill out. I will admit, my Facebook posts probably aren’t helping my cause much.

GOING REMOTE

The second most common feedback I’ve received is, “I miss you”. Which I have great sympathy with, as I miss everyone back home too. It’s isolating working remotely. I may be travelling with a community of fellow remotes, but they’re not patent attorneys. There’s no one here to bounce ideas off. I miss popping into my colleagues’ offices for their opinion on an examiner’s objection. I miss people popping in to see me and asking for my thoughts. As the year goes on I’m slowly losing touch with what’s going on back home and I can’t help but be a little sad about that. Working my way around the globe has been a fantastic opportunity and I can’t deny that I’m loving it. Yes, I’m still working (and working very hard). I haven’t packed it all in to go on a sabbatical for 12 months, or quit my job to backpack across the world. But nevertheless, I am aware that I’m not contributing to the wider team in quite the same way as I was before. That’s indisputably had an impact on those back home. I know I couldn’t be out here without their support – thanks guys! Lucy Holloway (Fellow) is an associate at Barker Brettell in Birmingham.

Infringement and Validity CIPA FD4 Study Guide £56 non-members - £47 CIPA members +PP for outside the UK Updated in 2018 by Philip Barnes, based on an original version by Nigel Frankland. For several years Nigel Frankland thought that there should be a study guide explaining to candidates what they need to do to pass the Patent Examination Board (PEB) FD4 (P6) (Infringement and Validity) examination. Nigel originally wrote the guide as he had seen many candidates who were not prepared for the examination. It has been updated for 2018 by a PEB examiner. Infringement and Validity is aimed at supporting any candidate taking this examination. The CIPA FD4 Study Guide, Infringement and Validity, is intended to introduce a trainee patent attorney to the realities of paper FD4 (P6) (Infringement and Validity) of the PEB. The book is addressed to a candidate who has been active in the patent profession for at least two years, and who has met the eligibility requirements for the examination. To order a copy please email publications@cipa.org.uk or visit www.cipa.org.uk/eshop/

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INSTITUTE EVENTS

Institute Events For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events

Wednesday 13 June 2018 Webinar

Mentoring FD4 (P6) PEB candidates – advice and guidance Time: 12.30–13.30 This webinar is delivered by a current FD4 (P6) examiner and is free of charge for Fellows who support trainees in their preparation for this challenging examination. How to approach the examination will form part of the introduction, including reviewing some of the published mark schemes and examiner’s reports. Common issues will be addressed and some myths and legends should be dispelled. CPD: 1; Prices: £0 (members £0) Thursday 14 June 2018 Webinar

IP Outside Your Comfort Zone: Patent Searching

Join CIPA alongside IP Inclusive, FICPIUK and AIPLA for The Diversity in IP Breakfast Meeting 2018. Breakfast will be served from 8am accompanied by a chance to network before going into the panel discussion from 8:30am. Prices: £0 (members £0) Friday 15 June 2018 Seminar

US IP Law and Practice Location: Staple Inn Hall, High Holborn, London, WC1V 7QJ Time: 17.00–20.30 Join CIPA, CITMA and FICPI with the AIPLA for an afternoon seminar at Staple Inn Hall. The talks will cover US/UK perspectives on a range of patent issues. See http://www. cipa.org.uk/whats-on/events/us-ip-law-andpractice/ for more details. CPD: 2.5; Prices: £126 (members £84)

Time: 12.30–13.30 This webinar will help you better understand the structured nature of the information within a patent document and how it relates to the patent search process, as well as provide awareness and tips to enable you to carry out effective and efficient patent searches in support of your patentability, freedom to operate and validity assessments. CPD: 1; Prices: £72 (members £48)

Friday 15 June 2018 Social

The Diversity in IP Breakfast Meeting 2018 Time: 08.00–09.30 Location: Staple Inn Hall, High Holborn, London, WC1V 7QJ

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Saturday 16 June 2018 Social

IP Ball 2018 Time: 19.00–01.00 Location: Gladstone Library, The Royal Horseguards Hotel, Whitehall, London

Time: 08.00–17.00 Our course is in two parts. The first is a remote learning module, in the form of prerecorded webinars and an accompanying printed training manual. This part can be completed any time within a two-month window, at the student’s convenience. The second part is a one-day workshop in London. The workshop includes two mock hearings, one before an “examining division” and one before an “opposition division”. All delegates will have the chance to participate actively in these hearings, and will receive coaching in case preparation and presentation. CPD: 8; Prices: £468 (members £468) Tuesday 19 June 2018 Seminar

Munich CPD Seminar Location: Technical University of Munich, Institutsbau Arcisstraße 21, D-80333 Time: 17.00–20.30 We are pleased to announce the 2nd CIPA Munich Seminar in June 2018! We expect talks and updates from the UK IPO and the European Patent Office and will also be followed by a drinks reception.

