CIPA Journal, March 2019 by CIPA Journal

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

March 2019 / Volume 48 / Number 3

Patentability of plants EPC rules in peril

The final stage of the EU Trade Mark Reform Alicia Instone

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Review of UK patent cases in 2018 Bristows team

Being flexible – a part-time patent attorney Stuart Greenwood

Artificial intelligence patents Rachel Free

Remote year: Some reflections Lucy Holloway

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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

Julia Florence President

Richard Mair Vice-President

Stephen Jones Immediate Past-President

Gwilym Roberts Honorary Secretary

Committee Chairs Business Practice Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs & Copyright Alicia Instone; Education Vicki Salmon; IP Commercialisation Catriona Hammer; IP Pro Bono Stephen Jones; Informals Matthew Veale; Internal Governance Catriona Hammer; International Liaison Richard Mair; IP Paralegals Julia Tribe; Life Sciences Simon Wright; Litigation Matthew Critten; Media & Public Relations Jerry Bridge-Butler; PEB Michael Yates; Patents Tim Jackson; Protected Titles Lee Davies; 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 Qualifications 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

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Contents 40 9

13-19

UP FRONT

DECISIONS

PERSONAL

IP Inclusive update

Obituary: Dave Bradley

Going Remote

Council Minutes

Lee Davies 44

NEWS

Patent decisions

Beck Greener IPO decisions

Andrea Brewster

David Pearce & Callum Docherty 45

EPO decisions

Robert Weston

Bristows 4 6

USA Roadshows 2019 Regulatory news

Internal Governance Rules Lee Davies

ARTICLES

Bird & Bird

Trade marks

The final stage of the EU Trade Mark Reform Alicia Instone 13

Patentability of plants under the EPC

Mike Snodin 20

Flexible Working

Review of UK patent cases in 2018

Artificial intelligence

The Yellow Sheet

EDUCATION

THE PINKS

66-80 Courses & Events;

Life Sciences Conference

Save the date 9

Some reflections Lucy Holloway

Trade marks

54 56 58

IP Paralegals Conference Institute events Book review: Intellectual Property Strategy

60 62

Books for review Non-institute events

International; Recruitment

Barbara Cookson

Stuart Greenwood

Bristows team Rachel Free Volume 48, number 3

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CONSULTATION

need to obtain information from the regulatory body. The LSB states that the Approved Regulator’s residual role is to assure itself that the regulatory body is compliant with section 28 of the Legal Services Act and that, in doing so, the Approved Regulator’s activities must not duplicate the LSB’s oversight role. Unless the LSB sets out in clear terms exactly how it intends to carry out its oversight role, the Approved Regulator cannot establish the extent of its residual role. The LSB needs to be clear, in both the IGRs and the Guidance, where the boundaries are to avoid duplication or omission of supervision. The use of language is important when establishing the regulatory assurance relationship between the LSB, the Approved Regulator and the regulatory body. Terms such as “reasonably necessary”’, “reasonable grounds” and “objective justification” are open to interpretation. When conflict between the Approved Regulator and the regulatory body occurs, it is often the case that this is the result of differences of interpretation of the IGRs. To be effective, the IGRs must describe the relationship between the LSB, the Approved Regulator and the regulatory body in a way that reduces the risk of a difference of interpretation in the Rules or the Guidance.

Duty to delegate CIPA acknowledges the principle that the Approved Regulator should delegate its regulatory functions to a separate regulatory body and that, after delegation, the Approved Regulator retains a residual regulatory role. As previously stated, it is the management of the regulatory arrangements between the LSB, the Approved Regulator and the regulatory body, which is key to the successful implementation of the IGRs. We believe that we have in place a model that provides for the required separation between the representative and regulatory roles, where IPReg stands alone as a company limited by guarantee that has no shared services with CIPA. 8

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REGULATORY

Deviation from the Legal Services Act There are a number of instances where the IGRs and the Guidance deviate from the underlying principles of the Legal Services Act. The use of the word “influence” as opposed to “prejudice”, as previously highlighted, is the most concerning for CIPA but there are other examples. Rule 4 on regulatory autonomy expects the regulatory body to “meet the regulatory objectives in accordance with the better regulation principles”. This is not a requirement of the Legal Services Act. It would be better to require the regulatory body to be free to choose how it can best discharge its functions in a manner which is proportionate, appropriate and effective in complying with the Act. CIPA takes the view that it is important for the LSB to assure itself that the IGRs and the Guidance mirror the Legal Services Act in terms of the regulatory obligations placed on the Approved Regulators and, in turn, the regulatory authority delegated to the regulatory bodies. There should be no or little risk of challenge or conflict arising out of the IGRs deviating from the Act. CIPA urges the LSB to revisit the drafting of the IGRs and the Guidance, taking expert advice where required, to ensure there is absolute conformity with the Legal Services Act.

