CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
April 2019 / Volume 48 / Number 4
Rise of AI Patenting artificial intelligence at the European Patent Office
UK company has a notable success in a Chinese Court Claire O’Brien
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The status of IP rights in the UK after Brexit Practice guidance
EPC – patenting of plants in Europe CIPA position paper
US update: new 101 guidance; and double patenting Finnegan
the origin of the Statute of Monopolies Stephen Jones
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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. Head of Membership Dwaine Hamilton Membership Officer Frances Bleach Events and Professional Development Officer Emma Spurrs Events Co-ordinator Grace Murray 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
© The Chartered Institute of Patent Attorneys 2019 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314
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Contents
UP FRONT
ARTICLES
EDUCATION
2
19
11
Education and training
Lee Davies 3
UK company has a notable success before Chinese Court Claire O’Brien
Council Minutes
Lee Davies 25
NEWS
Winds of change in China?
Patenting AI at the EPO
Philip Cupitt 30
Save the date 24 38 56 59
Education Committee
35
Vicki Salmon 4
Madrid fee payment service
5
39
Overseas update
Dr Amanda R. Gladwin 6
8
Patenting of Plants in Europe
12
Brexit
Mike Snodin Practice guidance on a no deal Brexit
46
44
29
USPTO proposes to change law on trade marks Manual of Patent Practice
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Patent decisions
58 60
46
IPO decisions
IP Paralegals 20th Anniversary Dinner Announcements We Need To Talk About Finals
Letter to the Editor Sarah Boxall 62
IP Inclusive update
63
The Yellow Sheet
Beck Greener
Andrea Brewster
Callum Docherty 47
EPO decisions
Bristows
EPO – “Increased Flexibility”
Gwilym Roberts 34
PERSONAL
DECISIONS
Review of Education
Training, support and assessment 18
Poet, Pirate, Patentee?
Sir Walter Raleigh and the origin of the Statute of Monopolies Stephen Jones
Regulatory news
LSB’s Business Plan Lee Davies
18
US update: double patenting
Finnegan
Dr Alicia Instone
IP Paralegals Conference Non-institute events Institute events Software and Patenting
Webinar report Y. Suzanne Orian
US update: new 101 guidance
Finnegan 2
Life Sciences Conference
50
THE PINKS
Trade marks
Bird & Bird
66-84 Courses & Events; Support International; Recruitment
APRIL 2019
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EPC
PATENTING OF PLANTS
Patenting of Plants in Europe On 25 March 2019, a position paper was sent to the IPO outlining CIPA’s position on the options for resolving the current conflict between: rule 28(2) of the Implementing Regulations of the EPC; and the judicial interpretation of article 53(b) EPC by the Boards of Appeal of the EPO.
T
his paper represents CIPA’s position on the lawfulness of a number of options for addressing the conflict between decisions of the EPO Boards of Appeal (i.e. G2/12, G2/13 and T1063/18) and rule 28(2) EPC.
following options are capable of resolving the conflict in a manner that is lawful and that preserves legal certainty (and, in particular, the legal certainty of rights holders):
Executive Summary On 25 March 2015, the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) decided that article 53(b) of the European Patent Convention (EPC): •
•
excluded from patentability essentially biological processes for the production of plants or animals; but did not exclude from patentability the products of such processes.
Subsequent to this decision: •
•
•
8
the EU Commission issued an interpretative Notice on a corresponding provision of EU law (article 4(1)(b) of the Biotech Directive1); and based upon that Notice, the Administrative Council (AC) of the EPO decided to introduce new rule 28(2) EPC, which entered into force on 1 July 2017 and which was designed to effectively reverse the EBA’s decision; but on 5 December 2018, a Board of Appeal of the EPO (sitting in enlarged composition) decided that new rule 28(2) EPC was unenforceable, on the grounds that the EC Notice had no legal authority and so did not empower the AC to override the EBA’s interpretation of article 53(b) EPC. CIPA JOURNAL
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In response to the ruling finding rule 28(2) EPC unenforceable, the President of the EPO issued a communication (CA/26/19, dated 7 March 2019) indicating an intention to analyse the following as “potential options for next steps”: A. a referral to the Enlarged Board of Appeal by the President of the EPO; B. an amendment of article 53(b) EPC by the AC based on article 33(1)(b) EPC; and C. additional actions in pending appeal cases related to rule 28(2) EPC.
D. acceptance of the current interpretation of article 53(b) of the EPC, and development of best practice and further case law that takes account of that interpretation; E. an amendment of EU law governing the patentability of plants, followed by an amendment of article 53(b) EPC to bring it into line with (amended) EU law; and F. postponement of further action unless and until the Court of Justice of the EU (CJEU) issues a ruling on the interpretation of article 4(1)(b) of the Biotech Directive (and then, if necessary, an amendment of the EPC to bring it into line with the CJEU’s interpretation of the Biotech Directive).
