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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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NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 6 March, 2019 at 14:30. Item 1: Welcome and apologies Present: Julia Florence (President, in the Chair), Richard Mair (Vice-President), Stephen Jones (Immediate Past President), Andrea Brewster (by phone), Roger Burt, Paul Cole, Anna Denholm, Catriona Hammer, Alicia Instone, Tim Jackson, Chris Mercer, Bev Ouzman (by phone), Emily Nytko-Lutz (by phone), Tony Rollins and Vicki Salmon. Lee Davies (Chief Executive), Neil Lampert (Head of Media and Public Affairs) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Gwilym Roberts (Honorary Secretary), John Brown, Daniel Chew, Matt Dixon, Stuart Forrest, Greg Iceton, Rob Jackson, Keith Loven, Bobby Mukherjee, Alasdair Poore, Andrew Sunderland, Matthew Veale (Informals Honorary Secretary) and Simon Wright.

Item 2: Conflicts of interest 52/19: Roger Burt declared a potential conflict of interest in relation to the agenda item on trade agreements, due to his involvement with the IP Federation. Bev Ouzman declared that she was an FD4 examiner for the Patent Examination Board (PEB).

Item 3: Minutes 53/19: The Minutes of the Council meeting held on Wednesday 6 February, 2019 were approved.

Item 4: Brexit 54/19: Julia Florence informed Council that the joint webinar with CITMA on the impact of there being no deal when the UK leaves the EU had been very successful, with in excess of 300 registrations, a number of which would have been firms where groups of members would have been participating. 2

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55/19: Catriona Hammer advised Council that the Department for International Trade (DIT) meeting on 5 March, 2019 was focused on parallel trade agreements, exhaustion of rights and geographical indications. Catriona added that there would be a series of questions on exhaustion of rights and geographical indications from the IPO and that the IP Commercialisation Committee would liaise with the Trade Marks Committee, the Copyright and Designs Committee and other committees as appropriate. Catriona said that there appeared to be little capacity in DIT to look at new trade agreements, including the CPTPP, and that currently work was progressing on mirroring existing EU trade agreements. Catriona added that there had been little clarity at the meeting, which was understandable given that the status of Withdrawal Agreement and the subsequent deal with the EU was still not known. 56/19: [Redacted.] 57/19: Alicia Instone advised Council that she was continuing to update CIPA’s Brexit position paper, following its publication on the website, and asked Council members to read the paper and send her any proposed amendments. [Also see April [2019] CIPA 12-17]. 58/19: Tony Rollins informed Council that the preparations for the roadshow in the USA were almost complete and urged Council members to encourage their contacts in the US to attend.

Item 5: Regulatory matters 59/19: Council noted the Regulatory Affairs Committee’s response to the consultation on the LSB’s business plan.

60/19: Stephen Jones advised Council that CIPA, CITMA and IPReg had had a second meeting with Paul Ozin QC on the Money Laundering Regulations (MLR). Stephen said that counsel’s position had moved significantly between meetings and that counsel had expressed the view that the MLR did not apply to the core work of patent and trade mark attorneys. The Regulations come into effect on transactions involving the sale or transfer of businesses which, it was estimated, might make up between 5% and 10% of the work of patent and trade mark attorneys. In such cases, it could be argued that a light touch might be applied, where it was possible to confirm that the instructing person had met the MLR requirements. There was, however, a greater element of risk and a need for more robust checks where the instructions came from outside the UK. Stephen expressed his thanks to Matt Dixon for attending the meeting with counsel on behalf of the Business Practices Committee. Stephen conclude by saying that counsel appeared to be moving towards a position where there would not need to be a Supervisory Authority for patent and trade mark attorneys under the MLR. 61/19: Council considered IPReg’s draft guidance on the type of information it expects to be provided to individual consumers and small businesses to help them compare legal advisers. Alicia Instone observed that an hourly rate for early advice is fine but that once the nature of the invention and the scale of protection is known, it becomes more difficult to quantify costs. Bev Ouzman agreed, saying that it is important to be upfront about the potential scale of costs, even if these are difficult to quantify. Bev added that this should not be a deterrent www.cipa.org.uk

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NEWS

for potential clients, as often they chose their attorney based on a feeling of who they would be like to work with. Action: Council granted the Regulatory Affairs Committee the power to act on behalf of Council in responding to IPReg’s consultation. [Also see page 5.]

Item 6: IPO and EPO matters 62/19: Julia Florence informed Council that she had written to President Campinos and that it was hoped that a delegation from CIPA would visit the EPO in May.

Item 7: Strategic Plan 63/19: Council noted the report from Lee Davies and agreed that the Strategic Plan should be revised to accommodate the new IP Paralegal membership category and that the operational activities should be separated from the Strategic Plan so that the plan focused on CIPA’s core strategic priorities. Action: Lee Davies to arrange a meeting of Council members to review the Strategic Plan. Council agreed that this should be a separate meeting and that it would not be possible to do this at an ordinary Council meeting.

