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

November 2018 / Volume 47 / Number 11

IP v competition Striking the right balance between SEP owners and users

Rights of representation at the EUIPO Neil Lampert

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Bye-laws: new membership grades Lee Davies

Education: PEB’s self-assessment report Rob Taylor

Kicking trade marks to the CJEU Alasdair Poore

Yellow Sheet Going remote Case reports CPD events

06/11/2018 20:48:45

CIPA Guide to the Patents Acts Third Supplement to the 8th Edition

The CIPA Guide to the Patents Acts, Third Supplement to the 8th Edition updates the mainwork with the latest developments in patent law. KEY UPDATES

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by the Chartered Institute of Patent Attorneys

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• • • • •

REUTERS/Athit Perawongmetha

December 2018 Paperback | 9780414069190 | £135

Comprehensively reviews significant UK court decisions and practice directions, IP Office decisions and EPO Appeal Board decisions up to 30 September 2018. Outlines UK, EPO and US decisions on eligibility, including the recent US CAFC decision in Berkheimer v HP Inc and its implications for UK practitioners. Reviews Actavis v Icos on “obvious to try”, expected to be heard in the Supreme Court in November 2018, and reviews other significant cases on inventive step. Will hopefully discuss the Supreme Court plausibility decision in Warner-Lambert v Generics, expected availability October 2018. Discusses disclaimers in the light of EPO Enlarged Appeal Board decision G 1/16. Updates the on-going significance of the Supreme Court decision in Actavis. Reviews the likely impact of Brexit on SPCs and summarises recent case law. Outlines recent patent licence decisions, e.g. in relation to FRAND licenses. Summarises a recent Disciplinary Rules decision on provision of terms of business.

PLACE YOUR ORDER TODAY VISIT EMAIL CALL

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The intelligence, technology and human expertise you need to ﬁnd trusted answers.

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Contents 14-15 3-6, 17-21

12-13 UP FRONT

ARTICLES

EDUCATION

Sky v Skykick

For sale: trade mark space, no strings attached? Alasdair Poore

Host a trainee patent examiner

Litigation financing

Editorial

Balancing power – a delicate task Alasdair Poore 7

Chief Executive’s report

New membership grades Lee Davies 8

Council Minutes

DECISIONS

Lee Davies 22

NEWS

Webinar: removing financial risks from patent infringement 38 35

Non-institute events Institute events

Patent decisions

Beck Greener 23

Sanam Habib

IPO decisions

PERSONAL

David Pearce & Callum Docherty 9

IPReg revised fees proposal

Stephen Jones 11

PEB’s self-assessment report

Rob Taylor 12

EUIPO and Brexit

Neil Lampert 13

Going Remote

European Patents Handbook

Andrea Brewster Lucy Holloway

Patent Case Law Seminars

Contributors needed 42

Yellow Sheet

EPO news

IPO director joins the EPO 14

Announcements IP Inclusive update

Trade marks

Bird & Bird 34

38 39

Manual of Patent Practice

IPO update 14

EPO decisions

Bristows

Fee changes in China

THE PINKS

Toby Mak 15

Overseas report

Amanda R. Gladwin 15

China update

44-60 Support; Announcements; Courses & Events; International; Recruitment

SIPO renamed and reorganised

Volume 47, number 11

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CIPA JOURNAL

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NEWS

accession to the Marrakesh Treaty. The instrument contained the following declarations: •

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that the provisions of the Marrakesh Treaty shall not be applied by the Republic of Azerbaijan in respect of the Republic of Armenia in future; and that Azerbaijan is unable to guarantee the implementation of the provisions of the Marrakesh Treaty in its territories occupied by the Republic of Armenia until the liberation of those territories from the occupation.

The said Treaty will enter into force, with respect to the Republic of Azerbaijan, on 24 December 2018. On 1 October 2018, the Council of the European Union deposited its instrument of ratification of the Marrakesh Treaty. The Treaty will enter into force, with respect to the European Union, on 1 January 2019. On 1 October 2018, Japan deposited its instrument of accession to the Marrakesh Treaty. The instrument was accompanied by the declaration that Japan will confine the limitations and exceptions under Paragraph 4 of article 4 to works

OVERSEAS

which, in the particular accessible format, cannot be obtained commercially under reasonable terms for beneficiary persons. The Treaty will enter into force, with respect to Japan, on 1 January 2019.

of the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations (the Rome Convention), the Government of the Republic of India declares that the criterion of fixation provided for in article 5(1)(b) of the Rome Convention will not be applied while granting national treatment to producers of phonograms; and

On 24 October 2018, the State of Qatar deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Qatar, on 24 January 2019. WIPO Copyright Treaty On 25 September 2018, the Government of the Republic of India deposited its instrument of accession to the WIPO Copyright Treaty. The Treaty will enter into force, with respect to India, on 25 December 2018.

