CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
May 2019 / Volume 48 / Number 5
Accelerating patent examination in Brazil
Reference to the CJEU on third party SPCs Eli Lilly v Genentech
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Payment of annual patent fees in Indonesia Ian Mirandah
Information for consumers and small businesses Consultation
Evaluation of EU legislation on design protection Consultation
The Patent Administration course Stephen Mohun 02/05/2019 14:00:07
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 Deputy Chief Executive Neil Lampert Executive Assistant Charlotte Russell Communications Officer Kristina Grinkina Head of Qualifications Angelina Smith Head of Finance Spurgeon Manuel Finance Officer Paul Brown HR Officer 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
2
9
Council Minutes
Lee Davies
Accelerating patent examination in Brazil
31 36 39 38
Seminar report Kate Macdonald
Gustavo Sartori
NEWS 5
EU design protection
Third party SPCs Eli Lilly v Genentech – reference to the CJEU
40
After-Final Practice at the USPTO
Webinar report Y. Suzanne Orian
Marjan Noor & Tom Edwards
Regulatory news
Consumers and Small Businesses Lee Davies 6
12
Examination prizes 2018 Institute events Non-institute events Patent Case Law Tour 2018
DECISIONS
PERSONAL
15
3 30
Designs & Copyright Committee 7
Overseas update
Dr Amanda R. Gladwin 6
Regulatory news
LSB’s Business Plan Lee Davies 8 8
19 20
32 35
CIPA Annual Dinner IP Paralegals 20th Anniversary Dinner The Yellow Sheet IP Inclusive update
35 36
Announcements IP Inclusive events
IPO decisions
David Pearce & Callum Docherty EPO decisions
Bristows
Indonesia – Annual Patent Fees
Ian Mirandah
Patent decisions
Beck Greener
22
Trade marks
Bird & Bird
CIPA President to meet IP Minister
Andrea Brewster
EDUCATION
THE PINKS
14 21 28 30
41
Life Sciences Conference Books for review IP Paralegals Conference Origins of the Patent Administration Course
Courses & Events; Support International; Recruitment
Stephen J. Mohun Volume 48, number 5
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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.
Wednesday 15 May 2019 Webinar
PATENT COOPERATION TREATY (PCT) – DEVELOPMENTS
Meeting 2019’. Places are limited so book in advance to avoid disappointment.
the lead up and the follow on can be just as nerve wracking.
Price: £60+VAT
Prices: Free for CIPA members
Time: 12.30–13.30 Mr. Matthew Bryan, Director of WIPO’s PCT Legal and User Relations Division, will provide an update on recent and future developments and directions in PCT practice. He will present recent statistics concerning the performance of the PCT system and discuss recent PCT legal and related developments of relevance to patent practitioners. Speaker: Matthew Bryan, Director of WIPO’s Patent Cooperation Treaty Legal and User Relations Division CPD: 1; Prices: £72 (£48 CIPA members) Thursday 16 May 2019 Regional Meeting
SCOTLAND MEETING Time: from 12.30 Location: Radisson Blu Hotel, 301 Argyle Street, Glasgow, G2 8DL 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). Thursday 16 May 2019 Social
Tuesday 21 May 2019 Webinar
FD1 FOR TUTORS AND EXAMINEES – AN EXAMINER’S PERSPECTIVE Time: 12.30–13.30 The webinar is delivered by a current FD1 (P2) examiner and is aimed at Fellows who support trainees in their preparation for this challenging examination as well as to examinees, and potential examinees who are contemplating taking FD1. The webinar will cover: • How the examination is prepared and marked • How to approach the examination and when to first sit it • Common issues that arise • Dispelling myths and misconceptions about the exam
Join fellow CIPA members for a opportunity to network over a threecourse dinner accompanied by a glass or two. A follow on from ‘The Scotland 36 CIPA JOURNAL
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NEW STUDENT INDUCTION DAY Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD The new students induction day is a great opportunity for our new student members to learn more about CIPA, the Informals, PEB, IPReg, IP Inclusive, as well as see presentations on key skills and tips for trainees. It is also an excellent opportunity for student members to meet and share experiences, particularly for those based outside London, as the day of talks is capped off with a networking drinks reception. Kindly note that in order to attend this event, you must be a Student member of CIPA. See full details online. Prices: £48 CIPA Student members only
There will be ample time for questions and answers. Speaker: Dr Janet Chisem (Unilever plc) Prices: Free for CIPA members Thursday 23 May 2019 Webinar
TOP TIPS FOR STUDYING UNDER PRESSURE Time: 12.30–13.30
THE SCOTLAND DINNER 2019 Location: Radisson Blu Hotel, 301 Argyle Street, Glasgow, G2 8DL
Friday 24 May 2019 Seminar
Join our speaker Elizabeth Rimmer (LawCare) and Alexandra Seymour-Pierce (Venner Shipley) for this webinar that will offer tips and advice on how to prepare for exams whilst balancing revision with full-time employment. Exam stress isn’t just the pressure of the day itself, both
Wednesday 29 May 2019 Social
LEEDS HAPPY HOUR Time: 18.00–19.00 Location: All Bar One, 27 East Parade, Leeds, LS1 5BN Join CIPA Members at All Bar One Greek Street, for an excellent networking opportunity. Please note this is a members only event – book online.