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Item 8: CIPA and CITMA Joint Executives (JEx) Meeting 64/19: Julia Florence said that the JEx meeting had focused on the ways in which CIPA and CITMA worked together and how these might be improved going forward. Julia added that CITMA had suggested that each Institute should nominate a senior person responsible for ensuring that the relationship was effective. Alicia Instone said that there was overlap with CITMA through the Trade Marks Committee and the Copyright and Designs Committee and that, generally, there was good liaison through dual-qualified attorneys who were on both CIPA and CITMA committees. CIPA and CITMA had agreed that their respective committees would bear the other organisation in mind when planning events. There was also a suggestion that committee chairs could liaise on areas of interest.

Item 9: Education and examinations 65/19: Julia Florence welcomed Julia Gwilt and Sarah Boxall (by phone), representing the PEB, to the meeting. Julia Gwilt outlined the PEB’s process for the drafting and approval of examination papers. Julia Gwilt said that, on average, FD4 scripts were 80 pages long and that there was significant variation in the

scripts which were, in effect, essays. Julia Gwilt said that, when it was apparent that there was a significant drop in the pass rate, the decision was made to look again at all scripts in the 45-55% band. In response to a question from Roger Burt on the time pressure candidates were under, Bev Ouzman, an FD4 examiner, said that she did not think it was a matter of time, as the previous year scripts were significantly longer, in the region of 100 pages. Sarah Boxall said that there appeared to be a particular issue with the approach to inventive step. Julia Florence questioned the need for candidates to write 80 pages for the examination. Bev Ouzman said that there was no need to produce so much text, but candidates seemed to be comfortable writing about what they knew, rather than addressing the examination. Bev added that between 40 and 50 pages should be sufficient to pass FD4. Sarah Boxall agreed, saying that shorter scripts scored more highly, in her experience. Julia Gwilt said that she was happy that the issue had been made public, because it revealed the abuse that examiners had been subjected to, which had caused a number of examiners to question their preparedness to continue. Catriona Hammer thanked all of those who gave up their time to draft and

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mark papers. Council fully endorsed Catriona’s sentiment. Roger Burt echoed Catriona’s thanks but questioned whether the existing examination system was fit-for-purpose. Julia Gwilt said that an important consideration was the fact that IPReg did not regulate the finals papers in the same way that it did the foundation papers. Julia Gwilt added that the fixed mark of 50% was also a factor, in that this had become the standard for fitness-topractise, when it was no such measure. Council agreed that, with a larger number of candidates than would be expected falling short of the published 50% pass mark for the 2018 FD4 examination, it supported the PEB’s review of the marking of the examination and revision of the pass mark to 47%. Council noted that it is common for this form of moderation to take place in professional examinations where the results fall outside of the expected parameters. Council acknowledged that the PEB was created to be independent of CIPA in terms of its governance and finances and that this was a good example of the expertise the lay members, all education experts, brought to the PEB. Council expressed its concern 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 asked the PEB to ensure that its communications were better timed in the future. Council was disturbed to learn that examiners, members of the PEB and CIPA staff had been subjected to abuse and potentially defamatory allegations through anonymous emails and via social media. Council agreed that there can be no place for such actions in the profession and that this abuse must stop. Council noted that there are formal channels for raising concerns about the examination system and Council asked that those who give so much of their time and expertise to the PEB are afforded the respect they deserve. Council observed that students and examiners are members of CIPA and all have the full and equal support of Council. 4

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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. The review will include the PEB, IPReg, CIPA’s 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. Action: The Education Committee was asked to undertake a review of the training, support and assessment of students.

Item 10: Committees and committee reports 66/19: Congress Committee Julia Florence informed Council that the preparations for Congress were going well. Julia added that it had been agreed to hold the annual CIPA dinner after Congress, in the same venue, and that she was hoping to secure a suitable speaker. 67/19: Patents Committee Council approved the appointment of Sarah Turp (WP Thompson) to the Committee. Council considered the Committee’s draft response to the EPO’s business plan consultation and granted the Committee the power to act on behalf of Council in filing a response to the EPO. Council noted the documents from the 30 January SACEPO Working Party on the ePatent Process. Chris Mercer advised Council that the Enlarged Board of Appeal was due to hear referrals G1/19 on ICT, G2/19 on whether it is legal to hold oral proceedings in Haar and G3/19 on double patenting. Chris said that the epi would be submitting amicus briefs and that the Patents Committee would need to consider the referrals.

69/19: IP Pro Bono Committee Council noted the report of the IP Pro Bono Committee. 70/19: Membership Committee Council noted the report of the Membership Committee. The Committee advised Council that the following membership applications had been approved: Fellows: Dr. Joanne Camilla Moore; Ms. Louise Marie Smith; Ms. Philippa Grace Roberts; Mr. Jack Alexander Whitfield; Dr. Robert Walton. EPAs: Mr. Keven Trevelen. Students: Dr. Monifa Phillips; Dr. Hendrik du Toit; Dr. Kaashif Abdul Majid Omar; Mr. David Millar; Mr. Adam Bennett; Mr. Ian Duncan. IP Paralegals: Miss Bernadette Walsh; Mrs. Simea Butt; Mrs. Catherine Flint; Ms. Sally Wilson. Overseas Members: Dr. John Gladstone Mills III; Mr. Frederic Thiel

Item 11: Officers’ reports 71/19: Council noted the Officers’ reports.