The IP Ball Committee and CIPA would like to invite you all to the Once Upon a Time fairy tale ball, once again held in support of Great Ormond Street Hospital Children’s Charity. For more details see http://www. cipa.org.uk/whats-on/events/

CPD: 2; Prices: £120 (members £96)

Prices: £105 (members £105)

Join speakers Anthony Tridico, Gemma Barrett and Dominic Adair for this CPD webinar that will focus on interesting recent patent decisions to have come from the EPO and the US Courts.

Monday 18 June 2018 Seminar

EPO Oral Proceedings Course – June 2018 Location: Hallam Conference Centre, 44 Hallam Street, London, W1W 6JJ

Wednesday 20 June 2018 Webinar

US/EPO Patent Case-law Update Time: 12.30–13.30

CPD: 1; Prices: £72 (members £48)

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CPD & EDUCATION

Thursday 21 June 2018 Seminar

Mock Oral Proceedings 2018 Location: CIPA, 2nd Floor Halton House, 20-23 Holborn, London, EC1N 2JD Time: 12.30–16.00 Via a live video-link between CIPA and The Hague, watch EPO examiners and EPA Chris Mercer enact a mock examining division hearing. Get an insight into the examiners’ thinking, not only during the oral proceedings but also while preparing beforehand and in the adjournments. CPD: 3; Prices: £96 (members £72)

Friday 22 June 2018 Webinar

UP/UPC experiences from an inhouse perspective: preparing for UP/UPC management, the opt-out decision & future UP filings Time: 12.30–13.30 This webinar follows on from the UP/ UPC webinar on the 4 June, and explores the actual experiences to-date with regard to preparations for the UP/UPC in an in-house IP department dealing with some 1000+ European patents and applications. This includes looking at training and involvement of the formalities officers, ensuring the case management system is ready and guiding the attorneys in their discussions with the businesses to see whether an opt-out should be considered. Speaker: Dr Maja Schmit CPD: 1; Prices: £72 (members £48)

Wednesday 27 June 2018 Webinar

UK Patent Case-law Update Time: 12.30–13.30 Join Jon Markham and James Porter for this CPD webinar covering important and interesting patent Volume 47, number 6

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decisions in the last 12 months from the UK courts and the UK IPO. Topics will include ‘UK Court Decisions’ by Jon Markham, and ‘Decisions from the Comptroller’ by James Porter. CPD: 1; Prices: £72 (members £48)

Tuesday 26 June 2018 Administrators webinar

SPCs – extending patent life Time: 12.30–13.30 Supplementary protection certificates (SPCs) play a vital role in extending the duration of patents for pharmaceuticals and plant protection products which undergo regulatory approval before they can be marketed. In this webinar we’ll cover everything Administrators need to know about these important IP rights, including: • What are SPCs? • Why are they important to the pharma and agrochemical sector? • What is required to obtain an SPC? • The procedure for obtaining SPCs – filing, prosecution and grant. Speaker: Garreth Duncan CPD: 1; Prices: £72 (members £48)

Thursday 28 June 2018 Seminar

Tuesday 3 July 2018 Webinar

Attacking the Counterfeit Supply Chain at Home and Overseas Time: 12.30–13.30 Do you wonder what is going on in IP enforcement outside of patents? Do you want to improve your knowledge and understanding of why the UK is regarded as one of the world leaders in IP rights enforcement? You might like to join Huw Watkins for this CIPA webinar on Attacking the Counterfeit Supply Chain. CPD: 1; Prices: £72 (members £48) Thursday 12 July 2018 Social

Cambridge Happy Hour Time: 18.00–19.30 Location: The Alex, Cambridge, 22 Gwydir Street, Cambridge, CB1 2LL Join CIPA at the The Alex for the Cambridge Happy Hour! Please note, this is for members only and to gain entry you must book online prior to the event.

Tuesday 17 July 2018 Webinar

Professional ethics Time: 12.30–13.30 For more details see http://www.cipa.org. uk/whats-on/events/

EPO seminar for patent administrators Location: CIPA, 2nd Floor Halton House, 20-23 Holborn, London, EC1N 2JD Join us at CIPA for a full-day seminar for Patent Administrators. The goal of this seminar is to present procedural issues, examples and updates from specific formalities areas, as well as to engage participants in exchanges with EPO experts and other patent administrators. CPD: 3; Prices: £144 (members £96) JUNE 2018

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PERSONAL

OBITUARY

Timothy (Tim) Wace Roberts 1937–2018

T

im Roberts, former IP Manager at Zeneca Seeds and international IP expert on plant biotechnology and genetics, died on 18 April at the age of 80 after a long struggle with cancer. He was CIPA President in 2001-02 and again in 2011-12 and served on CIPA Council from 1994. He was a member of several CIPA Committees and a leading member of the Life Sciences Committee [see the letter on page 65]. He also found time to act as General Editor of the European Patents Handbook and to support the educational work of the IP Awareness Network by writing a basic primer about the IP issues surrounding genetic resources and traditional knowledge. Tim was born in July 1937, the first of four children. He was educated at prep school in County Down, and subsequently at Sedbergh School in Yorkshire (now Cumbria). In 1956, he was awarded a scholarship to Trinity College Oxford and read chemistry, as his father had done before him. Whilst at Oxford, he met his wife to be, Dominica Forrest, who was studying law. He graduated in 1960 and, with his legal interests, later that year joined the ICI Plastics Division at Welwyn Garden City as a trainee patent agent. Benefiting from ICI's internal patent training scheme, established under the enlightened managership of Walter Scott, Tim qualified as a Chartered Patent Agent in 1964. In 1967 he transferred to ICI's subsidiary company ICI Plant Protection Ltd to head their Patent Section and, in 1993, was appointed IP Manager of Zeneca Seeds, one of the four separate businesses of Zeneca, newly devolved from ICI. It was during this time that Tim began to develop his