Reporters Needed – CIPA is looking for volunteers to report on CIPA events. If you are interested, please contact cpd@cipa.org.uk.
www.cipa.org.uk
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CPD & EDUCATION
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 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) 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 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. CPD: 2 Prices: £120 (£90 CIPA members)
INSTITUTE EVENTS
The webinar will identify key common principles in these regulatory régimes, and will consider real-life ethical dilemmas that arise for IP practitioners, whether working in private practice or in-house, including for IP solicitors who are not also patent or trade mark attorneys, especially those engaged in non-contentious work. Speaker: Dr Michael Jewess CPD: 1; Prices: £72 (£48 CIPA members) Wednesday 10 July 2019 Webinar
THE FUTURE OF PATENT DRAFTING Time: 12.30–13.30 In the latter half of 2018, the Boards of Appeal consulted widely on an update to their Rules of Procedure, culminating in a conference in Munich in December. CIPA, amongst many other parties, submitted a range of comments. The consultation is now closed and conformation of the final version is expected soon. We have a good idea of what will be coming out of the exercise, and there could be significant impact on practice not only before the Boards of Appeal, but in opposition and examination proceedings. A range of
speakers from CIPA and the EPO will be going through the changes and discussing the practical implications and every practitioner should make sure that they are up to speed with the potential consequences of the changes. Chair: Gwilym Roberts, CIPA Honorary Secretary/Kilburn & Strode CPD: 1; Prices: £72 (£48 CIPA members) Saturday 20 July 2019 Social
IP BALL – MIDNIGHT IN PARIS Time: 18.00–23.00 Location: The Waldorf Hilton, Aldwych, London You are cordially invited to be transported back to 1920’s Paris for an evening of jazz age decadence. All proceeds from the ball will go to the Great Ormond Street Hospital Charity. The ball will begin at 6.30 pm with a champagne reception, followed by a three-course meal and an evening of entertainment. Raffle tickets in aid of Great Ormond Street Hospital will be on sale throughout the night. Price: £109.50
IP Inclusive events Webinar – Tuesday 14 May 2019
MENTAL HEALTH: TIME TO LISTEN, TIME TO ACT Tuesday 2 July 2019 Webinar
PROFESSIONAL ETHICS Time: 12.30–13.30 This webinar will look at ethical best practice for UK patent and trade mark attorneys, who are subject the IPReg “Rules of conduct”. Many UK patent and trade mark attorneys are subject also to one or more of the following: the EPO Administrative Council’s “Regulation on discipline”; the EPI’s “Code of conduct”; and the SRA’s “Solicitors’ Code of Conduct”. Volume 48, number 5
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Time: 12.30–13.30 Webinar – Thursday 13 June 2019
HOW THE CHARACTER TRAITS OF LEGAL PROFESSIONALS UNDERMINE THEIR MENTAL WELLBEING Time: 4-5 pm Webinar – Thursday 4 July 2019
WORKPLACE DRESS CODES Time: 12.30–13.30 These webinars are for all IP professionals, whatever their role or their level of seniority, and for those who support them for instance in managerial or HR functions. See full details online. Prices: Free for CIPA members
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