Detailed Discussion In this paper, we present our position on the lawfulness of these options, as well as a number of alternative options for resolving the current conflict. In short, CIPA’s position is that: •
• •
there are no valid grounds upon which Option A or Option C could resolve the current conflict; at least Option B would be unlawful (under the EPC); and Options A to C should therefore not be pursued.
Also, for reasons that are discussed in more details below, CIPA’s position is that, in contrast to Options A to C above, the
Background Amongst other things, article 53(b) EPC excludes from patentability “essentially biological processes for the production of plants or animals”. On 25 March 2015, the EBA of the EPO decided, in cases G2/12 (“Broccoli II”) and G2/13 (“Tomatoes II”), 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). www.cipa.org.uk
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EPC
Subsequent to the EBA’s ruling: •
•
the EU Commission issued an interpretative Notice2 with regard to article 4(1)(b) of the Biotech Directive (which, in common with article 53(b) EPC, excludes from patentability “essentially biological processes for the production of plants or animals”); and based upon the EC Notice, the AC introduced new rule 28(2) EPC, which entered into force on 1 July 2017 (together with a consequential amendment to rule 27).
•
Because the intended effect of rule 28(2) EPC is to essentially override the EBA’s decision in G2/12 and G2/13, a case can be made3 that the new rule conflicts with article 53(b) EPC. Indeed, precisely that allegation was made in an appeal (T1063/18) against a decision to reject a patent application for non-compliance with rule 28(2) EPC. On 5 December 2018, Board of Appeal 3.3.04, sitting in enlarged composition4, issued a decision concluding that rule 28(2) EPC does not constitute a “clarification” of the scope of article 53(b) EPC but instead conflicts with the meaning of that article, as interpreted by the EBA. For this reason, the Board of Appeal found that rule 28(2) EPC was unenforceable, as the AC did not have the necessary authority to amend the EPC – in the form of article 53(b) – by way of an amendment to the Implementing Regulations. The Board of Appeal also held that: •
there is no way to resolve (by interpretative means) the conflict
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between rule 28(2) and article 53(b) EPC; and there are no reasons to deviate from the EBA’s interpretation of article 53(b) EPC in G 2/12 and G 2/13.
The Board of Appeal’s written decision in T1063/18 was issued on 5 February 2019. After discussion of that decision at the 19 and 20 February 2019 of the EPO’s Committee on Patent Law: •
New rule 28(2) EPC, which was intended to provide a statutory interpretation of article 53(b) EPC 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”.
PATENTING OF PLANTS
•
The EPO issued a statement5 indicating that: “The Committee addressed different potential options for the way forward and particularly supported measures to obtain an opinion from the Enlarged Board of Appeal on the matter. The need for legal certainty in the interest of the users of the European patent system and the general public was strongly underlined in the debate. Discussions will continue with the intention to find a solution in the short term”. The President of the EPO issued a communication on 7 March 2019 (CA/26/19), indicating an intention to analyse Options A to C above as potential next steps.
In this paper, we set out and provide our position on the lawfulness of the “potential options for next steps” set out in CA/26/19 (i.e. Options A to C above), as well as the three alternatives of Options D to F above.
Analysis of the options Option A: Obtain another opinion from the EBA Our position is that there are presently no valid grounds upon which the EBA could accept a referral the President under article 112(1)(b) EPC with respect to the interpretation of article 53(b) EPC. The EBA has already provided a binding interpretation of article 53(b) EPC, meaning that there are no “different” (i.e. conflicting6) decisions of the Boards of Appeal that might form the basis of a referral under article 112(1)(b) EPC. For the sake of completeness, our position is also that the imposition of an
ex officio stay of proceedings (as discussed at paragraph 27 of document CA/26/19) would be unlawful7. This is on the grounds that the EBA’s rulings in G2/12 and G2/13 mean that the law is already uniformly applied by the Boards of Appeal, and that there is no point of law of fundamental importance that has not already been resolved in connection with article 53(b) EPC. Thus, an ex officio stay of proceedings imposed at this time would lack legal basis under the EPC. Option B: Amend article 53(b) EPC Article 33(1)(b) EPC provides the AC with the authority to amend certain provisions of the EPC – including article 53(b) – under certain circumstances. Those circumstances are where the amendment to the EPC is made to bring it: “into line with an international treaty relating to patents or European Community legislation relating to patents”. However, there is currently no “international treaty” that contains a clear, unambiguous and binding legal provision that conflicts with the EBA’s current interpretation of article 53(b) EPC. Thus, as confirmed by the Board of Appeal in T1063/18, article 33(1)(b) EPC does not currently provide the AC with legal basis to amend article 53(b) EPC. Article 172 EPC provides an alternative possibility for amendment of article 53(b) EPC, namely at a Conference of the Contracting States to the EPC. However, our position is that amendment under article 172 EPC would be impermissible under EU law. This is on the grounds that, at this time, amendment of article 53(b) EPC would: i. breach the right8 of patentees or patent applicants to secure a preliminary reference to the CJEU on the interpretation of article 4(1)(b) of the Biotech Directive; and ii. breach the EU law obligations of EU member states to oppose (at a Conference of the Contracting States to the EPC) any amendments to the EPC that would result in contraventions of EU law as described in point (i) above. APRIL 2019
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BREXIT
PRACTICE GUIDANCE
Practice guidance on a no deal Brexit Brexit: practice points for patents, trade marks and designs
Introduction
This agreement, which might assist UK participation in any fledgling UPC/UP system, would not apply if the UK leaves the EU with no deal.
