CIPA Journal, July-August 2018

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

July-August 2018 / Volume 47 / Number 7-8

GDPR & AI patents

Statistics on PEB examinations from 2014 to 2017 Julia Gwilt

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SPC summer review 2018 Carpmaels & Ransford

The cost of regulating patent attorneys Nicholas Fox

Privilege in the US for patent practitioners Finnegan

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

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CIPA CONGRESS 2018

JUMEIRAH CARLTON TOWER HOTEL

27-09-2018 Keynote Speaker: Sir Colin Birss, Judge at the Patents Court Topics to expect: • • • •

3D printing Licensing & Litigation standards Are ethics really relevant in IP? Will AI run the patent system?

Rates: Early-Bird Member rate Early-Bird Non-Member rate Student rate Academic rate Dinner Rate:

£205 + VAT £295 + VAT £105 + VAT £210 + VAT

£70 + VAT

We are hosting a dinner following the drinks reception at 6.30pm, the price includes 3 courses and half a bottle of wine per person. Members can book through the website, non-Members should email cpd@cipa.org.uk

Join us at the IP Inclusive drinks reception following the conference.

This is primarily a social event, but there’ll also be a chance to hear what IP Inclusive have been up to this year and their plans for IP Inclusive Week (12-18 November)

Congress is at the beautiful Jumeirah Carlton Tower hotel, just around the corner from busy Knightsbridge, If you are planning on staying at the hotel for the conference please contact cpd@cipa.org.uk for details of the reduced rate accomodation.

Conference Sponsors:

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Contents CIPA Life Sciences Conference Thursday 8 November – Friday 9 November 2018 De Vere Tortworth Court Tortworth Wotton-under-Edge GL12 8HH

See page 49 for more details

UP FRONT

24

3

28

SEPs in China – Sony loses its appeal

50 52

Administrators Conference FD1 Study Guide

Toby Mak Council Minutes

Lee Davies 5

General Meeting to amend the Bye-laws

IP infringement and property management companies

PERSONAL

Toby Mak 30

Lee Davies

Transaction farming and damages in China

40 42

Toby Mak

NEWS

33

US update: Privilege

Lucy Holloway 43

Finnegan

Manual of Patent Practice

IPO update 6

Industrial Strategy

6

Overseas report

IPO update Amanda R. Gladwin

48

37

51

7

Statistics on PEB Examinations

10

SPC review

38

IPO decisions

17

EDUCATION

Carpmaels & Ransford

45 39 46

Institute events Non-institute events IP Assessment

Cost of regulating patent attorneys

47

Midlands Meeting

48

UP and UPC

49

Life Sciences Conference

Julia Gwilt

GDPR and AI patents

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50

International; Support; Courses & Events; Recruitment

CPD report, Alicia Instone

Rachel Free & Loretta Pugh

Volume 47, number 7-8

THE PINKS

CPD report, Anne Williams

Nicholas Fox 20

Private screening of Bombshell: The Hedy Lamarr Story Yellow Sheet

Beck Greener David Pearce & Callum Docherty

ARTICLES

IP Inclusive update

Andrea Brewster

DECISIONS Patent decisions

CIPA-CITMA Cricket Club

Andy Spurr 44

6

The not-so-secret diary Going Remote

CPD report, Roxna Kapadia

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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

CIPA JOURNAL

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NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 2 May 2018, at 14:30.

B

efore the commencement of the meeting, Council held a minute’s silence in memory of Tim Roberts, member of Council and two-times President of CIPA. [See the obituary published June [2018] CIPA 64.]

Item 1: Welcome and apologies Present: S.F. Jones (President, in the Chair), J.A. Florence (Vice-President), J.D. Brown, P.G. Cole, M.P. Dixon, C.M. Hammer, G.J. Iceton (by phone), A.C. Instone, R.P. Jackson, R.D. Mair, 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: A.J. Rollins (Immediate Past President), C.P. Mercer (Honorary Secretary), A.R. Brewster, R.J. Burt, S. Ferrara, S. Harte, J.T. Jackson, A. Mukherjee, E. Nytko-Lutz and S.M. Wright.

Item 2: Conflicts of interest 113/18: There were no conflicts of interest.

Item 3: Minutes 114/18: The Minutes of the Council meeting held on Wednesday, 4 April, 2018 were approved, following amendment.

Item 4: Brexit 115/18: Stephen Jones advised Council that there was nothing specifically related to Brexit to report. Stephen added that, whilst not related to Brexit, the UK government had ratified the UPC Agreement, with Sam Gyimah MP, Minister of State for Universities, Science, Research and Innovation, announcing the ratification at IPAN’s World IP Day event in Parliament [see May [2018] CIPA Volume 47, number 7-8

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14]. Lee Davies said that the German constitutional challenge had been raised at the recent CNIPA meeting in Lisbon, with the German delegation taking the view that the court would be unlikely to reach a conclusion before the end of 2018 and that the deliberations could carry over into 2019.

on the Register of Patent Attorneys and are not regulated by IPReg. Action: Lee Davies to liaise with the Administrators Committee on the benefits of membership and a Code of Conduct for Paralegal Members.

Item 6: Regulatory issues Item 5: Bye-laws 116/18: Council noted the report on the Bye-laws. Council considered the timetable for the election of Council members and Officers under the existing Bye-laws and the proposed Bye-laws and asked Lee Davies to prepare an announcement for the Journal covering both sets of circumstances.

Action: Lee Davies to prepare an announcement for the Journal for the election of Council members and Officers, setting out the timetable for both the existing Bye-laws and the proposed new Bye-laws. [See June [2018] CIPA 3.]

117/18: Council agreed that there needed to be consistency between the Paralegal Member grades offered by CIPA and CITMA and approved a recommendation from Lee Davies that the subscription rate should be set at an equivalent level.

Council noted that the subscription rate would also be in line with membership of the Institute of Paralegals and the National Association of Licenced Paralegals. Council approved the proposal that patent administrators completing the CIPA course should be offered complimentary Paralegal Membership until renewal in next calendar year.

Council asked the Administrators Committee to consider the benefits of membership associated with Paralegal Membership and the need for a Code of Conduct, as Paralegal Members are not

118/18: Stephen Jones advised Council that IPReg had confirmed that the panel for the appointment of a permanent Chair would be comprised of the Acting Chair of IPReg (chairing the panel), two IPReg Board members (probably lay), the CIPA President, the CITMA President and an independent external person.

Stephen added that he had been liaising with IPReg on the interview dates and that CIPA had had the opportunity to comment on the candidate briefing pack being prepared by the recruitment agency.

In response to a question from Alasdair Poore about publishing the letters between CIPA and IPReg, Stephen Jones said that he would prefer a summary in the Journal as he felt that the letters dealt with the mechanics and detail of the recruitment process. Rob Jackson said that it was important that members see that CIPA is doing its best to influence IPReg on their behalf.

119/18: Council considered a request from IPReg about CIPA’s policy on firms allowing a number of patent attorneys to share access to webinars broadcast by the Institute. Council observed that the CPD system administered by IPReg was based on the principle of self-declaration and that it was IPReg’s responsibility to assure itself that the CPD claimed by registrants was genuine. Council felt that this was separate from the issue of firms paying for individual members to access webinars and then allowing JULY-AUGUST 2018

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NEWS

other members to participate in the webinars. Lee Davies advised Council that the work on the database and website content management system to allow bulk registration for webinars had been completed and that Dwaine Hamilton was working with the Professional Development Working Group on the introduction of the scheme.

120/18: Council noted the appointment of Adam Cooper to the Legal Services Consumer Panel and the reappointment of Dr Helen Phillips for a second term as a non-executive Board member of the LSB. 121/18: Council considered the Practical Training Protocol Template published

by IPReg. John Brown observed that the template needed to be read in conjunction with the competency framework and added that the template did not make reference to drafting. Stephen Jones added that, when representing IPReg at the recent new student induction day, Keith Howick had indicated that IPReg was about to publish the template.

Alasdair Poore noted that the template was for guidance only and suggested that CIPA should make members aware that it had been published by IPReg [see June [2018] CIPA 12]. Catriona Hammer added that this would be an opportunity to remind members of the work that the Education and Professional Standards Committee had done on standards. Lee Davies said that he would discuss the template with Fran Gillon and Keven Bader at the next meeting of the Chief Executives and would agree how best to publicise it to members.

Item 7: IPO and EPO matters 122/18: Council was saddened to learn that Tim Jackson, Chair of the Patents Committee, had been in hospital recently and was now recovering at home. Council wished Tim a speedy recovery.

123/18: Stephen Jones said that he had emailed Tim Moss thanking the IPO for its work in ensuring the UK ratified the UPC Agreement.

4

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COUNCIL

124/18: Stephen Jones advised Council that he would be attending the inauguration ceremony of the new European Patent Office building in The Hague, on Wednesday, 27 June 2018.

Item 8: Committees and committee reports 125/18: International Liaison Committee Council noted the report from the International Liaison Committee.

126/18: Congress Steering Committee Council noted the report from the Congress Steering Committee. John Brown informed Council that the Committee still needed to finalise a couple of sessions and that, at the request of the President and the Vice-President, the Committee was considering reinstating the Congress Dinner by expanding the Speakers’ Dinner.

127/18: IP Commercialisation Committee Council noted the report from the IP Commercialisation Committee. Catriona Hammer advised Council that the Committee had filed its response to the IPO’s consultation on trade secrets and that members of the Committee were working on the detail with the IPO [see May [2018] CIPA 14]. Catriona added that it was important to maintain a dialogue and seek to influence the Minister as the Statutory Instrument is to be implemented in June. Catriona informed Council that the Committee was continuing to liaise with the IPO on the IP-related considerations for future trade agreements and that the Committee hopes to recommend a policy position for Council in due course.

128/18: Litigation Committee Council noted the report from the Litigation Committee. Vicki Salmon asked Council to consider a paper on the Draft Hague Convention on the Recognition and Enforcement of Judgments. Council remitted this matter to the Litigation Committee and granted the Committee the power to act on behalf of Council in preparing and sending a response by 10 May 2018.

129/18: Administrators Committee Council noted the report from the Administrators Committee. John Brown questioned the reference in the Committee’s minutes to the need for the IPAC course to be free of charge.

Lee Davies said that he would ask for clarification from the Committee.

Item 9: Officers’ reports 130/18: Council noted the Officers’ reports. Stephen Jones said that he was delighted to attend the centenary celebrations of the Institute of Patent and Trade Mark Attorneys of Australia (IPTA), where he had been able to reinforce the business as usual message in relation to Brexit.

Stephen said that he had been able to promote CIPA Congress and that the Australian Institute was very appreciative of CIPA’s gift of a framed Victorian Letters Patent [see June [2018] CIPA 9].

Stephen added that he had been able to stop off on route to Australia and have a meeting with one of Hong Kong’s patent attorney representative bodies.

Item 10: Chief Executive’s Report 131/18: Council noted the Chief Executive’s report.

Item 11: Applications for election 132/18: Fellows Council approved the following first time Fellow applications: Robert Huw Woolley; Matthew Emmerson Allen; Janine Cathy Swarbrick; David Peter Nicholls; Emily Mary Howard; Kyle Arndt; Jessica Lianne Leith; Stefanie Elizabeth Glassford; Colin Paterson; Michael Jonathan Newton; Elizabeth Claire Melony Davenport; Parminder Lally; Samantha Lynelle Walker-Smith; Louise Carr; Luke William Galloway; Thomas Furnival; Callum Docherty; Andrew Tindall; John McKeon; Alice Rose Baker.

Council approved the following second time Fellow applications: Jan Erik Walter Scheuermann; Oliver James Poskett; Simon John Binnie; Adam Thomas Mark Raybould; Sara Louise Holland; Mark www.cipa.org.uk

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NEWS

COUNCIL • BYE-LAWS

Item 13: Any other business

David Hopkin; Kieron O’Connell; Chris Cadman; Andrew Cockerell; Christopher Hartland; Alexandra Chua-Short; Mark Scott; Zachary Jelley.

Hannah Smith-Mills; David Holt.

Council approved the following second time Associate membership application: Thomas Oliver.

133/18: Students Council approved the following Student Membership applications: Mathew Pringle; Cassandra Smith; Kara Lynch; David Leverett.

Item 12: Resignations, etc

137/18: Council noted the report from the IP Inclusive AGM, the report setting out IP Inclusive’s plans for 2018 and the report from the IP Inclusive management group.

135/18: Council noted the report on resignations.

Item 14: Date of next meeting

134/18: Associates Council approved the following first time Associate membership application:

138/18: Wednesday, 6 June 2018.

136/18: Council noted the report on membership renewals and those members who were at risk of allowing their membership to lapse through non-payment of their membership subscriptions.

The President closed the meeting at 16:27.

Lee Davies, Chief Executive

Bye-laws General Meeting to amend the Bye-laws of the Chartered Institute of Patent Attorneys

U

nder Bye-law 58, the Council of the Chartered Institute of Patent Attorneys considered it expedient to amend the existing Bye-laws and called a General Meeting of the Institute to decide on and confirm the same by Special Resolution. The General Meeting was held at Halton House on 6 June, 2018, at 5 p.m. The business of the General Meeting was limited to the proposed adoption of the amendments to the Bye-laws.

The Council determined, under Byelaw 59, that voting should be by ballot.

As provided for in Bye-law 59, where voting is by ballot, the Members had not less than 30 days’ notice of the date of the General Meeting.

The Bye-laws require 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 determined that the rights of all classes of Members were affected by the proposed amendments to the Bye-laws and that, under the provisions of Bye-law 59, Members of all classes of membership who were entitled to

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vote under Bye-laws 5, 6, 7, 8 and 9 respectively were included in the ballot and were included in the quorum.

Under Bye-law 64, the Council determined that the Special Resolution would be conducted by electronic ballot and that the General Meeting would be a confirmatory meeting to receive the result of that ballot. The ballot closed two days before the date of the General Meeting, on Monday 4 June, 2018, at 5 p.m.

(Fellow), acting in the capacity of Scrutineers.

Declaration of the result of the ballot 476 Members voted in the ballot. 459 Members voted online; 17 Members voted by way of a postal ballot.

The turnout was 12.5%. In order to constitute a quorum at a General Meeting, at least 15 Fellows shall vote.

The General Meeting was quorate.

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 Bye-laws shall come into effect on receipt of a certificate under the hand of the Clerk of Our said Privy Council.

Ballots complying with the regulations and reaching the Chief Executive two days before commencement of the General Meeting were counted by C.P. Mercer (Fellow) and A.D. Poore

• • •

435 Members voted for the Special Resolution (91.4%) 30 Members voted against the Special Resolution (6.3%) 11 Members abstained from voting (2.3%)

At least three-fifths of those voting have voted for the Special Resolution.

Under the provisions of (current) Bye-law 58 and Bye-law 59, the Special Resolution has been passed by the General Meeting.

The Bye-laws now pass to the Privy Council for approval.

Lee Davies, Chief Executive JULY-AUGUST 2018

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IPO • OVERSEAS

Manual of Patent Practice updates The July 2018 changes that have been incorporated into the latest version of the Manual of Patent Practice are listed below.

The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp.

Paragraphs

Update

14.66.1, 14.70.1

Updated in light of Regeneron Pharmaceuticals v Kymab Ltd [2018] EWCA Civ 671

15.41

Examining procedure where a divisional application is in order and the invention in suit was clearly claimed in the published parent application.

18 and 19

Examining procedure on the intention to grant process and its interaction with the grant fee.

73.09

Examining procedure updated with regard to section 73(2) action.

75.12

Added judgments which discuss the use of the Comptroller’s comments.

Industrial Strategy: IP call for views – government response

O

n 21 May, the government published its response to its Call for Views on Intellectual Property. The Call for Views was to identify what more the IPO could do to help encourage innovation, creativity and collaboration. Over 50 responses were received from IP attorneys, trade bodies, industry associations and a range of industry sectors. As a result, the IPO has committed to: •

•

•

6

Work with the British Business Bank, and HM Treasury to address barriers to growth for IP rich firms. This should help them use their IP to access growth funding.

Pilot an ‘Innovation Enabler Fund” for Local Enterprise Partnerships and universities in the West Midlands.

This will give financial and advisory support to help local SMEs put in place IP strategies.

Review and update the IP Finance Toolkit.

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•

Develop a business-to-business toolkit to help with business collaborations.

Minister for Intellectual Property, Sam Gyimah MP said: “We are a nation of great ideas which for many companies and innovators are their most valuable asset. Today’s response shows our intellectual property community that we are listening and through our modern industrial strategy are determined to back our ambitious creators with a world-class IP regime.”

You can read the full response on the Industrial Strategy Call for Views webpage, see https://www.gov.uk/government/ consultations/industrial-strategyintellectual-property-call-for-views.

James Thomson, IPO

Overseas report International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 11 May 2018, the Government of the Republic of Ghana deposited its instrument of ratification of the Marrakesh Treaty.

The Treaty will enter into force, with respect to Ghana, on 11 August 2018.

Patent Law Treaty On 22 May 2018, the Government of the Democratic People’s Republic of Korea deposited its instrument of ratification of the Patent Law Treaty. The Treaty will enter into force, with respect to Korea, on 22 August 2018.

Dr Amanda R. Gladwin (Fellow), GSK

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PEB

EXAMINATIONS

Statistics on PEB Examinations In 2014, the Patent Examination Board (PEB) replaced the Joint Examination Board (JEB) to offer the five Foundation Examinations and four Finals Examinations which provide one route to qualification as a Registered Patent Attorney. There are no exemptions or alternatives for two of the Finals Examinations – FD1 (P2) and FD4 (P6). Accordingly, as well as highlighting some general trends since 2014, a detailed analysis of performance in these two examinations is provided to attempt to identify any factors which may influence a candidate’s success, including whether they took PEB Foundation Examinations or another course.

By Julia Gwilt. (Fellow)

General trends As shown in the graph below (Figure 1: Number of candidates each year), there has been an increase in the number of candidates sitting all the examinations across the period after a small dip in candidate numbers in 2015.

Significantly more candidates attempt FD1 or FD4 than FD2 or FD3, presumably because some candidates are electing to rely on their EQE results. It will be interesting to see if this changes over time now that there are no longer separate chemical and electromechanical papers for the EQE examinations.

For each PEB examination, the candidates sitting each examination for the first time can be identified. It is possible that a few of these “new candidates” may have sat an examination in 2013 or earlier. Nevertheless, as the graph shows (Figure 2: New candidates), there were about 50 extra candidates for each of FD1 and FD4 in 2016 and this higher number has remained stable in 2017 for FD4 but dropped off slightly for FD1. Accordingly, the general upward trend in the number of candidates appears to be partly due to a spike in recruitment in 2014/2015.

The variation in the pass rate for each examination is shown in the graph below (Figure 3: Pass rates), which also includes the pass rates from the earlier JEB examinations for comparison. The pass rates for FD3 and FD4 are relatively consistent, ranging from 57% to 61% and 36% to 42% respectively. By contrast, the pass rates for FD1 and FD2 have been more variable over the years with a notable Volume 47, number 7-8

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PEB

EXAMINATIONS

Figure 5: Pass rate for FD4 at each attempt

350

60%

300

50%

100

20% 10%

6/32

FD4

21/61

150

30%

12/40

FD3

13/54

FD2

37/72

200

40%

82/163

FD1

69/157

250

Pass Rate

Number of candidates

Figure 1: Number of candidates each year

0%

50 2014

2015

2016

All candidates First attempt

2017

2017

Figure 2: New candidates

Second attempt

Third attempt

Fourth attempt

2016

Figure 6: Pass rate for FD4

180

Number of Candidates

160 50%

140 120 2015

80

2016

60

2017

Pass Rate

40%

100

30%

Mentored group

20%

Non mentored group

40 10%

20 0 FD1

0%

FD4

Figure 7: FD1 pass rate

Figure 3: Pass rates

70% 75

60%

FD2 (P3)

50

20%

FD3 (P4)

10%

FD4 (P6)

0%

45 40

30%

2017

83/180

55

40%

23/39

FD1 (P2)

92/196

Pass Rate

60

50% 24/41

65

Pass Rate

70

2016

35

FC1 Candidates

30 2016

Figure 8: FD4 pass rate 70%

60%

60%

50%

50% Pass rate

70%

30%

2/7

8/26

10% 0% 2017

0% All candidates First attempt 2017

8

40% 20%

4/14

10%

29/72

20%

8/34

77/134

40%

94/171

Pass Rate

Figure 4: Pass rates for FD1 at each attempt

30%

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Second attempt

Other candidates

2017

Third attempt

98/245

2015

18/33

2014

94/251

2013

30/50

2012

Fourth attempt

FC1 candidates

2016 Other candidates

2016

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PEB

decline in the performance of the candidates in the drafting examination of FD2.

Analysis of FD1 (P2) – Advanced IP Law and Practice The outstanding performance of some candidates is masked by the general trends. It is notable that 367 candidates (61% of all candidates) passed FD1 on their first attempt. This suggests that the overall pass rates are reduced by candidates resitting the examination. The graph below (Figure 4: Pass rates for FD1 at each attempt) compares the pass rates at each attempt for the candidates in 2016 and 2017.

The pass rate for the candidates sitting at the first attempt is significantly higher than the pass rate for those candidates re-sitting the examination. Accordingly, it appears that once a candidate has failed the examination, their chances of success are lower on the second and subsequent attempts. There are also seven candidates who sat the examination in 2014, 2015, 2016 and 2017 and the pass rate for this group is just 29%. As explained below, the mentoring project run by the Informals for FD4 is being extended to FD1 to help such candidates. (See Figure 5: Pass rate for FD4 at each attempt.)

Analysis of FD4 (P6) – Infringement and Validity For FD4, 294 candidates (45% of all candidates) passed on their first attempt. As for FD1 and as shown in the graph below, in general, the first-time sitters generally have a better chance of success than average. However, the data is not as conclusive as for FD1 because the highest pass rate was achieved by the candidates who were sitting FD4 for the second time in 2017 but one of the lowest pass rates was achieved by the second sitters in 2016.

At the other end of the scale, the anecdotal evidence of candidates repeatedly sitting FD4 without success is verified by the analysis, which shows that 32 candidates have sat the examination for four years in succession. The pass rate for these candidates is the lowest of all the groups, which suggests that repeated resitting alone without any other intervention is not likely to result in success. It is also notable that the average mark for these candidates over the four years is just 38.

The reasons for the general low pass rate in FD4 have been explored by Middlesex University on behalf of IPReg and PEB and include inadequate training and lack of relevant experience. A mentoring programme was run in 2016 for the repeat sitters of FD4 and the relative pass rates of the two groups are shown below. (See Figure 6: Pass rate for FD4.)

Further analysis of the data has shown that the mentored candidates achieved a relatively small improvement in performance which had a disproportionately large effect in tipping candidates over the pass mark. The mentoring project is being run again for the 2018 examination and is also being extended to FD1.

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EXAMINATIONS

Relative performance of PEB Foundation candidates Once a candidate has passed FC1 (P1) – UK Patent Law, they are eligible to sit the Final Examinations. Given that the data only covers four years, there are a relatively small number of candidates who have both passed FC1 and subsequently sat the Final Examinations. For example, 41 of the candidates sitting FD1 in 2017 had passed FC1 in 2014, 39 of the candidates sitting FD1 in 2017 had passed FC1 in 2014 or 2015. Although these numbers are relatively small, they are approximately 20% of the total number of candidates. There may also be candidates who sat the equivalent examination P1 under the JEB but in the analysis are grouped with the other candidates.

The graphs below show that the pass rate in both FD1 and FD4 for the FC1 candidates is higher than the pass rate for candidates who took other foundation qualifications, e.g. QM-UL or Bournemouth. (See Figures 7 & 8: FD1 pass rate & FD4 pass rate.)

There are likely to be many contributing factors to the higher pass rate for candidates who sat the PEB FC1 examination, including additional training provided to the candidates, more time in the profession before attempting Final examinations and more similarity between the styles of the FC1 and FD1 examinations.

Conclusions The PEB Finals Examinations are a challenging set of examinations which aim to ensure that a successful candidate is fit to practise as a patent attorney. The analysis above shows that there is a large group of candidates who are very successful and pass the examinations on their first attempt. However, the data also supports the anecdotal evidence that a smaller but not insignificant number of candidates are struggling to pass despite repeated attempts.

Since its formation, the PEB has responded to candidates’ requests for greater transparency by improving the information on its website by publishing detailed mark schemes and sample scripts with annotations and marks’ breakdowns. More individual feedback is also provided to candidates by giving them their mark breakdown by question.

PEB is also supporting the mentoring project run by the Informals. Hopefully, these actions will help to improve the pass rates without compromising the recognised high standards of Registered Patent Attorneys.

Julia Gwilt (Fellow) is a Patent Attorney Member of the Patent Examination Board and a partner at Appleyard Lees.

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SPC REVIEW

SPC summer review 2018 There have been several interesting developments for Supplementary Protection Certificates (SPCs) in Europe over the past 12 months. We have new case law from the Court of Justice of the European Union (CJEU), several new referrals to the CJEU on controversial areas of the law, and some important decisions from the national courts and patent offices.

This is the first in a two-part series Carpmaels & Ransford summarises the major events that have occurred, organising them within broader topics that SPC practitioners have been grappling with for years.