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WIPO Performances and Phonograms Treaty On 25 September 2018, the Government of the Republic of India deposited its instrument of accession to the WIPO Performances and Phonograms Treaty. The instrument of accession was accompanied by the following declarations:

The Treaty will enter into force, with respect to India, on 25 December 2018.

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in accordance with article 3(3) and with reference to article 5(3)

in accordance with article 15(3), the Government of the Republic of India declares that the provisions of article 15(1) of the Treaty relating to a single equitable remuneration for performers and producers of phonograms will not be applied in India.

Singapore Treaty (Law of Trademarks) On 27 September 2018, the Government of the Republic of Peru deposited its instrument of accession to the Singapore Treaty. The Treaty will enter into force, with respect to Peru, on 27 December 2018. Dr Amanda R. Gladwin (Fellow), GSK

Litigation financing – removing financial risks from patent infringement CPD webinar • 12:30, Monday 3 December 2018

Failure to defend a company’s protected technology, developed through its own hard-fought and expensive research and development activities, can lead to disastrous results. However, many technology companies find patent enforcement proceedings to be financially risky endeavours. Fortunately, litigation financing is now an option to financially de-risk patent enforcement disputes from the patent owner’s perspective. Eric Morehouse, a US patent attorney and litigation finance pioneer, will explain the applicability and availability of litigation financing to patent enforcement disputes. Speaker: Eric D. Morehouse, General Partner at Dulany Street Capital CPD: 1; Prices: £72 (£48 CIPA members) • For full detail see the website – www.cipa.org.uk/whats-on/events

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NOVEMBER 2018

www.cipa.org.uk

06/11/2018 23:48:21

For sale: trade mark space, no strings attached?

Court of Appeal1 confirms the reference to the CJEU in Sky v Skykick2 on clarity and bad faith issues. In addition to reflecting the continuing waves caused by CIPA’s IP Translator3 case, and, with its relevance particularly in the technology field, and therefore to many patent-oriented businesses, the issues referred to the CJEU have some uncanny patent parallels. Alasdair Poore (Fellow) reviews some aspects of Mr Justice Arnold’s and the Court of Appeal’s decisions in Sky v SkyKick, and draws some analogies with issues that patent attorneys will be familiar, if not comfortable, with such as clarity and sufficiency, validity and amendment, some of which are currently the subject of Warner Lambert v Actavis in the Supreme Court decision. The article is in two parts – this part covering the background and questions of clarity and precision.

Volume 47, number 11

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n Sky v SkyKick, Sky sought to enforce its registered trade marks for “Sky” against SkyKick, in respect of use of “SkyKick” marks for highly specialised software and services for migration of email from Microsoft Office to Office 365 (which is cloud based – in the “Sky”). In doing so, they followed a not uncommon trend for some of the major brands: hold trade mark registrations covering a very wide range of goods and services, and actively enforce these trade marks against users, and oppose applications to register trade marks for goods and services for which Sky did not use the mark and for which there seemed no prospect that they would use the mark – uses entirely outside their business focus. Clearly brand owners have a serious interest in using this approach to keep others “off their turf ”, and major brand owners who expend considerable sums in promoting their brands, have a greater interest as they become targets for others to seek to benefit from their brand, from simple counterfeiting to riding on the coat tails of the brands reputation. Older practitioners may recollect that the 1938 Trade Marks Act allowed for “defensive registration” of certain trade marks4. Relying on this provision, a trade mark could be properly registered in respect of goods even if it was not used and there was no intention to use it on those goods, and such a registration could not be revoked on the grounds that it was not used on those goods. The provision had a number of safeguards, however. The basis of registration was that the mark had become sufficiently well known in respect of the goods for which it was used; and also that it was an “invented word”. In this way it provided protection seen to be commensurate with defending the rights of well-known brand owners – as well as incidentally avoiding the risk of taking a normal part of vocabulary out of use. That provision went with repeal of the 1938 Act, and the introduction of a “more sophisticated” approach to preventing third parties riding on a brand owner’s coat tails. The Trade Marks Act 19945 and the EU Trade Mark Regulation6 provide NOVEMBER 2018