Item 12: Chief Executive’s Report 72/19: Council noted the Chief Executive’s report.

Item 13: Any other business 73/19: Paul Cole asked if Council would be prepared to support a further submission in the Athena v Mayo case, following the Federal Circuit decision that the claims patent ineligible. Paul said that this was a serious issue for the patent profession. Council agreed that it would consider a further submission, if this was deemed appropriate by the Life Sciences Committee.

Item 14: Date of next meeting 74/19: Wednesday 3 April, 2019.

68/19: IP Commercialisation Committee Council noted the report of the IP Commercialisation Committee.

The President closed the meeting at 17:55. Lee Davies, Chief Executive www.cipa.org.uk

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CONSULTATION

REGULATORY

Consumers and Small Businesses On 20 March 2019, CIPA responded to IPReg’s consultation on its draft guidance on improving information for consumers and small businesses. The draft guidance is available to see on IPReg’s website: https://ipreg.org.uk/public/about-us/consultations/closed-consultations/

A

s stated in our response to the earlier consultation, CIPA welcomes the recognition by IPReg that, in terms of intellectual property (IP) legal services, the relationship between patent attorneys and their clients is primarily business-to-business and that this requires a more proportional response from IPReg than might be the case for other legal regulators. CIPA fully supports IPReg’s move to deal with this through the publication of guidance rather than through the introduction of additional rules.

Q1. What are your views on the proposed outcomes at paragraph 2? CIPA supports the proposal that the information provided to clients and potential clients should be sufficient, reliable and presented in ways that are relevant to consumers and small businesses. However, it should be noted that, however clear and accurate the information is, it will not normally be possible to determine from such information how much it will cost to carry out any particular task since that will depend on a large number of factors for which allowance cannot be made in general information. Q2. What are your views on the proposed price and services information at paragraphs 3 and 4? It is unlikely that firms will be able to comply with the draft guidance in full, given the variables related to drafting and prosecuting IP applications in the UK and globally. It is important for prospective clients to have sufficient information to be able to make an informed choice of representative; however, the nature of the work undertaken by CIPA’s members is Volume 48, number 5

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dependent on the type of IP the client is seeking to protect, including the technical field of the invention where it is a patent application. Many firms offer a free, no obligation, initial advice session for prospective clients, where an attorney will explore with the client the IP the client is seeking to protect and will discuss an outline strategy. This will include an indication of the basic costs of making a patent or trade mark application and the financial implications should the application be opposed. As much depends on the complexity of the subject-matter, the prior art discovered during the drafting of the application and the likelihood of one or more oppositions, it is difficult to quantify these in a ‘menu’ type approach on websites or client-facing communications. As these initial advice sessions include a discussion about the types of services available, typical timescales and key stages for the types of services and the likely costs, they are an important tool for enabling prospective clients to make an informed choice. It might be helpful for the draft guidance to recognise the difficulties faced by firms in providing detailed information about costs to prospective clients on websites and in client-facing communications and indicate that other strategies, such as initial advice sessions, should be made available. CIPA is in favour of firms being transparent about the core costs of the services provided, such as typical drafting costs and disbursements. There is a danger, however, that attempting to provide more detailed information about the variable costs of securing IP protection, in the form of examples or scenarios, may put prospective clients off or push them towards unregulated providers.

CIPA would be happy to support IPReg in achieving greater consistency in the provision of information to prospective clients through our programme of CPD for members and sharing best practice through a webinar. Q3. What are your views on the information about regulatory status and redress at paragraphs 5 to 7? CIPA supports the line taken by IPReg on focusing on the protection afforded by a firm’s professional indemnity insurance and the additional insurance provided by IPReg that may provide protection in the event of dishonesty or fraudulent use of client money. There is, however, no reference to a firm’s internal complaints procedure and how this may be used to address concerns about the information provided when the client chose the firm, before resorting to more formal channels such as a referral to the Legal Ombudsman. Q4. Do you have any comments on any other aspects of this document? As the draft guidance is not intended to be mandatory, CIPA would like to know how IPReg intends to encourage firms to engage with it and to monitor compliance. We would also like to know how IPReg intends to review the effectiveness of the draft guidance, in particular where it is identified that firms have difficulties with compliance. We support the line taken by IPReg that it is for firms to assess their client base and make a judgement about the applicability of the draft guidance to their circumstances. This would be a suitable topic to explore in a joint webinar mentioned earlier in this response. Lee Davies, Chief Executive MAY 2019

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CONSULTATION

EU DESIGN

EU design protection On 22 March 2019, CIPA responded to the European Commission’s Public Consultation on Evaluation of EU legislation on design protection.