Disputes and clarification As you will be aware, CIPA has had the need to refer a number of disputes with IPReg to the LSB for clarification. It is fair to say that this has not always led to an effective resolution of the matter at hand and CIPA will look to the new IGRs in the future should a dispute arise. We are concerned that the proposed wording in both the IGRs and the Guidance does not offer sufficient clarity on the LSB’s role in dispute resolution. CIPA and IPReg must be able to refer disputes that cannot be resolved through the mechanism

described in the Delegation Agreement and expect the LSB to be effective in the resolution of such disputes. CIPA is concerned that the LSB is leaving scope for it not to become involved in dispute resolution. There may be good reasons why this is the case but these are not clear in the IGRs and the Guidance and Approved Regulators and regulatory bodies need to know when and how they can ask the LSB to intervene in a dispute. All requests for dispute resolution must be considered by the LSB and a suitable response must be given to the Approved Regulator and the regulatory body, even if that response is an explanation that the LSB cannot intervene in that particular instance.

Appointments to the regulatory board CIPA agrees that the regulatory body should be able to make appointments to its board that are not prejudiced by the involvement of the Approved Regulator. As the representative body for the regulated community, CIPA will have a view on the skills, experience and behaviours of board members and should be at liberty to influence both the initial recruitment of the Chair and to give feedback to IPReg on the performance of the Chair and the board as a whole. Such discourse is vital to the performance of IPReg and in maintaining effective channels of communication between the organisations. In attempting to detail the need for independent decision-making on the part of the regulatory body, the IGRs must not impede the Approved Regulator’s ability to influence with integrity where appropriate. Please do not hesitate to contact me should you require any amplification or clarification of the observations made in this consultation response. CIPA would be happy to discuss its response with representatives of the LSB. Lee Davies, Chief Executive www.cipa.org.uk

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The final stage of the EU Trade Mark Reform Dr Alicia Instone (Fellow) provides a guide for the UK’s implementation of the 2015 EU Trade Mark Directive.

thought I should start off with a bit of history as to where the reform began, what has been happening in the intervening time and where we are now with the final stage of the EU Trade Mark reform package.

History Way back in the mists of time in 2009, plans to overhaul the EU Trade Mark system began with the European Commission commissioning a study by the Max Planck Institute into the overall functioning of the European trade mark system, the results of which were published in a riveting 278-page document in 2011. The first drafts of the reform documents were published on the 27 March 2013, political agreement was reached on the 21 April 2015, and the agreement published on the 8 June 2015. The first iteration of the “amending regulation”, Regulation (EU) 2015/2424 of the European Parliament and the Council amending the Community Trade Mark Regulation (the amending regulation), which simply indicated the amendments to the existing regulation at the time, entered into force on the 23 March 2016. On the 14 June 2017, the second iteration in the form of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark was published, which thankfully this time was consolidated, and certain additional provisions (such as the removal of the requirement for graphical representation), along with the delegated regulation EU 2018/625 and the implementing regulation EU2018/626, entered into force on the 1 October 2017. Volume 48, number 3

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Corresponding Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks was to be implemented by Member States by the deadline of 14 January 2019. The UK published draft amendments to the Trade Marks Act and Trade Mark Rules along with a consultation in February 2018 in which CIPA participated, the legislation was laid before Parliament on 10 July 2018 and which came into force on 14 January 2019. I will now take you through some of the key changes brought about through the implementation of this directive in the UK. Representation of a trade mark From 14 January 2019 you no longer have to provide a “graphic representation” of the trade mark. It is possible to file different types of fi les to protect different types of marks, e.g.: • • • •

Shapes: OBJ, STL and X3D. Figurative: pattern, colour: JPEG. Sound: MP3. Motion, multi-media and hologram: MP4.