The status of intellectual property rights in the UK after Brexit will be determined by: • • • •
If no deal is agreed between the EU and the UK government by exit day, the planning and guidance detailed in much of the documents and agreements above will cease to apply. The implications are summarised in the following government guidance:
• Intellectual property after Brexit 1 • • • •
Patents if there’s no deal2 Trade marks and designs if there’s no deal3 Copyright if there’s no deal4 Exhaustion of rights if there’s no deal5
Set out below are the key practice points that members may like to consider in a no deal scenario.
Patents – business as usual Deal or no deal, there will be no change in relation to European (EPC) Patents before the European Patent Office (EPO). This is because the EPO is not an EU Institution and the EPC is not EU law. UK-based European Patent Attorneys can continue to act before the EPO and the UK can still be designated in an EPC filing. It is “business as usual”, and we must take every opportunity to reinforce this message internationally. In dealings with associates overseas, 12
Supplementary Protection Certificates (SPCs)
European Union (Withdrawal) Act 2018 Withdrawal Agreement (November 2018) Technical Notices from EU and UK The Future Relationship with the EU
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many of who remain confused about the effects of Brexit, members may wish to utilise some of the international marketing materials collected in the members’ area of the CIPA website. No deal will make UK post-Brexit involvement in the Unified Patent Court (UPC) difficult to achieve and even more so the Unitary Patent system. The UPC Agreement is governed by an international treaty outside the EU but the Unitary Patent was established by EU regulations. Despite the referendum result, the UK ratified the UPC Agreement on 26 April 2018 and the Government has stated that it intends to explore options for remaining in both the UPC and UP systems after Brexit. The UPC start date is dependent upon ratification by Germany but this is currently held up by a constitutional challenge in the German courts. The UK government officially stated in its guidance to the life science sector6 that agreement had been reached with EU negotiators: “that the UK is to be treated as a Member State for the purposes of international agreements, including Mutual Recognition Agreements, for the duration of the implementation period.”
SPCs granted by exit day (or before the end of any transition period) will not be affected. They are national rights and will continue to exist as such after EU exit. For SPC applications pending at, or filed after exit day – if a deal is agreed with the EU, the current EU Regulation would continue to apply during the transitional period (article 56 of the Withdrawal Agreement) If there is no deal, SPC applications will be dealt with under equivalent UK domestic law. The current EU regulation will be retained in domestic law, although certain references to EU directives and EU agencies will be replaced by UK equivalents. These changes will be implemented via the Patents (Amendment) (EU Exit) Regulations 2018. Examples of such changes include replacing “EU paediatric regulation” with “UK Human medicines regulations” and “EU medicines authorisation under Directive 2001/83/EC” with “UK authorisation”. Practice Point: Members should be aware that some references to the European Economic Area (EEA) will be retained according to the SI. Under the current EU Regulation, when applying for an SPC, the details of the first marketing authorisation must be provided along with the first authorisation in the EEA. The version as amended by the SI requires details of UK authorisation and the earliest EEA www.cipa.org.uk
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BREXIT
authorisation, which predates the UK authorisation (article 8). Under the new UK domestic SPC regulation the duration of the SPC will be based either on the first authorisation in the UK or the earlier authorisation in the EEA.