In this first part, the series opens with discussions of what is required for a patent to “protect” an active ingredient and what constitutes a “new” active ingredient. The following article looks at what happens if a marketing authorisation has not been granted by the time the basic patent expires. This part concludes with a discussion of how the specific mechanism should be applied to SPCs. Daniel Wise (Fellow)

Article 3(a): A long-running saga Last year’s report on Article 3(a) started with a deceptively straightforward-looking question: “How do you determine whether a product is protected by a patent?” One year on, however, a clear answer to this question remains elusive.

In particular, the most important CJEU judgments on this topic seem increasingly ineffective at providing legal certainty. In Medeva v Comptroller General of Patents, Designs and Trade Marks (C 322/10), the CJEU held that the product must be “specified” in the wording of the claims of the basic patent in order to be protected. Later, in Eli Lilly & Co Ltd v Human Genome Sciences Inc. (C 493/12) the CJEU held that functional wording can “specify” a product provided that the claims relate to the product “implicitly but necessarily and specifically”. More recently, Mr Justice Arnold of the UK High Court has proposed an additional test requiring the product to embody the “core inventive advance” of the patent in order to be protected. However, the obscure wording chosen by the CJEU has led some to argue that these judgments do little more than shift the question away from what “protected” means to what “specified”, “necessarily and specifically” or “core inventive advance” means.

The pending reference in Teva v Gilead (C 121/17) seeks to settle the law relating to Article 3(a) and has recently taken one step closer to judgment with the issuance of an opinion from the Advocate General. But given the uncertainty in the law while Teva v Gilead (C-121/17) remains pending, it is not surprising that there has been a spate of further references to the CJEU from national courts across Europe in the past year, in the Sitagliptin case (C-650/17) and Sandoz v Searle (C-114/18).

New CJEU references: Functional claims in Sitagliptin (C-650/17) and Markush claims in Sandoz v Searle (C 114/18) The two new cases referred to the CJEU relate to functionally worded claims and Markush claims. Both of these types of claims are often vital to provide adequate patent protection for inventions in the pharmaceutical field, as they are capable

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of protecting a large number of related compounds linked by a common function or structural motif. However, the breadth of these types of claims has led national courts to question the situations in which they can be used to protect a product for SPC purposes. When do these claims “relate implicitly, but necessarily and specifically” to a particular active ingredient that is covered by the claimed functional definition or general chemical formula but not individually disclosed in the patent?

The German Federal Patent Court was faced with this question in Royalty Pharma ([2017] 14 W (pat) 12/17) involving an SPC for sitagliptin. The underlying patent covered sitagliptin through the functional description “dipeptidyl-peptidase IV inhibitor” but did not disclose sitagliptin by name, which is unsurprising because sitagliptin had not yet been developed at the priority date. The German Court held that the law was unclear and referred the following three questions to the CJEU: 1. Is a product protected by a basic patent in force according to Article 3(a) of Regulation (EC) No 469/2009 only if it belongs to the protected subject-matter as defined by the claims and is thus provided to the person skilled in the art as a specific embodiment?

2. Is it therefore not sufficient for the requirements of Article 3(a) of Regulation (EC) No 469/2009 that the product in question meets the general functional definition of an active substance class as mentioned in the claims, but apart from that is not individualized as a specific embodiment of the teaching protected by the basic patent?

3. Is a product not protected according by Article 3(a) of Regulation (EC) No 469/2009 by a basic patent in force if it is covered by the functional definition contained in the claims, but was developed only after the filing date of the basic patent based on independent inventive activity?

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of its structure, immediately be recognised as one which falls within the class (and therefore would be protected by the patent as a matter of national patent law) or must the specific substituents necessary to form the active ingredient be amongst those which the skilled person could derive, based on their common general knowledge, from a reading of the patent claims?”

It is hoped that both sets of questions are answered by the CJEU in a way that does not unduly restrict the possibilities for innovators to rely on functional claims and Markush claims for SPC protection. Either way, for legal certainty, it would be preferable for the CJEU to avoid adopting concepts mentioned in the referred questions, such as “independent inventive activity” and “core technical advance”, which only seem likely to complicate the application of Article 3(a) further.

The Advocate General’s opinion in Teva v Gilead (C-121/17) More advanced than either of the two references discussed above is Teva v Gilead (C-121/17), in which the UK High Court referred the following catch-all question to the CJEU at the start of 2017: “What are the criteria for deciding whether ‘the product is protected by a basic patent in force’ in Article 3(a) of the SPC Regulation?”.

The underlying SPC related to Gilead’s Truvada® containing a combination of tenofovir disoproxil and emtricitabine. Teva had challenged the validity of the SPC on the ground that the basic patent did not protect the combination as required

by Article 3(a) because the basic patent did not mention

In Sandoz Limited & Another v G.D. Searle LLC & Another ([2018] EWCA Civ 49), the UK Court of Appeal was unable to determine whether a Markush claim covering, but not individually disclosing, the active ingredient darunavir, “protected” that active ingredient under Article 3(a). In particular, the Court seemed unsure whether it was relevant for Article 3(a) that one of darunavir’s substituents was apparently not one which the skilled person would be able to identify from the patent based on his common general knowledge at the priority date. The Court of Appeal therefore referred the following question to the CJEU: “Where the sole active ingredient, the subject of an SPC is a member of a class of compounds which fall within a Markush definition in a claim of the patent, all of which class members embody the core inventive technical advance of the patent, is it sufficient for the purposes of Article 3(a) that the compound would, upon examination Volume 47, number 7-8

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emtricitabine and because the combination did not relate to the core inventive advance of the patent. In contrast, Gilead argued that the combination was protected because it falls within the scope of protection of a claim referring to a pharmaceutical composition comprising tenofovir disoproxil “together with a pharmaceutically acceptable carrier and optionally other therapeutic ingredients”. Interestingly, this is precisely the same claim that Mr Justice Kitchin (then) said protected the combination in Gilead v UKIPO ([2008] EWHC 1902 (Pat)), which was decided before the CJEU’s more recent decisions on Article 3(a).

Recently, Advocate General Wathelet (A-G) was asked by the CJEU’s judges to prepare an advisory opinion about the legal issues at stake before the judges reach a decision. In his opinion, the A-G rejected the application of the “core inventive advance” test but also held that it is necessary, but not sufficient, that the product falls within the scope of protection of the basic patent to comply with Article 3(a). Instead the A-G concluded that a product is protected by a patent within the meaning of Article 3(a): “if, on the priority date of the patent, it would have been obvious to a person skilled in the art that the active ingredient in question was specifically and precisely identifiable in the wording of the claims of the basic patent”.

In the case of a combination of active ingredients, each active ingredient in that combination must be “specifically, precisely and individually identifiable” in the wording of the claims of the basic patent.

The A-G’s opinion has been met by a collective scratching of heads in many quarters. Not only does the “specifically and precisely” test seem to have come out of thin air (neither the parties nor the referring judge proposed such a test), the test also seems to fail to make things noticeably clearer, especially in relation to functional claims and Markush claims. The reference to patent law concepts that are far from straightforward for a patent office to determine without detailed knowledge of the prior art (such as whether something was “obvious” to “a person skilled in the art”) could also lead to difficulties, resulting in a test that is far removed from the simple and workable test that the CJEU was seeking and that the pharmaceutical industry and national patent offices need.

The A-G’s opinion is not binding on the CJEU’s judges, and so we will have to wait to see whether the judges follow this opinion or interpret Article 3(a) in a completely different way in their full judgment, expected later in 2018. If the judges adopt the A-G’s proposed “specifically and precisely identifiable” test, it seems inevitable that, before long, further questions seeking clarification will be referred to the CJEU. The long-running saga continues.

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What constitutes a ‘new’ active ingredient under Article 1(b)?

SPC applicants sometimes need to argue that an active ingredient in a medicinal product is different from a previously authorised (‘old’) active ingredient, e.g. because of a structural modification.

By doing so, issues under Article 3(c) and (d) of the SPC Regulation should fall away because any earlier authorisations and SPCs relate to a different active ingredient and so are no longer relevant.

The CJEU has provided guidance on how to interpret the terms ‘product’ and ‘active ingredient’ in Article 1(b) of the SPC Regulation. For example, in MIT (C-431/04) the CJEU held that a ‘product’ should be “understood to mean an ‘active substance’ or ‘active ingredient’ in the strict sense” and does not include substances that do not have a therapeutic effect of their own, such as excipients1. No guidance has been provided, however, on how to assess whether an active ingredient is actually different from an old active ingredient, i.e. whether the active ingredient is ‘new’.

The cases discussed below illustrate that this question may not be straightforward.

Does a new manufacturing method make an active ingredient ‘new’?

Two recent decisions from the Paris Court of Appeal (Government of the United States of America v INPI, case no. RG 2015/12234; B20160042; and S.A. Laboratoire Francais du Fractionnement et des Biotechnology v INPI, decision no. 16/08814) considered whether the use of a different manufacturing method makes an active ingredient ‘new’.

The first case concerned whether a specific protein (HPV16 L1) in GSK's Cervarix® vaccine is different enough from a related protein in Merck's earlier Gardasil® vaccine to be eligible for its own SPC. In Gardasil, the HPV16 L1 protein is expressed in yeast cells, while in Cervarix it is obtained from insect cells. As a result of these different manufacturing processes, the proteins have different structural properties (i.e. glycosylation patterns). The protein in Cervarix is also truncated compared to the protein in Gardasil. The SPC applicant therefore argued they are different active ingredients, but the French patent office did not agree.

Similarly, in the second case, the SPC applicant asserted that the active ingredients in Esterasine® and Cinryze® have different properties (e.g. specific activity and half-life) due to their methods of manufacture, and so the active ingredient in Cinryze is ‘new’, even though the name of the active ingredient in the authorisations for each medicinal product is the same.

The Court, however, agreed with the French patent office that the product in each case was the same as in the earlier authorisation. Both appeals were therefore dismissed. In its reasoning, the Court referred to the absence of details in the basic patents and/or marketing authorisations relating to the differences in structure (Cervarix) and/or manufacturing/ purification processes (Cervarix and Cinryze). The Court therefore seemed to require that the basic patent or marketing authorisation explains why the active ingredient is different www.cipa.org.uk

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from those previously authorised. If this approach is adopted in other cases, it will add a further level of complexity for SPC applicants to navigate.

Thus, at present, the Paris Court of Appeal seems to be embracing a fairly strict test for determining whether an active ingredient is new and, at least in France, the use of a different manufacturing or purification method does not necessarily justify the grant of a new SPC.

Is a prodrug a ‘new’ active ingredient?

A strict approach has also been taken by some patent offices in relation to SPCs for prodrugs. Generally, patent offices have been willing to accept that a prodrug of an active ingredient differs from the parent active ingredient, and so SPCs for prodrug products have therefore been granted without objection. The refusal of SPC applications in Germany and Spain for paliperidone palmitate – a palmitate ester prodrug of paliperidone – highlight that even in this relatively commonplace situation, differences in patent office practice exist across Europe.

The German patent office refused the SPC application on the basis that the marketing authorisation for paliperidone palmitate was not the first authorisation to place a product on the market in the EU, as required by Article 3(d), because of a previous authorisation for a medicinal product containing paliperidone. The German patent office considered the use of an ester derivative of paliperidone as merely a formulation change.

On appeal, the German Federal Patent Court considered whether paliperidone palmitate is a different product under Article 1(b) – Janssen Pharmaceutica N.V., Case No. 14 W (pat) 25/16 [2017]. Referring to the CJEU’s decision in Forsgren (C-631/13), the Court noted that an ‘active ingredient’ for the purposes of applying the SPC Regulation is a compound which produces a pharmacological, immunological or metabolic action of its own. The product paliperidone palmitate was found to possess an additional therapeutic effect compared to the active ingredient paliperidone, specifically delayed release allowing reduced dosing frequency. On this basis, significant differences in the pharmacological and metabolic action of the two forms were found to exist and the Court held that they must therefore be regarded as different products.

Similar issues were considered in Spain, where the patent office’s decision to refuse an SPC for paliperidone palmitate was appealed and overturned by the Madrid High Court of Justice (Janssen Pharmaceutica N.V. v Spanish Patent and Trademark Office and Gadea Biopharma S.L.U.2, Appeal no.

802/2013; Judgment no. 311), and then further appealed to the Spanish Supreme Court (Gadea Biopharma S.L.U. v Janssen Pharmaceutica N.V., Appeal no. 1891/2016; Judgment no.

1140/2017). The Supreme Court confirmed that the question of whether or not paliperidone palmitate and paliperidone are the same active ingredient turns on whether both substances produce an identical pharmacological, immunological or metabolic action. Like in Germany, the Court found that paliperidone Volume 47, number 7-8

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palmitate adds an additional effect to the therapeutic action of paliperidone: the delayed release of paliperidone. Paliperidone palmitate was therefore considered a different active ingredient and so fulfilled the requirements of Article 3(c) and (d) in spite of an earlier SPC and authorisation for paliperidone.

For the time being, the German and Spanish courts have maintained the status quo with regard to the grant of SPCs for prodrugs. However, further appeals to the national courts or to the CJEU may change the approach to distinguishing active ingredients in due course. More radically, the Max Plank Institute for Innovation and Competition, as a result of its study on the legal aspects of SPCs, has proposed that the definition of the ‘product’ in Article 1(b) is changed to: “the active ingredient or combination of active ingredients identified as the active substance or the active substances of the medicinal product that is the subject of the MA submitted in support of the application for a certificate”.

While the Institute notes that this definition is not fully consistent with the principles set out by the CJEU in Forsgren, this approach may simplify the patent offices’ assessment by eliminating the need to consider whether the active ingredient produces a pharmacological, immunological or metabolic action of its own. The Institute’s report does not explain, however, how this test would work with products, such as biologics, that are less readily defined in specific terms. More discussion of this point will undoubtedly follow.

Susan Hancock (Fellow)

Notes and reference 1. This interpretation of Article 1(b) has since been confirmed in Glaxosmithkline Biologicals SA v Comptroller-General of Patents (C-210/13) and Arne Forsgren v Osterreichisches Patentamt (C 631/11).

1. Gadea Biopharma S.L.U. became co-defendant by virtue of provisions under Spanish law that allow a third party, whose rights or legitimate interests could be affected by the acceptance of the plaintiff ’s claim, to participate in proceedings.

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End of the procedure for Atozet® CJEU confirms that marketing authorisation must grant before patent lapses for a valid SPC application In its judgment in C-567/16 at the end of 2017, the CJEU found that an SPC application cannot validly be filed on the basis only of an end of procedure notice (“EoP notice”) issued by the reference member state (“RMS”) in the decentralised procedure for obtaining marketing authorisation. Instead, the marketing authorisation (“MA”) itself must have granted by the SPC filing date.

At the date of the SPC application, the product must be protected by a basic patent in force (Article 3(a)), and a valid authorisation to place the product on the market must have been granted in the relevant country (Article 3(b)). Because this dual requirement exists at the filing date, innovators whose products take an unusually long time to be authorised can be faced with a situation where the patent lapses before the marketing authorisation is granted.

This is what happened to Merck Sharp & Dohme Corporation (“MSD”), whose SPC application for its product Atozet® was refused by the UKIPO. Because the patent was about to expire, but the UK MA had not yet granted, MSD was forced to decide between either (1) filing the UK SPC application while the patent was still in force, but before the full UK MA was granted, or (2) waiting for the full UK MA, but filing after the patent lapsed.

MSD chose the first option but the SPC application was refused by the UKIPO under Article 3(b) of the Regulation due to the absence of a full UK MA. MSD had used the decentralised procedure for obtaining national MAs for Atozet®. A key step in this procedure is the production of the EoP notice by the RMS. This notice signifies the agreement of the parties and closes the proceedings, but is not itself sufficient for the product to be placed on the market.

Instead, national MAs, which are issued by the contracting member states within 30 days of the EoP notice, are required before the product is authorised for sale.

When MSD filed its UK SPC application it had an EoP notice from the German Medicines Agency, but did not yet have the UK MA, and so the application was filed with the EoP notice.

The UK MA granted a few weeks later, after the patent had expired, and a copy was sent to the UKIPO. MSD argued that filing the UK MA at this stage simply rectified an irregularity in the original application, as permitted under Article 10(3) of the SPC Regulation.

Following the UKIPO’s refusal of the SPC application on the basis that (1) Article 3(b) was not complied with in the absence of the MA at the filing date, and (2) this was not a defect that could be remedied after the SPC had been filed filing using Article 10(3), the case made its way to the CJEU via the UK High Court. Mr Justice Arnold agreed with the UKIPO but referred a question on each of these points, noting that SPCs for Atozet® had been granted in other jurisdictions under similar 14

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circumstances so there was a need for harmonisation.

The CJEU turned to the wording of Article 3(b) for its answer to the reference. Because a “granted” MA is required, the Article makes it clear that the MA must already have been granted before the SPC application is filed. It also noted that “a valid authorisation to place a product on the market” cannot include the EoP notice, because the applicant cannot place the medicinal product on a particular market with an EoP notice.

This was described by the court as the “essential feature” of an MA. Therefore, an EoP notice cannot replace an MA for the purposes of filing an SPC application.

The CJEU also noted that Article 10(3) only allows applicants to rectify irregularities concerning the “SPC application”. These irregularities are those listed under Article 8, to which Article 10(3) refers, and relate to the provision of information and documents. In contrast, the CJEU described the absence of an MA as an irregularity of the product, as a medicinal product, rather than in the SPC application as such, so Article 10(3) did not save MSD’s application.

The purpose of an SPC is to compensate for delays in obtaining an MA, so this decision will disappoint SPC applicants who face unusually long delays in obtaining an MA. However, the fact that the judgment is based almost entirely on reference to the wording of the SPC Regulation perhaps demonstrates that the CJEU felt that the Regulation did not provide it with any flexibility to find otherwise.

Anna Leathley (Fellow)

Next time…

The second part of this review will be published in the September 2018 CIPA Journal. Articles will cover: how law and practice is crystallising for the determination and correction of SPC term; ongoing High Court proceedings relating to the lawfulness of filing SPCs based on competitors’ products; the possibility of wider SPC eligibility for drug-device combination products; an analysis of the conclusions of the EU Commission sponsored review of the SPC system as a whole; as well as a look beyond the EU to review some of the major changes that have occurred for patent term extension systems elsewhere.

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The specific mechanism: when can an SPC be used to prevent parallel importation?

Advocate-General Tanchev’s opinion on how the specific mechanism should be applied to SPCs One of the founding principles of the European Union is the free movement of goods. In line with this principle, the doctrine of exhaustion of rights prevents holders of patent and SPC rights from asserting those rights to stop parallel importation of their products into an EU member state, if those goods have previously been placed on the market with their consent in another member state. The “specific mechanism”, which forms part of the acts of accession to the EU for the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Poland, the Slovak Republic, Slovenia, Bulgaria, Romania and Croatia (the “new” member states) provides an exception from this doctrine for pharmaceutical products, but only if equivalent patent or SPC protection could not have been obtained in the new member state at the filing date of the patent and/or SPC in the state of import.

In Pfizer Ireland Pharmaceuticals, Operations Support Group v Orifarm GmbH (C-681/16), the Düsseldorf District Court referred questions to the CJEU on how the provisions of the specific mechanism should be applied to SPCs. The Advocate General’s opinion, issued in February 2018, suggests that while the specific mechanism must be construed narrowly, it should not be construed so literally as to effectively negate its aim of protecting rights holders against parallel importation. The CJEU’s decision, taking into account the Advocate General’s opinion, is expected around June 2018.

Can an SPC holder ever rely on the specific mechanism if, at the SPC filing date, SPC provisions were already in place in the new member state?

The specific mechanism was designed to account for the fact that many of the new member states did not provide patent protection for pharmaceutical products until long after protection was available within the EU. However, in the majority of new member states, patents for pharmaceutical products became available many years before SPC protection was introduced. The much later implementation of SPC protection gives rise to scenarios in which the specific mechanism could be applied only in relation to the SPC. The case underlying the referral in C-681/16 related to Pfizer’s German SPC for etanercept, the active substance of Enbrel®. Pfizer sought to enforce its SPC – including the sixmonth paediatric extension – against parallel imports by Orifarm from several of the new member states. The SPC was based on a German patent that had been filed at a time when no patent protection for pharmaceutical products was available in any of the new member states.

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German SPC, the absence of corresponding patents in the new member states had precluded, in practice, the filing of such SPC applications.

Orifarm argued that patent and SPC protection needed to be considered separately, and that the relevant question was whether or not provisions for filing SPCs existed in the law of the new member states at the time at which the German SPC was filed.

The referring Court agreed with Pfizer’s position that it would seem inequitable that the merely theoretical possibility of obtaining an SPC could prevent the specific mechanism from applying. However, earlier case law from the CJEU had emphasised the need for this exception to be construed narrowly. In light of this, the Court had sought guidance from the CJEU. In the first referred question, the Court asked whether the holder of an SPC in an “old” member state could rely on the specific mechanism to prevent parallel importation from a new member state if, at the SPC filing date, laws for obtaining an SPC existed in the new member state, but an SPC could not be obtained because the basic patent required for the SPC did not exist in the new member state.

Advocate General Tanchev answered this question in the affirmative, noting that an SPC cannot exist without a basic patent that was in force before the filing date of the SPC. In light of this, he considered that the requirement set out in the specific mechanism, namely that SPC protection “could not have been obtained”, was satisfied under these circumstances.

Nevertheless, the Advocate General urged caution, suggesting that an additional requirement needed to be met in view of the need for a narrow interpretation of the specific mechanism. Specifically, he noted that the lack of a basic patent should be accepted as a reason for holding that the SPC “could not be obtained” only on the condition that it was not possible to obtain a basic patent. If patent protection for pharmaceuticals had been available in the new member state and the patent holder had simply failed to take advantage of this, the Advocate General recommended that the patent holder should not be able to rely on the specific mechanism.

Is the specific mechanism triggered at the patent filing date or its publication date?

The second referred question related to whether the “could not be obtained” condition in relation to the basic patent needed to be assessed at the patent’s filing date, or at its publication date. This was of relevance because the patent filing date was in 1990, when patent protection for pharmaceuticals was not available in any of the new member states, but some of them had introduced such protection within a few months of this date. The wording of the specific mechanism in some of the EU languages introduced an ambiguity regarding whether the requirements should be assessed at the “filing” date or the “registration” date.

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The Advocate General was of the opinion that the relevant date should be that of filing the patent application. Even if, in principle, it might have been possible to file a patent application in a new member state up until the first publication of a corresponding application, he opined that expecting patentees to have monitored for changes in the law in each member state up until publication placed an undue burden on them and was not in line with the aims of the specific mechanism. This was particularly so since, at the time when patent protection was sought, the patentee could have foreseen neither the accession to the EU of the new member states, nor the introduction of the specific mechanism.

Does the specific mechanism apply to the extended term of an SPC? The third referred question related to whether the specific mechanism could be used to prevent importation after expiry of the main SPC term, but before expiry of the six-month paediatric extension. The parallel importer argued that it could not, because the paediatric extension was not explicitly mentioned in the specific mechanism. It also argued that at the dates of accession of most of the new member states (except Croatia),

SPC REVIEW For more information on Carpmaels & Ransford or the authors of these articles, please visit https://www.carpmaels.com/

VOLUME 47 NUMBER 07-08 2018

Anna Leathley Senior Associate

Daniel Wise Partner

Emily Nikolic Associate

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the Paediatric Regulation had not yet come into force and so was not encompassed within the terms of the specific mechanism.

Advocate General Tanchev rejected both of these arguments.

On the first, he noted that the extended term is not a separate right but rather a simple extension of the term of the SPC, an interpretation which is supported by both Article 36 of the Paediatric Regulation and Article 13(3) of the SPC Regulation.

On the second point, he noted that the acts of accession could be amended by secondary law, as suggested by both the acts themselves and earlier CJEU decisions on the interpretation of these acts.

The final referred question, on the same point, asked if the answer to question 3 would be any different in view of the fact that Croatia’s accession to the EU happened after the entry into force of the Paediatric Regulation. The Advocate General answered that this should make no difference, noting that treating one Member State differently from the others would result in a “hole” in EU patent protection that could effectively negate the protection conferred by the specific mechanism.

Outlook While there is no guarantee that the CJEU will follow the Advocate General’s opinion, his views are likely to carry significant weight. If the opinion is followed, patent and SPC holders will welcome the clarification that it is not just the date of entry into force of the SPC provisions that must be considered, but also the question of whether the preconditions for an SPC – such as a basic patent – could be obtained at the relevant point in time. Interestingly, the Advocate General commented that the specific mechanism protects not only patentees, but also new member states, who might otherwise see a rise in pharmaceutical prices due to the demand for parallel exports. This may explain, in part, his rationale for rejecting the narrowest interpretation of the specific mechanism, in an opinion that seems to favour SPC holders.

Although the number of SPCs to which the specific mechanism could apply is falling, with the last of them likely expiring around 2019, the CJEU’s judgment will nonetheless be of considerable interest in view of the high value of SPCs and their extensions. Furthermore, the potential accession of new candidate member states to the EU, some of which introduced protection for pharmaceutical products at a relatively late stage, raises the possibility that the specific mechanism might continue to have an impact for some time.