The UK IPO is also looking into extending into other fi le types in the future but is implementing initially with the same files types as being used by the EUIPO. Extending existing objections relating to technical function Previously marks were not registrable if their shape performed a purely technical function, added value to the goods or MARCH 2019

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ARTICLE

Licencing It is now possible for trade mark owners to take legal action under trade mark law (i.e., infringement), rather than previously only under contract law (breach of contract), if their licensee fails to observe correctly the provisions in the licence which deal with: • • • • •

how long it lasts; the way the trade mark is used compared with how it is registered; what goods or services the licence covers; the geographic area where the trade mark can be used; the quality of the goods or services the licensee provides.

The trade mark provisions apply to any breach of a licence committed on or after 14 January 2019. This applies irrespective of the date of the licence. It has always been possible for a licensee to take legal action against a potential infringer. However, the provisions about how that can be done have changed and depend on whether the licensee has a non-exclusive licence or an exclusive licence. Non-exclusive licensees will not be able to take legal action unless they have the trade mark owner’s permission. Exclusive licensees must still give the trade mark owner the opportunity to bring proceedings, but if they refuse to do so, or do not do so within two months, then an exclusive licensee can take action. Th is applies to any action taken on or after 14 January 2019, even if the potential infringement occurred before that date. If the trade mark owner takes infringement action against someone who is infringing the mark that a third party is licenced to use, the courts can already take into account the loss the third party may suffer (or has already suffered) as a result of that infringement. Currently the court can order that the trade mark owner holds the damages awarded on behalf of the third party. The change means that the third party can now also intervene in the proceedings to obtain compensation for the loss that they have suffered directly. It will be possible to intervene from 14 January 2019, even if the proceedings commenced before that date. It is worth noting that the above changes to the licence provisions apply to both trade mark applications and registrations. This means that even if a trade mark is still at the application stage, and has not yet been registered, one could be involved in actions described above (e.g. invoking rights against a licensee or infringement). This change applies to any applications made on or after 14 January 2019. Division of registration The existing provision allowing one to divide an application has been extended to include registrations. A request to divide a registration may be made on or after 14 January 2019, even if the mark was applied for or registered before that date. 12

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TRADE MARKS

Renewing your registered trade mark From 14 January 2019, the UK IPO is sending out renewal reminders about six months before the renewal fee is due to be paid and your registration expires. Reminders were previously sent out about four months before the due date. The UK IPO informed CIPA through the MDF (Marks & Designs Forum) that they were meeting the six-month period before Christmas as they transitioned. Restoring a trade mark The test for determining whether or not a trade mark can be restored after failure to renew will now depend on whether the reasons given demonstrate that the failure to renew was ‘unintentional’. This is easier to demonstrate than the previous test the UK IPO used, which was whether it was ‘just’ to renew your mark. The new test relating to any failure to renew will be applied from 14 January 2019, even if the registration expired before. If you would like further reading in this area, the UK has published business guidance available from the website: www.gov.uk/government/publication/implementation-of-thetrade-mark-directive-2015 What’s happening elsewhere in the EU… As well as the headline change of the removal of the graphical representation requirement, which has impacted all the EU Member States, the other major change for many EU Member States has been the requirement to implement administrative opposition and invalidation proceedings, i.e., before their patent and trade mark offices, which is something that we already have in the UK. However, this change does not need to be implemented until the 14 January 2023. Another change for many jurisdictions is intervening rights as a defence in trade mark proceedings, again a concept that we already have in the UK, along with additional clarification about PDO’s and PGO’s as a specific challenge in relative grounds objections. Interestingly, in Ireland they have interpreted the directive as removing the absolute grounds objections from opposition proceedings, such that now absolute grounds objections can only be raised in invalidity proceedings. If any of our other members note any quirks of systems across the EU, and indeed in the UK, that they think should be brought to the attention of our members, please do not hesitate to contact the CIPA Trade Marks Committee.