EU Registered Trade Marks Assuming there is no deal and no transitional period by exit day, the IPO will create a “comparable trade mark (EU)” on the UK trade mark register derived from the corresponding EUTM. The comparable trade mark (EU) will have the same number as the corresponding EUTM, but will be given a different prefix (The number allocated to the EUTM comparable mark will be the last eight digits of the corresponding EUTM pre-fixed with UK009, the prefix for EU designations of international registrations is yet to be confirmed). Practice Point: Check with the supplier of your records software if it has (or is developing) an automated process to locate Registered EUTMs on your records and create a new record for the comparable trade mark (EU). You might want to run this in a test environment to look for any unexpected wrinkles ahead of time. The comparable trade mark (EU) will have the same details as the corresponding EUTM, including the same expiry and renewal date. Practice Point: Check with your records if there are any trade marks due for renewal in the six months post exit day. It will not be possible to renew the trade marks early before exit day to avoid having to pay two lots of renewal fees post exit day. Therefore, there may be renewal fees due on the comparable trade mark (EU) immediately after the exit day, which will not have been notified in advance, however, there will be no late fees for the first six months It may be that there is no intention to renew certain comparable trade mark (EU) where there is already an “equivalent” earlier filed UK trade mark. Volume 48, number 4
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PRACTICE GUIDANCE
The comparable trade mark (EU) will have the particulars of the goods/services taken from the English language version of the corresponding EUTM. Practice Point: If you spot any comparable trade mark (EU) that has an error in the English language version, then any person having a sufficient interest may apply to have the register rectified. This can be done at any stage, but preferably as soon as you spot anything. This is only relevant for cases that were not filed in English or where the second language was not English. The UK Intellectual Property Office (IPO) has indicated that it will notify rights holders that a comparable trade mark (EU) has been granted by publishing a notification and guidance online. Practice Point: This notification will simply be a notification on the IPO’s website. Individual notifications will not be sent to the representatives on file at the EUIPO or the proprietor of the corresponding EUTM. However, the same representative on file at the EUIPO will be recorded as the UK address for service on the comparable trade mark (EU) initially. This means that you will not receive a bundle of notifications and you will need to find another way to check all of the rights that you are expecting to be created for your clients are correct and that the correct representative has been recorded on the comparable trade mark (EU) as address for service. Given that it is possible to “opt-out” of the comparable trade mark (EU) under certain circumstances, you will need to report to the relevant persons the creation of the comparable trade mark (EU), and the possibility of opting out. It might be that an opt out is required so as not to contravene agreements for example where one has agreed not to file in the UK. The IPO has created a template notice, which will be available after exit, to use when requesting an opt out that will need to be sent to a dedicated email address.
As well as creating comparable trade mark (EU) for direct national registrations before the EUIPO, this mechanism will also be used for EU designations on International Registrations where a Statement of Grant of Protection has been issued in relation to the EU designation. Practice Point: Depending on the source of data for the EU designations (WIPO or EUIPO), it might be that the representative information has not been transferred. Check the EUIPO register for your international cases and add yourself as representative where applicable, as the EUIPO does not automatically take this information from WIPO. In the case of collective and certification marks, the IPO will also be creating a comparable trade mark (EU). However, the regulations filed at the EUIPO governing the use will not automatically be ported over from the corresponding EUTM onto the comparable trade mark (EU). At some point after the creation of the comparable trade mark (EU) the IPO will issue a notice requesting the filing of the same regulations, which had effect immediately before exit day in relation to the corresponding EUTM, along with an English translation where applicable. Practice Point: Review your records to determine if there are any collective or certification trade marks in your portfolios, and obtain a copy of the applicable regulations (and translation) ready for filing at the IPO in relation to the comparable trade mark (EU), assuming that the comparable trade mark (EU) is to continue to have effect in the UK. If the regulations are not filed in time when requested, the comparable trade mark (EU) will be removed from the register. Where an existing EUTM is the subject of a licence immediately before the exit day and does not expire on exit day then unless there is an agreement to APRIL 2019
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NEWS
COUNCIL • COMMITTEE
Training, support and assessment of students First published online on 7 March 2019.
A
t its meeting on 6 March 2019, Council considered at length the recent issue of the moderation of the FD4 pass mark and the education and assessment of patent attorney students in general. With a larger number of candidates than would be expected falling short of the published 50% pass mark for the 2018 FD4 examination, the PEB reviewed the marking of the examination and revised the pass mark threshold to 47%. It is common for this form of moderation to take place in professional examinations where the results fall outside of the expected parameters. The PEB was created to be independent of CIPA in terms of its governance and finances. Council fully supports the PEB’s decision to moderate the FD4 examination pass mark, under the expert guidance of the PEB’s lay members. Council recognises that communicating the low pass rate and
the revision of the pass mark during EQE week was not appropriate, given the existing pressures on candidates sitting the European exams. Council has asked the PEB to ensure that its communications are better timed in the future. This was a well-intentioned communication by the PEB, which sought to explain the revision to the pass mark before results were sent to candidates; however, the timing of the announcement was not sensitive to the stress that students experience during the EQEs. Council was disturbed to learn that examiners, members of the PEB and CIPA staff have been subject to vitriol and potentially defamatory allegations through anonymous emails and via social media. There can be no place for such actions in this profession and this must stop. There are formal channels for raising concerns about the examination
system and Council asks that those who give so much of their time and expertise to the PEB are afforded the respect they deserve. Students and examiners are members of CIPA and all have the full and equal support of Council. Council resolved that, through the Education Committee, CIPA will lead a review of the training, support and assessment of students, including consideration of best practice in other professions where appropriate. We will work with the PEB, IPReg, our members and other stakeholders to develop the education and examination system to ensure that it produces patent attorneys with the knowledge, skills and abilities required to excel nationally and internationally. Julia Florence, President Vicki Salmon, Chair of Education Committee Lee Davies, Chief Executive
EPO Consultation on “Increased Flexibility” (postponed examination) CIPA’s Patents Committee submitted comments in response to the EPO’s invitation to talk about the so-called ‘deferred examination’ proposal. In summary, CIPA took the view that it is not a simple matter and that balancing third-party certainty is a real problem. The system would benefit some technology areas more than others and would cause problems for third parties in certain technical areas as well, for example fast-moving technology areas. CIPA’s conclusion was that the benefit of deferred examination would be at best neutral. As a result, CIPA did not give great detail about better ways of doing it, given the fundamental issues.