Emily Nikolic (Fellow)

Susan Hancock Associate

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Paul Kaufman Associate

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This information provides a summary of the subject-matter only.

It should not be acted on without first seeking professional advice.

Any views expressed in this document do not necessarily reflect the views of Carpmaels & Ransford or its attorneys or clients. For more information, please contact: daniel.wise@carpmaels.com.

Copyright © Carpmaels & Ransford LLP 2018. www.cipa.org.uk

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REGULATION

Quis custodiet…

The cost of regulating patent attorneys. By Nicholas Fox (Fellow)

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he question of how to maintain oversight over those who are meant to keep everyone else in check has been always been a problem1. However, one thing which is almost certain is that if you were to create a system for keeping a regulator in check, you would not choose the one imposed on CIPA and IPReg by the Legal Services Act 2007.

It was in 2010 that the Legal Services Act 2007 transferred responsibility for keeping the Register of Patent Attorneys from the Patent Office to the Chartered Institute of Patent Attorneys2. As such the law recognised that responsibility for entry on the Register of Patent Attorneys had been effectively outsourced to the Chartered Institute for many years. However, when doing so section 27 of the Legal Services Act obliged the Chartered Institute to establish an independent regulator to exercise the “regulatory” functions which arise from keeping the register.

The result is an unsatisfactory half-way house. CIPA is recognised as the statutory keeper of the register3. Yet at the same time, because the Institute retains its representative functions representing the profession, it does not have any control over the costs of regulation. Worse than that, to the extent that the Institute does make any representations about costs, they are all too apt to be dismissed as special pleading by a regulator which is expressly required to guard its independence against the risk of “regulatory” capture by the profession it is meant to regulate.

The Institute’s representations last year when CIPA called upon IPReg to conduct a full review of practices fees with view to reducing them by 10%4 need to be seen through this regulatory lens. CIPA has not been alone in pressing for a reduction in the IPReg professional fees, Volume 47, number 7-8

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with the Legal Services Board (LSB) repeatedly expressing the “hope” that the IPReg Board would reduce its practice fees5. However, despite these representations, IPReg did not reduce the levels of the processional practice. Rather fees were maintained at their current levels with IPReg making no more than a commitment that any future increases in practice fees would be limited “to no more than RPI, in the normal course of events6.”

It is not the case that IPReg’s fees are particularly high compared with other legal regulators for solicitors, barristers, notaries, legal executives and costs draftsmen.

Indeed, rather the opposite as Figure 1’s graph of fees derived from figures obtained by the LSB in 2014 indicates7.

However, the same research emphasised the danger of such cross-professional comparison because of the different level of regulatory risk in each profession and hence the level of regulatory oversight each profession requires. In short, as the patent and trade mark professions have relatively a lowrisk profile – most of our clients are sophisticated businesses and the professions handle relatively low volumes of client money compared with other legal professionals such as solicitors – the costs of patent and trade mark attorney regulation should be lower than other legal professions.

A fairer comparison, comparing like with like, is to compare IPReg’s fees and spending overtime. However, even that is not entirely straight forward. This is for a variety of reasons.

Firstly, not all of IPReg’s income is actually retained by IPReg. Rather a proportion of IPReg’s fees go to the support of the LSB and the Legal Ombudsman. These costs are not within IPReg’s control.

Secondly, since its establishment in 2010, IPReg has had to establish operational reserves. As of 1 January 2018, this JULY-AUGUST 2018

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Figure 1: Legal Regulators Fees per attorney 2011-2014 £700

SRA £600

BSB £500

Fee per attorney

Faculty Office £400

CILEX £300

CLSB

£200

IPReg

£100

0 2011

2012

2013

2014

Figure 2: Breakdown of IPReg fees 2011-2018 £900k £800k £700k £600k £500k £400k £300k £200k

IPReg

ABS

Levy

Surplus

£100k 0 2010

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reserve stood at £611,4538 which equates to slightly over ten months of IPReg’s current running costs.

Finally, it should be borne in mind that IPReg’s regulatory functions have changed over time. In particular, IPReg has had to bear the costs of making an application to facilitate its authorisation to regulate alternative business structures.

Although this did not fundamentally change IPReg’s remit – the costs were largely required by the Legal Services Act just for IPReg to maintain the pre-2010 status quo – it has increased costs overall and imposes some additional ongoing costs on IPReg as an alternative business structure (ABS) regulator.

With those caveats, Figure 2 illustrates IPReg’s income and spending overtime9. In Figure 2, IPReg identifies the proportion of IPReg’s income devoted to IPReg’s administrative costs; ABS identifies costs attributable to supervising ABSs (initially the fees involved in making the ABS application and then the on-going costs relating to the ABS insolvency bond required by the Legal Services Act); Levy identifies the fees transferred to the Legal Services Board and the Legal Ombudsman; and Surplus is the difference between IPReg’s income and expenditure which has been used to establish IPReg’s working reserves.

The graph clearly demonstrates CIPA’s concerns.

Whereas, the proportion of IPReg’s fees devoted to the LSB/ Legal Ombudsman levy has fallen overtime (accounting for over 30% of costs in 2010, falling to 7.6% of budgeted cost in 2018), IPReg’s own costs have soared. As the graph shows, the increase in IPReg costs cannot be attributed to the direct additional costs relating to regulating ABSs which are relatively modest compared with the overall increases in costs.

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It is true that attorney numbers have increased over time. As of 1 April 2011, there were 2,307 patent and trade mark attorneys on the register (1,528 patent attorneys, 462 trade mark attorneys and 317 dual-qualified attorneys). As of 2018, these numbers had increased to 2,906 (1,964 patent attorneys, 671 trade mark attorneys and 271 dual-qualified attorneys) – a 26% increase in numbers over seven years.

It is, however, debatable to what extent the increase in numbers necessarily should result in an increase in the costs of regulation since the marginal cost of oversight for any individual extra attorney is likely to be minimal.

In any event, IPReg’s costs have far outstripped the increases in attorney numbers, more than doubling between 2011 and 201810. Put another way, IPReg’s administrative costs per attorney in 2011 were just under £125 per attorney, whereas by 2018 equivalent costs, excluding ABS costs had risen to £233 per attorney. Allowing for inflation over the same period (£125 in 2011 is equivalent to £153 in 2018), this amounts to just over a 50% increase in IPReg’s administrative costs per attorney.

The questions which IPReg needs to ask as the IPReg Board considers fee levels for 2019, and for which there are no clear answers are: What has changed which justifies this 50% increase in the cost of regulation? And what can be done to reduce this increasing regulatory burden on attorneys?

Nicholas Fox (Fellow) was a Professional Member of the IPReg Board between 2010 and 2014.

Notes and references 1. The quote “Quis custodiet ipsos custodies?” – “Who will guard the guards themselves?” appears in the 1st/2nd century AD in Juvenal’s Satires – Satire VI, lines 347-348.

2. Section 275 of the Copyright, Design and Patent Act 1988 as amended on 1 January 2010 by SI 2009/3250 when section 185 of the Legal Services Act 2007 came into force.

3. CDPA section 275 – “The register is to be kept by the Chartered Institute of Patent Attorneys.”

4. “CIPA calls on IPReg to reduce fees by 10% following huge rise in staff costs”, CIPA Press release, 19 September 2017.

5. See LSB decision letters for 2016 and 2017 available from: http://www.legalservicesboard.org.uk/Projects/independent_ regulation/PDF/2016/20161111_NB_To_AW_Letter_IPReg_PCF_ Decision_2017.pdf and http://www.legalservicesboard.org.uk/Projects/ independent_regulation/PDF/2017/20171107_NB_to_FG_IPReg_ PCF_decision_letter_for_2018.pdf

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6. IPReg consultation on 2018 Business Plan, Budget and Practice Fees: https://ipreg.org.uk/2018-business-plan-budget-and-practice-fees/ 7. Figures derived from the regulator reports available from http://www.legalservicesboard.org.uk/Projects/ Reviewing_the_cost_of_regulation/index.htm.

All fees exclude the LSB levy and fees devoted to special projects or the development of reserves.

8. https://ipreg.org.uk/wp-content/files/2018/04/ Reserves-1-1-18-WEBSITE-.pdf 9. Figures taken from the IPReg website. Figures for 2018 taken from 2018 budget and expected income as reported in the March 2018 IPReg Board minutes.

10. IPReg costs excluding LBS levy and costs attributable to ABSs rose from £288,000 in 2011 to a budgeted £678,000 for 2018.

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GDPR and AI patents Implications of the General Data Protection Regulation for detecting infringement of artificial intelligence patents. By Rachel Free and Loretta Pugh

Why is the ability to detect patent infringement important?

New artificial intelligence (AI) technology typically comprises new algorithms that express new ways of learning, new ways of representing data, new ways of searching through large search spaces to find solutions and other processes that enable AI technology to act in intelligent ways. Helping clients to protect this type of technology using patents is challenging in a number of ways, one of which is that it is often very difficult to detect infringement of patent claims that contain details of AI algorithms.

A patent claim sets out the scope of the monopoly held by the patent owner and, generally speaking, can be thought of as a list of features, such as a list of things to do in the case of an invention which is a method. Generally speaking, a competitor infringes the method claim when the competitor does all the things in the list. The things in the list are referred to as features. Features of the algorithms relating to inputs to the algorithms and outputs of those algorithms are features which can sometimes be observed in competitor products, from application programming interfaces, or found from product literature. However, features about types of computation and types of representation used by the algorithms are much harder to detect in competitor products. Sometimes an educated guess can be made that a competitor product is likely to be using a particular type of algorithm, but to be certain of this is often not possible. As a result, the value of the AI algorithm patent may be significantly reduced because the patent cannot be effectively exploited through licensing. Turning to trade secrets as an alternative form of protection is often not possible where for commercial reasons the details of the algorithms are made public.

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One option for applicants is to try to reduce the features of the algorithm in the patent claim which are not easy to detect and instead try to include features related to the application domain (i.e. the task the AI is being used for), any observable user inputs, and any observable data or sensor inputs and outputs to the algorithm from other sources. However, often the application domain itself is not a technical one and so the applicant is forced into finding a technical problem and solution within the algorithmic detail. Examples of nontechnical application domains include online advertising, linguistic processing and presentation of information.

Why is the GDPR potentially relevant for detecting infringement of AI patents?

The General Data Protection Regulation (GDPR) is new European Union law in relation to the processing of personal data and from 25 May 2018 applies across the EU. The principles of the GDPR include that personal data shall be processed lawfully, fairly and in a transparent manner (see GDPR Article 5). The transparency requirement means that a data controller has to disclose various information and there could be a possibility that the disclosed information is helpful for detecting patent infringement. The disclosed information is made without a duty of confidence.

Generally speaking, the definition of personal data in the GDPR is very broad. Personal data is information that relates to an identified or identifiable individual (a so called ‘data subject’) and may include data identifying a person, such as a name, internet protocol address or telephone number. Where personal data is collected from a data subject, the data controller (being the person that determines the purposes and means of processing of the personal data) is obliged by GDPR Article 13 www.cipa.org.uk

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to provide the data subject with various information at the time the personal data is collected. In certain circumstances, the information to be provided includes: “the existence of automated decision-making, including profiling, referred to in Article 22(1) and (4) and, at least in those cases, meaningful information about the logic involved, as well as the significance and the envisaged consequences of such processing for the data subject”.

Article 22 of the GDPR is about automated decision-making.

Article 22 states in paragraph 1 that: “The data subject shall have the right not to be subject to a decision based solely on automated processing, including profiling, which produces legal effects concerning him or her or similarly significantly affects him or her.”

A data subject is able to give his or her explicit consent so that the prohibition in paragraph 1 is lifted. Important things to note include that Article 22 has the word “solely” so that it reads “a decision based solely on automated processing”. Also, it says that the decision is one “which produces legal effects concerning him or her or similarly significantly affect him or her”.

Given that the GDPR sets out that data controllers must disclose “meaningful information about the logic involved” in certain circumstances it could be that such disclosures are useful for detecting infringement of algorithm patents.

How should we interpret “meaningful information about the logic involved” in the GDPR?

AI PATENTS

complex explanation or source code anyway. Also, the authors of the Guidance Documents were presumably aware that scientists currently have no good way to explain the predictions computed by deep neural networks.

What does have to be disclosed?

The following list of what has to be disclosed has been compiled by the author from the Guidance Documents. The list uses verbatim wording from the Guidance Documents where possible and contains duplication and overlap, since as many relevant extracts from the Guidance Documents as possible have been included. The circumstances in which disclosure has to be made are discussed later.

• • • • • • • • • • •

The criteria relied on in reaching the decision The rationale behind the decision Information which is sufficiently comprehensive for the data subject to understand the reasons for the decision Meaningful information about the logic involved The likely consequences for individuals Why the data controller is using the automated decisionmaking process and the likely results Categories of data that have been or will be used in the profiling or decision-making process Why these categories are considered pertinent How any profile used in the automated decision-making process is built including any statistics used in the analysis Why the profile is relevant to the decision-making process How the profile is used for a decision concerning the data subject

There are various documents available to help us interpret the wording in the GDPR and these include the Guidelines on Automated Individual Decision-making and Profiling for the Purposes of Regulation 2016/679, last revised and adopted on 6 February 2018, by the Article 29 Data Protection Working Party; and the UK Information Commissioner’s Office detailed guidance on automated individual decision-making and profiling which was published on 23 May 2018 (these two documents are referred to herein as the “Guidance Documents”). The Guidance Documents suggest that it is not necessary to disclose the full details of an AI algorithm as a result of the GDPR. However, it is necessary to disclose some details of the AI algorithm as explained in the next section of this document.

Not necessary to disclose the full details of an AI algorithm The Guidance Documents make it clear that a data controller does not have to disclose the source code of the AI algorithm, does not have to give a complex explanation of the algorithms used, and does not have to disclose the full algorithm.

Practically, a lay person is not going to be able to understand a Volume 47, number 7-8

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• • • •

Controllers may wish to consider visualization and interactive techniques to aid algorithmic transparency The type of information collected or used in creating a profile or making an automated decision Why this information is relevant What the likely impact is going to be/how it is likely to affect them

In the Guidance Documents there is an example given about a data controller who uses credit scoring to assess and reject an individual’s loan application. The score is computed automatically based on information held by the data controller.

The example goes on to state that the if the credit score is used to reject an individual’s loan application, then the data controller is obliged to explain that the scoring process helps them to make fair and responsible lending decisions (i.e. the rationale behind the decision) and that the data controller should provide details of the main characteristics considered in reaching the decision, the source of the information and the relevance.

In the example it could be that automated statistical rules are used without any AI technology. However, it could also be that a neural network is used to predict the credit score.

Thus the example is relevant both in the case that machine learning is involved and in the case where there is no machine learning involved. The example is useful to help understand what information will be disclosed. A discussion of how the disclosed information may help with detecting patent infringement is given later in this document.

What are the conditions which have to apply in order for a data controller to disclose “meaningful information about the logic involved” to the data subject?

AI PATENTS

will be increasingly used in situations where the above conditions do apply, however, in cases of contract and explicit consent, human intervention does still have to be available on request of the data subject. This increase is because of the business case involved, in particular around cost savings.

In addition, in the case of the use of AI, AI is already more accurate than humans at many tasks and this will increase in terms of the variety of tasks where AI outperforms humans and the level of outperformance.

Fictitious example Suppose a new algorithm is created which learns from many recordings of calls to an alcoholic beverage delivery service. The calls are labelled as being from adults or children, and consent has been obtained to use the data. The algorithm is able to learn from the examples and to generalize its learning so that it can predict with accuracy, whether a new incoming call is from a person who is old enough to legally buy alcoholic drinks.

Once the algorithm has been trained it is then used as part of a delivery service selling alcoholic drinks. When a customer calls the service the customer is asked to give consent to an automated decision being made as to whether the customer is old enough to purchase alcoholic drinks. If consent is given, the incoming call is then used by the trained algorithm to predict the age of the customer and make the automated decision. In this case the GDPR provisions regarding disclosing “meaningful information about the logic involved” arguably apply, since the decision is solely automated, uses data which identifies a person (his or her voice), has a significant effect on the person (ability to buy a product), and is made with the consent of the user.

At least the following conditions have to apply: • • • •

an automated decision using personal data; the decision is solely automated; the decision has a legal or similarly significant effect on the data subject; and the decision is necessary for entering into, or performance of, a contract between the controller and data subject; the decision is authorized by EU or Member State law; or the decision is based on the individual’s explicit consent.

With regards to “solely automated” note that it is not enough to have a cursory human review of the output of the AI algorithm. As explained in the Guidance Documents, to avoid “solely automated” a human needs to “weigh up and interpret the results of an automated decision before applying it to the individual”. Also, a process is still “considered solely automated if a human inputs the data to be processed, and then the decision-making is carried out by an automated system”.

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Suppose there is a patent protecting the technology. The details of the patent claim include that the algorithm learns using features of the calls, including the voice of the caller, the geographical location of the originating phone and the time of day of the call. If a competitor launches a similar service then it is very difficult to tell whether the competing service infringes the patent claim because it is not known whether the same features are used. However, the GDPR requires that the criteria for the decision are disclosed, and the categories of data used are disclosed. Therefore there is a strong argument that infringement of the patent will be found through disclosure of the “meaningful information about the logic involved” to the data subject.

If we modify this example slightly we can see a situation where the GDPR is less helpful for detecting patent infringement. Suppose the artificial intelligence has learnt using features of the voice recordings computed from fast Fourier transforms of the voice signals and without using any other categories of data except the age of the callers. In this case the GDPR requires that the data controller discloses that the algorithm has reached its decision using features of the voice recordings computed from the voice signals themselves.

This is not enough to detect infringement since there are many ways to compute features from an audio signal and the data controller does not have to disclose the particular details of the algorithm according to the Guidance Documents.

How to find a practical way for data controllers to give “meaningful information about the logic involved”?

The authors of the Guidance Documents had the difficult problem of how to find a practical way for data controllers to give “meaningful information about the logic involved” to members of the public. Providing source code is not useful because often, even to expert programmers, messy source code is difficult to interpret. Providing algorithm design documents would explain the logic involved but is likely to bamboozle the lay member of the public. Even more difficult is the situation where deep neural networks are used where scientists currently have no easy ways of explaining the computed decisions.

However, one approach which is more pragmatic and practical is the counterfactual approach which has seemingly been followed, at least in part, in the Guidance Documents mentioned above.

AI PATENTS

about the categories of data used. If the categories of data are known, the data subject can think about how to modify his or her data within those categories in order to obtain a different outcome of the automated decision.

For the purposes of detecting patent infringement, the counterfactual approach is not as useful an approach as disclosing the full algorithm. However, the counterfactual approach is still useful, especially if more than one observation is taken into account. That is, suppose I collect automated decision outcomes made by a competitor service. I collect data about automated decision outcomes over different data subjects, over different times, and over different values of the personal data in the disclosed categories. I potentially collect a very large number of sets of values in this manner and then use them to infer how the automated decision was computed.

However, collecting data about multiple automated decision outcomes will be time-consuming and costly. Making the inferences will also be time-consuming and costly.

Tips for patent drafting To make patent claims more valuable we can think about including features which are likely to be disclosed as a result of the GDPR requirements and minimizing the use of features which relate to mathematical or computational detail.

Features likely to be disclosed pursuant to the GDPR will be features concerning the categories of data used by the artificial intelligence algorithm, the criteria used, and features about the overall application domain (i.e. the reason for the automated decision-making process).

Conclusion In conclusion, the GDPR will be useful for detecting patent infringement in cases where patents are directed to AI algorithms for making automated decisions, and where the requirements of the GDPR to disclose “meaningful information about the logic involved” apply. Information about categories of data used by algorithms and about rationale for automated decisions is publicly disclosed in some situations and can be used to help detect patent infringement. Collecting multiple sets of data about observed automated decisions and using them to infer how the automated decision algorithm works in detail is potentially possible, but will be costly and time intensive.

The counterfactual approach Under the counterfactual approach the term “meaningful information about the logic involved” is interpreted as giving information to the data subject to enable him or her to understand what things the data subject needs to change in order to obtain a different outcome of the automated decisionmaking process. The Guidance Documents go some way towards the counterfactual approach because they speak about giving information to the data subject about the rationale, and Volume 47, number 7-8

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Rachel Free (Fellow) is Of Counsel and Loretta Pugh is a solicitor at CMS Cameron McKenna Nabarro Olswang LLP in London. See more at cms.law JULY-AUGUST 2018

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CHINA UPDATE

SEPS

SEPs in China – Sony loses its appeal

Iwncomm v Sony, at first instance, was reported in July-August [2017] CIPA 34: punitive damages of 9,103,367 Rmb (about £1.06m) were imposed against Sony. Sony appealed to the Beijing High Court, and a decision was handed down on 28 March 2018. Sony’s argument appears more robust than at first instance, but the appeal was rejected. This decision shows an alarming expansion of the power of a patent when an industry standard is intertwined with a national standard, at least with respect of proving infringement. By Toby Mak.

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he first instance decision – of the Beijing Intellectual Property Court (“the IP Court“) – on 22 March 2017, held that Sony1 infringed Iwncomm’s2 patent relating to the WAPI standard (a standard required for sales in China, but seldom in fact used). The decision imposed punitive damages on Sony, which was ordered to compensate Iwncomm 9,103,367 Rmb (about £1.06m), including costs for litigating this case of 475,000 Rmb (£54,000), and damages of 8,630,000 Rmb (nearly £1m). An injunction was also granted against Sony. Sony appealed to the Beijing People’s High Court (“the High Court”), and this article reports on this appeal decision.

Sony’s first instance arguments For details of the IP Court’s decision, see July-August [2017] CIPA 34. In that hearing, Sony had made some interesting, if not peculiar, defences: 1. Sony’s mobile phone was not specifically made for performing WAPI, and could carry out other functions including making phone calls, taking photos, connecting to Wi-Fi. 2. Sony’s supplies were covered by exhaustion of rights, which was found to be not true.

3. Sony did not use the “WAPI” process during production.

This was rejected by the IP Court, inferring that Sony must have performed the test covered by the patent, or their mobile phones should not have appeared on the market in China.

4. Sony did not encourage or teach user to use Iwncomm’s patent. The IP Court did not comment on this point; it appears to be irrelevant, at least with respect to direct infringement.

5. WAPI, the standard covered by Iwncomm’s patent, is a Chinese national standard and, therefore, could not be infringed. [Comment: I am speechless.]

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Sony’s defence at the appeal In the appeal to the High Court, Sony’s defences were: • •

•

•

Sony did not infringe, as the WAPI standard did not correspond to Iwncomm’s patent.

It was incorrectly presumed that Sony performed the WAPI tests (and therefore infringed) during the processes such as production.

The test results of the four accused infringing products were incorrectly presumed to be applicable to the other 31 accused infringing products.

Iwncomm did not fulfill the preliminary burden of proof to prove the existence of the accused infringement.

However, the IP Court incorrectly shift the burden of proof to Sony, requesting Sony to prove non-infringement.

Sony further argued that as Iwncomm made a FRAND commitment on the subject patent, Iwncomm had no right to demand injunctive relief, and injunction against Sony should not be granted. [Comment: In my own personal view, Sony’s arguments at the appeal to the High Court are more “normal” than those at the first instance.]

Facts affirmed by the High Court at the appeal The following findings of the IP Court at first-instance were also affirmed by the High Court: a. The admission by Sony that since around 2009, smartphones could not obtain a telecommunication equipment model and network access license approved by the Ministry of Industry and Information Technology unless they passed the WAPI tests. Therefore, in fact the WAPI standard involved in the case had been compulsorily implemented. b. The infringement evidence submitted by Iwncomm, including notarized purchase of Sony’s mobile phones in China, were admitted by Sony in the first-instance. c. The evidence submitted by Sony demonstrating that Sony purchased test equipment of Iwncomm such as wireless access point for testing the WAPI functionality of Sony’s products. d. The fact that there were negotiations between Iwncomm and Sony from 2009 to 2015. e. Iwncomm’s expenses spent on enforcing the subject patent, including notarization and attorney’s fees.

The following additional findings were made in the appeal decision from the High Court: 1. During establishment of the WAPI standard, Iwncomm declared to the National Information Technology Standardization Technical Committee, the Chinese Volume 47, number 7-8

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standardization body involved in the establishment of the WAPI standard, that the WAPI possibly related to Iwncomm’s subject patent, and Iwncomm declared a FRAND commitment for this patent. Further, Iwncomm was one of the members drafting the WAPI standard.

2 Media, licensing and awards of Iwncomm’s patent reported by the media, including the following, were recognised: • Various licenses granted by Iwncomm at a licence fee of 1 Rmb per unit for which there were relevant official receipts (发票).

• Media reports on implementation of the WAPI standards, including during the 2008 Olympics.

• Technology awards received by Iwncomm, which were all Chinese awards.

New evidence submitted by Sony at appeal Sony submitted new evidence: a. Statements from Sony’s manufacturers attempting to prove that equipment for carrying out the WAPI test function during the manufacturing of Sony’s mobile phone was not used, and tests on WAPI functionality were not performed.