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DECISIONS

Massimo Osti S.r.l. v Global Design and Innovation Limited (“GDI”) & Anr* Master Clark; [2018] EWHC 2263 (Ch); 30 August 2018

Master Clark rejected Massimo Osti’s application to set aside an order made of the Court’s own initiative transferring the claim to the IPEC. The Master held that the claim was suitable for the IPEC and ought not to be retained in the High Court. Georgie Hart reports.

Massimo Osti maintained the archive of an influential fashion designer and offered fashion and design consultancy services under the name Massimo Osti Archive. It owned an EUTM for the word mark MASSIMO OSTI and an international registration for a figurative mark comprising the words MASSIMO OSTI ARCHIVE, both registered in respect of goods in class 25 for clothing, footwear and headgear (together, the “Marks”). GDI made and sold clothing under the MA.STRUM brand in the UK, with the second defendant Mr Sharp being its sole director. Massimo Osti issued a claim in the High Court against both defendants for breach of an implied licence under which Massimo Osti claimed it had consented to GDI’s use of the Marks in exchange for royalty payments which, it said, had not been paid. Massimo Osti also claimed for trade mark infringement in relation to use of the Marks on goods co-branded with the MA.STRUM mark after the expiry of the implied licence.

Considerations for transfer to IPEC Master Clark considered each of the factors listed in paragraph 9 of CPR PD30 relating to whether a claim should be transferred to the IPEC, including whether a party could only afford to bring or defend the claim in the IPEC and whether the claim

Patent Case Law Seminars 2018 Bristol • Thursday 1 November London • Thursday 15 November Glasgow • Wednesday 28 November Manchester • Wednesday 12 December The CIPA Patent Case Law Tour is returning for 2018. For more details visit: www.cipa.org.uk/whats-on/events CPD: 3.5; Prices: £234 (members £156) 34 CIPA JOURNAL

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TRADE MARKS

was appropriate to be determined by the IPEC having regard to (i) the value of the claim, (ii) the complexity of the issues and (iii) the estimated trial length. He also referred to the 2016 IPEC Guide and the Chancery Masters Guidelines for the Transfer of claims (20 May 2015). The Master was not satisfied that GDI could not afford to litigate in the High Court so found this to be a neutral factor. As regards the value of the monetary relief sought, he held that if Massimo Osti succeeded in all its factual allegations that had a real prospect of success, the total royalties payable (after amounts already paid by the defendants had been deducted) amounted to £313,581, which was well within the maximum value of damages awardable by the IPEC. No significant value was attributed to either the injunctive relief or the value of Massimo Osti’s marks because there was no evidence that GDI was still making products bearing the Marks. As regards the complexity of the issues, the Master held that none of the four main issues to be heard were of sufficient complexity as to make them inappropriate for determination by the IPEC: the issue of the implied licence relied on determination of facts which required limited disclosure of documents (purchase orders for manufacture of and sales records of cobranded products); the issue of whether Massimo Osti’s consent to the manufacture of co-branded items during the term of the licence exhausted its rights in respect of those items relied on legal arguments as to the construction and effect of the licence; the issue of whether GDI’s use of the Marks was descriptive was an issue commonly addressed in the IPEC and did not give rise to significant factual complexity; and the issue of trade mark invalidity was also an issue the IPEC was well accustomed to dealing with. Given all of the other factors, the Master held that the claim could be heard within the usual two days required for an IPEC case. As such, the claim was suitable for the IPEC and Massimo Osti’s application was rejected.