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Respondents were invited to provide other suggestions and CIPA proposed the provision of more flexibility for acceleration of examination. As a result there could, for example, be a normal pace or an accelerated pace as appropriate. If this were coupled with accurate information as to when examination would start, and a suitable planning infrastructure allowing more accurate prioritisation by the EPO, the benefits to users of the system could, in the opinion of the Patents Committee, be significant. Gwilym Roberts (Fellow), Patents Committee
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Winds of change in China? In a case illustrating both the effort made to develop an innovative and compelling design, and in gathering and presenting evidence to the Chinese Court in the right form, Jaguar Land Rover has succeeded where others have failed: the Chinese Court found that Jiangling Holdings’ activities in relation to its Land Wind X7 amounted to unfair competition with JLR’s Evoque® car, and awarded damages, an injunction and publication of the outcome. Claire O’Brien explains the Court’s decision.
J
aguar Land Rover (JLR)’s “Evoque®” car is an awardwinning design. Undeterred by the risk of infringing JLR’s rights, a manufacturer Jiangling Holdings Co Ltd (Jiangling) and one of Jiangling’s distributors, Beijing Dachang Landwind Automobile Sales Co Ltd (Dachang), manufactured and marketed in China a car with a “corresponding” design, the Land Wind X7. On 13 March 2019, the Beijing Chaoyang District Court gave judgment for JLR, and JLR’s claim, issued in 2016, was successful – with the Court finding that Jiangling’s Land Wind X7 (model numbers JX7200 and JX7200L) had copied the trade dress of JLR’s Evoque and that Jiangling’s activity constituted unfair competition by reason of its unauthorised “use of decoration identical or similar to another’s goods with a certain degree of influence”1. The judgment in this hard-fought battle is an interesting one and it is encouraging to see the Chinese court’s recognition and protection of intellectual property rights, particularly in relation to rights owned by companies based out of the jurisdiction. JLR has succeeded where others have failed or got bogged down. For example, Fiat and Honda have both had protracted battles in the Chinese courts in their attempts to stop alleged infringements of their vehicle designs. Fiat fought and lost its design patent infringement claim against the Great Wall Motor Company in relation to its “GWPeri” vehicle in the Shijiazhuang Intermediate Court and on appeal in the Hebei High People’s Court2, despite an Italian court reaching the opposite conclusion on infringement and stopping sales of the compact GWPeri in the EU. Honda’s legal action in China against a local Chinese manufacturer in relation to an alleged copy of its CR-V SUV went on for over 12 years3. Volume 48, number 4
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Factors that often put off foreign litigants in this jurisdiction include the perception that the chances of success against a local Chinese firm are low, the length of time it will take to achieve a result, and in the event of success, the prospect of a low damages award and even a backlash if a foreign company is perceived to be damaging a local “competitor”. In addition, as has been discussed previously in this Journal, the evidential requirements for proving a case to the satisfaction of the Chinese courts are markedly different to those in many other jurisdictions, and can trip up claimants. Both China and the UK (where JLR is based) are members of the Paris Convention for the Protection of Industrial Property (1979)4. Under article 10 bis of that Convention, JLR is entitled to protection against unfair competition under PRC laws5. Under article 44 of PRC’s law on the Choice of Law for Foreign-related Civil Relationships: “the laws at the place of tort shall apply to liabilities for tort, but if the parties have a mutual habitual residence, the laws at the mutual habitual residence shall apply. If the parties choose the applicable laws by agreement after any tort takes place, the agreement shall prevail.” As the alleged tort took place in China, and both parties cited PRC Unfair Competition Law, this was the law that was applied. The acts of infringement took place through the effective period of the old 19936 and new 2017 law and, following the guidance laid down in a judicial interpretation7, the law applied was the 2017 Unfair Competition Law 8. APRIL 2019
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LITIGATION
This meant, and the Court found, that JLR had made out its case and Jiangling’s activities constituted unfair competition for unauthorised use of decoration identical or similar to another’s goods with a certain degree of influence, having caused confusion in the market and harmed JLR’s legal interests and goodwill. Jiangling’s activities therefore violated article 6.1 of the 2017 Unfair Competition Law. Issue 3 – Liability An injunction was granted against Jiangling to stop the accused unfair competition activities, including cessation of manufacture, exhibition, pre-sale and sale of the Land Wind X7. The injunction against Dachang prevented it exhibiting, pre-selling and selling the vehicle. Jiangling was ordered to publish a public announcement on its website and in the China Automobile News to eliminate the negative influence caused to JLR by its unfair competition. Jiangling was also ordered to pay compensation to include JLR’s reasonable expenses17. There are a number of ways to calculate damages including the plaintiff ’s loss, the defendant’s gain, a reasonable royalty or statutory damages. The evidential burden on a plaintiff to prove damages is high and the Court is often reluctant to make awards on the basis of a plaintiff ’s calculations of the defendant’s gains. The Court held that the infringer’s gain could be calculated by multiplying the infringing product’s sales volumes with the profit per unit. JLR presented evidence from published information and Jiangling’s website prices to show Jiangling’s gains but then claimed a lower sum. The Court said that in light of the duration of the infringing acts, the role played by the accused vehicle shape trade dress during sale, the sale scope of Land Wind X7 and the fame of the Evoque shape trade dress, Jiangling’s profits gained from the infringing acts went far beyond the amount that JLR was claiming. Therefore, the Court fully supported JLR’s claim plus reasonable expenses. There was no finding against Dachang for unauthorised use of Evoque’s trade dress but, as mentioned, it was required to stop displaying, preselling and selling the Land Wind X7.