Iwncomm argued that these were issued by Sony’s affiliates, and therefore the authenticity of these could not be confirmed. Further, even though the WAPI function was not tested during the manufacturing process, this could not prove that the WAPI function was not tested in the assembly process. b. Investigation reports from two consulting companies attempting to prove that the market share of WAPI, public acknowledgement, and usage were extremely low.

Iwncomm’s argued that these reports were issued by a company paid by Sony, and were irrelevant. c. A US district court decision (Microsoft Corp v Motorola Inc) and part of its translation, attempting to prove that licensing fees of Wi-Fi-related patents with much higher market value than that of WAPI were much less than 1 Rmb per product. Iwncomm argued that this only showed the total amount of the licensing fees in a certain area, and could not be used to prove the actual licensing rate. d. Invalidation decision of Iwncomm’s subject patent, Iwncomm’s subject patent itself, and the internet proposal titled “Using Router Discovery and AAA Security Network Access” by the international Internet Engineering Task Force and part of its translation (both notarized by a Chinese notary), attempting to prove that Sony’s products did not fall within the scope of Iwncomm’s patent. Iwncomm argued that these were irrelevant to this case.

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All of the above newly submitted evidence was rejected by the court, largely agreeing with Iwncomm’s arguments.

[Comment: As reported in many of my previous CIPA Journal articles, it would not surprising to find Sony’s newly submitted evidence A and B were refused by the High Court due to the monetary relationship of the manufacturer in A and the consulting company in B with Sony. On the other hand, evidence A may play a role in the High Court’s decision on the direct infringement issue, which will be discussed below.]

At the appeal, Sony requested the High Court to order Iwncomm to provide its licensing agreement with Apple, Inc. in 2010, attempting to prove that Iwncomm’s licensing rate with Apple is much less than 1 Rmb per product. Although this was eventually obtained by Sony for submission to the High Court, Iwncomm argued that such was submitted after the stipulated evidence submission period, and should not be admissible.

However, this evidence was accepted by the High Court.

High Court agrees with the first instance court The High Court agreed with the first-instance IP Court on the following issues3: • • • • •

Sony products are not covered by exhaustion of rights.

Although WAPI is a Chinese national standard, this could not affect Iwncomm’s right to enforce its patent.

Sony demonstrated bad faith during negotiation.

Injunctive relief to Iwncomm was appropriate.

Appropriate amount of compensation awarded to Iwncomm.

On the other hand, the High Court had new or different views on the following issues: 1. Whether the acts carried out amounted to infringement.

2. Whether Sony directly infringed Iwncomm’s patent.

3. Whether Sony indirectly infringed Iwncomm’s patent.

These will be discussed below.

1. Did Sony’s acts amount to infringement?

Sony argued that Iwncomm’s patent and the WAPI had the following differences: •

In Iwncomm’s patent, if the authentication server AS did not authorise the mobile terminal MT, the mobile terminal MT would still determine whether to connect to access point AP based on an authentication action of the access point AP.

•

In the WAPI standard, if the authentication server AS did not authorise the mobile terminal MT, the mobile terminal MT would simply not connect to access point AP. That is, the mobile terminal MT would not determine whether to

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SEPS

connect to access point AP based on the authentication by the access point AP. Iwncomm argued that the subject of the above difference was not actually a feature recited in claim 1.

The High Court stated that Sony admitted that their products had WAPI function, while WAPI was a standard.

Therefore, it was only necessary for the High Court to verify whether the above disputed technical features were the same as or equivalent to the corresponding technical features in the WAPI standard. The description and claims of Iwncomm’s patent did not explicitly recite that the mobile terminal MT took the initiative to transmit its certificate to the wireless access point AP in order to request access identification, either actively or passively. That is, Iwncomm’s patent did not specify whether MT would or would not determine whether to connect to access point AP based on the authentication given by the access point AP at all, either in the claims or the description.

This was therefore the same as what Sony identified in the WAPI standard. Therefore, the High Court denied Sony’s noninfringement argument.

2. Did Sony directly infringe Iwncomm’s patent?

The High Court firstly agreed with the first-instance IP Court that Sony (China) performed WAPI tests on all types of the involved mobile phones, as the WAPI test, being a test item for type verification and approval, was required in all research and development tests for mobile phone devices. The High Court went on to affirm that at least during the stage of design, research and development or the stage of sample testing, Sony fully implemented Iwncomm’s patent.

However, the High Court then disagreed with the IP Court’s presumption that Sony infringed Iwncomm’s patent during manufacturing and testing of Sony’s infringing products as Sony did not submit its internal testing norms. Specifically, the High Court stated that since the implementation of the WAPI standard required downloading the certificate onto the mobile terminal MT in advance and performing complicated installation operations, these operation steps need a certain amount of time. In the factory testing stage for the mobile terminal, the WAPI function test performed on each mobile terminal could not meet the operational efficiency for an industrial production line.

On the other hand, although the existing evidence did not prove that Sony used Iwncomm’s patent during the production and factory testing stages, in the mobile phone manufacturing industry, no matter in which stage Iwncomm’s patent was used, for example during the product design and research-anddevelopment stages, or the manufacturing stage after product approval and the factory testing stage, these all constitutes patent infringement. Based on this, the High Court decided that Sony infringed Iwncomm’s patent in the manufacturing process of Sony’s infringing products. As such, the High Court www.cipa.org.uk

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did not agree with Sony’s argument that Sony did not directly infringed Iwncomm’s patent.

[Comment: In this part of the decision, the High Court reached the conclusion that Sony in fact directly infringed Iwncomm’s patent in a convoluted manner, and by indirectly disagreeing with Sony’s argument that Sony did not directly infringed Iwncomm’s patent. It appears that the High Court expanded Sony’s admission of conformation to the WAPI standard to all processes that could have been performed by Sony during the research, development, manufacturing and testing of Sony’s products. Sony’s newly admitted evidence A above, confirmed by Sony itself, admitted that the manufacturing and testing of its products were done within China. This may partly contribute to this decision.]

3. Did Sony indirectly infringe Iwncomm’s patent?

The High Court stated that in order to constitute indirect infringement, the following conditions should be fulfilled: 1. The infringer knows that involved product is the material, intermediate product, component or device or other product specifically for the exploitation of the subject patent. Further, the involved product is provided by the infringer to the direct implementer.

2. The involved product has “substantial” effect on the technical solution of the involved patent. Specifically, the involved product is not only indispensable to the implementation of the technical solution of the involved patent, but also has a prominent position, that is, not a minor product having a secondary position.

3. The involved product has no other reasonable economic and commercial uses other than the use in the technical solution of the subject patent.

4. The involved product is not exempted for noninfringement. These non-infringement exemptions include the implementer is an individual for non-business purpose, on a transient vessel passing through China, for scientific research, and Bolar exemption.

SEPS

•

•

addition to the WAPI function module embedded in Sony’s product, the patent also requires interaction between the access point AP and the authentication server AS. Iwncomm’s patent is a typical method patent with “implementation of multiple agents”, which meant that this required multiple agents to participate for complete implementation of Iwncomm’s patent.

Sony only provided mobile terminals (i.e. mobile phones) embedded with WAPI function modules, but did not provide the AP and AS. Therefore, in this case, no implementer, including an individual user, can individually implement the involved patent.

Based on the above, the High Court reversed the first-instance IP Court’s decision on this point – indirect infringement, and ruled in favor of Sony that Sony did not constitute contributory infringement.

[Comment: It is typical in the telecommunication field that a method or a system includes several interacting but individually operating components. The above shows the importance of including claims specifically directed to these individual components and their operations. Otherwise, potential infringers could get away with infringement more easily. Iwncomm apparently failed in this aspect. Although the High Court found Sony to have directly infringed Iwncomm’s patent instead, this is because of Sony’s admitted conformation to a national standard, which was necessary for Sony to obtain a licence to sell its mobile phones in China in the first place.]

Final decision from the High Court As the High Court ruled that Sony directly infringed Iwncomm’s patent, although Sony won on the point of indirect infringement, the High Court agreed with the decisions on relief given by the first-instance IP Court. As such, the High Court denied Sony’s appeal, and maintained the first-instance IP Court decision.

Summary The High Court further stated that the burden of proof for the above as:: • •

the patentee – items (1), (2), and (4); and the alleged infringer – to disprove item (3)

For this particular case, the High Court stated the following: •

•

The WAPI function module combination of hardware and software in Sony’s products did not have any other substantive use except for implementing WAPI. Therefore, they should be recognized as specific devices for implementing Iwncomm’s patent.

However, the involved patent is method patent. In

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Compared with the arguments at the first-instance, Sony showed significant improvement in this appeal case. However, as in any case, it is difficult, if at all possible, to cure damage done at the first-instance. Many of the facts found by the IP

Notes and references 1. Sony Mobile Communications (China) Co. Ltd. 2. Xi’an China Iwncomm Co., Ltd. 3. For more details see July-August [2017] CIPA 34.

4. Email toby.mak@teehowe.com or editor@cipa.org.uk

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Court at the first instance were also affirmed by the High Court, which provided sufficient reasons for the High Court to rule in favour of Iwncomm. In my view, Sony’s Achilles’ heel was the following two sets of evidence: 1. Sony’s admission of conformity to the WAPI standard; and 2. evidence of negotiations between Iwncomm and Sony from 2009 to 2015 It is alarming to see the High Court expand Sony’s admission of conformity to the WAPI standard to all processes that

IP INFRINGEMENT

could have been performed by Sony during the research, development, manufacturing and testing of Sony’s products.

This demonstrates how powerful a patent could become when an industry standard is intertwined with a national standard, at least with respect to proving infringement. I would be grateful if anyone could inform me of any similar cases in other jurisdictions4. Otherwise, this could be one topic of discussion with the Chinese government, as such intertwining gives extensive powers to a patentee.

Toby Mak, Tee & Howe Intellectual Property Attorneys.

IP infringement & property management companies Prada attempted to tackle its piracy problem – by small, particularly individual, infringers – in China by targeting the property management company instead of the individual infringers themselves. This may be a good strategy, as property management companies are less likely to run away. At the end of the day, a property management business has to be a company with permanent address and with certain degree of credibility and reputation for a certain period of time. However, as in other jurisdictions, in order for Prada to sue Yuansheng for contributory infringement, it is necessary to prove the company’s intention in assisting the infringement, which Prada failed to do in Prada Group v Zhuzhou Yuansheng Property Management Co, Ltd. By Toby Mak.

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S

adly, China is notorious for intellectual property infringement in respect of famous brands, including many luxury brands. It is not unusual for an entire shopping centre in a city in China to be packed with infringing goods. The Silk Street Market in Beijing was once infamous for this.

In Prada Group (Prada) v Zhuzhou Yuansheng Property Management Co., Ltd. (Yuansheng), Prada sought compensation from the property management company, which was leasing the shop to the actual infringer Peng Song (who was a Chinese individual).

It is interesting to note that Prada started proceedings by suing Yuansheng directly, but not suing Peng Song. (Peng Song was added to the case by the court, and did not respond to any summons from the court.) Prada treated Yuansheng as the actual infringer in Prada’s request to the court, including compensation, delivery up, and a public apology in local newspapers.

Prada’s assertion was that, as the property provider, the defendant Yuansheng should promptly note and effectively monitor infringement acts of its tenants. However, Yuansheng did not take any positive actions. Therefore, Yuansheng did not fulfill the duty of care as a goodwill administrator, but provided a market, environment and convenience to the tenants to perform their infringing acts.

As such, Yuansheng should bear civil liability in this case. www.cipa.org.uk

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Yuansheng’s defence is summarised below: •

Yuansheng was only responsible for property management of the shopping centre. Yuansheng was not the owner of the property and had no rights of managing business of the tenants.

•

The staff of Yuansheng did not have professional knowledge to determine trade mark infringement.

•

Yuansheng was not involved in the business activities of the tenants and did not infringe the trade marks of Prada.

•

Yuansheng did not deliberately instigate, lure, or help tenants to implement the infringing act, and therefore was not responsible for legal liability resulting from the infringing acts of the tenants. Prada should direct their complaints to the manufacturers and sellers of the infringing products

•

Yuansheng did not receive any correspondence from Prada before this lawsuit, and therefore had no possibility to fulfill any duty of care. Therefore, Yuansheng should not bear any liability for the sales of the infringing products.

Prada provided notarized purchase evidence of an infringing Prada bag from Peng Song to the court. The court ruled that Peng Song infringed Prada’s registered trade marks.

For the court to determine whether Yuansheng was also liable for the infringement, it needed to be based on whether Yuansheng’s acts were intentional in assisting the infringement. In fact, after the notarized purchase of the infringing products, Prada did not send any relevant notice to Yuansheng. Nor did Prada submit evidence showing that the shopping centre managed by Yuansheng had been penalized by the administration for infringement of Prada’s trade marks. According to the property management contract between Yuansheng and Peng Song, Yuansheng was only responsible for providing property management services and was not involved in Peng Song’s actual business.

Therefore, the court found that Yuansheng did not infringe Prada’s trade marks.

IP INFRINGEMENT

to the high mobility of the individual infringers (they can easily close their shop and open a new shop across the road; if they decide to run away the can be difficult to track down – an all too familiar experience elsewhere with market traders and internet infringers)1. In comparison, property management companies are less likely to run away; they have a permanent address and a certain degree of credibility and reputation for a certain period of time.

It is not clear why Prada did not target the property owners as well. Although the property owners could be individuals having the same high mobility issue as the small infringers, their properties are not going to go anywhere.

Prada failed in its attempt as it could not show the intention of Yuansheng in assisting the infringement.

Specifically, Prada only provided notarized purchase evidence of an infringing Prada bag from Peng Song to the court to try to prove Yuansheng’s intention. As a famous international brand, my view is that Prada could do better.

As in other jurisdictions, in order for Prada to sue Yuansheng for contributory infringement, it is necessary for Prada to prove Yuansheng’s intention in assisting the infringement. Evidence such as marketing material from Yuansheng promoting the shopping centre as a destination for cheap (better still, pirated and/or fake) Prada products would be useful. Administrative punishment against Yuansheng due to infringement of Prada’s trade marks would be helpful, but the administration would still require evidence proving Yuansheng’s intention in assisting the infringement in the first place. The mere allegation that Yuansheng did not do anything to report or stop the infringement did not go anywhere, at least in this case.

Toby Mak, Tee & Howe Intellectual Property Attorneys.

Observations This case may be an attempt by Prada to tackle its piracy problem involving small, particularly individual, infringers in China by targeting the property manager, instead of the individual infringers themselves. However, in this case, Prada did not even target the individual infringer Peng Song but instead directly targeted the property management company. Such a shift in tactics may be due Volume 47, number 7-8

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TRANSACTION FARMING

Transaction farming and damages in China “Click farming” is a form of click fraud, where a large group of low-paid workers are hired to click on paid advertising links for the click fraudster (click farm master or click farmer)1. In China, online retailers extend this further as “transaction farming” by making fabricated transactions to boost the shop’s reputation. These are frequently seen in online retailer platforms in China such as Taobao or Alibaba. “Transaction farming” has been recognized by the court as a basis for loss and damage occurring to the patentee in Pusu v Qingyang2; however, the punishment is unlikely to discourage these activities. By Toby Mak.

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eaders may have heard of the term “click farming”.

According to Wikipedia, the definition of click farming is3: “A click farm is a form of click fraud, where a large group of low-paid workers are hired to click on paid advertising links for the click fraudster (click farm master or click farmer).”

These practices exist around the world. One purpose is to raise the ranking of the relevant article/post/video with online platforms such as Facebook or YouTube in a short space of time.

In China, online retailers go one step further by procuring fabricated transactions to boost the seller’s reputation. These fabricated transactions involve actual payments from the purchasers, who are hired by the online retailer, and the money for the purchase comes from the retailer itself. The hired purchasers will also give very positive comments on the purchase as part of the package. I have looked for a term for this but failed (if you know of the proper term, please let me know4). Let us call such activities “transaction farming” for now. These are frequently seen in online retailer platforms in China like Taobao or Alibaba.

Although “transaction farming” can make an online retailer look more appealing to the general mass of customers, this could backfire in China if the retailer sells infringing products.

Specifically, transactions resulted from such “transaction farming” may also be taken into account in assessing damages against the retailer as an IP infringer. This is shown in Pusu v Qingyang2. This case concerned a Chinese utility model5 (‘171) directed to a cosmetic apparatus “Sliding plate mechanism of water replenishment apparatus”.

The purpose of this cosmetic apparatus is to spray water vapor onto the face of a user. It is not necessary to go into the details of this apparatus as the defendant Qingyang agreed in court that their product completely fell within the scope of ‘171.

The plaintiff Pusu had found the defendant Qingyang had sold the infringing product in Qingyang’s Taobao online shop, and sued for infringement at the Intermediate People’s Court of Ningbo Municipality, Zhejiang Province. www.cipa.org.uk

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The defendant Qingyang argued for non-infringement relying (a) on a prior art defence; and (b) that the sales volume of the accused infringing product was very low.

Prior art defence Qingyang provided evidence to try to prove that other products having the same technical features as that of ‘171 had been sold in public prior to the application date of ‘171, referring to design documents, a test report and transaction records. Pusu objected to the authenticity, legitimacy and relevance of this evidence arguing that: •

•

•

• •

The design documents were not original documents, and therefore were not in conformity with the formality requirements for evidence.

There was no other evidence showing that the sample in the design documents had the same structure as that in ‘171.

The time of creation of the design documents could be manipulated by a computer. Therefore, the design documents were inadmissible.

The test report could not prove that product ‘171 had been disclosed prior to ‘171’s application date.

The authenticity of the transaction records was doubtful.

The transaction records could not show that the structure of the product was the same as that in ‘171.

The court agreed with Pusu, and dismissed Qingyang’s prior art defence. [Comment: This is yet another example of the relatively high threshold for evidence in China. This particular case shows that such requirements are not only applicable to foreign entities, but also to local Chinese entities. As mentioned in my previous reports, if a prior art defence is to be used in China, it is advisable to rely on publications, preferably patent publications. If sales records are to be relied on as prior art in China, more proof would be required, including definite proof of the details on what was sold.]

TRANSACTION FARMING

defendant provided the following evidence to prove that the remaining 3292 sold units were not real transactional sales: • •

•

Pusu argued that even though the sales records were fabricated by Qingyang, these should still be counted as damages to Pusu. On this point, the court noted that the online sales records, the bank remittance records and the chat records matched with each other with respect to time, quantity, and amount of money. Specifically, the online sales records and the bank remittance records matched with the transaction records of the accused infringing product on notarized evidence provided by the plaintiff Pusu individually. Therefore, the fact alleged by the defendant that a large number of the transaction of the accused infringing product, specifically 3292 of these, were fabricated, was agreed by the court. [Comment: I have to say, the IP world never stops amazing me.]

The court commented on this point in the decision as below: •

Product transaction records in e-commerce shops are generally automatically generated records directed to the quantity of completed transactions between seller and respective buyers. Unless contrary evidence was presented, such transaction records are authentic and credible.

•

It is acknowledged that in practice, e-commerce sellers make fabricated transactions to obtain an advantageous competitive position in the seller ranking and/or sales volume of the related products, to improve seller credit, or to give consumers the impression of a large number of sales to attract more consumers. Fabricated transactions on e-commerce platforms violate the principle of honesty and credibility in civil conduct, and also cheated consumers with improper means, harmed competitive advantage of other market players, and were an illegal act.

[Comment: I cannot agree more.]

•

On one hand, even though “transaction farming” was illegal, the fact of “transaction farming” could not be denied. On the other hand, if the fact of “transaction farming” was established, the loss of the plaintiff and the profits obtained by the defendant could not be determined simply by considering only the actual sales

Sales volume of the infringing product As typical in other patent infringement cases, Pusu presented notarized evidence showing the sales volume of the infringing product, 3307, on Qingyang’s Taobao online shop. In fact, the notarized evidence showed that, while 1,972,950 of the infringing products were available, 3307 of these were sold at the following prices: • • •

99 Rmb (for volume of between 1 and 99); 75 Rmb (for volume of between 100 and 199); 65 Rmb (for volume of 200 or above).

The defendant Qingyang argued that the sales volume of the infringing product was actually only 15! Interestingly, the Volume 47, number 7-8

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online sales records; bank remittance records [Comment: According to the decision, such records referred to the amount of money remitted from the defendant Qingyang to the “transaction farmers”]; and the defendant, Qingyang’s online chat records with the “transaction farmers”

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volume or the “transaction farming” volume. The impact on compensation should be determined on a case-by-case basis.

Although the profits obtained by the defendant were reduced by reference to the “transaction farming”, this act still had adverse effects on Pusu: a. It caused damages to the sales of the plaintiff. b. It negatively impacted on market promotion of the patented product of the plaintiff. c. It diverted attention from target consumers. d. As the price of Qingyang’s infringing product was only a one-quarter that of the plaintiff ’s, it significantly affected perception of the price of the patented product by the consumers. It could be determined that this indirectly caused loss of sales of the plaintiff ’s patent product. e. The relevant sales volume ranking and relative overall rankings were longstanding on the e-commerce platform, which resulted in the plaintiff ’s long-term indirect loss.

The above were obviously related to “transaction farming” by the defendant. Therefore, the defendant should bear corresponding liability for compensation. Based on this, the court ruled that the Qingyang had infringed ‘171, and that Qingyang was order to pay Pusu 70,000 Rmb (about £8,000).

Observations Although it is encouraging to see a Chinese court recognise the adverse effects to the patentee, Pusu, caused by “transaction farming”, it is disappointing that the court awarded Pusu only a relatively low amount of compensation – 70,000 Rmb (which includes Pusu’s costs to enforce ‘171). The different amounts are compared as below: Qingyang’s price (Rmb)

Pusu’s (Rmb)

1,485

5,940

Total sales of 3,307

327,393

1,309,570

Total stock of 1,972,950

195,322,050

781,288,200

Amount Actual genuine sales of 15

TRANSACTION FARMING

“total” sales of 3,307. Unfortunately, the decision did not mention how the compensation amount of 70,000 Rmb was calculated. In fact, the above decision on compensation seems to contradict the court’s comments on “transaction farming” that: • •

•

the product transaction records are authentic and credible; fake transactions on e-commerce platform violate the principle of honesty and credibility in civil conduct, and also cheat consumers with improper means, harm competitive advantage of other market players, and are illegal acts; and although the profits obtained by the defendant were relatively reduced due to “transaction farming”, this act still caused the various adverse effects to the plaintiff Pusu mentioned above.

It could be argued that the fake transactions due to “transaction farming” should really be considered as actual damages suffered by the patentee6. At the end of the day these were transactions that occurred, with money changing hands.

It could also be argued that a bad-faith act would qualify for punitive damages, which are to be introduced by the next revision of the Chinese Patent Law. The current decision correctly identified that such “transaction farming” activities not only harm the patentee, but also decieve all general customers. My view is, there is sufficient bad faith for punitive damages. Imposing such measures could also help to improve social morality, which openly tells the Chinese people the consequences of telling lies are severe (in this case, it could be billions of Rmb in terms of compensation). In fact, the current low compensation of 70,000 Rmb may encourage “transaction farming” activities, as the punishment does not seem to be particularly severe.

Toby Mak, Tee & Howe Intellectual Property Attorneys.

Notes and references 1. See https://en.wikipedia.org/wiki/Click_farm 2. Zhejiang Pusu Electric Appliance Co., Ltd. v Cixi Changhe Qingyang Sanitary Ware Factory 3. https://en.wikipedia.org/wiki/Click_farm

It is my view that the compensation amount of 70,000 Rmb is unlikely to compensate for all of the adverse effects recognized by the court mentioned above. Although this amount of 70,000 Rmb is already about 47 times of Qingyang’s actual sales of 15, such is only a little more than one-fifth of Qinyang 32 CIPA JOURNAL

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4. Email toby.mak@teehowe.com or editor@cipa.org.uk 5. no. ZL201520680171 6. Editor: Even if not causing financial loss directly, on a reasonable royalty basis

www.cipa.org.uk

04/07/2018 08:54:46

US update: Privilege The (ever?) expanding privilege in the US for US patent practitioners and perhaps for foreign patent practitioners

By Timothy P. McAnulty and Ashley M. Winkler.

A

Texas Supreme Court case, In re Silver1, marks the latest development in the trend towards protecting communications between patent agents and their client as privileged communications. It follows a decision by the Federal Circuit in In re Queen’s University of Kingston in 20162 that recognized a new patent-agent privilege in federal courts, and the adoption of 37 C.F.R. §42.57 by the United States Patent and Trademark Office (“USPTO”) in 2017, which formally created a patent-practitioner privilege in proceedings at the USPTO. When considered in combination with this trend, the Texas Supreme Court’s opinion further evidences how patent agents and their clients may expect their communications to be treated. Further still, the In re Silver opinion may suggest that formalized privilege protection for foreign patent practitioners is on the horizon.

In re Silver Case background The case in In re Silver arose from a breach-of-contract action between an inventor and a company that acquired his patent3.

During the course of discovery, the patent owner sought production of emails between the inventor and his registered patent agent who represented him before the USPTO and did so without working under the supervision of a licensed lawyer4.

The inventor refused to produce the emails, asserting that they were privileged communications, and characterized two types of communications: those related to patent prosecution and those related to the inventor’s potential litigation with the patent owner, both of which would very likely be privileged if the communications were between the inventor and a lawyer.