The tour will focus on patent decisions from the UK and US courts and the EPO Boards of Appeal in 2018. Back by popular demand the speakers on the road show are: Dominic Adair, Bristows LLP Gemma Barrett, Bristows LLP Dr Jonathan Markham, Beck Greener James Porter, UK IPO Anthony Tridico, Finnegan LLP www.cipa.org.uk

06/11/2018 23:58:22

CPD & EDUCATION

INSTITUTE EVENTS

Institute Events For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events Monday 12 November 2018 Webinar

Monday 19 November 2018 Seminar

HOW TO FUND LITIGATION

NEW STUDENTS INDUCTION DAY

Time: 12.30–13.30

Time: 12.30–17.30 Location: De Vere Holborn Bars, 138-142 Holborn, EC1N 2NQ

The first part of this webinar will look at the more traditional ways of funding, essentially self-insuring/selffunding and “Before the Event” legal costs insurance. The second part will look at alternatives, particularly “After the Event” insurance and the use of specialist litigation funders and will describe the requirements of funders. . Speakers: Ian Wishart and Paul Wishart CPD: 1; Prices: £72 (£48 CIPA members) Tuesday 13 November 2018 Regional Meeting

The New Student Induction Day will be a chance for student members to learn more about CIPA, Informals, PEB, IPReg as well as talk on key skills and tips for trainees. It is also an excellent opportunity for students to meet and share experiences, as the day of talks is capped off with a networking drinks reception. Kindly note that in order to attend this event you must be a Student member of CIPA. This event has limited places and often gets filled up quickly.

THE WALES MEETING 2018 CPD: 7; Prices: £78

Do not miss your chance to gain 3.5 hours of CPD. plus excellent networking opportunities – including a drinks reception. Speakers include Daniel Voisey (IPO) on ‘Patent Search and Examination Procedures at the UK IPO’. See more details online.

HOW YOUR CLIENTS CAN FUND EVEN MORE INNOVATION

Thursday 15 November 2018 Seminar

PATENT CASE LAW LONDON Time: 12.30–17.30 Location: De Vere Holborn Bars, 138-142 Holborn, EC1N 2NQ A focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in the past year. See more details on page 34. . CPD: 3.5 Prices: £234 (£156 members) Volume 47, number 11

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Speaker: Sam Stephens CPD: 1; Prices: £72 (£48 CIPA members) Thursday 22 November 2018 Seminar

UPDATE ON COMPUTERS AND IP

Time: from 12.30 Location: Clayton Hotel Cardiff, St Mary Street, Cardiff, CF10 1GD

CPD: 3.5 Prices: £234 (£156 members)

to further reward commercialisation and ongoing R&D activities. The webinar will touch on all four areas giving a brief background to the scheme, the benefit to the company, opportunities to patent and IPR professional service companies and hints and tips of how to access the funds with the narrative accompanied by appropriate anecdotes and case studies. This is an opportunity to expand your knowledge of how companies can fund innovation and how your organisation can benefit.

Tuesday 20 November 2018 Webinar

Time: 12.30–13.30 This webinar, delivered by TBAT Innovation Director Sam Stephens, will highlight the key sources of funding available to companies to help them to innovate and grow. It will also identify where possible funding can be secured to cover patent and IP fees. The UK is a great place for companies to innovate and successive governments have improved the funding and tax breaks available to R&D intensive companies year on year. From tax breaks for investors through the EIS and SEIS investment schemes, the range of grants underpinning may key technology sectors to pump prime ideation and new product development, R&D Tax incentives to reward innovation and then Patent Box

Time: 12.30–17.30 Location: De Vere Grand Connaught Rooms, 61-63 Great Queen Street, London, WC2B 5DA Join CIPA and the Computer Technology Committee for an afternoon seminar with a range of speakers overing recent developments in various aspects of IP relevant to the computing industry, including case-law, the impact of Brexit, and patenting AI. See more details online. CPD: 3.5 Prices: £234 (£156 members) Thursday 22 November 2018 IP Inclusive

WOMEN IN IP: FLEXIBLE WORKING Time: 17.30 Location: Gowling WLG, 4 More London Riverside, London SE1 2AU Register via the Women in IP section of the IP Inclusive website. IP Inclusive is open to all IP professionals and those who work with them. NOVEMBER 2018