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special interest and expertise in the IP and ethical issues surrounding plant biotechnology and genetic manipulation. After 35 years in corporate practice in ICI and Zeneca, Tim set about establishing himself as an independent consultant patent attorney in plant biotechnology and genetics working with Brookes Batchellor LLP (Brookes IP) in the UK and Kursheed Khan Associates in Pakistan. In this new role, he was in considerable demand, practising in many different countries as a lecturer, consultant and expert panellist. As well as CIPA, organisations which benefitted from Tim’s extensive knowledge and wisdom included WIPO, the World Trade Organisation (WTO), IP Federation, International Chamber of Commerce (ICC), British Society of Plant Breeders, International Seed Federation and the Green Industry Biotechnology Platform. Tim had a well-developed and sophisticated sense of humour illustrated as follows. Whereas others might have adopted a conventional route to highlight the problems and inconsistencies of business method patenting, Tim instead filed a UK and subsequent PCT patent application addressed to a method of protecting jokes, a joke in itself – U.S. Pat. Appl. Pub. No. 2006/0259306: Business method protecting jokes. His sense of humour and innovative approach to problem-solving was also evidenced during his time at Jealott’s Hill where, when particularly stressed he resorted to divert all incoming phone calls to another random internal number. This system worked well for a time (despite the confusion to the caller and random recipient)

until one day he forwarded his calls to the Jealott’s Hill site emergency number. This automatically put in train a series of alarms and internal security measures and the inevitable instruction not to repeat this in future. Many tributes have been given by those who knew Tim, a few of which follow: “Tim made a huge contribution to ICC’s work in intellectual property policy, especially in relation to genetic resources and traditional knowledge, his particular passion. Several members of the ICC IP Commission have said how sad they are to have lost a valued colleague whose commitment and perspectives they will miss. I have personally worked with Tim for about 25 years and have greatly appreciated his enthusiasm, open mindedness, sense of humour and kind nature. He will be missed by all of us here at ICC.” Daphne Yong-d’Herve, Chief IP Officer ICC “Tim was a great friend and adviser to the plant breeding industry, attending IP meetings at the International Seed Federation on

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PERSONAL

the Society’s behalf. For many years he worked tirelessly with us in discussions with the UK IPO on the interface between patents and plant variety rights. He understood the intricacies and what was needed to make legislation workable, fair and relevant. He was one of a very small elite in his detailed knowledge of the Rio Convention on Biological Diversity and the implications of its relationship with IP for plant breeding and other businesses. He uniquely combined academic understanding with pragmatic business sense. Tim’s passing has left a big hole in our industry’s knowledge base and also in our hearts.” Penny Maplestone, CEO British Society of Plant Breeders “I was lucky enough to associate my practice with Tim from its start and we remained associated until 2015 when I was elevated as a judge of the High Court. Our common passion for patents and innovation always strengthened our bonds. With my practice being operated from Pakistan, Tim was always

OBITUARY

willing to help my country with advice as needed in patent and plant variety matters. Tim will always be remembered as a fine patent professional with expertise to handle intercontinental matters aimed to promote innovation improving lives of millions of people.” His Honour Zulfiqar Khan, High Court Judge, Karachi, Pakistan “Tim had been a consultant of the firm for many years and we benefitted greatly from the vast experience his distinguished professional career had given him. His gentle, helpful manner will be missed by all the staff here and we feel privileged to have worked with him.” Partners and staff at Brookes IP Tim maintained the highest ethical standards throughout his professional and personal dealings, often operating on a pro bono or reduced fee basis where he perceived the issues required it. Outside work, he played a large part in the Catholic parish of St. Joseph’s, Bracknell, and was widely praised for his reading in church. He enjoyed

chess and even learnt Japanese to O level standard following business trips to Japan for ICI. He also became proficient at wind-surfing which he continued to enjoy on holiday until two years ago. In 2007, when Sheffield University awarded him an honorary LLD degree, their public orator began with quoting from Trollope's Doctor Thorne: "He is very nice in every way and if you were not told, I don’t think you would know he was an attorney." This so well sums up Tim – the IP profession and all those whose lives he touched are substantially poorer – we will all miss him. Tim married Dominica on 8 April 1961. Together they raised five children, four of whom survive, 13 grandchildren and two greatgrandchildren. He has two surviving sisters, Gabriel and Priscilla; his younger brother Patrick died a few years ago. We send them all our sincere condolences for their loss. Steve Smith (Fellow)