The patent owner moved the court to compel production of all communications5.

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The trial court granted the patent owner’s motion and the inventor sought mandamus relief at the Texas Court of Appeals, asking it to withdraw the lower court’s order6. The appeals court denied the mandamus petition because the court understood the petition to ask the appeals court to create a new, independent patent-agent privilege, which the court stated it would not do as an intermediate court7.

Opinion by the Supreme Court of Texas On further appeal, the Texas Supreme Court held that a patent agents’ client may invoke attorney-client privilege.

While the lower courts had framed the case as creating a new privilege, the Supreme Court of Texas considered whether the communications between the inventor and his patent agent were protected under the existing attorney-client privilege, which in Texas is codified under Texas Rule of Evidence 503(b): 1. General Rule. A client has a privilege to refuse to disclose and to prevent any other person from disclosing confidential communications made to facilitate the rendition of professional legal services to the client: a. between the client or the client’s representative and the client’s lawyer or the lawyer’s representative; b. between the client’s lawyer and the lawyer’s representative; c. by the client, the client’s representative, the client’s lawyer, or the lawyer’s representative to a lawyer representing another party in a pending action or that lawyer’s representative, if the communications concern a matter of common interest in the pending action; d. between the client’s representatives or between the client and the client’s representative; or JULY-AUGUST 2018

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US UPDATE

e. among lawyers and their representatives representing the same client8.

Texas Rule of Evidence 503(a)(3) defines the term “lawyer” as “a person authorized, or who the client reasonably believes is authorized, to practice law in any state or nation.”9 The court analyzed whether the rule’s definition of “lawyer” could cover a patent agent, and more particularly whether patent agents are “authorized to practice law” in a state or nation10. The court looked to statutes, dictionary definitions, and the Texas State Bar Act to understand the rule’s use of the term “practice of law.”11 These sources were compared with the types of activities that USPTO regulations explicitly permit patent agents to perform, namely “preparing… any patent application,” “representing a client” in various matters, and advising clients regarding “alternative forms of protection which may be available under state law.”12 And, although not binding on the state court, the Texas Supreme Court considered the Federal Circuit’s decision in In re Queen’s University of Kingston and the US Supreme Court’s decision in Sperry v State of Florida ex rel. Florida Bar, which both found that patent agents engage “in the practice of law itself.”13 The Texas Supreme Court also considered whether patent agents are “authorized” to practice law in a state or nation.

The court again cited Queen’s and Sperry, as federal authority recognized that registered patent agents engage in the authorized practice of law before the USPTO even though they are not licensed as lawyers14. Further, dictionary definitions and legislative history showed that the term “authorized” is broader than the term “licensed,” and Rule 503 does not require a licence.

Having found that patent agents “practice law” and that they are “authorized to do so,” the Texas Supreme Court found that patent agents fall within Rule 503’s definition of “lawyer.”

The court, therefore, held that clients may invoke attorneyclient privilege to protect their communications with patent agents15. The court further held that because a patent agent qualifies as a lawyer under Rule 503, then the patent agent does not need to be supervised by a licensed lawyer for privilege to apply; the privilege applies to patent agents independent of any relationship to a lawyer16. The court conditionally granted mandamus relief and remanded the case to allow in camera review of the emails in question17.

Rule of Evidence 503 The issue before the Texas courts was a matter of state contract law, not federal patent law18. And while the Federal Circuit formally recognized a federal-law privilege for patent agents, states may reach different conclusions when addressing state law, as the lower Texas courts did19. This distinction between federal and state law flows from the US Supreme Court decision in Gunn v Minton, which held that state courts are permitted 34 CIPA JOURNAL

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to hear cases that relate to, but do not involve, patents20. Such cases include the breach-of-contract action at the centre of In re Silver, and other cases that do not involve typical patent law issues like infringement or invalidity21. Thus, state courts can have a role in deciding issues that impact patent law, including patent-agent privilege.

The Texas Supreme Court’s decision has the potential to affect privilege for patent-agent-client communications in a majority of US states. Texas Rule of Evidence 503 – the statute interpreted as protecting patent-agent-client communications in In re Silver – is modeled after a version of proposed Federal Rule of Evidence 50322. And beyond Texas, 37 other states have adopted the same or a similar rule of evidence. While state supreme court decisions are binding only in their respective states, decisions from other states can be persuasive. As a result, the Texas Supreme Court’s decision may provide persuasive authority to extend existing attorney-client privilege to protect patent-agent-client communications in those states that have a similar rule of evidence.

Scope of patent-practitioner privilege As patent-agent privilege protections develop, the scope of protection remains an open question. In re Silver is the latest in a trend towards recognizing patent-agent-client communications as privileged. In 2016, the Federal Circuit’s decision in Queen’s – the same Federal Circuit case cited in In re Silver – garnered much enthusiasm for formally recognizing a new patent-agent privilege23. Then, in 2017, in the same week oral arguments were occurring in In re Silver, the USPTO issued 37 C.F.R. §42.57 and formally adopted a patent-practitioner privilege.

However, it is not yet clear whether the scope of the federal patent-agent privilege and the scope of the USPTO’s patentpractitioner privilege are the same. The Federal Circuit’s holding in Queen’s and the USPTO’s Rule appear to be closely related. Both limit the scope of privilege to communications regarding activities “necessary and incident” to a patent agent’s authorized practice before the USPTO24. Thus far, what is “necessary and incident” has largely been untested, and practitioners are watching to see if federal and state courts adopt a narrow or broad view of patent-agent privilege. To date, only one federal district court case has applied the new privilege and did so narrowly.

In TCL Communications Technology Holdings Ltd v Telefonaktienbolaget LM Ericsson, the Central District of California stated that Queen’s had “construed the patent agent privilege narrowly” and that “the scope of the patent agent privilege is necessarily narrower than the scope of the attorneyclient privilege.”25 But the court also acknowledged “there is substantial overlap with the type of patent prosecution activities and related communications that are possibly protected” by the two privileges26. Ultimately, the party asserting privilege did not meet its burden to show that the communications were www.cipa.org.uk

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not primarily business in nature and therefore, the court never explained the overlap or reached the question of whether the patent-agent’s activities were “reasonably incident” to practice before the USPTO27.

Nevertheless, comments published by the USPTO provide some guidance with regard to what activities are within the scope of privilege28. For example, the rules clarify that in addition to preparing and prosecuting patent applications,

Notes and references 1. 540 S.W.3d 530 (Tex. Sup. Ct. 2018).

2. 820 F.3d 1287 (Fed. Cir. 2016).

3. In re Silver, 540 S.W.3d at 532.

4. Id. at 533.

5. Id. at 533.

6. Id. at 533; In re Silver, 500 S.W.3d 644, 646 (Tex.App. 2016).

7. In re Silver, 540 S.W.3d at 533; In re Silver, 500 S.W.3d at 645.

8. Tex. R. Evid. 503(b).

9. Tex. R. Evid. 503(a)(3).

10. In re Silver, 540 S.W.3d at 533-34.

11. Id. at 535-36.

12. Id. (citing 37 C.F.R. §11.5(b) (2017)).

PRIVILEGE

patent agents may provide validity opinions in contemplation of filing a request for reexamination29. The comments by the USPTO provide flexibility in defining a patent agent’s practice, and specifically recognize that the scope of authorized activities may change over time30. For example, because USPTO rules authorize patent agents to represent clients in other post-grant proceedings – i.e., post-grant reviews, inter partes review, and covered business method review – patent practitioners

rationales to find patent agents are entitled to at least some privilege protection. In Queen’s, like In re Silver, the Federal Circuit found that a new patent-agent privilege should be created because: (1) patent agents hold unique roles performing activities the Supreme Court has construed as constituting the practice of law; and (2) because Congress has authorized that practice. The court in Queen’s also considered the current realities of patent litigation that support a patent-agent privilege. See Queen’s, 820 F.3d at 12941302.

24. Queen’s, 820 F.3d at 1301-02 (citing 37 C.F.R. §11.5(b)); 37 C.F.R. §42.57(c).

25. SACV 14-00341 JVS (ANx), 2016 WL 6921124 (C.D.Cal. May 3, 2016).

13. Id. (citing Queen’s, 820 F.3d at 1302 and Sperry v State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963)).

26. TCL Comm’ns, SACV 14-00341 JVS (ANx), 2016 WL 6921124.

14. Id. at 537-38.

17. Id.

28. See Changes to Representation of Others Before the USPTO, 73 Fed. Reg. 47,650 (Aug. 14, 2008) (related to 37 C.F.R. pt. 11) (hereinafter “Representation Before the USPTO”).

18. See id. at 533.

29. See id. at 47,670.

19. See In re Silver, 500 S.W.3d at 646-47.

30. See id. (“The scope of activities involved in practice of patent law before the Office is not necessarily finite, and is subject to change as the patent statute changes and rules are promulgated to [sic] implement statutory changes.”).

15. Id. at 538-39.

16. Id.

20. See 568 U.S. 251, 264-65 (2013).

21. See id. at 257.

22. Rules of Evidence for United States Courts and Magistrates, 56 F.R.D. 183, 236 (1972) (including the definition: “A ‘lawyer’ is a person authorized, or reasonably believed by the client to be authorized, to practice law in any state or nation.”) (emphasis added).

23. While the Federal Circuit and the Texas Supreme Court ultimately took different approaches in establishing privilege protections – the Federal Circuit creating an entirely new patent-agent privilege and the Texas Supreme Court expanding existing attorney-client privilege under Rule 503 – the two courts applied similar

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27. Id.

31. See 37 C.F.R. §42.10.

32. In re Silver, 540 S.W.3d at 539 (emphasis added).

33. Queen’s, 820 F.3d at 1301-02 (Fed. Cir. 2016); see also Representation Before the USPTO, 73 Fed. Reg. at 47,670.

34. Note that in the US, most patent agents work in law firms or otherwise work in connection with licenced attorneys engaged in practice for their client. As a result, in most situations, patent agents

may be protected under traditional attorney-client privilege as agents of the attorney in representing the client.

35. 37 C.F.R. §42.57(b).

36. Compare Rule Recognizing Privilege Communications Between Clients and Patent Practitioners at the Patent Trial and Appeal Board, 81 Fed. Reg. 71,653, 71,657 (Oct. 18, 2016) (to be codified at 37 C.F.R. pt. 42) with 37 C.F.R. §42.57.

37. 37 C.F.R. §42.57(b).

38. See supra Section I(B); see also In re Silver, 540 S.W.3d at 536-37.

39. Id. at 538.

40. Compare Duplan Corp. v Deering Milliken Inc., 397 F. Supp. 1146, 1170 (D.S.C. 1974) (interpreting the French Penal Code and finding French patent agent communications privileged) with BristolMyers Squibb Co. v Rhone-Poulenc Rorer, Inc., 188 F.R.D. 189, 200 (S.D.N.Y. 1999) (interpreting the same French Penal Code and finding French patent agent communications not privileged).

41. See USPTO, Summary of Roundtable and Written Comments, available at www.uspto.gov/sites/default/files/ documents/Summary%20of%20 Privileged%20Communication%20 Roundtable.pdf (“Privilege Report”).

42. Queen’s, 820 F.3d at 1301-02.

43. See, e.g., Regulation on the European qualifying examination for professional representatives – Official Journal EPO 2/2014, www.epo.org/law-practice/legaltexts/official-journal/2014/etc/se2/2014se2.pdf; European Patent Institute “The Patent Profession in the EPC Contracting States,” http://patentepi.com/assets/uploads/ documents/educationtraining/ 140218_ Table_of_Patent_Profession_final.pdf; see also Queen’s, 820 F.3d at 1298-99.

44. Queen’s, 820 F.3d at 1298.

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may reasonably expect that validity opinions regarding such proceedings would likewise be privileged31.

But what about patent-related opinions for litigation outside the USPTO? This question is still at issue in In re Silver.

The disputed communications included some that related to patent prosecution and others that related to the strength of the inventor’s breach of contract case with the patent owner.

The Texas Supreme Court’s opinion in In re Silver left open the possibility that the second category of documents could also be protected, explaining that “matters outside the agent’s authorized practice area might not be protected.”32 The court remanded the case for in camera review of the documents, so we do not yet know how broadly the Texas court will construe the patent agent’s “practice of law.”

The guidance available from the Federal Circuit and USPTO indicates that for federal law, a patent agent’s litigation opinion may not be privileged. The Federal Circuit in Queen’s, and the USPTO in regulatory comments, have both stated that “communications with a patent agent who is offering an opinion on the validity of another party’s patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement” is not within the scope of privilege33. Thus, while the Texas trial court could define its own standard, the Federal Circuit and USPTO suggest that a validity opinion not related to a proceeding before the USPTO is not protected by patent-agent privilege.

Until the limits of patent-agent privilege are further defined, the relevant scope appears to at least cover all prosecution and quasi-litigation activities that occur before the USPTO. However, patent agents practising without the supervision of a licensed lawyer may be advised to take caution in providing legal opinions that are not closely related to matters before the USPTO, as those communications may not be protected under current patent-agent privileges34.

US privilege protections for foreign patent practitioners Though much of the conversation surrounding expanded privilege protection has centered on US patent agents, foreign patent practitioners have not been completely ignored. The USPTO’s patent-practitioner privilege expressly provides coverage for a “foreign patent practitioner,” defined as: “a person who is authorized to provide legal advice on patent matters in a foreign jurisdiction, provided that the jurisdiction establishes professional qualifications and the practitioner satisfies them.”35 In fact, the only difference between the proposed rule and the rule ultimately adopted was a clarification that authorized foreign patent practitioners are entitled to patent-practitioner privilege in proceedings before the USPTO36. The adopted USPTO rule further adds that “this rule applies regardless 36 CIPA JOURNAL

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of whether [the foreign] jurisdiction provides privilege or an equivalent under its laws.”37 USPTO rules and guidance are not binding in US courts.

Nevertheless, it may prove to be a persuasive authority, encouraging courts to formally recognize protections for foreign patent practitioners in federal courts. And the same may be true for state courts. The Texas Supreme Court, in finding patentagent privilege, specifically relied on the Texas Rules of Evidence that expressly define a “lawyer” as a person “authorized to practice law by a state or nation.”38 The court noted that the term “authorized” means “sanctioned by authority” or “approved” and found that a registered patent agent’s authority ultimately comes from the US, which is “one of the sovereigns” identified by the rule39. Thus, if a party can show that a foreign sovereign nation has “authorized” a practitioner to practice law, an argument can be made that according to In re Silver, that practitioner is within the definition of “lawyer” in Texas’s Rule 503.

It is less clear whether foreign patent practitioners’ client communications will be protected in federal courts. In the past, foreign-patent-practitioner-client communications have not always been protected40. But changes in US law bolstering patent-agent privilege may signal a willingness to likewise protect communications with foreign patent practitioners41.

The Federal Circuit in Queen’s was persuaded, in part, to create a new patent-agent privilege because patent agents are authorized to practice before the USPTO42. The requirements for many foreign patent practitioners, including practitioners before the European Patent Office and within various European countries, are comparable to the requirements highlighted and relied on by the Federal Circuit in Queen’s43. The court was also motivated by policy reasons, explaining that a client has a reasonable expectation that legal advice related to a patent will be privileged44. This justification may equally apply to foreign patent legal advice.

While there is potential protection for foreign patent practitioners in US state and federal courts, until it is expressly clarified, foreign patent practitioners should continue to take precautions in the event their client communications could eventually be produced in the course of US litigation.

Conclusion The Texas Supreme Court’s recent In re Silver decision evidences a continued shift towards broader protection for patentpractitioner-client communications. Although questions remain with respect to the scope of these protections, patent practitioners may be able to enjoy more confidence that their client communications will be protected from discovery in US courts and before the USPTO. Stay tuned as we continue to follow this evolving area of US law.

Timothy P. McAnulty is a partner in Washington, DC office and Ashley M. Winkler an associate in the Atlanta office at Finnegan. See more details at www.finnegan.com. www.cipa.org.uk

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Patent decisions Infringement | Injunction | Limitations to injunction in public interest Edwards Lifesciences LLC v Boston Scientific Scimed Inc [2018] EWHC 1256 (Pat) 24 May 2018 Arnold J This decision on limitations to an injunction followed a decision by the Court of Appeal ([2018] EWCA Civ 673, reported May [2018] CIPA 28) that European Patent No. 2926766 (“766”) of Boston was valid and infringed by Edwards through dealings in a transcatheter replacement heart valve (“THV”) called the Sapien 3. This case was reported and discussed on the IPKat blog (http://ipkitten. blogspot.co.uk) on 25 May 2018.

It was common ground that the injunction should be stayed for a period and then qualified for a further period in the public interest. This was because of the expected impact of the injunction on the health of patients with aortic stenosis requiring THVs. The judge reviewed the expert evidence and found that at least a year would be needed for clinicians to be retrained to implant alternative THVs to the Sapien 3. He also found that there were some groups of patients (in particular intermediate risk patients requiring THV delivery through the heart) for whom the Sapien 3 was the only suitable device presently available.

Thus, the judge ordered that the injunction should initially be stayed for 12 months, and that Edward could apply to extend the stay if needed for retraining to be completed. He ordered that the injunction should be stayed indefinitely in relation to patients for whom it was declared by the responsible clinician that the Sapien 3 was the only suitable device, but that Boston could apply to terminate this exception if a suitable alternative became available.

The judge also decided matters relating to payments on account by Edwards and inspection of samples of a new Edwards THV product called the Ultra.

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

Pre-action disclosure Smart Reamer Drilling System Ltd v NOV Downhole Eurasia Ltd & Ors [2018] EWHC 1265 (IPEC) 30 April 2018 HHJ Hacon This decision relates to an application, by the defendants of ongoing infringement proceedings (NOV), for the disclosure of a licence agreement granted by the claimant (Smart Reamer) to a third party. The licence agreement related to the same two patents and were part of a settlement agreement in separate proceedings between the claimant and the third party.

Smart Reamer is a company privately-owned by the inventor of the two patents concerned. The defendants, collectively referred to as NOV, are a multinational group of companies with a substantial turnover. The patents related to tools for drilling boreholes for oil and gas exploration.

In seeking the disclosure of the licence agreement, NOV relied on the judgment of Arnold J in The Big Bus Company Ltd v Ticketogo Ltd ([2015] EWHC 1094(Pat)): “…all too often, parties to intellectual property disputes spent large sums of money litigating issues on liability when the costs incurred were entirely disproportionate to what was at stake in terms of the quantum of the claim. I entirely agree with this observation… A number of recent decisions of His Honour Judge Hacon show that this phenomenon even extends to litigation in the Intellectual Property Enterprise Court…

In a case such as the present, where the key information concerning the value of the claim was held by one party, then it was desirable for that party to be required to disclose that information by way of pre-action disclosure. That would place the parties on an equal footing, would enable both parties to make an informed assessment of whether the claim was worth litigating at all and would promote settlement of the dispute without resort to proceedings.”

Smart Reamer put forward three main points against the allowance of the application. First was that the business model of the patentee in The Big Bus case was based on granting licences, whereas the relief sought by Smart Reamer in the ongoing infringement proceedings was likely to be an injunction rather than a licence.

Second was that the licence agreement, the disclosure of which NOV sought, was granted with an intentionally broad scope in mind in order to settle proceedings and therefore could not provide an accurate guide to damages. Third was that in The Big Bus case, the defendant sought disclosure with the primary aim to settle, whereas NOV had shown no genuine interest in settlement.

Smart Reamer contended that NOV in fact responded to an offer of pre-action settlement by bring proceedings in the US and against the inventor personally.

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PATENTS: UK • IPO

Smart Reamer argued further that parties entering into a confidential licence agreement should be free to do so without fear that the details are bound to be open to disclosure in subsequent proceedings, and that disclosing commercially sensitive details of the licence agreement to NOV would pose significant damage to the relationship between Smart Reamer and the third party because NOV as itself a potential competitor of the third party.

NOV argued that Smart Reamer had in fact considered the possibility of seeking reasonable royalty as relief such that the disclosure of the licence agreement would assist in settling proceedings. NOV also argued that although the facts were not entirely comparable, it did not necessarily mean the disclosure of the licence agreement would not assist.

The judge considered the fine balance between the benefits of disclosure to the prospects of advancing proceedings to settlement with the rights to confidentiality of the parties to the licence agreement. On the one hand, on the differences in facts, the judge noted that neither of the two main reasons in The Big Bus case for granting the application for disclosure applied. On the other hand, the judge noted that:

IPO decisions

multiple requests except for exceptional reasons. On balance, the hearing officer decided it would not be an efficient use of the tribunal’s time to consider all five auxiliary requests, but did agree to consider two sets of claims.

Turning to patentability, when identifying the contribution the hearing officer did not agree with the applicant that the output of the simulation system constituted information about the operation of a process plant, as the output values were calculated by the simulation rather than measurements of the network itself, and were “just values of pressure and flow”, which she considered to be data in and of itself that did not convey any information that could inform a decision on controlling a processing plant. As a result, the hearing officer considered the contribution to be a simulation of a process network, which was a program for a computer as such. The application was refused.

Patentability: section 1(2) Emerson Process Management Power and Water Solutions Inc BL O/283/18 10 May 2018 A hearing was held to decide whether the invention, a simulation system for simulating the operation of a process network, was patentable. Shortly before the hearing the applicant filed five auxiliary requests of claims. The hearing officer was minded to refuse consideration of the auxiliary requests, noting that the purpose of the hearing was to resolve the disagreement between the examiner and applicant. The applicant argued that some of the requests were necessary due to the examiner changing his mind about allowability of claims. The hearing officer dismissed this, considering it to be sometimes necessary to “change one’s mind” when responding to the individual circumstances of the case. The applicant further pointed to the judgment in Nokia GmbH v IPCom GmbH [2012] EWHC 225 (Pat), in which four sets of claims were considered, and submitted that if the court was able to consider such a number of requests then so should the hearing officer. The hearing officer did not think matters of the post-grant proceedings in that judgment should apply to pre-grant proceedings, and further highlighted that the judgment discouraged filing of 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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“…the potential damage to Smart Reamer is fairly tenuous and because anything that is likely to promote settlement is an end to be desired…”

In conclusion, the judge ordered the disclosure sought on terms that were to be settled on a later date.

Restoration: Section 28 Jonathan Lee Clarke BL O/272/18 3 May 2018 A renewal fee for the proprietor’s patent was not paid in due time, and the patent subsequently ceased. An application for restoration was then made within the time limit allowed

by Rule 40(1). The IPO’s preliminary view was that the requirements for restoration had not been met, because insufficient evidence had been provided regarding the proprietor’s stated reason for the delay being due to being heavily involved in liquidating the business of which he was managing director. The IPO’s preliminary view was that the failure to pay the renewal fee on time was due to financial reasons, which led to a conscious decision not to pay the fee, and could not therefore be said to have been unintentional.

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consisting of various documents regarding his financial situation around the relevant time period, but these were not considered to be relevant to the intention to pay the renewal fee. At the subsequent hearing, the proprietor recounted his situation at the time leading up to the missed renewal fee and argued that, at the time the renewal fee was due, he could not have paid it due to the terms of his bankrupcy, which limited him to only essential spending.

Referring to the decision in Anning’s Application (BL O/374/06), the hearing officer considered that it was important to understand the requirement of whether the failure to pay the fee was unintentional in totality, and decide whether the evidence demonstrated that the circumstances surrounding the facts of the case were outside the applicant’s control. The specific reasons in relation to the failure to renew were to be examined, and not the general surrounding circumstances. In the evidence provided, the hearing officer considered that the proprietor had found himself in general parlous circumstances and it was obvious that he had not intended any of this to happen, but these led him to being forced to conclude that he did not have sufficient funds to pay the fee. The evidence also showed that the proprietor had become aware of the need to renew his patent at around the same time that his financial circumstances had started to improve but still did not decide to renew the patent. The hearing officer therefore concluded that the failure to renew the patent was a conscious decision, albeit one that was taken under numerous significant pressures, and refused the application for restoration.

PATENTS: IPO

Opinions: Section 74A EasyFit Hardware Limited Opinion 06/18; 10 May 2018 A request was made for an opinion on validity, in which the requester cited, among other documents, a document purporting to predate the filing date of the patent in question.

The patentee responded by stating that the publication date of the document was not substantiated in any way. The requester then submitted two further documents in reply that were alleged to provide evidence of the contested publication date. The examiner first considered whether the additional documents were observations in reply as required by Rule 96. Since the patentee would not have an opportunity to make observations on the additional documents if they were introduced at the reply stage, doing so would be unfair to the patentee. The further documents were therefore not considered for the purposes of the opinion. The examiner was unable to establish whether the purported prior art document was available to the public before the filing date of the patent, and did not accept that it formed part of the state of the art as required by section 2(2). She did, however, continue with the opinion including consideration of the arguments surrounding the document with the proviso that it had not been proved to be part of the state of the art. The examiner then went on to consider the validity of the claims of the patent, which related to a shootbolt assembly for a sash window, and determined that claim 1 of the patent was in any case novel and inventive over the cited document.