C

IPA thanks the European Commission for requesting user’s feedback on the Evaluation of EU legislation on design protection, and would be grateful if the following comments could be taken into consideration. We support the comments and views expressed in the Joint Paper of ECTA, INTA and MARQUES on the Legal Review on Industrial Design Protection in Europe dated July 2018. In particular We support aligning the terminology with EU trade mark terminology and employing “EU Registered Design” and “EU Unregistered Design” by way of amendments to the Regulation. We request emphasising the protection of the marketing value of a design as a rationale for EU design legislation by way of amending the recitals to the Regulation and the Directive. We urge the Commission to require all member states to adhere to the Hague System, and to continue efforts at international harmonization. We agree that fee structures at the EUIPO and within the EU should aim at facilitating the parallel existing protection levels at national, EU and international level. We support commissioning a fee review study. In relation to the absence of a “bulk discount” for renewals we would suggest that any study or decision in this area should give due consideration to public policy surrounding the overarching purpose of renewal fees. We agree that contrary to the Review’s recommendation, we see no reason to expand design protection to non-visible features or tactile features or to amend the definition of “design” in the Regulation or the Directive. On the contrary: we request

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amending the recitals of the Regulation and the Directive noting that only visually perceivable design features are within the subject-matter of design protection. We support an amendment to the recitals specifically to note that, other than for component parts of complex products, a design does not need to be visible at any particular time or in a particular situation in order to attract design protection. With regard to the specific visibility requirement of component parts of complex products, we support a clarification in the recitals that the concept of component parts of complex products is aimed at dealing with the spare parts market, specifically for complex machinery. We would also welcome a clarification (be it by way of recitals or by amending the law) to ensure that graphical user interfaces and parts thereof are not “computer programs” in the sense of article 1 (b) of the Directive / article 3 (b) of the Regulation. We agree that contrary to the Review, we do not see a need to introduce into the law clarifications on how to determine the individual character of a design. Particularly, there should be no amendment that reference should be made to factors such as the nature of the product concerned or the sector to which the product belongs. We support a clarification by way of recital amendment to the effect that too obscure prior disclosures should not be held against the design; there must be a true relevancy hurdle. We agree with the suggested introduction of a recital into the Regulation and the Directive as set out in the paper. We agree with the request an amendment to the Recitals of the

Regulation and the Directive to express that functional designs are still protected by EU design law. The exclusion for features of a design solely dictated by technical function should be narrowly construed – and that the threshold of “solely dictated by technical function” is not met in case of mere functionality of a design. We support the Review’s recommendation to allow a higher number than the current seven views or to lift the number restriction altogether, and that there should be harmonisation between national offices such as with dotted and broken lines and that it should be possible to submit additional file types to protect a wider range of designs or designs more effectively (such as movement within designs, for example transformation or opening / closing). We agree with the request that office proceedings for invalidity should be made mandatory at national level by amending the Directive accordingly. We agree with the recommendation that introducing a declaratory action for non-infringement as an EU law action under the Regulation, by way of deleting the words “if they are permitted under national law” in article 81 lit. b of the Regulation. We likewise recommend introducing an action against threatened infringement by deleting the same wording in article 81 lit. a of the Regulation. We agree with the request deleting the requirement for the same Locarno Class in article 37 of the Regulation, and amending the Directive so that member states may not provide for a same-class requirement. We agree with the request to make the possibility of deferred publication www.cipa.org.uk

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mandatory at member state level by way of amending the Directive. The deferment period should be set at a mandatory 30 months, in line with the Regulation. We also urge that any failure to progress in the highly controversial and political spare parts issue shall not delay the reform agenda triggered by the Review and advocated for in the joint paper and our own submissions. In addition In relation to the question of representation of a design we would submit that guidance is needed as to

OVERSEAS

whether a design with dotted/broken lines depict matter excluded from protection or transparency and whether surface shading protects surface decoration only, the shape of the design in conjunction with surface decoration, the shape of a design with the absence of surface decoration or the shape of a design regardless of surface decoration or any other variation as provided for in the Regulation. This could easily be achieved by amending the Regulation such that the optional description is published as part design and allowing it to have an impact on the scope of protection. Another

alternative (as we understand that there may be issues with this from a translation standpoint) would instead to allow tick boxes – similar to those the EUIPO utilise for the “types” of trade mark – to indicate the “features” of design being relied upon such as the lines, contours, colours, shape, texture, materials and ornamentation as specifically provided for in the Regulation. There could also be tick boxes to indicate if dotted lines are present in the design to indicate transparency or exclusion of protection for example. CIPA’s Designs & Copyright Committee,

Overseas update International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 22 February 2019, the Government of the Republic of Cape Verde deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Cape Verde, on 22 May 2019. On 27 February 2019, the Government of the Republic of Tajikistan deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Tajikistan, on 27 May 2019. On 12 March 2019, the Government of the Plurinational State of Bolivia deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Bolivia, on 12 June 2019. Madrid Protocol (International Registration of Marks) On 17 March 2019, the Government of Canada deposited its instrument of accession to the Madrid Protocol. The said instrument contained the following declarations: •

In accordance with article 5(2)(b), the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit. In accordance with article 8(7)(a), the Government of Canada, in connection with each international registration in which it is mentioned under article 3ter of the said Protocol,