CIPA JOURNAL

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CPD & EDUCATION

Wednesday 28 November 2018 Webinar

DEALING WITH STRONG EMOTIONS AT WORK Time: 12.30–13.30

INSTITUTE EVENTS

Monday 3 December 2018 Webinar

LITIGATION FINANCING REMOVING FINANCIAL RISKS FROM PATENT INFRINGEMENT Time: 12.30–13.30

An event to build empathy and understanding of ourselves and our colleagues as human beings, so that our workplaces become more inclusive places. Many people find it difficult to deal with strong emotions at work – their own, and those they may experience from colleagues. Whether by nature or nurture, some of us are more likely to become tearful when feeling frustrated, some of us to be aggressive or confrontational. Strong emotions can be hard to control, and can complicate our working relationships. This webinar will help you understand and respond to what’s going on when a person gets emotional. It aims to dismantle the stereotypes and biases that surround our emotional responses, so that we can value individuals for who they are (emotions and all), with the result that we create more inclusive teams and a working environment in which everyone is valued and accepted. Our speaker, career and leadership coach Jo Maughan, returns to IP Inclusive following her hugely popular webinar on “imposter syndrome” last September. Speaker: Jo Maughan CPD: 1; Prices: Free to CIPA members Wednesday 28 November 2018 Seminar

PATENT CASE LAW SCOTLAND Time: 12.30–17.30 Location: Radisson Blu Hotel, 301 Argyle Street, Glasgow G2 8DL Join CIPA at the Radisson Blu Hotel in Glasgow where we will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in the past year. See more details on page 34. CPD: 3.5 Prices: £234 (£156 members) 36 CIPA JOURNAL

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Wednesday 5 December 2018 Social

CHRISTMAS HAPPY HOUR Time: 18.00–0.00 Location: Editor’s Tap, 5–11 Fetter Lane, London EC4A 1BR

Join us for a glass of Christmas cheer at the Editor’s Tap Pub in Fetter Lane. A chance to start the Christmas festivities with other CIPA Members! This event is very popular so please book in advance. Please note this is a members only event and bookings are required.

Speaker: Eric D. Morehouse, General Partner at Dulany Street Capital CPD: 1; Prices: £72 (£48 CIPA members)

Friday 7 December 2018 Webinar

Wednesday 5 December 2018 AGM

136TH ANNUAL GENERAL MEETING Time: Registration will commence at 5.00 p.m., with the AGM starting promptly at 5.30 p.m. Location: The AGM will be held at CIPA. The one hundred and thirty sixth Annual General Meeting of the Institute will be held on Wednesday 5 December 2018, in the Institute’s offices at Halton House, 20-23 Holborn, London EC1N 2JD. The AGM will be followed by networking, drinks and light refreshments. We hope you will be able to attend and very much look forward to seeing you then.

SUBJECT-MATTER ELIGIBILITY FOR SOFTWARE IN THE US Time: 12.30–13.30 The presentation will focus on practical ideas for use in drafting and prosecuting software-based applications in the USPTO. The structure of the presentation is grounded in an analysis of the USPTO Guidelines and Guidances issued since the Alice decision combined with insights from monthly in-person examiner interviews over years working in this art. A particular focus will be on recent sea changes that both support the routes identified by the guidance and provide a cautious optimism that some of the cultural storms in the USPTO, which have been adding to the challenges, are starting to abate leading towards the prospect of calmer seas for navigation. Speaker: Michael Piper, Conley Rose PC CPD: 1; Prices: £72 (£48 CIPA members)

www.cipa.org.uk

06/11/2018 23:57:57

CPD & EDUCATION

INSTITUTE EVENTS

Tuesday 22 January 2019 IP Inclusive

IP INCLUSIVE’S ANNUAL GENERAL MEETING Time: 10.00-12.00 Wednesday 12 December 2018 Seminar

PATENT CASE LAW MANCHESTER Time: 12.30–17.30 Location: INNSIDE Manchester, 1 First Street, Manchester, M15 4RP Join CIPA for the final stop of the Patent Case Law Tour. Our panel will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in the past year. See more details on page 34.

Everyone is welcome to come along and hear what we’ve been up to over the last 12 months, and to help shape our plans for the future. RSVP to ipinclusiveevents@gmail.com. IP Inclusive is open to all IP professionals and those who work with them.

CPD: 3.5 Prices: £234 (£156 members).

Thursday 13 December 2018 Social

CAMBRIDGE HAPPY HOUR Time: 18.00 Location: Cambridge Blue, 85-87 Gwydir St, Cambridge CB1 2LG Join us for a glass of Christmas cheer. A chance to enjoy the Christmas festivities with other CIPA Members. This event is very popular so please book in advance. Please note this is a members only event and bookings are required.