Dr Alicia Instone (Fellow) is a senior associate at Cleveland Scott York LLP; she is chair of CIPA’s Designs & Copyright Committee and a member of the Trade Marks Committee. www.cipa.org.uk

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Patentability of plants under the EPC – back to square one? Mike Snodin (Fellow) discusses a wholly predictable ruling from an EPO Board of Appeal, finding rule 28(2) EPC to be in conflict with article 53(b) EPC, as well as the options for resolving tensions between politics and the law that will resurface in the light of the ruling.

n 5 December 2018, EPO Board of Appeal 3.3.04, sitting in enlarged composition1, issued a decision in case T1063/182 which concluded that rule 28(2) EPC conflicts with article 53(b) EPC, as previously interpreted by the EPO Enlarged Board of Appeal (EBA) in cases in G2/12 and G2/13. It is unusual for a rule of the EPC to be found to be in conflict with an article of the EPC. However, the view of this author is that, in this instance, the conflict was so clear-cut that the Board of Appeal’s decision should not come as a surprise to anyone who is familiar with European patent law (and who has faith in the independence of the Boards of Appeal of the EPO). Indeed, the predictability of this outcome is amply illustrated by the fact that the Board of Appeal’s conclusion regarding rule 28(2) EPC is entirely in accordance with a view expressed by this author in an article first published in October 20173, namely that: “there are no valid grounds upon which a Board of Appeal of the EPO could accept the interpretation of article 53(b) EPC as set out in EPC rules 27 and 28 in preference to the Enlarged Board’s interpretation as set out in G2/12 and G2/13”. Nevertheless, despite its robust, clear-cut and highly predictable reasoning, the Board of Appeal’s decision is certain to provoke controversy. This is not least because the EPO may now struggle to identify a straightforward solution that will dissipate renewed political pressure (from special interest groups, certain EU Member States, the European Parliament

Volume 48, number 3

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and/or the European Commission) to effectively overrule the EPO Boards of Appeal. Thus, in addition to discussing the decision in T1063/18, this article examines options for resolving tensions between politics and the law that will resurface in the light of that decision. It also discusses factors that might make every one of those options either legally or politically problematic.

Rule 28(2) EPC Subsequent to an Administrative Council (AC) decision4 on 29 June 2017, new rule 28(2) EPC entered into force on 1 July 2017, together with a consequential amendment to rule 27. That new rule, which was intended to provide a statutory interpretation of article 53(b) EPC5 for all patents and patent applications subject to pending proceedings before the EPO, reads as follows: “Under article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process”. Thus, the intended effect of rule 28(2) EPC was to essentially override the EBA’s decision in cases in G2/12 and G2/13, which included the finding that “The exclusion of essentially biological processes for the production of plants in article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit” (emphasis added). MARCH 2019

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Review of UK patent cases in 2018 By the Bristows team – Brian Cordery, Dominic Adair, Emma Muncey, Nadine Bleach and Manuel Rey-Alvite Villar

017 witnessed the upheaval of the English law of the construction and infringement of patents by the decision of the UK Supreme Court in Actavis.1 2018 saw another Supreme Court patent decision, albeit on more selective issues, in Warner-Lambert v Generics (UK),2 a dispute involving a second medical use patent for the use of pregabalin for the treatment of pain. As will be discussed below, it is hard to distil any real points of principle from the decision. Opinion is divided amongst practitioners, not just in the UK, about the suitability of non-specialist courts of final instance deciding patent cases. On the one hand, it is refreshing and often insightful to have senior judges from different traditions challenging the established orthodoxy of patent law. On the other hand, the established orthodoxy is the established orthodoxy for a reason – usually as the result of several decades, and sometimes more than a century, of jurisprudence. It seems to the authors that perhaps the optimal combination for a Supreme Court panel is a blend of judges without specialist patent law experience combined with one or more judges with a background in the field. Happily, the autumn of 2018 saw the promotion to the Supreme Court of Lord Kitchin, and there is no doubt that he will flourish in that arena. As for the Unified Patent Court (UPC), 2018 was spent mostly in a holding pattern as the decision of the Bundesverfassungsgericht (BVerfG, the German Federal Constitutional Court) on the constitutionality challenge brought by Dr Stjerna was awaited, and the shape of Brexit continued to be debated, though not resolved, in the UK Parliament. There was some good news for proponents of the system when the UK lodged its instruments of ratification in Brussels on World IP Day.3 Further analysis of UPC developments is provided by Alan Johnson towards the end of this review. Although the Warner-Lambert decision was the only patents decision from the Supreme Court in 2018, it was probably not the most important decision of the year. Contenders for that accolade include:

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MARCH 2019

 The decision of a strong Court of Appeal in Unwired Planet,4 holding that Birss J had been right in principle to impose a global licence, as well as to hold that the ‘ND’ part of FRAND is a ‘general’ non-discrimination obligation. The Court of Appeal also held that the framework established by the CJEU in Huawei v ZTE5 does not present a set of prescriptive rules.  The further refinement of the principles governing the granting of Arrow declarations, particularly in the Court of Appeal’s decision in Vectura.6 It is now clear that, where justice will be done and a useful purpose will be served, the courts may well consider whether to make a declaration that a given product or process formed part of the state of the art or an obvious modification thereof at a given date.  The principles laid down by the Supreme Court in Actavis have begun to bed down in English law. The Icescape7 decision, in particular, provides a useful summary of these principles and confirms that the English courts continue to take a sceptical attitude to file-wrapper estoppel. There were yet further decisions and references on the interpretation of the SPC Regulation.8 Opinion is divided among practitioners as to whether the CJEU decision in Gilead9 has clarified the meaning of article 3(a) or just added to the confusion. In terms of the number of decisions, 2018 was the quietest year for a decade. As with 2017, several larger disputes settled just ahead of trial. There were 56 substantive patent decisions in 2018, compared with 62 in 2017 and 82 in 2016. As with previous years, this review attempts to summarise the most important decisions on a topic-by-topic basis. The UK Patents Act 1977 is referred to as the “Act” and the European Patent Convention 2000 as the “EPC”. www.cipa.org.uk

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UK PATENT CASES

Index Quotation of the year ................................................. 26 Claim construction / interpretation and infringement Use of the prosecution history ....................................... 25 Manufacture versus repair ..................................... 25 FRAND and competition defences ......................... 25 Validity Skilled person and common general knowledge ...27 Entitlement to priority .............................................27 Novelty .....................................................................27

REVIEW OF 2018

As ever, the authors have endeavoured to cover every important development that occurred during the course of the year. However, as this is a condensed summary, not every decision is mentioned.

Claim construction / interpretation and infringement It is an old adage of patent law that the Court must construe the patent as if the defendant had never been born. This is a matter of fairness and avoids the Court having too close an eye on the infringement when evaluating the issue of construction. However, construction seldom makes sense in the abstract: the relevant word or phrase has to be construed in context. As Jacob LJ said in Technip:

Obviousness ........................................................... 28 Insufficiency ........................................................... 28 Added matter ......................................................... 29 Arrow declarations ................................................. 29 Supplementary protection certificates (SPCs) ......... 31 Damages ..................................................................... 32 Costs ........................................................................... 32 Procedural issues Jurisdiction ............................................................. 32 Disclosure ............................................................... 33 Confidentiality ........................................................ 33 Assessment of evidence ........................................ 34 Injunctive relief ....................................................... 34 Stay of proceedings ............................................... 34 Expedition............................................................... 34 Abuse of process .................................................... 35 Shorter and Flexible Trials Schemes ...................... 35

Issues from the Intellectual Property Enterprise Court ..................................................................................... 37 Unitary Patent / Unified Patent Court ....................... 37 Looking ahead to 2019............................................... 39 The authors................................................................. 39

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“most sensible discussions of the meaning of language run on the general lines ‘does it mean this, or that, or the other?’, rather than the open-ended ‘what does it mean?’”10 In Regeneron v Kymab,11 the Court of Appeal revisited Henry Carr J’s construction of the words “in situ replacement” in the context of the engineering of gene loci in transgenic mice. The Court rejected Kymab’s criticism that the Judge had erred by having too close an eye on Kymab’s process when construing the claim. Perhaps toughening the test somewhat, Kitchin LJ (as he then was) noted that what the court must not do is permit itself to be inspired by the acts of the infringer to cause the language to have a meaning “it will not sensibly bear”.12 Eschewing the framework for deciding the issues of construction put forward by the parties, Kitchin LJ simplified the issues to a binary choice on the meaning of “in situ replacement” between insertion and displacement, i.e. “positional displacement” and “insertion and deletion”. Preferring the former, he maintained the Judge’s construction and hence the finding of infringement against Kymab. It is a notable feature of the infringement case on appeal that Regeneron argued infringement under the doctrine of equivalents for the first time, the Supreme Court decision in Actavis13 having been given in the period between first instance and appeal. Having already considered the first Actavis question of whether as a matter of normal interpretation the Kymab mice infringe, and having found that they did, Kitchin LJ noted that it was not necessary to consider the second question of equivalents. Had that been necessary, the Court said it would have remitted the case to Henry Carr J. However, later in the year, the Court of Appeal did get an opportunity to consider the doctrine of equivalents in circumstances where the first instance decision had been given before Actavis: Icescape v Ice-World.14 Although the findings on infringement were obiter, the decision is still extremely useful to practitioners as a guide to the approach that English courts will take to the issue of the construction and infringement of patents going forward. Lord Kitchin, giving the leading judgment (his last at the Court of Appeal, given shortly after his appointment MARCH 2019