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and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee. The Protocol will enter into force, with respect to Canada, on 17 June 2019. Singapore Treaty (Law of Trademarks) On 17 March 2019, the Government of Canada deposited its instrument of accession to the Singapore Treaty. The Treaty will enter into force, with respect to Canada, on 17 June 2019. Nice Agreement (International Classification of Goods and Services) On 17 March 2019, the Government of Canada deposited its instrument of accession to the Nice Agreement. The Agreement will enter into force, with respect to Canada, on 17 June 2019. WIPO Copyright Treaty On 22 February 2019, the Government of the Republic of Cape Verde deposited its instrument of accession to the WIPO Copyright Treaty. The Treaty will enter into force, with respect to Cape Verde, on 22 May 2019. WIPO Performances and Phonograms Treaty On 22 February 2019, the Government of the Republic of Cape Verde deposited its instrument of accession to the WIPO Performances and Phonograms Treaty. The Treaty will enter into force, with respect to Cape Verde, on 22 May 2019. Dr Amanda R. Gladwin (Fellow), GSK MAY 2019

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Indonesia – Annual Patent Fees Ian Mirandah (Mirandah Asia) looks at Indonesia’s unique policy on payment of annual patent fees

T

he rules regarding payment of patent annual fees in Indonesia can be described as unique and controversial. Since 2013, the Directorate General of Intellectual Property (DGIP) has been aggressively chasing patent owners for their unpaid annual fees even though their patents have been abandoned or deemed “void by law”. The DGIP has been issuing notices directly to the patent owners to settle unpaid annual fees and even sought help from foreign embassies in Indonesia in forwarding notices to patent owners registered in their respective countries. Recently, the DGIP has pushed harder by issuing a letter dated 16 August 2018, notifying patent owners and IP consultants that the DGIP will not accept any new patent applications from applicants with unpaid annual fees from 16 August 2019 onwards. The accumulation of these unpaid annual fees is due to the following:

Old law (before 26 August 2016) Under Patent Law No. 14 of 2001 (“old law”), annual fees from the date of application up to the date of grant were due for payment within one year from the date of grant and subsequent annuities had to be paid every year until the end of patent term. A 36-month grace period was available but subject to a penalty of 2.5% of the total annual

fees for each month. If no payments were made after the grace period, the patent would be declared “void by law” but the outstanding annual fees up to the end of the grace period plus penalties would remain payable. The DGIP would then send three notices and if the unpaid annual fees and penalties were not settled after the three notices, the case would be transferred to the Ministry of Finance as a debt collection matter. The Ministry of Finance would then add further administrative fees of 1-10% depending on how long the debts were outstanding. Therefore, the only way to prevent the accumulation of debts back then was to explicitly withdraw the patent/application. New Law (effective 26 August 2016) Under Patent Law No. 13 of 2016 (“new law”), the regulation on patent annual fees was revised to avoid the issue of debt or liability of patent owners if the annual fee is not paid on time. If a patent owner decides to abandon its patents by not paying annual fees by the due date, the patent will be deleted from Registry’s records. Although this solves the problem of accumulation of outstanding annual fees, this provision has an adverse effect on patent owners with the abolition of their patents automatically if they do not pay on time. Article 128 of the new law stipulates the mechanism of suspension of annual

fee payment. A request for suspension of payment may be filed by a patent owner by submitting a written request to the DGIP no later than seven days before the due date of the annual fee payment. The patent owner will then have a grace period of 12 months to pay the patent annual fee. This suspension of payment is subject to a surcharge of 100%. This mechanism is to accommodate the needs of patent owners who intentionally wish to suspend the payment of the annual fee regardless of a reason. However, the needs of patent owners who accidentally miss a deadline for payment of annual fees and still require patent protection was not addressed. To accommodate this, the DGIP issued Circular No. HKI.KI.05.04-01 on Payment for Lapsed Patent Annual Fee, dated 31 January 2019. A patent owner may pay a lapsed annual fee within six months of the due date without any surcharge applied. This payment applies to the first and subsequent annual fees. Although this policy is not listed in the law, the DGIP tries to accommodate the needs of patent owners who unintentionally miss the payment deadline. Despite the above changes, patent owners should note that debts accumulated prior to the implementation of the new law, still remain payable and must be paid in full by 16 August 2019.

CIPA President to meet IP Minister CIPA President, Julia Florence, is scheduled to meet Chris Skidmore MP, Minister of State for Universities, Science, Research and Innovation, with special responsibility for intellectual property, in June. Julia will update the Minister on CIPA’s domestic and international stakeholder and influencing work and will

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discuss issues such as continued co-operation with Europe on intellectual property issues post-Brexit. CIPA Officers and Council members joined Mr Skidmore at the World IP Day event in the House of Commons, organised by the IP Awareness Network and sponsored by CIPA, on 24 April. A number of CIPA Officers, Council members and staff attended.