Letters to the Editor Letters for the Editor and announcements can be e-mailed to: editor@cipa.org.uk

Tim Roberts – Life Sciences I have been asked, in my position as Chair of the Life Sciences Committee (LSC), to write about Tim Roberts who sadly passed away in April. I hope you will all forgive me if I add some personal comments too. Many of us on the LSC have known Tim for a very long time, in some cases for over 20 years. He was a very active contributor to the committee, and we often relied upon him for his expert Volume 47, number 6

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advice. He was an enthusiastic member of the committee, as well as always being very friendly and polite. He would author and co-author a number of position papers, his specialist subjects being both plants (he worked for ICI Seeds at Jealotts Hill, near Bracknell, before it became Zeneca) and genetic resources and their biological origin. Indeed, on many fronts, his expertise was second to none. In my opinion, he was one of the (if not the) leading expert

on the Nagoya Protocol concerning biological resources, and we were lucky to have him speak at several of the annual Life Sciences Conferences on this topic. He took a very keen interest in this area of law (in particular in view of the recently political forces which culminated in the EPO changing its rules on plants). He was always willing to assist and, in this respect, his special interests in certain aspects of biotech life sciences was unparalleled. He would JUNE 2018

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also take up the mantle of dealing with DEFRA regarding the Nagoya Protocol and attending the relevant meetings. His devotion to representing the IP profession as well as his clients was second to none. We cannot think of many people who would have spent as much time as Tim fighting to protect biotech patent holders, both at WIPO and in the EPO, in order to resist the implementation of onerous regulations restricting the commercial freedom to use genetic resources. This is an extremely niche area and Tim had endless pragmatism and good sense. Tim was also a very ethical man with high moral standings. I remember our discussions many years ago concerning

OBITUARY

stem cells, starting with the EU Biotech Directive, but culminating in rule changes at the EPO, followed by the Brüstle case. Tim would refuse to take a case or a piece of work if he thought it felt immoral. The LSC had some interesting discussions on the patentability of stem cells, that delved into the ethics and morality of this issue, and Tim always had some interesting comments to make on the law in this area. On a more personal note, I found Tim to be an extremely kind and gentle man. He was endlessly polite, encouraging and enthusiastic. He was of great assistance to me when I first joined the LSC, and in many ways

took me under his wing and helped me develop my role both in CIPA and LSC. He was the Vice Chair of the LSC for many years, and I often relied upon him for his good and sensible counsel. He always had time for me and you could rely upon him to give sensible advice as well as being able to assist both personally and professionally. He will be sorely missed, not just by me, but by CIPA, the LSC, his clients and scientific researchers whose rights concerning research he championed. Simon Wright (Fellow), Chair, Life Sciences Committee Also see the obituary above.

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Dawn Ellmore Employment

®

Patent, Trade Mark & Legal Specialists 04/06/2018 19:55:14


THE PINKS

78

CIPA JOURNAL

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JUNE 2018

RECRUITMENT

www.cipa.org.uk

04/06/2018 19:55:40


Make Mondays more ‘Bearable’

Patent Secretary : Cambridge TJB56116 A prestigious top-tier IP firm seek an experienced Patent Secretary to join their busy Engineering and IT team. You will be a confident and pragmatic Secretary who will take on responsibilities such as drafting and filing Patent Office forms, billing, diary management, client correspondence, filing duties and audio typing. Superb opportunity with excellent salary package. Patent Formalities : South West TJB57064 Formalities Administrator sought by superb national practice to join their South West office and provide full Formalities and Administrative support to Fee Earners. A mixed and varied opportunity awaits along with an excellent working environment and superb financial package. Chemistry Patent Attorney : Various Locations CEF56620 One of the fastest growing IP Practices in the UK seek a Chemistry Patent Attorney at PQ / finalist level with 2-3 years' experience to join their superb team. This firm offers a modern working environment where Attorneys at all levels are encouraged to engage with both new and existing big name clients. You will have access to a well-rounded work load along with support from a friendly and encouraging team. PQ IT/Engineering Attorney : Cambridge CEF56562 Our client seek a Part-Qualified Attorney to join their esteemed IT and Engineering department with a view to becoming a key part of the ongoing growth of the Cambridge office. This role offers a varied workload in a fast paced environment where you will have significant client contact and the opportunity to learn from top-notch Attorneys. With international clients ranging from SME's to start-ups, this team can accommodate Attorneys from a range of disciplines such as software, computer science or a more general engineering background. Patent Attorney : Dublin RRM56177 One of the European leaders in IP is hoping to expand their impressive Dublin team. Given the span of clients the team work with, they can accommodate Attorneys from a broad range of specialties. This role will suit an entrepreneurial and ambitious Attorney who has both the talent and drive to make their mark in this impressive firm. There is currently capacity to consider applicants from qualified through to more a senior level so those currently in Partnership roles will be welcomed.