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CPD & EDUCATION

INSTITUTE EVENTS

CIPA events in 2019 For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events. See page 63 for Informals regional events and a list of Student lectures. Monday 1 April 2019 Webinar

INFRINGEMENT THAT CAME IN FROM THE COLD

Tuesday 2 April 2019 Webinar

LIFE CYCLE OF A START-UP Time: 12.30–13.30

Time: 12.30–13.30 Join Douglas Campbell, QC of 3 New Square who will be discussing the Icescape case during this 1 hour CPD webinar. 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: £72 (£48 CIPA members) 56 CIPA JOURNAL

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• EPO update • What effect will the new disclosure regime have on IP cases?

Would you like to learn more about the life cycle of a start-up? Julian Levy, Operating Partner at Redline Capital will be explaining why some start-ups are successful and some are not, whilst explaining certain jargon such as ‘angel’, ‘rounds’ and ‘unicorn’

Speakers include: Claire O’Brien (Mills & Reeve); Chris Mercer (CIPA Council) CPD: 3.5 Prices: £234 (£156 members). Monday 22 April 2019 USA Roadshows

IP BEYOND BREXIT Location: Washington DC

Speaker: Julian Levy (Redline Capital) CPD: 1; Prices: £72 (£48 CIPA members)

See full details and register online at https://ciparoadshows.myportfolio.com/.

Thursday 4 April 2019 Webinar

Speakers include: Sir Colin Birss (High Court Judge of England & Wales); Kathleen O’Malley (Circuit Judge of the US Court of Appeals for the Federal Circuit); Julia Florence (CIPA President), Tania Clark (CITMA President), senior IPO officials.

OUTSIDE YOUR COMFORT ZONE: DESIGNS Time: 12.30–13.30 The webinar will cover some of the key aspects of design law in the UK and Europe, and some of the latest developments in design regulations, practice and case law. Speaker: Alex Brown, Venner Shipley LLP CPD: 1; Prices: £72 (£48 CIPA members) Thursday 11 April Regional Meeting

MIDLANDS MEETING Time: from 12.30 Location: Hotel Du Vin, 25 Church Street, Birmingham, B3 2NR Join CIPA for the annual Midlands Meeting. Don’t miss your chance to gain 3.5 hours of CPD, plus excellent networking opportunities – including a drinks reception. Check online for updates to the programme. Topics include:

Prices: US$43.59 – US$51.59 Tuesday 23 April 2019 USA Roadshows

IP BEYOND BREXIT Location: Boston, Massachusetts With a keynote by Sir Colin Birss, Judge of the High Court of England & Wales. See full details and register online Prices: US$43.59 – US$51.59 Thursday 25 April USA Roadshows

IP BEYOND BREXIT Location: Palo Alto, California Includes a litigation panel session chaired by Laurie Hill (Genentech). See full details and register online at https://ciparoadshows.myportfolio.com/. Prices: US$43.59 – US$51.59 www.cipa.org.uk

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CPD & EDUCATION

Thursday 9 May 2019 Webinar

BLOCKCHAIN: IP CONSIDERATIONS Time: 12.30–13.30 An introduction to blockchain for practitioners across all technical disciplines looking into various IP considerations for blockchain, including patentability, trade secrets, development collaborations and open source software requirements. Speakers: Kevin Fournier (IBM) Philip Horler (Withers & Rogers LLP) CPD: 1; Prices: £72 (£48 CIPA members)