www.cipa.org.uk

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Nudge, Nudge – Wink, Wink In a 2016 article in CIPA1, I suggested that applying nudge theory to patent office management may result in far greater work sharing than does the Patent Prosecution Highway model and offers the opportunity for a significant reduction in wasted effort by patent offices. The essence of the proposal was for patent offices to provide for a pre-examination step by informing the applicant in respect of a relevant application, that they had a set period for filing amendments/arguments in light of prosecution elsewhere, and if there was no response within that period deeming the application withdrawn. This was suggested to encourage the applicant to put the application in good order for examination, or to abandon the application, thereby saving on examiner effort within patent offices. The Brazilian Patent Office instituted a pilot programme of this general nature in JanuaryMarch 2018, and the results of the programme are now available. It appears that around 22% of the applications that received the pre-examination office action were abandoned; and around 56% of the responses contained a set of claims that conformed to EP or US counterparts2. As a result, the Brazilian Patent Office is continuing with the programme, which is evidently effective so far as managing the workload of the Brazilian Patent Office. It is to be hoped that other patent offices take note of the effectiveness of this approach. The following article provides, from the viewpoint of Brazilian practitioners, a summary of experience under the programme, and on other methods for accelerating examination in Brazil. Jim Boff (Fellow) 1. Patent Prosecution Alley – towards smart work sharing – May [2016] CIPA 16 2. https://www.daniel-ip.com/en/articles/brazilian-patent-officewill-resume-the-preexamination-pilot-program/

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Accelerating patent examination in Brazil By Gustavo Sartori

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ne of the major concerns about Brazilian patent system has been the time it takes for obtaining patent protection or, in other words, the backlog. In 2015, the time an applicant had to wait for receiving a grant notice was around ten years from filing, on average, and, depending on the technical field, this time could be even longer. In order to overcome this situation, the Brazilian Patent Office has taken some initiatives to try to reduce the backlog and improve productivity, as for example hiring new examiners, reviewing internal procedure, and turning to electronic or digital proceedings as much as possible. However, on their own these initiatives are not enough to solve the backlog. Particularly, hiring the necessary number of examiners to analyze the almost 200,000 applications waiting examination would be a problem, for two main reasons. First, Brazil is now recovering from a recession and the government does not have the necessary budget to hire more people in the next few years. Second, the examiners in Brazil are public employees, which means that they are appointed for life, so that if extra examiners are recruited they cannot be fired as soon as the backlog is over and the Brazilian Patent Office resumes analyzing the regular amount of applications it receives per year (approximately 26,000). Therefore, the Brazilian Patent Office has been trying to find solutions that do not involve significantly increasing the number of examiners. Accordingly, the Brazilian Patent Office has released new programmes for accelerating examination and expanded some of the already existing fast-track options, as a way to test different options and to permit some applications to be examined first. As these multiple expedited examination programmes are relatively MAY 2019

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BRAZIL

recent in Brazilian practice, not everyone knows them very well and that is the reason it is worth providing a few comments on the main ones. This article will cover the main fast-track options made available by the Brazilian Patent Office.

Pre-examination office action Since last year, the Brazilian Patent Office has begun to work on an initiative called pre-examination office action. According to this initiative, the Brazilian Patent Office identifies patent applications that have a counterpart allowed or granted abroad. Then, a formal office action is issued on these applications, containing the prior art cited during the examination proceedings carried out in other jurisdictions by foreign patent offices1. It should be noted that this pre-examination office action has no comments or remarks on patentability, but only a list of prior art references and a standard text inviting the applicant to respond. The idea behind the pre-examination office action is to encourage the applicant to put the application in good order before the substantive examination begins. Upon receiving this office action, the applicant has an opportunity to mirror the claims allowed or granted abroad, which can make the subsequent examination proceedings in Brazil very simple and fast. If the pre-examination office action is responded to with such claim amendments, the Brazilian examiners do not perform an in depth examination, since they take advantage of the work made by other patent offices and they only check formalities of Brazilian practice2. Consequently, by conforming the claims to those allowed or granted abroad, the Brazilian application can be allowed and granted within three to six months of response, on average. This pre-examination office action was a very clever way the Brazilian Patent Office found to eliminate part of the backlog. As mentioned, if the applicant responds with conforming claim amendments, the examination proceedings that take place subsequently are brief. In addition, since it is mandatory to respond to an office action, a lack of response leads the application to dismissal without examination, and consequently takes the application out of the examination queue3. According to Brazilian Patent Office data, approximately 20% of the applicants do not submit a response, which helps to reduce the number of applications waiting to be examined. Therefore, by using the examination results of other patent offices, the Brazilian Patent Office found a clever way to expedite examination. It should be noted that it is not possible to request the Brazilian Patent Office to issue a pre-examination office action. It is the Brazilian Patent Office that decides when and if an office action will be issued, according to its own criteria. Even if the applicant tries to anticipate things and file voluntary amendments to conform the claims to the ones allowed or granted abroad, the Brazilian Patent Office will not accelerate the allowance. In cases where the applicants tried this approach, the Brazilian Patent Office still issued a pre-examination office action and it was necessary to file a response simply stating that the current claims 10

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PATENT EXAMINATION

had already been modified according to a counterpart allowed application or granted patent.

Green patents programme Unlike the pre-examination office action, the green patents programme (and all the other that will be discussed hereinafter) requires filing a request to the Brazilian Patent Office to expedite examination. Under this programme, the examination proceedings are accelerated for those applications that refer to environmentally friendly inventions, for example the ones that are related to alternative sources of energy, sustainable agriculture, transportation, waste management and energy conservation. As for the eligibility for this programme, in addition to relating to a green technology, the application must contain no more than 15 claims and no more than three independent claims. So far, the green patents programme has proven to be very effective. It takes around 18 months from the time the green patents participation request is filed until a patent is granted.