For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: catherine.french@saccomann.com • lisa.kelly@saccomann.com victoria.clark@saccomann.com • tim.brown@saccomann.com or rachel.molloy@saccomann.com

‘Tweet’ us at www.twitter.com/saccomannip

In-House Biotech Attorney : Oxford RRM54431 Fantastic opportunity for an Attorney who is seeking a new challenge to move In-House! Sought is a Patent Attorney with a strong Biotech background to assist in all elements of patent drafting, filings and oppositions. Those from Part Qualified (EPA or CPA) standard upwards will be considered and full support will be provided in both completing your qualifications and in time, building a successful IP function within the business. Chemistry Attorney (Part / Fully Qualified) : London LKA56401 Successful, growing boutique Practice; inclusive, down-to-earth team; flexible working / scope for home working; interesting, direct client case-load. Will suit a commercial, pragmatic Attorney who will enjoy playing a significant role in the firm’s development – genuine opportunity for equity for the right person. Engineering/Physics Patent Attorney – Finals standard to Partner level considered : Oxford LKA56216 Known for the premium clients that they are proud to represent, this Practice are looking for Physicist / Engineering Attorneys with impressive credentials. A supportive working environment along with work of the very highest calibre across the full spectrum of IT & engineering technologies; transparent route for progression; highly competitive salary and bonus structure available. In-House Patent Attorney : South East VAC56044 Bit of a blue sky thinker? This is a fantastic Industry role that would suit a Qualified Attorney (or those at finalist level) from a Physics, Engineering or Electronics background who has a desire to work in a fast-paced, innovative environment. This is a company where thinking outside the box is celebrated and all voices have equal weighting. A competitive salary and a whole host of benefits along with flexible working available. Physics/Engineering Patent Attorney : London VAC54011 You’ll be anything but a back room attorney at this firm! With more direct client work than your average practice, this firm push against heavy weights with an impressive client base.You will be at least part qualified and possess a Physics, Engineering or Electronics background. This is a firm that are appeased to recruit up to and including Partnership level. A great learning environment where no two days are the same - if you feel your role is getting a bit lack lustre, why not make an enquiry for a discussion in confidence?

Scan the QR Code for our website

www.saccomann.com

www.linkedin.com at the ‘Sacco Mann Intellectual Property Group’

‘Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment and an Employment Business for Temporary Recruitment’

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Become part of the next wave of growth Patent Attorney Ericsson is a world leader in the rapidly changing environment of communications technology – by providing hardware, software, and services to enable the full value of connectivity. We are on the quest for easy; creating game-changing technology that is easy to use, adopt and scale. Working in 175 countries, with over 100,000 employees, Ericsson develops the innovations and establishes the standards that bring a positive change for the society. Ericsson has more than 45,000 granted patents and more than 100 licensing agreements in place, bringing very substantial revenues for the company and enabling continued innovation at a high pace. We are ideally looking for a UK nationally qualified/European Patent Attorney, with a good first degree in electrical engineering, physics, telecom, computer science or similar to expand the UK Patent Unit to be based in central Reading, right next to the Reading railway station. Candidates should preferably have an interest or background in Cybersecurity, Media coding, End User Device functions or Machine learning/AI. General ICT knowledge is also advantageous.” Already possessing patent drafting and prosecution experience, you may now be looking to put to real use your commercial understanding of patents and their strategic relevance in identifying, protecting and supporting the commercial exploitation of the company’s patentable inventions. A strong emphasis on team-based methodology is prevalent within Ericsson, and your role will involve working cooperatively with friendly teams in primarily Sweden, India and the UK, but also with the teams in other parts of the world. With excellent interpersonal skills, you will have the ability to relate comfortably at all levels within the company, and to work effectively as an integral member of a team. General tasks would, for example, be claim charting, drafting and prosecution of PCT and EP application, handling applications/patents in other parts of the world, licensing support and evaluation of inventions. If you would like to discuss the role in further detail please contact Fredrik Egrelius at: fredrik.egrelius@ericsson.com

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Partner Opportunity, Electronics, London Leading international IP law firm Finnegan is recruiting a key hire into their Partnership in London. The role will be integral to the ongoing and future development of their European operation. The firm represents clients across virtually every industry and technology, ensuring each of their attorneys have access to a highly varied and challenging work portfolio matched to their own strengths and interests. There will be a great deal of direct client work, including litigation support and strategic advisory work, as well as involvement in business development, mentoring and travel overseas. Ideal candidates will already be a Salaried Partner (or equivalent), although those with a little more or less experience will also be considered. For more information or to apply please contact us on +44 207 903 5019 or email contact@fellowsandassociates.com.