Thursday 17 January 2019 IP Inclusive

ROLE OF ALLIES ***save the date*** A joint event by our three support groups (Women in IP, IP Out and IP & ME) about the role of “allies”. More details to follow; keep an eye on our website blog. IP Inclusive is open to all IP professionals and those who work with them. Volume 47, number 11

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Thursday 24 January 2019 Regional Meeting

MERSEYSIDE MEETING 2019 Time: from 12.30 Location: Hard Days Night Hotel, 41 North John Street, Liverpool, L2 6RR Join CIPA at the Hard Days Night Hotel for the first Regional Meeting of the year! Don’t miss out on talks from a range of speakers along with plenty of networking opportunities. See more details online. CPD: 3.5 Prices: £234 (£156 members).

Thursday 31 January 2019 Seminar

THE INFRINGEMENT THAT CAME IN FROM THE COLD Time: 17.00–19.30 Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD Douglas Campbell, QC of 3 New Square will discuss the ‘Icescape’ case during this late-afternoon seminar. Details of the case include:

• First IP trial in the Shorter Trial Scheme to reach the Court of Appeal – a threats action with counterclaim for infringement • First in-depth discussion by the Court of Appeal of the change to the law of infringement made by the Supreme Court in Actavis v Eli Lilly • Purposive construction is now “but the first stage in the determination of the scope of protection conferred” by patent claims • First example of a party losing on purposive construction but winning on doctrine of equivalents – even though Improver was not argued at all at first instance • First practical guidance as to how the doctrine of equivalents is to be applied • Court of Appeal rejects attempt to rely on contents of the EPO prosecution file in relation to doctrine of equivalents • Patent invalid since it was not entitled to priority – common general knowledge cannot be relied upon to add to contents of priority document • Patentee’s defence that it did not know, or have reason, to suspect that its patent was invalid was rejected • Hence the threats could not be justified and the appeal was dismissed. CPD: 1 Prices: £96 (£72 members). The seminar is followed by refreshments

Thursday 14 February 2019 Regional Meeting

YORKSHIRE MEETING Time: from 12.30 Location: Radisson Blu, Leeds, The Light, The Headrow, Leeds, LS1 8TL Join CIPA for the annual Yorkshire Meeting. Don’t miss your chance to gain 3.5 hours of CPD. plus excellent networking opportunities – including a drinks reception. Keep your eyes peeled for updates to the programme! CPD: 3.5 Prices: £234 (£156 members). NOVEMBER 2018

CIPA JOURNAL

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PERSONAL

GOING REMOTE

Who are the Remotes? Going Remote part 8, by Lucy Holloway (Fellow)

ver wondered what sort of person packs all their possessions into a bag and books a one-way plane ticket to Malaysia? I did, before I signed up for Remote Year. Graphic designers and computer programmers would be top of the list, I assumed. Freelancers who were used to spending all day at a laptop and didn’t necessarily care where that laptop happened to be. And yes, there are certainly a few of those. We have a guy who codes for an online dating service, a woman who designs websites and another who creates media for political campaigns. But we also have a journalist. He writes for a food magazine back in the US and sends home pieces about bars and restaurants in cities where we travel. He detoured to investigate shrimp fisheries in Thailand, and interviewed the man who invented Vietnam’s signature ‘Pho’ cocktail in Hanoi1. In retrospect, I can see how journalism somewhat lends itself to an itinerant lifestyle. But other people’s careers have really taken me by surprise. We have a geophysicist, for instance, who spent all last year gathering samples in the field. Now she’s analysing them, usually from the comfort of the sofa in her apartment. There is a guy who sells screws, and another who runs an Amazon FBA shop2. His products are made in China and shipped to Canada, where Amazon stores them, packs them and ships them out with no need for him to intervene. Another of the remotes, an organisational psychologist named Laura, even brought one of her employees with her. Neither of them felt they could work effectively if they were apart, and so when Laura planned to leave the US Kayla decided to follow3. Laura’s day job is advising businesses on how to improve their corporate culture – essentially how to make themselves better places to work. She advised NASA following the Space Shuttle Columbia tragedy in 2003, then moved to the Walt Disney Company before leaving to found her own business. Over the last seven months she and Kayla have created and launched an online platform aimed at improving access to her services – no mean feat when hopping countries every month. Laura is not the only person in our group who is directly client facing. There is a remote who coaches disabled veterans and helps them back into work. She’s great at it – she’s run coaching sessions for us on teamwork and self-awareness that