Patent Prosecution Highway (PPH) The Brazilian Patent Office has signed multiple PPH agreements with many different patent offices. As the PPHs in Brazil are pilot programmes, most of them are restricted to certain areas of technology and have a limited amount of applications per month (and per applicant) that can participate in each of them. The following is a list of the PPHs signed with the Brazilian Patent Office: • • •

• • • •

USPTO: oil, gas, petrochemical and information technology. EPO: medical technology and chemistry – except pharma. JPO: information technology, energy, machinery, audiovisual technology, telecommunications, digital communication, computing, semiconductors, polymers, metallurgy and materials, agrochemicals, microorganisms and enzymes – except pharma. UKIPO: IT, telecommunications, semiconductors, machines, electric apparatus, energy and biotechnology. SIPO: information technology, package, measurement technologies and chemistry; DKPTO: mechanical engineering, lighting, heating, weapons and blasting. PROSUL4: encompasses the patent offices from Argentina, Chile, Colombia, CR, Ecuador, Paraguay, Peru, Costa Rica and Uruguay – this programme is not restricted to any technical field.

By using a PPH, not only is the patent granted faster, but the allowance rates are dramatically increased. If the PPH is used, the patent is granted within 0.7 years from the time the PPH request is filed and the allowance rate is around 90%, which is much higher than the average allowance rate of the Brazilian Patent Office, which is 69%, on average. www.cipa.org.uk

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Health products This fast-track option seeks to accelerates the examination of applications related to the treatment and/or prevention of HIV, cancer, neglected or rare diseases.

Notes and references

Potential infringement

2. For example, whether the amendments broadens the scope of the claims that were in the application when the examination has been requested

It is also possible to request fast-track examination, if a third party is reproducing at least one independent claim of a patent application. To request accelerated examination under this option, it is necessary to send the third party a warning letter about this potential infringement. Then, a simple request must be filed before the Brazilian Patent Office outlining the potential infringement and attaching a copy of the warning letter. It should be noted that not only the applicant can request fasttrack examination under this option. If the applicant is accusing or warning someone about an infringement or a potential infringement, the alleged infringer can file a request before the Brazilian Patent Office for fast-track examination (attaching a copy of the warning letter received).

Senior or ill applicant There is a fast-track option for those applicants that are an individual over 60 years old and/or seriously ill. To qualify the application for this fast-track option, it is necessary to demonstrate the age of the applicant and/or her/his medical condition.

Other fast-track options In addition to the fast-track options mentioned above, there are options available for Brazilian small and medium companies, Brazilian R&D institutions (universities, for example) and for Brazilian priority applications that have an allowed or granted counterpart application in another jurisdiction (similar to the PPH, but without the restrictions of technical area).

Developments in the Brazilian patent system The fast-track options and other measures the Brazilian Patent Office has taken are now having a positive impact on the backlog. For example, the average time an applicant has to wait for a granted patent has been reduced from 10.1 years to 8.5 years. Although this is still a very long time, it is the first time in many years that the delay has reduced significantly, which demonstrates that the Brazilian Patent Office is going in the right direction.

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1. In most cases, the Brazilian Patent Office lists the prior art cited by the EPO and/or USPTO

3. The applicant has various options on how to respond to a pre-examination office action; such as amending the claims, presenting arguments, presenting arguments and amendments or simply stating that the applicant wishes to wait for the substantive examination. 4. Forum for the Progress and Development of South America – see more at https://en.m.wikipedia.org/wiki/ Forum_for_the_Progress_and_Development_of_South_America

Moreover, as the pre-examination office action programme has been proven very effective in solving part of the backlog, the Brazilian Patent Office is now considering expanding it. According to recent statements by Brazilian Patent Office directors, the number of pre-examination office actions will considerably increase from May or June of this year. The Brazilian Patent Office expects that the expansion of the preexamination programme will not only reduce but also eliminate the backlog within two years. This should be possible, since the bulk of Brazilian patent applications (around 80%) are filed by foreigners and have counterparts filed in other jurisdictions. Although there is still no official notice about the expansion of the pre-examination office action, it is very likely that the Brazilian Patent Office will continue expanding and creating fast-track options to reduce the backlog. Therefore, it has becoming important for companies that conduct business in Brazil to know more about these fast-track options and use them accordingly.

Gustavo Sartori GuimarĂŁes is Head of the Mechanics Team at Daniel Law. See more at www.daniel-ip.com

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Third party SPCs Eli Lilly v Genentech – reference to the CJEU on third party SPCs. By Marjan Noor and Tom Edwards

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y way of reference to the CJEU, the High Court of England and Wales has sought welcome direction as to whether patentees can obtain SPCs on the basis of third party marketing authorisations (MAs) without the consent of that third party. The notion of third party consent or requirement for a connection to the MA holder is not explicitly stipulated in the SPC Regulation, and it is common practice for member states to grant patentees SPCs over third party products. However, a number of judicial comments both in the UK and at the CJEU have suggested that permitting the patentee to obtain an SPC in circumstances where it has made no contribution to the development of the product the subject of the MA, might be thought contrary to the underlying purpose of the SPC Regulation. To date the issue has not been considered directly by the CJEU.