Fellows and Associates Ltd. acts as an agency within the meaning of the Conduct of Employment Agencies and Employment Businesses Regulations 2003. We operate a strict equal opportunities policy. Fellows and Associates is a trading name and registered UK trade mark of Fellows and Associates Limited

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04/06/2018 20:00:00


THE PINKS

RECRUITMENT

PATENT ATTORNEY Newly Qualified or Part Qualified Leeds Based Urquhart-Dykes & Lord LLP are seeking a patent attorney with expertise in mechanical engineering to join our Leeds team. Some experience in other technical fields, for example electronics or physics, would be advantageous but is not essential. You will be either newly qualified or well on your way to completing your final exams, with an appetite to learn and take on your own portfolio. Whilst there is an existing caseload for the successful candidate, a desire to acquire, foster and grow new clients and contacts is a key aspect of the role. Therefore, you will need to demonstrate effective communication skills and the drive to grow the practice. You must have a minimum of a 2:1 degree in a relevant subject, for example physics or mechanical engineering. You will need to be able to interact with clients confidently and clearly, and understand and interpret new and complex technical concepts quickly. Enthusiasm, attention to detail, and a willingness to take on responsibility at an early stage are essential attributes, as are excellent written and verbal communication skills and an ability to work well within a team. The position offers excellent career prospects. UDL has an open and transparent career structure that we would be pleased to explore with you at interview. The position carries an attractive salary, private healthcare, life assurance and pension scheme. If you are interested, please send your CV and covering letter, in confidence, to: Samantha Chambers, Practice & HR Manager, UDL LLP, Arena Point, Leeds LS2 8PA. E-mail: careers@udl.co.uk Please quote reference LE-PA01 on your application. Also see page 88

Part Qualified or Fully Qualified CPA/EPA – Mech. Engineering/Physics background (Direct applicants only) Stratagem IPM has established an enviable reputation throughout the Lifescience, Cleantech and Hi-tech communities for its strategic approach to IP management to such an extent that the physical sciences part of the business is currently booming and requires more dedicated professional support.

We now require a high-calibre, qualified or near-qualified CPA/EPA or trainee to join the team in our Cambridge or Bristol office to assist us with a rapidly growing portfolio in the engineering/physics area. If you are looking for a company where your talents can make a significant contribution and your background includes:

Stratagem clients are predominantly well-funded Venture Capital-backed emerging companies, start-ups, multi-nationals, but also include academic and governmental institutions, venture capitalists and other investor groups, all of which can benefit from its unique approach to the management and understanding of the commercial value of IP assets in such businesses.

‡ $HQJLQHHULQJSK\VLFVGHJUHHDQGLGHDOO\H[SHULHQFH in industry ‡ 0DQDJLQJ,3SRUWIROLRVRQDJOREDOVFDOH ‡ )LUVWUDWHFRPPXQLFDWLRQVNLOOV ‡ $PELWLRQWRSOD\DOHDGLQJUROHLQDQH[FLWLQJJURZLQJ company ...then we are very interested in hearing from you.



Please send your CV including current or expected remuneration in confidence to Patricia Willett at the address below or by email to patricia.willett@stratagemipm.co.uk. Tel: 01223 550740 Stratagem Intellectual Property Management Ltd Cambridge Office: Meridian Court, Comberton Road, Toft, Cambridge, CB23 2RY Bristol Office: Whitefriars, Lewins Mead, Bristol, BS1 2NT

82 CIPA JOURNAL

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JUNE 2018

www.cipa.org.uk

04/06/2018 19:59:38


Your partners in Patent recruitment

G2 Legal is one of the UK’s largest privately owned legal recruitment firms. Our dedicated Patent & Trade Mark Division was formed in 2013. We are proud to have assisted Attorneys, from trainees through to partners, achieve the next step in their careers

Electronics/Engineering/Telecoms

In-House

Biotech & Life Sciences

Senior Associate - Newcastle

Part/Newly Qualified - East Midlands

Part/Newly Qualified - York

Ref: 120151

Ref: 67334

Ref: 124315

This role presents food for thought for those

Ideal for someone employed in private practice

Are you a part/newly qualified Patent Attorney

who are enthused at the prospect of becoming a

that wants to move into industry. Do you want

considering your employment options? I am

Partner in the near future.

to see the outcome of your efforts rather than

working with a firm that has grown their business

working on project after project where you are

from 15 Partners to 42 within 8 years. This success

client base containing cutting edge technology

not really engaged?

This company is at the

is largely due to the fantastic people within the

corporations, you will gain the opportunity to

cutting edge of innovation that has a world-

organisation and the company’s commitment

assist in a range of contentious activities including

class brand known for its quality, which makes

to training and developing their staff. There is an

opposition’s appeals and litigation support.

this a really exciting opportunity.

open door to progression that is not reliant on other

This firm’s reputation

is outstanding within this field.

Working with a

people moving within the organisation.

