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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

03/07/2018 09:30:10

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

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

US update: Privilege

Lucy Holloway 43

Finnegan

Manual of Patent Practice

IPO update 6

Industrial Strategy

Overseas report

IPO update Amanda R. Gladwin

Statistics on PEB Examinations

SPC review

IPO decisions

EDUCATION

Carpmaels & Ransford

45 39 46

Institute events Non-institute events IP Assessment

Cost of regulating patent attorneys

Midlands Meeting

UP and UPC

Life Sciences Conference

Julia Gwilt

GDPR and AI patents

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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

The not-so-secret diary Going Remote

CPD report, Roxna Kapadia

JULY-AUGUST 2018

CIPA JOURNAL

04/07/2018 08:49:15

ARTICLE

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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ARTICLE

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?

SPC REVIEW

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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CIPA JOURNAL

04/07/2018 08:52:12

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. 20 CIPA JOURNAL

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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

04/07/2018 09:06:49

GDPR

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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CIPA JOURNAL

04/07/2018 09:06:52

CHINA UPDATE

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

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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.

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. Volume 47, number 7-8

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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

CIPA JOURNAL

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PERSONAL

GOING REMOTE

Going Remote By Lucy Holloway (Fellow)

’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

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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

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):

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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

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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.

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