CHINA
Conclusion Jiangling has a short window in which to launch an appeal but at the time of writing no appeal has been launched. It has taken JLR some time to reach this point but its win (at this stage at least) is positive and the injunctions are all important. As was clearly recognised by the Court, JLR invests significantly in the design and engineering of its products, something demonstrated in the evidence and relevant to the Court decision. JLR’s view was that the action by Jiangling should not go unchallenged. The Chinese court decision supports fair competition, and this case may be significant, especially as it is in favour of a UK company against a domestic Chinese infringer. It should allow other UK businesses to place greater confidence in the protection of their IP in China. As Amanda Beaton, Global IP counsel at JLR, and responsible for managing this case, commented: “We are of course pleased with the judgment of the Beijing Chaoyang District Court. The Chinese court has sent a clear message that unfair competition will not be tolerated. This decision further strengthens our confidence in investing in China and will encourage other businesses like us, to continue investing in this very important market.” One wonders whether other auto manufacturers will take a stand in a jurisdiction where historically there has been a reluctance to do so. Time will tell but for now this decision is another step towards the shift to stronger IP enforcement in China and a further sign of the progression and maturing of a market where hopefully innovation will triumph over imitation.
Claire O’Brien is Head of IP Litigation at Mills & Reeve LLP. See more at www.mills-reeve.com
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27.09.19 CIPA IP Paralegals Conference 2019 Millennium Gloucester Hotel 24 CIPA JOURNAL
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03/04/2019 15:10:06
The Rise of AI Patenting artificial intelligence at the European Patent Office By Philip Cupitt (Fellow)
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rtificial intelligence (AI) is one of the most exciting technologies of our time. Although AI has been a field of research for over 60 years, it is only in recent years that it has begun to realise its potential. One factor in AI’s coming of age has been the development of new machine learning algorithms, through which a computer can learn to perform a particular task without being explicitly programmed. The growth of machine learning algorithms has been fuelled by the availability of vast quantities of data from which those algorithms can learn, and ever more powerful computer hardware with which to process that data. (In this article, the term “artificial intelligence” is used to refer to a broad range of technologies that includes machine learning algorithms.) The rise to prominence of AI has been accompanied by a significant increase in the number of patent applications for AI. For example, the EPO has seen more than a 50% increase in the number of European patent applications that broadly relate to AI over the period from 2010 to 2014 (the most recent year for which the EPO’s statistics are available), with around 6000 such applications in 20141. Over the same period, the EPO has seen nearly a threefold increase in patent applications for so-called “core AI” technology. Th is article explains the EPO’s practice for examining patent applications relating to AI, and discusses the challenges faced when trying to patent AI at the EPO. Volume 48, number 4
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New guidelines for examination in the EPO Although there has been a steady stream of European patent applications relating to AI for many years, the EPO had not published any guidance on its practice for examining such applications until last year. The uncertainty faced by patent applicants in this area was compounded by the dearth of case law specifically relating to AI. The November 2018 edition of the Guidelines for Examination in the European Patent Office (hereafter referred to as “the Guidelines”) set forth the EPO’s practice for examining AI-related inventions for the first time. In accordance with the new Guidelines, inventions relating to AI are examined in the same way as inventions involving mathematical methods2. The EPO’s rationale for treating AI in this manner stems from an observation that many artificial intelligence and machine learning techniques are based on computational models and algorithms. In the EPO’s view, such computational models and algorithms are inherently of an “abstract mathematical nature”, and so should be treated in the same way as other mathematical methods. The EPO’s decision to treat AI as a particular species of mathematical method creates a presumption that claim features relating to AI, such as an artificial neural network or a support vector machine, are non-technical. Hence, these features alone cannot result in a claim being seen to define an invention within the meaning of article 52(1) EPC, although APRIL 2019
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US update: new 101 guidance The USPTO issues revised guidance outlining how it will evaluate claims for patent eligibility. By Kyu Yun Kim and Timothy McAnulty