Non-Institute events, September-November 2018 Basic Litigation Skills Course Provider: CPD Training Date: 10-14 September

Introduction to EQE Paper C and Paper D, Milton Keynes Provider: JDD Consultants Date: 1-2 November (see page 58)

Case Law of the EPO Boards of Appeal Provider: Centre for Commercial Law Studies (CCLS) Date: 19 September to 24 October 2018 (see page 57)

Basic Litigation Skills Course Provider: CPD Training Date: 5-9 November

Introductory “Methodology” courses on paper D, Paris Provider: CEIPI Date: 26-27 September Introductory “Methodology” courses on papers A+B, Paris Provider: CEIPI Date: 28 September Introductory “Methodology” courses on paper C, Paris Provider: CEIPI Date: 29 September

Preparatory seminar – EQE pre-examination, Strasbourg Provider: CEIPI Date: 5-9 November Training for the EQE Provider: QM-UL Date: 12–13 November Preparatory seminars for papers A+B, C, Strasbourg Provider: CEIPI Date: 23 November

Professional Certificate in Trade Mark Practice Provider: Nottingham Law School Date: October

EQE Papers A&B, Paper C and Paper D courses, Milton Keynes Provider: JDD Consultants Date: 26 November - 4 December (see page 58)

Certificate in Registered Trade Mark Attorney Provider: Nottingham Law School Date: October

13th edition of the Pan-European IP Summit, Brussels Provider: Premier Cercle Date: 28–29 November

See full details at www.cipa.org.uk/whats-on/non-institute-events. To list an event please email sales@cipa.org.uk

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2016

The not-so-secret diary of a CIPA President

By Andrea Brewster

I have a coffee and a little chat with the VeePee. We talk about what CIPA is going to be like when he is the Pee, which is very soon. I have a massive grin on my face A P R throughout. I do hope it is not putting him off: he has such lovely plans. But the truth is, whether his plans are lovely or not, and whether they work or not, they are his problem not mine.

We return to tell Mr Davies about the plans. Poor Mr Davies: every year he has to adjust to a new President and a new set of plans, and he has to pretend it is all part of the Grand Scheme of Things.

Each Pee has a different approach, and the only constant is that we are all a little bit mad, although each of us is a little bit mad in a different way. And I am a huge bit mad, and in too much detail, but luckily for Mr Davies he only has two weeks left of pretending I am part of the Grand Scheme of Things. No one really bought that anyway.

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4pm: Today I am at a joint CIPA/LES seminar. The LES is the Licensing Executives Society, and it contains people who are less interested in the IP procurement process AP R than in using the IP once procured. If this strikes you as a strange way of prioritising, you are in absolutely the right profession (i.e. you are a patent attorney) but you may be out of a job within the next decade. Just saying.

The theme of the seminar is how to build an IP portfolio and strategy for a small business. There are some really good talks. Most of them can be summed up as: if you are going to build an IP portfolio, do it properly. For example:

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• • • • • • • •

Include a patent that covers your product.

Include a patent that you can enforce.

If you like drafting eight-step method claims, try to think of it as a hobby rather than part of your day job.

Make sure you haven’t stolen your patent off somebody else.

Make sure your IP strategy takes account of what you want to do next year as well as next week.

Use a real patent attorney, not a pretend one.

But think before you send them loads of dosh for a massive nationalisation programme.

If you don’t have loads of dosh, try “crowdfunding”, which is asking ordinary people to pledge money over the internet. The

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• •

great thing about ordinary people is that they don’t do IP due diligence.

Finally, try not to forget new stuff, like the UPC, or it will bite you on the backside.

Oh, and gather Competitive Intelligence, to stop other people biting you on the backside.

You can get Competitive Intelligence, says one of the speakers, using IP Analytics. Think IP data, double the complexity and then turn it into a picture. This is a neat way of showing you just how bad your IP portfolio is compared to other people’s, and just how close you are to being bitten on the backside. Only in this way can you become Competitively Intelligent. If miserable.

6.30pm: Now I am in one of the oak-panelled parts of London.

The occasion is a party in honour of Mr Heap, the IPReg Chair. Mr Heap is retiring (participle, not adjective) and is keen to celebrate the opportunity not to work with patent attorneys ever again. He looks more than a little demob-happy. He is not the only one.

At events like this, I feel it is important to partake fully of the alcohol on offer. This is because when people get drunk together, they share all manner of confidences and juicy tittle-tattle, which are valuable as Strategic Intelligence. And the more drunk the listener, I have found, the more will be revealed to her. So this evening I make sure I am sufficiently drunk to be revealed to. The only problem is, I am then too drunk to process what is revealed, or to remember it afterwards.

Whilst I am sufficiently drunk to be revealed to, one of the IPReg people promises to organise another party, to celebrate the end of my presidency. What he doesn’t promise is to invite me.

I am aware I should write an end-of-presidency speech, for the AGM later this month. It is customary, for MAY example, to say how much you’ve enjoyed being the Pee – and it is going to take some preparation to do that bit diplomatically, diplomacy being the area of my life most in need of CPD. It is also customary to thank all the people who have helped you perform the role. In my case, since there were very few aspects of the Presidential remit that I was capable of performing without assistance, there are a lot of people I need to mention. Thank you for doing meetings for me on subjects I know nothing about, like the

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UPC and patent harmonisation and TTIP (whatever that is). Thank you for making decisions for me. Thank you for writing my letters, and public statements, and proposals. Thank you for reminding me to be professional and stop snivelling.

An outgoing President should wish her successor well, preferably without going “Na na-na NA na!!”, so I will include some words of advice for the VeePee. For instance: don’t forget to turn up to meetings. And: never underestimate the importance of DETAIL. And: don’t begin with unrealistic expectations, for example about changing things or in particular about making people like you.

Also important is: Beware the CIPA Fridge. For it do contain things of indeterminate origin and of a half-life both longer than their owners’ memories yet shorter than their owners’ aspirations.

Never, I must say to the new CIPA Pee, be tempted to consume anything from within this thriving organic cauldron, and only put your own food in there if you are happy for it to take part in clinical trials.

allowed to eat them myself because Mr Davies didn’t want me to get crumbs in the minutes.

The VeePee said I’d made my costume too detailed. The Internal Governance Committee said I’d made it without permission. Mr Davies said it looked like I’d made it with my eyes shut. Someone else shouted that I should go dunk myself. I ended up quivering under the table, surrounded by chocolate chips and parcel tape. I was the first ever Council Chair to announce herself as an Apology for Absence.

And also as an Apology for a President.

The worse thing about this dream is that tomorrow, I really do have to chair a Council meeting. It will be the last I do as President. And even if I don’t go dressed as a Biscuit Pixie, I expect that as usual, once I start trying to exert my authority, it will be little better than pantomime.

“This is a good proposal,” I will say. And the others will shout “OH NO IT ISN’T!” I may as well arrive with a custard pie in my face. Except that that would seem an awful waste of custard pie.

Last night I dreamt I was chairing a Council meeting.

This is enough to bring anyone out in a cold sweat.

Of all the duties I have undertaken as President, M AY chairing Council meetings has been the most challenging. I can stand up in front of a hall full of people and address them without notes, even on topics for which my enthusiasm outweighs my expertise by quite some margin. I can talk confidently with important heads of pan-global organisations, even if they don’t remember afterwards who I am. I can find my way to places I’ve never been, make friends with people I’ve never met, launch projects with audacity and breathe encouragement into barren committee landscapes where others fear to tread. I can cope with Mr Davies’s swearing and I can match his mad ideas one-forone. I can discuss Learning Outcomes with Ms Sear, shout with Mr Lampert, sigh with Unlucky Gary. I am even brave enough to open the CIPA fridge. But trying to get 26 Council members to stick to an agenda, and to make sensible decisions about it, has never ceased to scare the underwear off me.

So in my dream, I sat in CIPA Hall without my underwear, ceremonial gavel in trembling hand, and awaited my doom. I had forgotten to tell the others that it was a fancy dress Council meeting.

But they knew anyway. And the reason they knew is that I was dressed as a Biscuit Pixie. I had made the costume myself, out of biscuits and parcel tape and an old kagoul. If you have traditionally thought of pixies as petite creatures, lightweight and fleet of foot, then you would probably not think I looked very pixie-like. But it was the best I could do on account of being too scared to sleep the night before. And the night before that.

Other Council members kept stealing the biscuits off my costume. There were garibaldis and custard creams, chocolate chip-on-the-shoulder cookies, namby-pamby pink wafer biscuits, extremely rich teas, Viennese fingers for Boards of Appeal, and even low-fat shortbread with no added subject-matter. But I wasn’t

10 am: The Congress Steering Committee meets to do

03

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some Congress steering. Whatever that is.

We are pleased with ourselves because we are so far ahead with the programme compared to last year: in fact, we have shocked ourselves with our efficiency. We must quit while we’re ahead, I feel. And so, since I am chairing today because the Proper Chair is on holiday again and the Vice Proper Chair has run out of technicolour knitwear, I bring the meeting to an early close. In particular I give short shrift to the idea that perhaps we might organise a little event of some kind the night before Congress. No, no, NO!! We must not organise any more events! We have a perfectly good event already. If people want to have a drink or a pizza as well, they can go steer it for themselves.

Our only problem – and it is a namby-pamby one but nevertheless I am getting a bit fierce about it – is that we do not have many female speakers. I think this may be because when you ask a woman to speak on a particular topic she says: but I’m not sure I know enough about that topic, whereas if you ask a bloke to speak, he doesn’t even ask you what the topic is; in fact, he may not bother to find out until after he’s written his presentation. There is a difference in innate confidence levels.

I say: the next speaker we choose absolutely must be a patent attorneyette. I know they exist. I know they can speak. Surely it cannot be that difficult?

But the others do not like this kind of selection process, because it is biased. And we cannot have that, now can we?

I think I am becoming a trifle unpopular on the Congress Steering Committee. I suspect I am steering myself into a cul-desac of frustration. But I have not been a militant feminist since I was at university, and it feels good having a second attempt.

The full version of the Not-so-Secret Diary is available in blog form, – http://thenotsosecretdiary.weebly.com/ JULY-AUGUST 2018

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04/07/2018 08:47:03

PERSONAL

GOING REMOTE

Going Remote

By Lucy Holloway (Fellow)

I

’d never worked remotely before starting on my year of travelling. Apart from a brief spell at home with a broken foot and the occasional business trip, I’ve always been based at a desk. Working out of a suitcase was the thing that intimidated me the most about leaving the security of my UK office for a year.

I knew I would need a decent laptop. But I also knew that I'd never been able to work successfully from only a laptop in the UK and so I didn’t expect to be able to do it abroad any better.

I was used to having printers and photocopiers and a full-sized desktop PC. I had no idea what I should take with me to create a comfortable portable office.

Remote Year couldn’t seem to give me a good answer on what their various workspaces would be like. (“They’re all different. But don’t worry there’s always good internet!”) They also couldn’t tell me how far the workspaces would be from where I’d be living. (“It varies from country to country.”) Was there anything essential I should bring? (“It depends on what you want to carry!”)

As someone with terrible eyesight and recurrent RSI these answers were not satisfactory to me. The internet has hundreds of blogs about packing – probably thousands – but you will not be surprised to learn that much of that online advice was unhelpful too. Far too much is written by starry-eyed backpackers and doesn’t quite gel with my cynical down-to-earth outlook. With only 23kg of luggage space I was not about to consider a yoga mat one of my “travel essentials”.

I already knew what I couldn’t bring. There could be no ergonomically arranged desk or adjustable chair. No 27-inch high-resolution dual screen display. I might be able to take a tiny printer but I wasn’t going to be able to carry (or shred) the paper.

Everything I needed had to fit in my luggage and so everything had to be worth its weight.

This isn’t a packing list, as such. It’s more of a brief run-down of what I packed right – and wrong – so far. I’m now in my fifth month, and fifth workspace. Remote year was right; they have all been different. Some things I was well prepared for and some not so much.

The workspaces have all had a common thread in that they’ve had plenty of open plan desks, a few private call booths and at least one bookable meeting room. They have varied considerably in quality, temperature and décor. They have also varied,

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sometimes hourly, in the speed of their internet connections. To be fair to Remote Year though, when the internet breaks (which it does, and often), they take it very seriously and it’s back up quickly.

Malaysia was our first workspace. On the 14th floor of a mall, it was a ten-minute walk from my apartment through scorching tropical streets. Inside it was freezing. I’d been prepared for heat and humidity but I wasn’t prepared for the arctic chill of Asian air-conditioning. I’d packed for a year of summer, and ended up needing to buy a jumper.

It was in Malaysia that I first properly tested working paperlessly. When you have to carry everything you quickly hone what is worth lugging to work and what you can live without. I have a laptop (of course) and a tiny portable mouse. I have my VPN key, my EPO smartcard and my reading glasses. I also have an iPad pro and an apple pencil.

It was the iPad I was most unsure about originally. It’s pretty heavy and I was worried it was going to be just another expensive thing that I might break or lose. My initial plan was to Key facts: Croatia IPO: The State Intellectual Property Office (http://www.dziv.hr/en/) Patent applicants may be represented by natural or legal persons entered in the Register of the Representatives maintained by the Office (the authorised representatives), and attorneys or law firms entered in the Registers maintained by the Croatian Bar Association.

The Register of Representatives currently lists 36 authorised representatives.

The number of domestic patent applications in Croatia has halved over the last ten years, from 548 in 2007 to 255 in 2016. However, the number of patents in force has increased almost fivefold over the same period, from 1326 to 6606.* This may be due to Croatia’s accession to the EPC, which it joined as an extension state on 1 April 2004, and then as a full member on 1 January 2008.

Domestic patent applicants in Croatia can choose between two examination tracks – substantive examination, which results in a patent lasting for 20 years, and unexamined “consensual” patents having a maximum term of ten years.* * statistics courtesy of WIPO Statistics Database www.cipa.org.uk

04/07/2018 08:47:21

PERSONAL

use it as a second screen via a neat little app called Duet. Instead it’s come into its own as a substitute for paper. I can read patents on it, write notes on it, and mark up pages just as I would on a printout. When I’m done with documents I can delete them – no shredding required. It’s turned out to be, without doubt, the best thing I brought with me.

Things I did not need, or needed fewer of, were work clothes – one or two smart outfits is more than enough for visiting local attorneys. Any more than that is just weight. No one cares what you wear to the workspace, so embrace the elephant pants.

For somewhere with a similar climate to Malaysia, Thailand was about as different as it was possible to get. The kindest way to describe the workspace there was “rustic”. Outside it was beautiful and leafy, frogs croaking in the waterlogged plant-pots by the doors. Inside it was baking, and absolutely infested with mosquitos. Thailand taught me the need for a good insulated bottle to keep my water cool, and bug spray. Lots and lots of bug spray.

The workspace in Vietnam was by far the grandest. On the second floor of a French-colonial town house, it was all dark wood, old glass and opulence. Not only was there free tea and coffee, there was free beer and pizza on a Wednesday. The walk there was terrifying – pavements in Hanoi are for scooter parking and street food, not for walking; everyone walks in the road. It was there that I learnt the joys of the cup-top drip coffee maker.

GOING REMOTE • CRICKET

Leaving the house without sufficient caffeine was a good way to get squashed.

Morocco’s workspace was my least favourite. The desks were too high and the sun was too bright, and worse, it was a 30-minute walk away. It’s easy to take personal freedom for granted when you have a car, but without one I felt trapped. Luckily Marrakesh is flat and bike hire is cheap. After Vietnam, Moroccan traffic was a breeze.

This month it’s Croatia, and as I type I’m thanking heaven that I own noise-cancelling headphones. Most people are respectful of the fact that workspaces are for working, but this workspace plays music 24/7 – rather distracting when you’re working on something complex. Especially when the sea is right outside the window and people are talking about swimming.

Overall, I’ve taken much better to working from shared workspaces than I ever thought I would. The thing I miss the most that I can’t replicate is my adjustable desk chair. Unfamiliar beds and too-high desks quickly take their toll on your back when you’re typing all the time. I realise now that those backpackers knew more than I gave them credit for – clearly I need a yoga mat!

Lucy Holloway (Fellow) is an associate at Barker Brettell in Birmingham.

CIPA-CITMA Cricket Club – May and June results CIPA CITMA Cricket Club can report an excellent start to the 2018 season with four wins from our opening five games.

Opponent

Date (2018)

Result

Institute of Child Health

Tuesday 26 June

Won by 68 runs

Treasury Dragons

Tuesday 19 June

Lost by 6 wickets

Archway Ladder

Tuesday 12 June

Won by 4 runs

Bristows

Tuesday 5 June

Won by 5 wickets

Thomson Reuters

Tuesday 22 May

Won by 2 wickets

Bruce Torrance (Student, Reddie & Grose) is the leading run scorer, with an impressive 114 runs at an average of 57.

Chris Milton (Fellow, JA Kemp) is leading the bowling with Volume 47, number 7-8

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A rare sight in the warm-up at Alexandra Palace – Rob Jackson taking a catch

six wickets at an average of 3.7, while giving away just 2.7 runs per over. More details and statistics can be found on our website www.cipacc.org.uk Andy Spurr (Fellow) JULY-AUGUST 2018

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PERSONAL

IP INCLUSIVE

IP Inclusive update

By Andrea Brewster OBE

W

e begin with some fantastic news: IP Inclusive won this year’s MemCom award for “Best equality or diversity campaign”. The results were announced in an awards ceremony on 16 May, where Parminder Lally and Chris Burnett, both key players in the Careers in Ideas project, collected the award. The judges were looking for “evidence of a clear strategy/ defined target audience” and “a practical and uncompromising campaign delivering lasting impact”. We’re extremely proud that IP Inclusive’s work has been judged worthy of those standards. Thank you to CIPA – especially Lee Davies – for nominating us.

And now for a request. Two of our projects this year are to upgrade the IP Inclusive website and to produce “My Career in Ideas” videos. We need about £9,000 for the website, a little less for the videos. Would your organisation be willing to sponsor either? Donations between about £500 and £2,000 would be perfect. Sponsors will be listed on the relevant website, so this is a great opportunity to build credibility and goodwill with staff, clients, business partners and potential recruits.

We held several events to mark Mental Health Awareness Week, including two excellent webinars with the charity LawCare. Thank you to everyone who took part in our survey on mental health in the patent profession; we hope to report the outcomes later in the summer.

What’s clear is that stress and its impact on mental well-being are still problems for IP professionals, but as we chip away at the stigma surrounding these issues, we will create a more resilient, more caring and ultimately more productive profession.

Meanwhile, 21 May was the UN’s World Day for Cultural Diversity. Our IP & ME group encouraged us to Do One Thing for Diversity and Inclusion, and to

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share photos and videos on social media.

I hope your organisation joined in.

We’re now planning for “IP Inclusive Week” (12-18 November 2018). If your organisation would like to get involved, whether by running a small event inhouse or helping to organise something larger, let us know. In addition, we’re hoping to set up some regional events for Charter signatories to explore practical ways to improve diversity and inclusivity – we hope these will result in regional networks to help us spread ideas and resources more widely within our Charter community. And in the meantime, if you’re a Charter signatory, don’t forget that you can put the IP Inclusive logo on your website and stationery, to show your commitment – many firms are already doing this and we can expect potential recruits to start looking for that.

Other dates for your diary (register via the “Events” page of the CIPA website):

• • •

•

Thursday 5 July, 12.30 pm: webinar on the business case for diversity Thursday 6 September, 12.30 pm: webinar on unconscious bias Thursday 27 September, 5.45 pm: post-CIPA Congress IP Inclusive networking reception 12-18 November 2018: IP Inclusive Week (more details to follow)

If you don’t want to miss out on our events and other activities, join our IP Inclusive Updates mailing list: there’s a sign-up button on our website home page.

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.

Parminder Lally and Chris BurneƩ with the MemCom award for "Best equality or diversity campaign" www.cipa.org.uk

04/07/2018 08:48:16

CPD & EDUCATION

INSTITUTE EVENTS

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

Thursday 12 July 2018 Social

Cambridge Happy Hour

Time: 18.00–19.30 Location: The Alex, 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

A look at ethical best practice for UK patent and trade mark attorneys, who are subject to the IPReg “Rules of conduct”. Many UK patent and trade mark attorneys are subject also to one or more of the following: the EPO Administrative Council’s “Regulation on discipline”; the EPI’s “Code of conduct”; and the SRA’s “Solicitors’ Code of Conduct”.

The webinar will identify key common principles and will consider real-life ethical dilemmas that arise for IP practitioners, whether working in private practice or inhouse, including for IP solicitors who are not also patent or trade mark attorneys, especially those engaged in noncontentious work. In respect of solicitors, the webinar will identify some aspects of IP practice that are special and are not covered expressly in the Solicitors’ Code of Conduct (even though on analysis they are considered to be covered by the Code’s mandatory “Principles”).

Webinars on this topic have been given before, but (a) the above-mentioned regulatory documents do get revised, and (b) the subject is of high importance to all practitioners. Previous familiarity with the four regimes will not be assumed in the webinar, but any participant who is Volume 47, number 7-8

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interested can find references to them (and to other key regulatory material) as they stood immediately before the last webinar at www.researchinip.com/ ethicsrefs2017.htm. Shortly before the 2018 webinar, a new webpage www. researchinip.com/ethicsrefs2018.htm will be created Speaker: Dr Michael Jewess CPD: 1; Prices: £72 (members £48)

Tuesday 31 July 2018 Administrators webinar

Introduction to copyright Time: 12.30–13.30

A webinar on copyright aimed at CIPA Administrators will provide answers to the following: How does copyright arise? What works does it relate to? What rights does it give to the owner? How does copyright relate to the digital world?

Speaker: Varuni Paranavitane (AA Thornton).

CPD: 1; Prices: £72 (members £48) Tuesday 4 September 2018 A CIPA event in conjunction with the IP Inclusive Women in IP network

A private screening of Bombshell: The Hedy Lamarr Story

Tuesday 18 September 2018 Webinar

Open Innovation and IP Time: 16.00-17.00

Open Innovation and IPRs are seemingly concepts that are at odds. The idea that there is a flow of ideas into and out of an organisation to the benefit of all parties certainly presents challenges to patent attorneys. The prevailing view of IP as an exclusive right requires modification to support a strategy incorporating open innovation. IP can actually be an enabler of open innovation, and enhance the returns on such an approach. This webinar will explore some of the traditional as well as newer constructs for open innovation and present potential structural and execution pitfalls for parties to avoid. The speakers will draw on case-studies to illustrate how to get it right (and wrong), and share some valuable best practices based on their personal experience.

Speakers: Bernie Graves (Baker Donelson); Adrian Bradley (Cleveland Scott York) CPD: 1; Prices: £72 (members £48) Wednesday 26 September 2018 Conference

Administrators Conference 2018 Location: Jumeirah Carlton Hotel, 1 Cadogan Place, London SW1X 9PY

Time: 17:30 Location: Courthouse Hotel Cinema, Soho, 19-21 Great Marlborough Street, London, W1F 7HL

See page 50 for more details.

CIPA and IP Inclusive are delighted to be able to offer tickets to a private screening of this extraordinary film – a must-see for all involved in IP – followed by a networking drinks reception, for just £30. Book online or see more details on page 48.

CIPA Congress 2018

CPD: 1; Prices: £30

CPD: 8

Thursday 27 September 2018 Conference

Location: Jumeirah Carlton Hotel, 1 Cadogan Place, London SW1X 9PY See the inside front cover of this Journal for more details.

JULY-AUGUST 2018

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CPD & EDUCATION

INSTITUTE EVENTS

Intellectual Property Assessment Report of a CIPA webinar, 30 May 2018.

Speaker: Dr Kent Millington, Director of Technology, Utah Valley University

I

n the context of a world in which there is a vast and ever-growing un-tapped pool of non-commercialised patents, in this webinar Dr Kent Millington provided a business perspective of IP – its value, potential and exploitation.

Kent’s first step in assessing value is to understand what kind of innovation has been made and, in the context of economic growth, three broad types of innovation were introduced: 1. market creating innovations, which create jobs and use capital to expand economies; 2. sustaining innovations, which do not create jobs and use limited capital; and 3. efficiency innovations, which eliminate jobs and free up capital.

These three can be considered in the context of a continuum of innovation: Imitative → Incremental → Evolutionary → Radical → Revolutionary Kent explained that the further towards Revolutionary an innovation is, then the more investment that will be needed to achieve a successful market entry. Correspondingly, the risks associated with achieving a successful product launch and with achieving impact on the market also increase.

As a consequence, the value of IP decreases with more revolutionary products. However, for incremental innovations, which make only small advances over known products, the value of IP is high because such innovations can sustain an existing product in the marketplace.

What commercial opportunity or potential is provided by the innovation?

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A commercial opportunity can be broken down into three elements: 1. a new or improved product or service; 2. which provides economic value for the producer or user; and 3. is desired by a significant market.

Opportunities arise from changes in knowledge, technology, economic, political, social and demographic conditions – as there are always changes occurring, there are always opportunities arising. Kent explained that marketing messages should be shaped by an understanding of the changes which are allowing a new product to market and the need fulfilled by the new product.

Opportunities can arise by creating new markets or by introducing new products or technology, but if both new markets and new products can be created simultaneously by an innovation, then the potential value of the product is greatly increased (this can be termed a “discontinuous” opportunity).