Electronics & Computer Science

Biotech

Electronics

Trainee - Nationwide

Associate - London

Salaried Partner - London

Ref: 124333

Ref: 129441

Ref: 118669

Are you seeking a trainee Patent Attorney position

Ideal for a progressive and commercially astute

An exciting opportunity is available to join this

with a well-respected IP firm that has a proven

qualified Patent Attorney (CPA or EPA) with a

London firm as a Salaried Partner. The role is

track record of developing careers? Providing you

proven life sciences/biotechnology background

designed to develop to equity within three years.

have a First Class degree in electronics, computer

and drafting/prosecution experience. You must

The well-established firm has a strong reputation

science or engineering, I want to hear from you. I

be comfortable in liaising with clients directly

within the industry for the quality of its work

am working with a variety of firms throughout the

and feel confident in advising and defending

within electronics. The team is the firm’s largest

UK seeking such individuals. Upon understanding

complex patent portfolios. First-hand experience

department, and this appointment will play a pivotal

your

of handling blue-chip, SMEs and university based

role within it in further advancing its market share

companies best equipped to introduce you to.

clients is desirable.

and strategic objectives.

Electronics & Mechanical Engineering

IT & Engineering

Chemistry

Qualified - London

Part Qualified - Cambridge

Qualified - London

Ref: 118671

Ref: 129947

Ref: 98939

This is a fantastic opportunity with a genuine market

A leading UK and European firm is looking to appoint

Qualified

leading salary available, high volume of contentious

a part qualified Patent Attorney. Candidates must

constraints?

work, high profile clients and a fast track progression

have at least completed the QM course and have

autonomous

to Partner in a top tier ranked firm. The firm is set

a mechanical engineering or physics academic

international firm has a strong presence in

up to reward fee earners effectively without having

background, as well as an interest in or experience

London as well as a solid reputation in Europe.

to work extensive hours. The right individual can

of handling subject matter in the mechanical

An opportunity has now arisen for an Attorney

benefit from working in a professional yet relaxed

sphere. The ideal applicant will have excellent

specialising in chemical subject matter to join its

environment and have the opportunity to learn from

communication skills and be seeking a challenging

busy London office. A competitive salary and good

leading industry professionals.

role as the next step in their career.

promotional prospects will be on offer.

career

motivations,

I

can

advise

the

chemistry

specialist

Seeking working

a

more

shackled

by

collaborative,

environment?

This

For further details regarding any of the roles please contact Lee Townsend, Senior Consultant. Absolute confidentiality is assured.

Email attorneys@g2legal.com

Tel 020 7649 9298

G2 Legal 26 Finsbury Square London EC2A 1DS

pp83-G2_1-RHS.indd 83

Mob 07426 043744

www.g2legal.com www.linkedin.com/company/g2-legal-limited

04/06/2018 19:59:16


THE PINKS

RECRUITMENT

London, United Kingdom

Patent Professionals As a leading global patent holder, Canon was granted 3285 patents in the USA alone during 2017. We’re now recruiting for the Patent Department within our European HQ. You’ll be joining a close team with strong international collaboration between patent attorneys, our formalities staff and other professionals in the broader IP and Legal team. The company more broadly has a warm and friendly culture, supported by flexible working policies.

Patent Attorneys x 2 We’re looking for two qualified Patent Attorneys with a background in physics, electronics, software, and we are particularly interested in candidates with experience in video encoding standards. The roles will be flexible but are likely to include working with our Research function and patent engineers at Canon to create and file UK and European patent applications, and to prosecute related patent applications throughout the world. The roles may also involve infringement, clearance, and opinion work, and possibly patent enforcement activities from time to time. You’ll also be willing to travel within Europe to meet with clients or attend EPO hearings as needed.

Canon is the world’s best imaging company – driven to enrich people’s lives and businesses with innovative products and smart digital solutions. Today we are a truly global brand, constantly challenging ourselves to find new ways of adding value through our growing portfolio of services and solutions. Across the EMEA region, we employ 18,000 people. Together we work in a respectful yet ambitious environment – collaborating to achieve the exceptional for our customers and always honouring our corporate philosophy of Kyosei, ‘to live and work together for the common good’.

Expect the excepƟonal 84 CIPA JOURNAL

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JUNE 2018

Patent Administrator One Patent Administrator capable of handling the full range of patents formalities from filing through prosecution to grant. Responsibilities will include preparing and filing documents for UK and foreign filings as well as diary management responsibilities to ensure the timely and efficient management of cases. You’ll ideally hold the CIPA Administration Certificate but this is not essential. What we offer: • •

Competitive Salary A range of company benefits including pension scheme and private health insurance

To apply, search for “Patent” on Canon Careers: www.canon-europe.com/about_us/careers

www.cipa.org.uk

04/06/2018 19:58:55


www.ip-support.co.uk 020 7776 8966 info@ip-support.co.uk

A selection of our current vacancies: PQ/FQ Patent Attorney - Elec/Telecoms - New Practice - London PQ/FQ Patent Attorney - Engineering - Flexible Working - Cambridge Patent Secretaries/Administrators - London and Cambridge

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THE PINKS

RECRUITMENT

Patent Analysts Southampton We are seeking two Patent Analysts and a Senior Patent Analyst Picture yourself working in one of the largest companies in the world. You are at the forefront of a transforming industry and this role will challenge you like no other. Our mission is to provide our consumers with a range of outstanding, innovative reduced risk products from which they can choose. Put simply: more choice, more innovation, less risk. We have invested $2.5bn over the last six years in the commercialisation and development of potentially reduced-risk cigarette alternatives and our commitment to the future is larger still. British American Tobacco’s R&D team has never been busier and we are now looking for two Patent Analysts and one Senior Patent Analyst to work from our global R&D facility based in Southampton. The successful candidates will support both R&D and the Patents team by assessing third party patents and communicating their potential relevance to R&D project teams. This will help inform R&D about the patent landscape in various technical areas, potential freedom to operate issues and provide intelligence on competitor activity and trends. The Senior Patent Analyst will also be responsible for directing and supervising the work of the two Patent Analysts. If this opportunity excites you, you have just excited us!