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he US Patent & Trademark Office (USPTO) recently announced revised guidance on how it will review patents and applications for subject-matter eligibility.1 The revised guidance went into effect on 7 January 2019, and applies to all patents and patent applications. In setting the revised guidance, the USPTO noted the attention (and continued uncertainty) that subject-matter eligibility has experienced over the last decade and the “unique challenges” the USPTO faces ensuring examiners and administrative patent judges “apply the Alice/Mayo test in a manner that produces reasonably consistent and predictable results.” The revised guidance outlines an updated analysis that the USPTO will follow when evaluating claims under Step 2A of the Alice/Mayo test – whether the claim is directed to one of the judicial exceptions to patent eligibility. It includes three sections and, in effect, separates the analysis required under Alice Step 2A into two inquiries (Prong One and Prong Two). Sections I and III introduce new Prongs One and Two, respectively. Section II explains that the new procedure is “rooted in” the continuing case law from the Supreme Court and Federal Circuit. Under new Prong One, a claim is evaluated to determine if it recites a judicial exception to patent eligibility. Prong One is similar to the USPTO’s prior guidance but with some changes explained below. In particular, the claim under review will no longer be compared to claims already determined (by a court) to be directed to an abstract idea as the USPTO previously did. If the claim is found to not recite a judicial exception under Prong One, the claim is determined to be patent eligible. If it is found to recite a judicial exception, the claim is further evaluated under new Prong Two to determine if it recites additional elements that integrate the exception into a practical
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application. If so, the claim is determined to be patent eligible. If not, the claim is further evaluated to determine if it meets the requirements of Alice Step 2. On a practical note, the revised guidance supersedes the Manual of Patent Examining Procedure (“MPEP”) §2106.04(II) (discussing patent eligibility under Alice Step 2A) and supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas” (first published in July 2015 and most recently updated in July 2018). While the revised guidance does not itself constitute substantive rule making or have the force of law, it provides guidance on the USPTO’s interpretation and application of patent eligibility law in view of the (continuing) decisions from the Federal Circuit and the Supreme Court.
A summary of the USPTO’s Prior Guidance Under the USPTO’s prior guidance, much of the attention focused on how it applied the US Supreme Court’s framework enumerated in Alice Corp. Pty. Ltd. v CLS Bank International, which relied on Mayo Collaborative Services v Prometheus Laboratories, Inc.2 The Alice test sets forth two steps for determining whether a claim is patent eligible. Under Alice Step 1, the claim is evaluated to determine if it recites a judicial exception. Alice Step 1 corresponds to the USPTO’s Step 2A (which now includes Prongs One and Two). Under the USPTO’s prior Step 2A guidance, a claim was compared to those claims already found to be directed to an abstract idea in previous cases.3 To support this approach, the USPTO periodically issued guidance with updates on Federal Circuit decisions applying the Alice test. In the revised guidance, the USPTO noted that that approach has become “impractical” because the number of Federal Circuit decisions on patent eligibility www.cipa.org.uk
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US UPDATE
is growing, and similar subject-matter has been determined both as abstract and not abstract in different cases. The revised guidance also notes that: “concerns have been raised that different examiners within and between technology center [using this approach] may reach inconsistent results.”
NEW 101 GUIDANCE
Under Alice Step 2, the claim is evaluated to determine whether the claim recites only routine or conventional elements merely implementing an otherwise abstract idea or if it recites additional elements that provide significantly more than just the judicial exception. Alice Step 2 corresponds to the USPTO’s Step 2B (which remains unchanged under the USPTO’s revised guidance).
Figure 1: A summary of the USPTO’s Prior Guidance
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US UPDATE
had been pre-URAA patents, the ’990 patent would have expired on the same day as the ’772 patent by operation of the terminal disclaimer that Novartis filed in the later-issued ’990 patent.32 And if they had been both post-URAA patents, then they would have also both expired on the same day because they would have had the same effective filing date. The Breckenridge panel declined to invalidate the challenged pre-URAA patent based on a post-URAA reference patent.33 Instead, it applied the pre-Gilead issue date-based analysis to the challenged pre-URAA ’772 patent and found that the postURAA ’990 patent is not a proper ODP reference. According to the panel, when the ’772 patent issued, the ’990 patent had not yet issued and thus did not exist as an ODP reference against the ’772 patent, and that to find otherwise would “abrogate Novartis’s right to enjoy one full patent term on its invention” prescribed by statute.34 The decisions in Ezra and Breckenridge signal the Federal Circuit’s willingness to limit the scope of Gilead and conduct
DOUBLE PATENTING
a factual inquiry of whether the difference in expiration dates of the challenged and reference patents is due to patent prosecution gamesmanship, or due to statutorily granted patent terms (as in Ezra) or based on pre-URAA status (as in Breckenridge). Looking forward, the Federal Circuit may further rein in the broad reach of Gilead, limiting it to the facts of that case, i.e., two post-URAA patents having different priority dates and different expiration dates, and limiting the “judge-made doctrine” of ODP from cutting off statutorily increased patent terms. In the meantime, patent practitioners should consider the impacts of ODP during prosecution and after grant – portfolio and enforcement strategies may have unintended consequences. Stay tuned as we continue to follow this evolving area of US patent law. Arpita Bhattacharyya is an associate at the Palo Alto office and Timothy P. McAnulty is a partner in the Washington, DC office at Finnegan. See more details at www.finnegan.com.