Kent introduced us to a framework of questionnaires (not reproduced here) for idea and technology assessment which collectively seek to clarify potential route to market and exploitation of the innovation: •

Firstly, a technical feasibility and analysis questionnaire, which could be used with the innovator to discover the nature of the innovation,

•

•

the project status, potential uses and the gap between current status and potential commercialisation.

Secondly, a market feasibility questionnaire probing the advantages to potential customers, the nature of those potential customers, potential competitors, the risks and potential benefits and the resources needed to reach the market.

Thirdly, a questionnaire to aid assessment of the potential for value creation – for example, is it a start-up opportunity or is it better suited to a license or joint venture scenario?

Kent introduced a Business Model created by Alexander Osterwalder and Yves Pigneur in 2010 and illustrated by a Business Model Canvas, which arranges the various elements involved in moving from assessment to market.

Finally, the question of customer motivation was considered with the aid of a Value Proposition Canvas, which illustrated how a new product could help a customer accomplish their goals (and so be desired) in terms of addressing problems (or “pains”) or providing new value (or “gains”).

As summarised in the final slide, the webinar clearly presented the path from understanding (of innovation, risks and opportunity), through assessment (of uses, markets, business model and customer fit) to the point of value creation.

Anne Williams (Fellow)

Missed this webinar?

A recording and the presentation are available from CIPA, contact cpd@cipa.org.uk.

www.cipa.org.uk

04/07/2018 08:36:59

CPD & EDUCATION

INSTITUTE EVENTS

Midlands Meeting Report of CIPA’s Regional Midlands Meeting in Birmingham, 24 May 2018

T

he CIPA regional Midlands Meeting took place on Thursday 24 May 2018 at the Radisson Blu in Birmingham.

The meeting was kindly sponsored

by Patent Seekers and Granite IP, and the meeting was chaired by myself, Alicia Instone, a member of CIPA Council.

Maximising Tax Relief After a lovely lunch and networking session, the meeting kicked off properly with a talk entitled Maximising Tax Relief on Intellectual Property given by Stephen Dennett from Mazars. The talk was focused on how companies that are involved in innovation can reduce their corporation tax bill. The first way being through using R&D tax credits, which many companies are aware of and utilize, and the second through Patent Box, which less companies are aware of and far less utilize. Stephen took us through what constitutes R&D, who can claim for R&D tax credits, which costs qualify, and issues associated with receiving grant funding. The key messages being; if they are our client, they are probably doing R&D; do not start with the numbers, speak to the engineers to see if they qualify; and always answer HMRC’s questions up front.

Turning to Patent Box, Stephen led us through the two different regimes in operation and reinforced that holding a granted patent is not enough on its own to get Patent Box relief. There are two additional conditions, namely the development condition and the active ownership condition. Stephen outlined how the relief is calculated under the two regimes, highlighting how a client’s IP is structured is important for claiming the reliefs!

CII at the EPO Pia Björk from the EPO, and more specifically from the European Patent Academy, took the next session headed “Computer-Implemented Inventions Practice at the EPO”. Pia focused on how Volume 47, number 7-8

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to spot and avoid clarity and sufficiency issues in the way claims are formatted, specifically in relation to examples from the organic chemistry and biotechnology fields, where computer implemented inventions are becoming more common.

Before the EPO there is a two-stage test: (1) Does it fall within the exclusions set out in Article 52 EPC? (2) Is the invention novel and inventive? Thus whilst “computer programs as such” are excluded, a computerimplemented method wherein the method has a “technical character” are not. Pia went through the guidelines on the formatting of claims that would be allowable, and then went through some examples which fell foul of Articles 183 and 84, and how the claims could be amended to comply. As more and more inventions are becoming computer implemented in non-traditional fields, this session was really informative, particularly to myself being from a chemicals background.

Prizes There was a presentation for the winners of the Moss Prize to Stephen Moore and Joel Edward (both from Potter Clarkson). The Moss Prize is awarded to the candidates achieving the highest aggregate mark in the FC1 and FC3 examinations UK Patent Law and International Patent Law. Settlement of IP Disputes We then had a refreshment break, accompanied by coffee and ice cream before heading back in for the drawing of the Raffle Prizes, followed by a session

from Jeremy Morton from Harbottle & Lewis on “Settlement of IP Disputes: Getting it Right”. Jeremy went through what can go wrong with settlement agreements, highlighted with real life examples of settlement agreements going “wrong”, and not as expected in the cases of Stretchline v H&M and Oran Pre-Cast.

Jeremy stressed it was important to make it clear exactly what is being settled and highlighted the issue of settling “all issues in relation to an outstanding invoice”.

This might preclude a claim in relation to negligence for the associated work being invoiced for, depending on how the settlement agreement is worded, so be very careful!

IPO update The final session of the day was by Daniel Voisey and Kalim Yasseen from the IPO. Daniel started with an update from the IPO; with the new CEO, Tim Moss; the retirement of Sean Dennehey, CBE; the restructured strategic vision of the IPO under Tim, with three key areas; the changes to the patent fees; and where the IPO is with their targets and backlogs. Kalim then took over to give us a complementary talk to that of Pia in relation to excluded matter and program inventions, as a contrast to the procedures before the EPO. Kalim took us through the approach of Aerotel / Macrossan to determine whether or not there is a technical contribution, and through the AT&T signposts, which are also used to help in assessing whether or not there is a relevant technical effect.

The session closed with a lively Q&A session resulting in Daniel and Kalim receiving lots of feedback to go back to the IPO with from our members! The meeting closed and drinks and canapés were served.

Dr Alicia Instone (Fellow) JULY-AUGUST 2018

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CPD & EDUCATION

INSTITUTE EVENTS

Unitary Patent & Unified Patent Court Report of a CIPA webinar, 4 June 2018

T

he CIPA webinar on 4 June 2018,

by Julia Gwilt (Appleyard Lees, Cambridge) and chaired by Vicki Salmon (IP Asset), looked at the practical procedural aspects of the Unitary Patent (UP) and Unified Patent Court (UPC) system. The webinar was separated into two sections and provided a muchneeded summary of the critical points to be aware of when the new system begins.

The first section focused on the UP procedure before the EPO. The UP will cover fewer countries than the European patent, as the UP is only open to member states of the European Union who are eligible to ratify the Unitary Patent Convention and therefore non-EU countries such as Iceland, Norway and Switzerland among others, will not be a party to the UP. In addition, there are countries that have decided against joining the Unitary Patent Convention, such as Spain and Poland. This adds to the complexity of the new system, as country coverage is not straight forward.

So how will the UP effect a European patent attorney’s day-to-day practice? In short, it is the same process at the EPO, up until grant. After grant there is a one-month non-extendable deadline to request unitary effect at the EPO. The webinar touched on this procedure in detail and importantly

outlined the non-correctable deficiencies when requesting unitary effect. The seminar also explained there was no official fee for the UP and only one translation is required.

The renewal fee is a single fee, equivalent to the fees in Germany, UK, France and the Netherlands and payable to the EPO every year after grant. The seminar explained the process of renewal fee payment and safety nets available for missed payment deadlines.

At the start, only certain countries will be party to the UP system and the new EP register will state the registration date of unitary effect and countries included in the system on that date. It is assumed that more countries will be added to the UP system in time. The seminar discussed other procedural matters around transfer of rights.

The second section of the seminar described the procedure before the UPC. The new court introduces uncertainty, for instance is the court pro-patentee or anti-patentee and there is the risk of central revocation. There is a seven-year opt out transition period, which may be extended by an additional seven years.

The UPC will have jurisdiction over both the UP and the classical European patent, unless you have opted out. The opt out option is only available for classical European patents, not UPs. The seminar

explained the opt out requirements and procedure.

Beware! The date the opt out is registered at the EPO is critical. If there is an issue with an opt out application and the effective date of opting out changes, this may affect which court has jurisdiction over a case. It is also possible to bring a patent back into the jurisdiction of the UPC system, by applying to withdraw the opt out, once this takes effect you cannot opt out again for the same patent.

Positives to remaining in the UPC’s jurisdiction, is you can play a role in shaping the courts decisions and a single infringement action may prove beneficial to you.

Remember to watch out for freedom to operate opinions! When the new system starts the UP and UPC will affect jurisdictions and country coverage.

Roxna Kapadia (Student), EPA, Kilburn & Strode Missed this webinar?

A recording is available from CIPA, contact cpd@cipa.org.uk.

Bombshell: The Hedy Lamarr Story A CIPA event in conjunction with the IP Inclusive Women in IP network • Tuesday 4 September 2018 • Courthouse Hotel Cinema, Soho • Tickets £30 (includes drinks reception)

Join us for a private screening of the award-winning documentary, Bombshell: The Hedy Lamarr Story, the previously untold story of how the scientific talents of this 1940s screen siren were overlooked despite her creating patented technology that paved the way for GPS, Bluetooth and Wi-Fi. Acting by day and drawing electronic inventions by night, Hedy devised a “secret communication system” to help the Allies to beat the Nazis. The film shows how a remarkable woman was able to change the course of modern history through her natural creativity and scientific flair. CIPA and IP Inclusive are delighted to be able to offer tickets to a private screening of this extraordinary film – a must-see for all involved in IP – followed by a networking drinks reception. Book early to avoid disappointment. See CIPA website for more details.

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04/07/2018 08:39:41

CPD & EDUCATION

INSTITUTE EVENTS

The Life Sciences Committee is pleased to announce

The 2018 CIPA Life Sciences Conference Thursday 8th – Friday 9th November 2018 De Vere Tortworth Court, Tortworth, Wotton-under-Edge, GL12 8HH Up to 9 hours CPD

The CIPA Life Sciences Conference is the UK’s premier annual educational and networking event for patent and IP professionals active in the pharma, medical technology and biotechnology sectors. Over nearly two decades the Conference has provided unrivalled expert insight into the latest developments in patents, regulatory and IP law in the global life science industry. Most importantly, the event provides a friendly environment for in-house and private practice professionals to network and share experiences.

Pre-dinner speech by Lord Neuberger Presentation topics include: 

UK, EPO, Canada and US law updates



Oppositions at the EPO – impact of the recent changes



Current status of litigation in Europe



SPCs and devices



Life sciences beyond therapeutics

Prices held from last year Full conference: £550+VAT (members), £765+VAT (non-members) Day one: £250+VAT (members), £375+VAT (non-members) Day two: £130+VAT (members), £195+VAT (non-members)

To book, please visit the Institute events page of the CIPA website or contact cipa@sequenceofevents.co.uk for more information.

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ADMINISTRATORs Conference The administrator & IP IN THE DIGITAL WORLD

26-09-2018

Upcoming topics:

Speakers: Christina ten Hövel EPO

Matthias Reischle-Park WIPO

Vicky Maynard Openshaw & Co

• • • • •

Intellectual Property Crime Panel Discussion - HotTopics EPO Oppositions & Appeals IPO Update on Late Grants/Renewals & New Laws PCT

Rates: Early-Bird Member rate Early-Bird Non Member rate -

£205 + VAT £265 + VAT

Join us at the IP Inclusive drinks reception following the conference. This is primarily a social event, but there’ll also be a chance to hear what IP Inclusive have been up to this year and their plans for IP Inclusive Week (12-18 November)

Conference Sponsor:

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The Yellow Sheet

The Yellow Sheet July-August 2018

Your Hon. Sec. Writes Hi, everyone! You might be wondering why there’s no separate sheet this month.

We’ve decided to trial having a couple of pages in the Journal itself for a few months. We hope that by changing the format, this will save on publication costs and stop the problems that we’ve had recently where some of you haven’t been receiving a Yellow Sheet with your Journal (and some of you have received multiple copies)! If you have any feedback about the new format, please let us know!

We also have an exciting new bulletin board on the CIPA website. This can be accessed via the bulletin boards tab. (You need to have signed up for an account on the CIPA website). We hope that this will become a place for discussion and somewhere to share resources. This is another idea that came out of the discussion at recent CIPA Open Days, so thank you once again for your input.

Those of you who intend to sit UK Foundation Certificate or Final Diploma examinations, please make sure you send your completed enrolment form and fees to the PEB before 20 July 2018. For those who intend to sit any of EQE papers A, B, C and D in 2019, please be aware that the enrolment window for these examinations opens on 9 July 2018 and closes on 3 September 2018.

Keep an eye out on the Yellow Sheet blog for details of upcoming socials from your Social and Regional Secretaries.

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Please also feel free to use the bulletin board to arrange meetups with other trainees in your area.

As always, if you have any questions, suggestions or comments, please get in touch (cipainformalshonsec@gmail.com).

Sara Jane Paines

Editorial Welcome to the July/August combined edition of the Yellow Sheet!

If you’re looking to take any UK exams this autumn, the Patent Examination Board must receive both your enrolment form and fees by 20 July 2018, so harass your accounts department to make sure they’re on top of things. Slightly less urgent are the EQE papers, A, B, C and D, enrolment for which must be done by 3 September 2018 via the online web portal.

Huge thanks to the IP Ball committee, who gave it their all to pull off a spectacular event! Regional secretaries have also been working hard to keep Informals events rolling on through the summer.

It’s also almost time to elect the 2018/19 Informals committee, so if you’d like any information on any of the positions in advance of the adverts/elections, do get in touch with either myself (mpennington@withersrogers.com) or our undisputed leader, the Honorary Secretary (cipainformalshonsec@gmail.com).

Finally, if you haven’t already, make sure you subscribe to the Yellow Sheet

blog (https://yellowsheet.wordpress.com/) for updates on exams, socials, lectures and all things Informal.

Matthew Pennington & Tom Bell Hi everyone. I wanted to let you all know that I’ll be stepping down from the role of Co-Editor of the Yellow Sheet in order to begin a new job as a consultant in cyber security and to facilitate a new vocational role. Matt will therefore assume the full Yellow Sheet Editorship duties so please refer all future queries and any submissions you may have for the Yellow Sheet to him. I wish you all the very best in whatever direction your work and family life takes you!

Warmest regards, Tom Bell

Regional Secs South West & Wales: On Thursday, 24 May the South West & Wales CIPA Informals had their second event of 2018, hosted for the first time by Dyson! There was much anticipation and excitement about vacuum cleaners and hair dryers from the trainees, with a full attendance of 30 turning up! The event took place in the fantastic looking Lighting Café on the Malmesbury Campus, where a fighter jet is hanging from the ceiling. Dyson provided drinks (Mr Dyson’s own wine) and nibbles, followed by a presentation from three current in-house patent attorneys, then JULY-AUGUST 2018

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The Yellow Sheet

more drinks and food. The presentation focused on the day-to-day role of an inhouse attorney (patents and trade marks) and the differences from a typical private practice role with plenty of Dyson-specific anecdotes. The Dyson attorneys really engaged with everyone and answered many questions, almost struggling to get people to leave at the end of the allotted time. Everyone resoundingly agreed it was very interesting and good fun. The next event will follow in the coming months and we are always looking for people with a good event idea or to help host!

Matthew Veale Birmingham: Following on from March’s social at the Queen’s Arms (which serves up a curious mix of traditional pub food and more exotic fare such as ostrich burgers), the Birmingham Informals descended upon pinball cafe Tilt on 14 June. Perhaps surprisingly, for a profession that is historically known for lying on the more *ahem* awkward side of the social spectrum, the group were much too engaged in having a chat over craft beers to take a crack at the pinball machines, pausing only for a quick pizza break before moving on to the newly-opened Head of Steam for yet more craft beers. Thank you to everyone who came along for a very enjoyable evening, as always!

Becky Lovell North West: The North West Informals Summer social will be at Junkyard Golf on the 10 July 2018, to celebrate the opening of EQE 2019 enrolment the day before, and to celebrate the EQE 2018 results that might be published by then.

Golfers should book the GARY course for 18:10 on their own initiative, please book early to avoid disappointment – if this edition of the Yellow Sheet is published after 10 July feel free to procure a time machine at your leisure. The cost is £8 per person, but there will be a £4 per person CIPA rebate for golfing upon providing a receipt, making the golf half price!

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ensure enough time to order your complementary drink and fill out your waiver form.

Adam Hope

IP Ball 2018 Thank you to the IP Ball Committee for organising a very enjoyable evening in support of Great Ormond Street Hospital last month. Around 250 people enjoyed a champagne reception, followed by dinner and dancing the night away. A wonderful time was had by all! The theme was “Once Upon A Time” and the organisers had spared no effort in making sure that the decorations and party favours fitted this theme perfectly. (My personal favourites were the “Beauty and the Beast” tables!)

Bravo to everyone who worked so hard to make this event happen. I look forward to attending the next one!

Sara Jane Paines

Foundation Lecture Organisers The CIPA Informals Foundation Lectures covered a wide range of material in the past two months, from both the patent law side of our work to some more general topics on copyright, trade marks, designs, competition 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 thirdparty 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) provided us with a brief overview on the topic of “Company & Contract Law”.

We also had the opportunity to hear from Alison Firth (University of Surrey/ Queen Mary/Newcastle University) regarding competition law as applied to the field of IP, while Ben Scarfield (Kilburn & Strode) brought on a whistle stop tour through trade mark law. Finally, Dan Sizer (Marks & Clerk) concluded the CIPA Informals Foundation Lectures on the topic of design rights.

We would like to take this opportunity to thank all of the lecturers for making it possible to run the CIPA Informal Foundation Lectures again this year – indeed the time and effort you have put into preparing and presenting the lecture series is very much appreciated by the students and the Informals Committee!

We would also like to thank everyone for attending – we’ve had such a wonderful turnout throughout the year (so much so that we ran out of chairs in the first meetup) and we hope that this will carry forward to future years. Last but not least, a shout out to CIPA for hosting all of us!

Just a reminder that if anyone would like to catch up on any of the material from the lecture series, the recordings and slides are available for your perusal from the Informals section of the CIPA website.

PS: The Informals Lectures will return in January 2019 – stay tuned for further info!

Jian Siang Poh, Rebecca Brooks & Christopher Kennedy

2018-19 Committee It’s coming up to the end of the 201718 Committee year and we’ll soon be advertising for new members to fill vacant positions for next year. The committee year runs from October to September, and I hope to have a full new committee in place before mid-September to ensure a smooth transition. If you are interested in getting involved and would like more information, please feel free to email me at cipainformalshonsec@gmail.com.

Sara Jane Paines www.cipa.org.uk

04/07/2018 08:44:21

The Yellow Sheet Wacky Patent Substance Dispensing Headgear – US 5,966,743 With the World Cup now nearing its finale, what better way to cheer on England who have inevitably made the final (I’m writing this a month in advance so can only assume), than with a beer keg hat. Sitting inconspicuously on the wearer’s head, the headgear appears to serve three purposes – drink dispensing, fashion, and headbutt augmentation if the wearer gets into a fight during the match. The subject of Figure 1 looks like a new enemy from Donkey Kong, and by the time you get to the end of the application, you’re questioning whether “spigot” is even a real word.

The invention is simply a keg with a head-shaped recess such that a head may fit comfortably into the recess. I personally feel as though this inventive concept could be applied much more widely than just a keg – surely anything with a head-shaped recess may be worn on a user’s head, thus instantly increasing portability – “the skilled person wouldn’t think to modify the system of D1, i.e. a standard George Foreman grill, to include a head-shaped recess...”, etc., etc.

This untapped market has a lot of potential - just remember, you heard it here first.

Matthew Pennington & Tom Bell

Study Guide to the Patents Acts (2018) £56 non-members – £47 members, +PP outside 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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Training for the EQE Dates: 12-13 November 2018 14-16 January 2019 Venue: &HQWUDO /RQGRQ YHQXH WR EH FRQÀUPHG Are you training to be a European Patent Attorney? Are you preparing to take the EQE in Spring 2019? Support your studies by attending our preparatory course, learn from experienced practitioners and previous candidates, and network with fellow professionals.

This course is for candidates preparing for the main papers (A, B, C and D) of the European Qualifying Examination (EQE) RI WKH (XURSHDQ 3DWHQW 2IÀFH ,W LV VWUXFWXUHG LQ WZR SDUWV DQG UHÁHFWV WKH practical nature of the examinations.

Bookings for Parts 1 and 2 are now accepted.

Why book Queen Mary University of London’s course?

• In-depth study of previous EQE papers in small groups and with highly experienced tutors.

• The course is continuously adjusted to the changing requirements of the examination and the profession.

• Queen Mary University of London has nearly 30 years’ experience running this programme and provides close academic supervision.

• The pass rates of Queen Mary University of London trained candidates are generally in excess of 95%.

For more information and to register please go to www.ccls.qmul.ac.uk/events

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THE PINKS

INTERNATIONAL

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03/07/2018 06:03:41

Centre for Commercial Law Studies (CCLS)

Case Law of the EPO Boards of Appeal Dates: 6-8pm on Wednesdays from 19 September to 24 October 2018 Venue: Centre for Commercial Law Studies, Queen Mary University of London, 67-69 Lincoln’s Inn Fields, London, WC2A 3JB

This course will cover the main aspects of procedural and substantive patent law as evolved by the decisions of the European Patent Office (EPO) Boards of Appeal.

Tutors with first-hand experience of EPO proceedings will provide insights into the case law on EPO examination, oppositions and appeals and on patentability issues including novelty, inventive step, industrial application, amendment, exclusions and exceptions. As well as the established case law, particular attention will be given to recent decisions.

The tutors are Christopher Rennie-Smith, a former Board of Appeal chairman and Enlarged Board member, and Jeremy Smith, a European patent attorney and Associate at Kilburn & Strode with considerable EPO experience. Between them, the tutors are able to provide insights from both sides of the fence at the EPO, giving a detailed picture of how the case law is used.

The possible impact of the proposed changes to the Rules of Procedure of the Boards of Appeal will also be considered.

Please contact ccls-events@qmul.ac.uk to register for the course Image credit: European Patent Office

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THE PINKS

RECRUITMENT • COURSES

Part or Newly Qualified Patent Attorneys Formalities Administrator Tired of the commute? Looking for a relaxed and friendly working environment? Enjoy the countryside and coast?

Dummett Copp is an established patent and trade mark practice with a reputation for excellent client care and high-quality work. Based in Ipswich, Suffolk, we enjoy family-friendly lifestyles in beautiful surroundings, with easy access to thriving local industries as well as to London and beyond.

We are looking for motivated, ambitious people to join us and support our rapidly growing domestic and international client base.

Part or newly qualified Patent Attorney

Formalities Administrator

You will preferably have a background in telecoms, electronics or physics. Strong candidates with engineering or chemical experience will also be considered.

We are also seeking an experienced Formalities Administrator to strengthen our friendly Formalities Team team.

You will be expected to manage a high proportion of direct client work and take an active role in business development, including marketing and overseas networking. In return, we offer a generous remuneration package, excellent career support and clear partnership opportunities in a truly special environment.

Responsibilities will include diary management, the recording of new cases, preparation and filing of patents, trade marks and designs in the UK and overseas, managing correspondence and liaising with clients.

A keen eye for detail is essential for this role, as well as excellent IT and communications skills. CIPA/CITMA qualification is preferred but not essential.

If you are interested please send a cover letter and CV to Stephanie Stansfield (sstansfield@dummett.com)

REVISION COURSES FOR THE PEB 2018 EXAMS & EQE 2019 May-August & November-December 2018 We are holding residential revision courses in May-August for the 2018 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations and in November-December for EQE 2019.

The EQE courses comprise a Pre-exam course (3-4 December), Introduction to Paper C and Paper D courses (1-2 November) and Papers A&B, C and D courses (on 26 November – 4 December 2018).

The courses are in Milton Keynes and include a residential element, but if accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm and you can attend one course or a combination.

For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider.

E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

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We listen to what you want, tell you how feasible (or not) it is, give high quality advice and then plan a strategy to help you achieve your goal.

For full details on the range of opportunities we’re recruiting for or just to have a general chat about your career, please call Pete Fellows or Phillipa Holland on 020 7903 5019 or email: contact@fellowsandassociates.com www.fellowsandassociates.com

@fellowsandassoc

www.linkedinfellows.com

youtube.com/fellowstv

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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THE PINKS

RECRUITMENT

IP Formalities Administrator/ Secretary Munich The Role We are looking for an enthusiastic and hard-working IP Formalities Administrator or Secretary to join our support team in Munich. The role is varied, and is to provide a high level of support service to fee earners, working as part of an overall team. This requires teamwork, the ability to work closely and effectively with others, strong communication skills, ability to prioritise and work to deadlines.

Duties will include patent administration, amending and preparing key documentation and monitoring various formalities processes relevant to the filing of patent applications; uploading of forms and documents online; preparing cost estimates and invoices; and monitoring fee earner deadlines/workloads and work in progress.

The Person Candidates should be fluent in English (German is an advantage) with a strong attention to detail, a fast typing speed and a good working knowledge of Microsoft Word, Excel and Outlook (2010). Previous experience in a similar role is preferred, ideally within a private practice IP firm, legal or other professional services environment. Suitable training will be provided. Knowledge of working with Inprotech would be an advantage but is not essential.

The Offer As well as a highly competitive salary and wide ranging benefits package, we offer a relaxed, friendly, sociable environment to work in.

Interested in being part of our firm?

Visit www.dehns.com/site/careers/ to find out more and submit your application.

Alternatively, contact human-resources@dehns.com to arrange a confidential informal chat.