Core activities will include: 

Undertaking analysis of third party patent rights to determine whether they will impact BAT’s current, planned and future innovation activities working in close collaboration with R&D and patent colleagues.

Undertaking patent landscape searching and analysis to support the Patenting Strategy Process.

Supporting competitor intelligence activities by analysing both BAT and third-party patent rights to determine key areas of competitor activity and trends.

Communicating, clearly and effectively, the outputs from the analyses performed to key stakeholders.

Essential requirements: 

For the Patent Analyst roles - a science / engineering degree and experience in analyzing patents and summarising key information derived from them.

For the Senior Patent Analyst vacancy - a science / engineering degree and extensive experience in advanced patent searching and the ability to train others.

Excellent collaboration skills and ability to work with a range of clients from both R&D and the Patents team.

Advanced IT skills and the ability to work with and handle high volumes of complex data.

Excellent attention to detail and a real interest in patents.

Excellent analytical, presentation and communication skills, in particular the ability to present complex information in an easy to understand form.

The ability to set a personal example of collaboration to deliver consumer-led innovation supported by strong patent protection, whilst acting commercially and being consumer centric.

For more information please contact Oana Chermenschi by e-mail on oana-maria_chermenschi@bat.com.

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JUNE 2018

www.cipa.org.uk

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THE PINKS

RECRUITMENT

PATENT ATTORNEY London, Cardiff, Leeds, Newcastle or Milton Keynes UDL are seeking a patent attorney to join a highly successful team which is responsible for patents relating to software-implemented technologies including blockchain and cryptocurrencies. We act on behalf of a number of prestigious clients including, amongst others, My PinPad Limited (mobile payments and authentication solutions provider) and nChain Holdings Limited (global leader in the research and development of blockchain, Bitcoin and cryptocurrency-related technologies). You must have a minimum of a 2:1 in a relevant degree and be at least part qualified. Whilst direct experience of these exciting technologies is not essential, you will need an appetite to learn and take on your own portfolio. Enthusiasm, attention to detail and a willingness to take on responsibility at an early stage are essential attributes, as are excellent written and verbal communication skills and an ability to work well within a team. You will need to be able to interact with clients confidently and clearly, whilst understanding and interpreting exciting new and complex technical concepts quickly. A desire to learn and explore new technologies is a key aspect of the role. The successful candidate will need to demonstrate effective verbal and written communication skills, and the drive to support our clientsâ&#x20AC;&#x2122; growth. The position offers excellent career prospects. UDL has an open and transparent career structure that we would be pleased to explore with you at interview. The position carries an attractive salary, private healthcare, life assurance and pension scheme. If you are interested, please send your CV and covering letter, in confidence, to: Samantha Chambers, Practice & HR Manager, UDL LLP, Arena Point, Leeds LS2 8PA. E-mail: careers@udl.co.uk Please quote reference COMP-PA1 on your application. Also see page 82

Qualified Life Sciences Patent Attorney London We are a young practice, having started in 2014, yet the response to our offering has been extremely positive. We now have a vacancy in our life scienceâ&#x20AC;&#x2122;s team for a confident, commercially astute patent attorney with a flair for client care. We really enjoy what we do, and we want our clients to enjoy working with us. Our clients include multinational pharmaceutical companies, SMEs, biotech start-ups, and universities, to name but a few. The workload will be varied with an excellent mix of pre-grant and contentious matters, including involvement in the well-publicised CRISPR oppositions. The successful candidate can expect to receive an attractive remuneration package with private health insurance and contributory pension. The position is based in our London office; however, our systems are cloud based, so our working practices are genuinely flexible. Employment will be full time, or part time for exceptional candidates. If you want to be part of a dynamic and growing firm simply email us with a CV at recruitment@patent.boutique. No recruitment consultants, thank you.

88 CIPA JOURNAL

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JUNE 2018

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04/06/2018 19:57:20


We’re expanding Attorneys required in Electronics / Telecoms / IT

Other subject-matter also considered. www.abelimray.com/careers London | Bath | Cardiff

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Generous welcome packages available for direct applicants.

We offer a different working environment to many other firms, with a young partnership, flexible working attitude and a good work-life balance.

04/06/2018 13:06:10


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CIPA Journal, June 2018  

CIPA Journal, 1st June 2018

CIPA Journal, June 2018  

CIPA Journal, 1st June 2018