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have surprised me by their insightfulness. She tidies up her clients CVs, talks them through interview skills and ultimately, if all goes well, finds them a job. This means her day job involves back-to-back calls; no problem in themselves, the only difficulty has been the need to keep running on US time. That is just a tiny snapshot of this disparate bunch of digital nomads. We also have an immigration lawyer, an advertiser, a remote who sells commercial time slots for a TV network and an Australian virtual PA. There’s a software implementer, an engineering draughtsman and even an event planner. Many of these are client facing and/or tied to a particular time zone, but it seems that if you’re willing to work at it most jobs that Key facts: Portugal IPO: INPI – the Portuguese Institute of Industrial

Property (https://inpi.justica.gov.pt/) Equivalent of CIPA: INPI holds a list of Official Industrial Property Agents (AOPI) here: https://inpi.justica.gov. pt/Contactos/AOPI-e-procuradores-autorizados. As well as authorised Portuguese practitioners, people who are AOPI in other Member States of the European Union may also act as representatives in Portugal, provided they are authorized by the INPI

Patent filings in Portugal have increased steadily over the period 2007-2016, from 697 in total to 1681. On average filings by Portuguese residents make up more than half of the total filings each year. PCT filings are lower than national filings, but also steadily increasing. As well as patents, Portugal operates an industrial design system and a utility model system. Industrial design filings show a similar growth to patent filings, having almost tripled over the ten-year period between 2007 and 2016. Utility model filings are low, and have remained essentially steady over the same period. Portugal has been a member state of the EPO since January 1992.* * statistics courtesy of WIPO Statistics Database

www.cipa.org.uk

06/11/2018 23:17:32

PERSONAL

don’t need face-to-face contact can be made to fit in with a remote life style. Most, but not all: there are a couple of jobs that, sadly, didn’t work out. We initially had a photographer in our group. She took (really beautiful) photos of products for advertising shots. She gave her clients her itinerary beforehand with a view to selling images taken in specific settings. She left us after Morocco when she couldn’t interest any of her US clients in images taken in our upcoming European locations. Apparently her clients were really

Endnotes 1.

Check out the cocktail here: www.atravellersjournal.com/hanoi-bartender-creates-the-pho-cocktail

Not heard of Amazon FBA? Neither had I! Check it out at: https://services.amazon.com/fulfillment-by-amazon/benefits.html.

https://remoteyear.com/blog/i-took-my-employee-with-me-on-remote-year

GOING REMOTE

keen on shots taken in Peru but she couldn’t find anyone to fund the four-month gap until she got there. A couple of programmers vanished off to Cambodia to work on a new app together. Another remote disappeared to teach English in Asia when her new business venture didn’t take off as quickly as she’d hoped. Mostly though, people have managed to make working remotely actually work. There have been a few studies released lately about how travel increases creativity. I’m not sure myself if that’s true or if travel simply gives you more scope for inspiration and more impetus to be flexible. What I do know is that there are at least three new businesses in the making in our group right now. Whether they’ll take off or not no one knows – and I’m not sure anyone really minds. None of us are really in this for the endgame – we’re in it for the journey. Lucy Holloway (Fellow) is an associate at Barker Brettell in Birmingham.

Contributors needed European Patents Handbook CIPA and Thomson Reuters are seeking volunteers to contribute to the European Patents Handbook. This loose-leaf is the market leading resource in the area, and publishes three releases a year both in print and on Westlaw UK. The main duties of a contributor include: • • • •

Taking ownership for the monitoring and updating of one or more specific chapters in a timely manner according to agreed schedules Being responsible for proof checking the contribution prior to publication Maintaining awareness of developments in the field to which the contribution relates and anticipating how these developments might feed through to the publication Participating in the development and enhancement of the work and advising the publishers of such improvements as may be appropriate

We are particularly keen to seek contributors with expertise to cover the chapters on: • • • • • • •

Patentability of inventions General procedures of the European Patent Office, publications, registers and information Methods of payment of official fees The Role of the European Patent Office under the Patent Cooperation Treaty Prosecution of a European patent application resulting from an international patent application Appeal against decisions of the European Patent Office Grant of a European patent Please contact Constance Sutherland, Senior Publisher at Thomson Reuters, for more details on this project – constance.sutherland@thomsonreuters.com

Volume 47, number 11

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NOVEMBER 2018

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