Thursday 16 May 2019 Regional Meeting

INSTITUTE EVENTS

Thursday 30 May 2019 Seminar

RECENT DEVELOPMENTS IN CANADIAN IP LAW AND PRACTICE Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD Time: 15.00-19.30 A visiting delegation of eminent Patent Attorneys from IPIC (the Canadian Patent Attorneys Association) will give an update on Canadian IP law, and practice, including the recent amendments to the Patent Act, TM Act, and Copyright Act, and the newly established College of Patent and Trademark Agents. CPD: 4.5 Prices: £126 (£84 members)

Don’t miss your chance to gain 3.5 hours of CPD, plus excellent networking opportunities – including a drinks reception. See the full programme online. CPD: 3.5 Prices: £234 (£156 members).

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CPD: 2 Prices: £120 (£90 CIPA members)

Friday 27 September 2019 Conference

IP PARALEGALS CONFERENCE Location: Millennium Gloucester Hotel, Kensington, London Book online now!.

Friday 27 September 2019 Social

IP PARALEGAL 20TH ANNIVERSARY DINNER

SCOTLAND MEETING Time: from 12.30 Location: Radisson Blu Hotel, 301 Argyle Street, Glasgow, G2 8DL

hearings. Do not miss your chance to gain 2 hours of CPD and a great opportunity to network at the drinks reception whilst CIPA is in Munich.

Thursday 6 June 2019 Seminar

OPPOSITIONS AND HEARINGS – EPO AND UKIPO PRACTICES Location: Sheraton Munich Arabellapark Hotel, ArabellaStraße 5, 81925 Munich Time: 17.00-19.15 A late-afternoon seminar for patent attorneys based in Munich. We have a speakers from the EPO and UKIPO discussing oppositions and

Time: 18.00–23.00 Location: Millennium Gloucester Hotel, Kensington, London This event is to mark 20 years of the CIPA Patent Administration Course now the Introductory Certificate in Patent Administration which started back in 1998 with the first group of students passing their examination in 1999. Price: £65+VAT

MARCH 2019

CIPA JOURNAL

06/03/2019 14:27:20

PERSONAL

OBITUARY

Dave William Bradley 1950-2018 – An Appreciation

Dave Bradley (centre), President 2008-2009, was a priest of the Old Catholic Church of Europe

ave Bradley, CIPA President 2008-2009, passed away on 4 December 2018 after a long and difficult illness. He is survived by his partner Colin Stapleton. Although I only knew Dave for a short time; he had a profound effect on my life and that of my late wife, Susan. Dave became an Associate of the Institute on 18 November 1981 and a Fellow on 18 February 1987; he spent his entire professional life with BT. I first knew Dave as a Council member, where his contributions were always thoughtful, insightful, considered

but overall calm. It was surprising when he announced his sexuality at one meeting. I know some Council members were shocked but I thought it was an act of great courage and a true measure of the man. Dave and Colin became civil partners on 29 October 2006. I got to know him more when I was president and he my vice president. It was at social meetings that Susan first met and then got to know and like Dave and Colin. She once said to me “they really changed my view of gays”. It was still a surprise to me that, when she knew she was dying, she asked if

Dave could officiate at her funeral. Sue wasn’t religious but this request was a measure of her appreciation of the man and his sincerity. Dave agreed and his contribution to the ceremony really helped me through this difficult time. Dave had already been supporting me during Sue’s illness; both in presidential matters and personally. Dave’s presidency was one of diligence and characteristic of the man. I found out later that it was at significant personal cost; he had retired from BT and he once told me that his freelance earning during this time were minimal. I had the privilege of attending his ordination as a priest of the Old Catholic Church of Europe, on 12 July 2008, having previously been a deacon. I found the ceremony very moving and was clearly great spiritual significance to him. Dave disappeared from the profession after his presidency, I believe he started a courier business with Colin. To sum up this was a brave, selfeffacing, enigmatic man who did not deserve the cruel end to a thoroughly worthy life; but whom I am glad to have known. Robert Weston (Fellow)

Books for review We have some review copies of intellectual property titles. If you are interested in reviewing these for the CIPA Journal please let us know, editor@cipa.org.uk. The titles we have are: •