About Dehns Dehns is one of the largest patent and trade mark private practices, with a rich history spanning almost 100 years. Our practical, commercially focussed approach to IP helps us to turn inspired thinking into patents, trade marks and registered designs that are valuable commercial assets to our clients.

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03/07/2018 06:05:52

Dawn Ellmore Employment

®

Patent, Trade Mark & Legal Specialists

Senior Patent Attorney Develop a Patent Practice in Oxfordshire

Electronics/Computer Science Experienced Attorney — London

0DUNHW OHDGLQJ VSHFLDOLVW ,3 ODZ ÀUP VHHNV DQ experienced patent attorney to develop a new RIÀFH LQ 2[IRUGVKLUH

,QWHUQDWLRQDO ODZ ÀUP RIIHULQJ DQ XQPDWFKHG mix of traditional attorney work as well as less conventional duties.

All technical backgrounds considered. What is paramount is your ability to lead the development LQWR D VXFFHVVIXO RIÀFH $ JUHDW RSSRUWXQLW\ IRU DQ ambitious attorney to make their mark.

What really sets this vacancy apart is the quality of work and breadth of technology you will be exposed to, and the unusually wide range of responsibilities ready to be undertaken.

FS/FQ Chemistry Patent Attorney London

Trainee/PQ Life Sciences Patent Attorney London or Cambridge

$ UROH ZLWK JUHDW SURVSHFWV IRU D ÀQDOV VWDQGDUG RU TXDOLÀHG DWWRUQH\ ZLWK XS WR \HDUV· 34( WR MRLQ D SUHVWLJLRXV ÀUP

Fantastic opportunity to join a well respected and successful IP practice, with exposure to work across a broad spectrum of biotechnology and life science related subjects.

Ideal for an attorney looking to develop by joining WKLV ÀUP·V H[SDQGLQJ FKHPLVWU\ WHDP 2XU FOLHQW FDQ guarantee exposure to a variety of work within a supportive, friendly working environment.

Those with at least one year’s experience can be considered in Cambridge, whilst for London DSSOLFDQWV PXVW EH SDUW TXDOLÀHG

Electronics/Physics Patent Attorney London or Cambridge

Electronics/Software Patent Attorney Glasgow

7RS WLHU ,3 ÀUP VHHNLQJ DQ DGGLWLRQDO DWWRUQH\ 34 RU )4 WR EHFRPH IXOO\ LQWHJUDWHG LQWR LWV KLJK Á\LQJ electronics team, advising some of the world’s largest and most recognisable tech companies.

An exciting opportunity for an ambitious attorney, PQ or FQ with the capability to handle a wide range of electronics and software related casework.

Varied workload comprising original patent drafting and direct prosecution, agency work, and also an unusually large amount of contentious matters.

-RLQ DQ H[SDQGLQJ DQG LQQRYDWLYH ,3 ÀUP ZKLFK has worked hard to establish strong links with its clients, leading to a diverse portfolio with a high proportion of direct client instructions.

For more information on these featured vacancies, please contact Luke Rehbein: luke.rehbein@dawnellmore.co.uk or 020 7405 5039 Visit www.dawnellmore.co.uk to view our full range of IP vacancies, across all locations +44 (0)20 7405 5039 www.dawnellmore.co.uk

in Dawn Ellmore Employment @Dawn_Ellmore G+ DawnEllmore

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Become part of the next wave of growth Patent Paralegal Based in Reading UK Ericsson develops ICT innovations and establishes standards that bring positive changes to society. With about 100,000 employees and customers in 180 countries, Ericsson has more than 45,000 granted patents and more than 100 licensing agreements in place, which bring substantial revenues for the company and enable continued innovation at a fast pace.

We are now looking for a Patent Assistant/ Paralegal to work in our patent unit in Reading, as part of our successful IPR & Licensing organisation. You will ensure that the administrative part of patent portfolio management, e.g. filing and prosecuting patent applications, is performed in accordance with our strategy and patent law.

You will collaborate with Inventors, Outside Counsels and all of your colleagues in the global IPR & Licensing organisation.

The job requires a well organised person, with a keen eye for detail, who should be able to work well in teams.

The paralegals in the UK patent unit handle patent cases that have responsible patent attorneys based not only in the UK unit, but also in other patent units around the world. There will also be opportunities for you to be involved in project teams, working on subjects such as; Ways of Working, acquisitions and disposals..

If you would like to discuss the role in further detail please contact Fredrik Egrelius fredrik.egrelius@ericsson.com You can also apply directly for the job at: https://goo.gl/fR73hh See all our career opportunities at www.ericsson.com/careers Last day to apply is 25 August 2018.

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+44 (0)20 7405 5039 www.dawnellmore.co.uk

in Dawn Ellmore Employment @Dawn_Ellmore G+ DawnEllmore

Dawn Ellmore Employment

®

Patent, Trade Mark & Legal Specialists

Patent Formalities Assistant, European Grant Team — London Previous experience in an EP grant formalities position would be ideal, however those from a general patent administration background are encouraged to apply.

Patent Secretary — South West &KDQFH IRU DQ H[SHULHQFHG SDWHQW VHFUHWDU\ WR ZRUN ZLWKLQ D VXFFHVVIXO IULHQGO\ ÀUP DQG take on plenty of varied and interesting responsibilities.

Senior Patent Secretary to Partner — London $ WRS WLHU ,3 ODZ ÀUP ZKR DUH ZHOO HVWDEOLVKHG LQ DOO DUHDV RI 3DWHQWV KDYH D YDFDQF\ IRU DQ experienced secretary to work for a Partner in their Engineering & Electronics Group.

Patent Secretary — Cambridge 7RS WLHU ODZ ÀUP ORRNLQJ IRU DQ H[SHULHQFHG VHFUHWDU\ WR DVVLVW DWWRUQH\V E\ PDQDJLQJ GLDULHV PDLQWDLQLQJ UHFRUGV DQG ÀOLQJ FRUUHVSRQGHQFH ZKLOVW SURYLGLQJ VHFUHWDULDO VXSSRUW

Patent Administrator c£35,000-40,000++ — London A perfect opportunity to work alongside and learn from dedicated and interesting FROOHDJXHV LQ D VXFFHVVIXO ÀUP ZKHUH \RX FDQ JDLQ D VXSHU VWDUWLQJ VDODU\ LQ WKH SURFHVV

Patent Secretary — North West $PD]LQJ ÀUP VHHNLQJ D EULJKW RUJDQLVHG DQG HQWKXVLDVWLF SDWHQW VHFUHWDU\ <RX ZLOO EH assisting and supporting attorneys as well as providing secretarial tasks.

Patent Paralegal £35,000-40,000 — London Brand new role encompassing both patent related work and lots of client contact, which would suit an experienced patent administrator or a secretary looking for a new challenge.

Patent Administrator — South East /HDGLQJ ,3 ÀUP VHHNLQJ VRPHRQH ZLWK UHOHYDQW H[SHULHQFH LQ SDWHQW SRUWIROLR PDQDJHPHQW Candidates should be organised, motivated and have a proactive approach to their work.

Senior IP Litigation PA — London $ OHDGLQJ ,QWHUQDWLRQDO ODZ ÀUP LV ORRNLQJ IRU D KLJKO\ RUJDQLVHG 3$ ZLWK NQRZOHGJH ambition, and exceptional personal skills to work with their Head IP Litigation Partner.

Patent Secretary — West Midlands $ JUHDW RSSRUWXQLW\ IRU DQ H[SHULHQFHG SDWHQW VHFUHWDU\ WR MRLQ D IDQWDVWLF ,3 ÀUP LQ D varied role. Time management, organisational and communication skills will be valued.

For more information on these featured vacancies, please contact Dawn Ellmore: dawn.ellmore@dawnellmore.co.uk or 020 7405 5039 Visit www.dawnellmore.co.uk to view our full range of IP vacancies, across all locations pp63-DEEA2_1.indd 63

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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 clients’ 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

In partnership with

IP Recruitment Specialists 35 years experience

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These are a small selection of our live roles. Please get in touch to discuss your requirements

XXX DBTFMUPODMBSL DP VL 64 CIPA JOURNAL

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Rock a New Role Patent Formalities Assistant : North East RRM57181 Hugely successful Practice seeks a Patent Formalities Administrator to work in a busy, professional environment. Assisting with a range of administrative and formalities tasks, the ideal applicant will be a proactive, diligent team player with an excellent eye for detail and the ability to work to deadlines effectively under pressure. Experience in a similar role is essential and the CIPA qualification will be considered advantageous.

Patent Paralegal : London TJB57047 Prestigious IP firm in London seeks a Patent Paralegal to join them as they expand their support function. This is a mixed and interesting role with a focus on assignment work such as change of ownership details by assignment, merger and change of company name, address or legal entity.

Super working environment with excellent salary and benefits on offer.

Patent Secretary : Oxford TJB57313 A top-tier IP firm seeks a skilled Patent Secretary to join its Oxford office.

Joining their busy team, desired is a confident and pragmatic Secretary to take on responsibilities such as drafting and filing Patent Office forms, billing, diary management, client correspondence, filing duties and audio typing. Superb opportunity.

Patent Attorney : Dublin RRM56177 A European leader in IP is hoping to expand its Dublin team. The scope of their clients means they can accommodate Attorneys from a broad range of specialties. This role will suit an entrepreneurial Attorney who has both the talent and drive to make their mark. There is currently capacity to consider applicants from qualified through to a senior level so those currently in Partnership roles are welcomed.

Electronics Attorney : Reading VAC54926 Brought about by growth, join a busy team based in the Berkshire or Cambridge offices. This role will work with the highest calibre of colleagues and clients, from start-ups and SME's to global organisations from a range of industries. With such a varied caseload of technology available, this role can be adjusted to meet the expertise of the candidate.

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

pp65-Sacco-RHS_1.indd 65

Physics Engineering Patent Attorney : Bath VAC54011 Looking for a hands on, client facing role from the outset? With more direct client work than your average practice, this firm pushes against heavy weights with an impressive client base. Attorneys get stuck in from day one, meaning plenty of varied work including drafting, prosecution and oppositions. If you feel your role is getting a bit lack lustre, why not make an enquiry for a discussion in confidence?

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 is 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.

Chemistry Attorney, Part Qualified – Associate level : Cambridge LKA57401 New opportunity for a competent Chemist to join a flourishing firm. The group is confident that they will be able to design a caseload around their new Attorney’s academic and practical preferences. As a business, they pay extremely competitively with full flexi-time and very lucrative bonuses on offer along with a supportive environment to encourage you to achieve your ambitions at every stage of your career.

Entrepreneurial Patent Attorney : Oxford CEF57399 Highly regarded IP firm in Europe seeks a Patent Attorney to join their expert team of IP specialists. On offer is a position to drive the business forward to flourish. Maintaining strong relationships with existing clients will be imperative. Within this well-established Practice, client needs vary so no matter what your discipline specialises in, make an enquiry for more information!

Part-Qualified Biotech Attorney : Cambridge CEF57394 Well established IP firm is looking to recruit a Part-Qualified Biotech Attorney in its Cambridge office. A brilliant opportunity for a creative individual to hone their biotech skills in an entrepreneurial environment with a variety of specialists in their fields. The ideal applicant will excel in supporting clients, appealing cases and be enthusiastic, striving to be their best. Clear route for progression.

Scan the QR Code for our website

www.saccomann.com

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

03/07/2018 06:09:02

THE PINKS

RECRUITMENT

Fully or Part Qualified Patent Attorney London | Brighton | Oxford | Manchester | Munich The Role We have an opportunity for an intelligent, ambitious fully or part qualified patent attorney to join our busy Engineering team. We are flexible on office location to cover any of our UK offices in London, Brighton, Oxford, or Manchester. We would also consider applicants for our Munich office. A varied and interesting caseload working with an established high-profile client awaits the successful candidate. This is an excellent opportunity to progress your career and build upon your professional reputation with one of the leading Top Tier firms.

The Person Ideally, you will have at least 2 years’ experience working in the profession. We welcome applications from fully or part qualified attorneys, who have a strong academic background in Engineering (Mechanical or Aerospace preferred) or Physics and, as a minimum, successfully passed either the Foundation exams or PG Certificate in Intellectual Property Law. The successful candidate will be able to hit the ground running, and confidently handle direct client drafting, prosecution and advice work. Excellent people skills and commercial sense are also very important.

The Offer As well as a highly competitive salary and wide ranging benefits package, we offer a relaxed, friendly, sociable environment to work in.

We are also open to considering flexible working arrangements. We would therefore encourage applications from interested attorneys wishing to join our Firm, and would invite you to have an initial confidential discussion.

Interested in being part of our firm?

Visit www.dehns.com/site/careers/ to find out more and submit your application.

Alternatively, contact human-resources@dehns.com to arrange a confidential informal chat About Dehns Dehns is one of the largest patent and trade mark private practices, with a rich history spanning almost 100 years.

Our practical, commercially focussed approach to IP helps us to turn inspired thinking into patents, trade marks and registered designs that are valuable commercial assets to our clients.

www.dehns.com/site/careers

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

A selection of our current vacancies: Head of Law (IP) - Midlands Senior Associate - Electronics/High Tech Group - Genuine Track to Partnership Patent Secretaries/Paralegals - London

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03/07/2018 06:10:07

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

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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

In-House

Biotech & Life Sciences

Electronics & Computer Science

Part/Newly Qualified - East Midlands

Part/Newly Qualified - York

Trainee - Nationwide

Ref: 67334

Ref: 124315

Ref: 124333

If you want to see the outcome of your efforts rather

Are you a part/newly qualified Patent Attorney

Are you seeking a trainee Patent Attorney position

than working on project after project where you are

considering your employment options? I am

with a well-respected IP firm that has a proven

not really engaged, this role is ideal for someone

working with a firm that has grown their business

track record of developing careers? Providing you

employed in private practice who wants to move

from 15 Partners to 42 over the last decade. This

have a First Class degree in electronics, computer

into industry. This company is at the cutting edge

success is largely due to the fantastic people within

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

of innovation that has a world-class brand known

the organisation and the company’s commitment

am working with a variety of firms throughout the

for its quality, which makes this a really exciting

to training and developing their staff. There is an

UK seeking such individuals. Upon understanding

opportunity.

open door to progression that is not reliant on other

your career motivations, I can advise the companies

people moving within the organisation.

best equipped to introduce you to.

Biotech

Electronics

Mechanical Engineering

Associate - London

Salaried Partner - London

Part/Newly Qualified - Leeds

Ref: 129441

Ref: 118669

Ref: 138321

Ideal for a progressive and commercially astute

An exciting opportunity is available to join this

This well respected firm is seeking an Attorney with

qualified Patent Attorney (CPA or EPA) with a

London firm as a Salaried Partner. The role is

expertise in mechanical engineering to join the

proven life sciences/biotechnology background

designed to develop to equity within three years.

Leeds team. Some experience in other technical

and drafting/prosecution experience. You must

The well-established firm has a strong reputation

fields, for example electronics or physics, would be

be comfortable in liaising with clients directly

within the industry for the quality of its work

advantageous but is not essential. You will be either

and feel confident in advising and defending

within electronics. The team is the firm’s largest

newly qualified or well on your way to completing

complex patent portfolios. First-hand experience

department, and this appointment will play a

your final exams, with an appetite to learn and take

of handling blue-chip, SMEs and university based

pivotal role within it in further advancing its market

on your own portfolio. Great career development

clients is desirable.

share and strategic objectives.

platform available.

IT & Engineering

Chemistry & Engineering

Electronics & Mechanical Engineering

Part Qualified - Cambridge

Part Qualified - Glasgow

Qualified - London

Ref: 129947

Ref: 129944

Ref: 118671

A leading UK and European firm is looking to

Are you a part qualified Patent Attorney in

Where opportunities in this technology are plentiful

appoint a part qualified Patent Attorney. Candidates

chemistry

this role stands out above the rest! Genuine market

must have at least completed the QM course and

employment options and career prospects?

I

leading salary available, high volume of contentious

have a mechanical engineering or physics academic

am working with a firm that has grown its Patent

work, high profile clients and a fast track progression

background, as well as an interest in or experience

business substantially from 15 partners to over 40,

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

of handling subject matter in the mechanical

and now employs a total of 270 people. The role

up to reward fee earners effectively without having

sphere. The ideal applicant will have excellent

offers a fantastic opportunity for a Glasgow based

to work extensive hours. The right individual can

communication skills and be seeking a challenging

Attorney or relocator, within an organisation that is

benefit from working in a professional yet relaxed

role as the next step in their career.

focused on developing its staff.

environment and have the opportunity to learn from

&

engineering

considering

your

leading industry professionals.

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

pp69-G2_1-RHS.indd 69

Mob 07426 043744

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

03/07/2018 06:10:54

European patent attorneys London/Munich

If you are a qualified European patent attorney or a finals standard trainee looking to join a well-established and highlyregarded global patent prosecution practice in London or Munich we‘d like to hear from you. Our European team is led by patent attorney Dr Justin Hill and our industry-leading team of talented patent attorneys is growing.

We are consistently ranked as a leader in the field of IP and assist many of the best known technology businesses in the world. We work on an exciting mix, including patent prosecution, oppositions, opinion work, portfolio strategy, FTO and litigation support across all technologies, including artificial intelligence, computer science, space and satellites through life sciences and biotech. The team also works closely with our Venture Technology practice, which supports over 1,000 early-stage companies disrupting their sectors.

Dentons is the most highly awarded law firm in the world and advises clients in more than 160 locations, in over 60 countries. Our “polycentric” philosophy means that there is no single headquarters or dominant culture allowing us to best respond to our clients’ needs wherever they operate, which enables us to offer a global onestop shop capable of dealing with all aspects of IP and technology law.

Our highly-rated global IP and Technology group includes more than 800 lawyers and plays an important role in the Firm‘s overall growth strategy. We now want to hear from talented patent attorneys who are interested in contributing to the growth and development of the practice, within a supportive and collegiate global team.

If you are strategically minded, highly commercial and looking to progress your career on a growing global platform, we‘d like to begin discussions. All areas of technology will be considered, but we are particularly interested in artificial intelligence, computer science and life sciences. We are open minded on working locations.

Won the Law Firm Innovation Award for two years running at the Legal Week Innovation Awards International Law Firm of the Year

Juristat ranked Dentons number one on its 2017 list of top 100 patent prosecution law firms

To register an interest in careers at Dentons please send a full CV to: recruitment.matters@dentons.com

Challengers never rest.

dentons.com © 2018 Dentons. Dentons is a global legal practice providing client services worldwide through its member firms and affiliates. Please see dentons.com for Legal Notices.

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THE PINKS

RECRUITMENT

TAKE YOUR CAREER ON HOLIDAY Explore exciting Patent and Trade Mark opportunities: www.weareaspire.com/IP

James Dawes jamesd@weareaspire.com 0207 612 3941

ENGINEERING/PHYSICS (FINALIST/QUALIFIED) £55,000 - £75,000 + Bonus - Birmingham A brilliant opportunity for a finalist/qualified Patent Attorney with an Engineering, Physics or Software background to join a modern and progressive firm. This talented team benefit from a hugely diverse client base, which spans SMEs and Universities to larger, global technology brands. You should have gained experience of direct and indirect case-loads within 'high-tech' areas, from drafting/prosecution to contentious work. The firm advocates a genuinely flexible working environment in a supportive and modern working culture. So, if you value high-quality work in a real meritocracy, then there are also fantastic long-term prospects for career progression too.

PHYSICS/ENGINEERING (CPA/EPA - GENERALIST) £55,000 - £75,000 + Package - Bath You are a qualified CPA or EPA with experience of Physics, Engineering and/or telecommunications related subject matter looking for a firm to match your professional ambitions. You'll be responsible for a profitable and wide-ranging portfolio of established multinational clients - many of which have UK based requirements. You must be commercially astute with fantastic client-facing skills to complement your technical competencies. This thriving practice will appeal to those who want to work in a friendly, supportive culture with an excellent platform to advise clients of all sizes.

Long-term prospects are exceptional for those who harbour partnership aspirations.

PHYSICS/ELECTRONICS/ ENGINEERING (CPA/EPA) £70,000 - £80,000 + Package - Hampshire An outstanding opportunity for a dual qualified CPA/EPA (up to 5 years PQE) to join one of the most revered Tier 1 firms in the UK. You must have already gained at least one year PQE, thriving on direct-client contact and inventor liaison in particular. This role should attract a career-driven attorney who can bring commercial focus, coupled with a consultative approach to client management. This is a pivotal position in a quality-driven firm where attorneys enjoy a highly productive work/life balance in a wholly supportive team environment. If your career has stagnated, or you feel it's time to spread your professional wings, then the time to be proactive has arrived.

ELECTRONICS/MECH ENG (FINALIST/QUALIFIED) £55,000 - £75,000 + Bonus - Cambridge You are a finalist/qualified attorney with a proven Electronics or Mechanical Engineering background, looking to move to one of the most widely respected firms in the UK. You should possess experience of automotive and/or aeronautical client portfolios, as well as experience of contentious work (oppositions/appeals). This is an opportunity to influence and shape IP strategy with direct clients, so if you enjoy building and nurturing client relationships this could be the perfect fit for you. This firm prides itself on attracting the best attorney talent in the market, so you'll be rubbing shoulders with people at the top of their game in a friendly and collaborative culture.

Volume 47, number 7-8

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BIOTECHNOLOGY (PART QUALIFIED/ASSOCIATE) £45,000 - £65,000 + Benefits - Cambridge A fantastic biotechnology opening for a finalist/newly qualified attorney to join a prestigious and hugely progressive UK practice. Commended as a true international firm, they pride themselves on both the calibre and range of client portfolios. You should possess an incisive and commercially sound legal mind to support a number of key accounts of high-value strategic worth. Applications are sought from attorneys who are looking for significant professional rewards, as well as highly challenging and exciting technology. Their support infrastructure is superb, so professional staff retain a high level of responsibility for their own clients - and training is exceptional.

MECHANICAL ENGINEERING (FINALIST/QUALIFIED) £45,000 - £65,000 + Bonus/Package - Leeds A great new role for an attorney with mechanical engineering experience to join a hugely successful team. An immediate portfolio of richly challenging and profitable clients awaits a progressive individual with proven experience of high-touch client management. You will be joining a firm that excels in being able to provide high value contentious work (oppositions/appeals), as well as varied drafting/prosecution too.

You should have prior experience of client development and thrive on capitalising future growth through fostering long-term relationships. Career opportunities are excellent to progress internally, whether you're part-qualified or more experienced.

SOFTWARE/ELECTRONICS (SENIOR ASSOCIATE) Up To £80,000 + Package - London A fantastic opportunity for a commercially astute software/electronics specialist has arisen within a truly dynamic and progressive international firm. You must be CPA or EPA qualified (up to 5 years PQE) having gained significant experience of original drafting and contentious areas of IP. Due to a substantial increase in referral work with many pivotal innovation-led blue-chip brands, there is an immediate requirement for a bright, conscientious and ambitious team-player to add value to the firm's growth plans. This role will challenge and excite in equal measure; a truly unique position with enviable clients and a brilliant career structure tailored to your professional ambitions.

TRADE MARK ATTORNEY (NEWLY QUALIFIED) £50,000 - £60,000 + Benefits - Manchester You are a recently qualified UK Trade Mark Attorney looking to fully utilise your professional knowledge and propel your IP career to the next level. This award-winning and renowned practice has a network of UK and overseas offices and operate as a full Patent and Trade Mark firm. Their established team handle a range of contentious and non-contentious portfolios, covering the automotive, consumer goods, food and drink, clothing, pharma, and leisure sectors. You'll benefit from an experienced paralegal team, as well as cross-selling opportunities within the wider group. A terrific opportunity to make a move to a career-defining firm.

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PA R T NER SHIP S WHERE DARTS-IP’S INFORMATION IS AVAILABLE

INTERNATIONAL LEGAL IP INFORMATION FROM KATZAROV Darts-ip users have access to Katzarov's Manual from within their search results. Katzarov's Manual contains insights into a country’s IP regime and jurisdictions, such as: • • •

The international and regional conventions to which a given country is a member state References to the latest applicable legislation Conditions and requirements for prosecuting and enforcing local IP rights

ACCESS TO DARTS-IP’S GLOBAL IP DATABASE THROUGH QUESTEL Darts-ip will provides Questel users unique case law data within Questel’s flagship product “Orbit Intelligence”, providing patent professionals a comprehensive overview of patent and litigation data.

Users of can access key information such as: • • •

Patent validity status Ongoing litigation Party’s aggressiveness

GLOBAL PATENT INFORMATION FOR PATSEER USERS Users of Gridlogics’ patent research platform PatSeer, receive integrated access to global patent litigation data, sourced from Darts-ip’s case law database. Patent professionals using PatSeer can see: • Indications of litigious cases, if any, in existence for a patent family • Location of litigation by continent • Type of action (judicial/administrative/arbitration).

DARTS-IP DATA IN CORSEARCH SEARCHES AND WATCHES Together, Corsearch and Darts-ip combine two previously time-consuming work processes into a single comprehensive analysis.

• • • •

Litigation history of the owner of the mark found Litigation history of the mark found Similar goods and services are automatically highlighted Cases involving pairs of verbally similar marks to the mark searched or watched and the mark found

www.darts-ip.com pp72-DartsIP_1.indd 72

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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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