Non-Institute events IP and ADR, London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: Wednesday 1 May 2019 The Contents of Commercial Contracts, London Provider: UCL Centre for Commercial Law Date: Thursday and Friday 9-10 May 2019 Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 23 May 2019 (see page 66) Basic Litigation Skills Course, London Provider: CPD Training Date: 13-17 May 2019 Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 24 June-19 July (see page 66) IP licensing: An advanced level drafting workshop, London Provider: taught by Mark Anderson (Anderson Law / UCL IBIL) Date: Tuesday 9 July 2019 Drafting & negotiating IP terms in research contracts, London Provider: taught by Mark Anderson (Anderson Law / UCL IBIL) Date: Tuesday 16 July 2019
Union-ip - British Group Dinner Meeting, Royal Overseas League, London Provider: Union-ip Date: Wednesday 2 October 2019 Web: www.union-ip.org EQE main examination 2020 – papers A+B, C and D, Paris Provider: CEIPI Date: 2-5 October 2019 IP Seminar @ VOLVO CARS, Gothenburg, Sweden Provider: Premier Cercle Date: 8-9 October 2019 Web: www.volvocars-ips.global (see page 67) EQE pre-examination 2020 – Preparatory seminar, Strasbourg Provider: CEIPI Date: 4-8 November 2019 Web: www.ceipi.edu Basic Litigation Skills Course, London Provider: CPD Training Date: 4-8 November 2019 Training for the EQE, London Provider: QM-UL Date: 11-12 November 2019 (see page 68) Web: www.ccls.qmul.ac.uk/events EQE main examination 2020 – Papers A+B and C, Strasbourg Provider: CEIPI Date: 18-22 November 2019 Web: www.ceipi.edu
Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 19-23 August (see page 66)
EQE main examination 2020 – Pass paper C, Strasbourg Provider: CEIPI Date: 29-30 November 2019 Web: www.ceipi.edu
Basic Litigation Skills Course, London Provider: CPD Training Date: 9-13 September 2019
Training for the EQE, London Provider: QM-UL Date: 6-8 January 2020 (see page 68) Web: www.ccls.qmul.ac.uk/events
See full details at www.cipa.org.uk/whats-on/non-institute-events. To list an event please email sales@cipa.org.uk
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03/04/2019 15:12:00
Poet, Pirate, Patentee? Sir Walter Raleigh (1552-1618) and the origin of the Statute of Monopolies. By Stephen Jones (Fellow)
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Sir Walter Raleigh by an unknown artist. Copy as displayed in All Saints Church, East Budleigh, where his father was churchwarden. The original is in the National Portrait Gallery in London.
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n November 2018, I attended, on behalf of CIPA, the Shanghai International Intellectual Property Forum and Global IP Protection and Innovation Development Conference, as part of the China International Import Expo. Shortly before that, the 400th anniversary of the death of Sir Walter Raleigh had been commemorated in the village of East Budleigh in Devon, where he was born, and where I now spend some of my time. Having agreed to give a keynote speech of ten minutes, I needed something to use as a theme. Recalling the anniversary of Raleigh’s death, it occurred to me that patent law in China has evolved in less than 40 years, since the first patent statute in 1984, to the stage where China now grants more patents than any other country in the world1, and the 40th anniversary of patent law in China will occur in the same year as the 400th anniversary of the Statute of Monopolies, which can be considered as the starting point for patent law in the UK. My thoughts turned to how to link these events. Walter Raleigh was born in either 1552 or 1554 (the exact date is unknown). He served while still in his teens as a soldier in France in support of the Protestant French Huguenots, and later in Ireland. He is not remembered kindly in Ireland in view of his actions against the local Catholic population, although he was rewarded with lands there in recognition of his service to the Crown. He was an undergraduate at Oriel College, Oxford, where he is considered amongst their most distinguished alumni, but left without a degree. He was enrolled at Middle Temple in 1575, but had no intention of becoming a lawyer, and probably never studied law. The window in Middle Temple bearing his coat of arms describes him as “miles”, which in Latin means soldier. APRIL 2019
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