3D Printing and Beyond (Edward Elgar), Edited by Dinusha Mendis, Bournemouth University, UK; Mark Lemley, Stanford University, US; and Matthew Rimmer, Queensland University of Technology, Australia

•

European Fashion Law: A Practical Guide from Start-up to Global Success (Edward Elgar), Rosie Burbidge, Partner, Gunnercooke LLP, London, UK

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MARCH 2019

www.cipa.org.uk

06/03/2019 14:28:48

PERSONAL

GOING REMOTE

Some reflections Going Remote part 12, by Lucy Holloway (Fellow)

rriving in Bogota, it feels like the beginning of the end. This is my second to last travel day, and the second to last month of my remote journey. I’m really not sure how I feel about that. One of the things people told me at the start of this year was that no one who hasn’t travelled with Remote Year will really be able to understand what it’s like. They said, “Even the people you dislike in your group will end up having more in common with you than the people back home”. I didn’t believe that at the time, but now I can see there’s some truth in it. People at home can be forgiven for thinking that I’m on a year-long holiday – I am certainly guilty of projecting that impression – but it isn’t very accurate at all. So – what has it been like, really? My best analogy is a crazy whirlwind. Or maybe an avalanche – one where you have enough autonomy to keep your head above the snow, but you certainly can’t control where you’re going. And that’s what this whole year has been really: an education in control. Both in taking it, and in letting it go. It’s a dichotomy that sounds strange, but imagine: each month you arrive in a new city. You’ve had a long flight and you’re tired. You have no idea where anything is, but you need to buy groceries, unpack and work out where you live in relation to the workspace, because the next day you need to start work. Maybe you like to exercise. Then you also need to find a gym, or somewhere to run. Procrastinate at your peril, as time flies by fast. Every day you waste ignoring necessary logistics is a day of gym membership wasted, training lost or money spent unnecessarily on takeaways. Remote Year helps of course. There is an orientation meeting and a guide to each city. But Remote Year is not going to make breakfast for you, or hire you a bike. Working out where to shop, how the public transport works, where to get a local SIM – all these things take time, and energy. I will never forget arriving in Thailand and being irrationally frustrated that I didn’t know my way around. I was thinking, “I’ve been travelling for five weeks now – I ought to know what I’m doing!” Instead I had to remind myself that I’d spend five weeks in a different country. It was entirely acceptable to get lost and be unable to understand the language – Thailand was a new place, and maybe I should try being a bit kinder to myself. Every month is like that, needing to hit the ground running so your work doesn’t suffer, relearning the same things over and

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over. The following week is then an exercise in restraint. You want to explore, but that needs to be saved for the weekend; there is work to do. By the time you get to that weekend you are tired. Netflix feels tempting, but what a waste of your first weekend in Bogota – go do something! This is a lifestyle that takes energy. It’s rewarding, but it’s also not for everyone. What about relinquishing control, then? Patience has never been my strong suit, and so I could talk about the different attitudes to queuing around the world, or to punctuality (my physiotherapist was an hour and 20 minutes late yesterday, for instance). Both are good examples of learning to let things go, but perhaps the best example is travel days. I have learnt, over the course of this year, that I hate travelling in a huge group. You can’t arrive at the airport just two hours before – it has to be three, because it takes that much longer to check 35 people in. You don’t have control over what seat you have on the plane, or what route you take. You are entirely at the mercy of Remote Year’s travel team. And Remote Year itineraries do not always make geographical sense. You can find yourself, for instance, on a charter flight from Morocco to Split. Scheduled to leave at 1am, the entire airport was closed by the time we’d checked in. For Key facts: Mexico IPO: Instituto Mexicano de la Propriedad Industrial – https://www.gob.mx/impi Mexico has been a member of the PCT since 1995. PCT filings by Mexican applicants are relatively steady, increasing from 202 in 2008 to 270 in 2017, but fluctuating on the way. The system is much better used by foreign applicants – PCT region phase entries in Mexico average around 12,000 per year. National Mexican filings are on the increase, though patent grants to foreign applicants appear to have declined a little in recent years. As well as patents, Mexico operates an industrial design system and a utility model system. The design system appears much better used than the utility model system, which is particularly neglected by foreign applicants.† † statistics courtesy of WIPO Statistics Database

MARCH 2019

CIPA JOURNAL

06/03/2019 14:29:39

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06/03/2019 14:49:50