Background Genentech is the holder of a patent to antibodies which bind to and inhibit IL-17A/F and such antibodies for use in the treatment of conditions, including psoriasis (EP 1,641,822; the “Patent”). Eli Lilly markets ixekizumab under the trade mark Taltz® for the treatment of psoriasis and psoriatic arthritis by virtue of marketing authorisation EU/1/15/1085 (the “Taltz MA”). Ixekizumab is a humanised monoclonal antibody raised to the IL-17A/A homodimer, which it binds to and inhibits. Eli Lilly initially developed ixekizumab as an anti-IL-17A antibody for the treatment of psoriasis without knowing of the existence of IL-17A/F. Eli Lilly subsequently discovered that ixekizumab also bound to IL-17A/F, but 12

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only as result of tests carried out following the publication of scientific papers concerning IL-17A/F published in 2007 and 2008. Following the grant of the Taltz MA, Genentech fi led an application for a supplementary protection certificate (“SPC”) at the UK IPO, SPC/GB16/056, based on the Patent and the Taltz MA. The application for the SPC is therefore based on the MA of a third party, namely Eli Lilly. Other applications for SPCs have also been made by Genentech based on the Taltz MA in countries including France, Germany, Spain and Italy. Eli Lilly commenced proceedings in the UK seeking to revoke the Patent. In addition Eli Lilly sought declaratory relief to the effect that an SPC on the Patent, if granted, would be invalid because it is contrary to the object of Regulation (EC) No. 469/2009 (the “SPC Regulation”) for a patentee to extend the life of their basic patent by relying on a marketing authorisation that had not been obtained by the patentee or a person connected with the patentee. Specifically, that such an SPC would not comply with articles 2, 3(b) and/ or 3(d) of the SPC Regulation because the Taltz MA is not a relevant authorisation for the purposes of those provisions. In relation to the criteria for determining whether the parties are connected, and mirrored on the approach taken in the regulatory framework1, Lilly proposed that the MA must have been obtained by: (a) the patentee; (b) a person belonging to the same company group as the patentee; (c) a person controlled by the same physical or legal entity as the patentee; or (d) another person pursuant to a tacit or explicit agreement with the patentee. www.cipa.org.uk

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SPCs

In his judgment on the SPC issue2, Mr Justice Arnold, summarised Lilly’s argument as being that the Taltz MA is not a relevant authorisation since it is a third party MA relied upon without that party’s consent. Further, that the object of the SPC Regulation is to compensate research organisations for the delay caused by going through the regulatory process to obtain a marketing authorisation, and the consonant loss of monopoly time in which to market their product and that an undertaking which is not one that has suffered that lost time, because it is not the one that obtained the marketing authorisation, needs and deserves no such compensation (see para [39]). The Judge also summarised Genentech’s arguments as being that it is implicit in the CJEU’s decision in Biogen Inc v SmithKline Biologicals SA (discussed further below) that the basic patent and MA may be held by different and unconnected parties; that Lilly’s contention requires reading words into the SPC Regulation; and that the SPC Regulation should be interpreted in accordance with article 3(2) of Regulation 1610/96/EC (see para [41]). The Judge concluded that the law on this issue is not clear and considered that the following question should be referred to the CJEU: “Does the SPC Regulation preclude the grant of an SPC to the proprietor of a basic patent in respect of a product which is the subject of a marketing authorisation held by a third party without that party’s consent?” The question thus invites the consideration by the CJEU of the meaning of “third party” (i.e. the degree of connection between an MA holder and the patentee) and the requirement for that party’s consent.

Relevant case law and commentary While there have been many references made to the CJEU on the interpretation of the SPC Regulation, none have directly answered the question the subject of the current reference. In C-181/95 Biogen Inc v SmithKline Biologicals SA [1997] ECR I-386, the CJEU considered whether more than one SPC can be fi led in respect of a single product where there are a number of patents relating to the same product held by different parties. SmithKline Biologicals (“SKB”) had obtained a marketing authorisation in respect of Engerix-B which it had developed under licence of patents held by Biogen and Institut Pasteur. Biogen applied for an SPC, and since the application required a copy of the MA, requested one from SKB. SKB refused to provide it, although it did provide a copy to Institut Pasteur which obtained an SPC. Biogen brought a case against SKB on the basis that it had been discriminated against contrary to Belgian law. In response, SKB raised the issue as to whether the SPC Regulation allowed the grant of more than one certificate per product. The Belgian court referred a number of questions to the CJEU. Volume 48, number 5

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The CJEU found that in such circumstances more than one SPC could be granted and further that the SPC applicant and the MA holder can be different legal entities. In addition, the CJEU held that, where the MA and patent are held by different legal entities, an application for an SPC should not be refused solely on the procedural ground that the SPC applicant is unable to provide a copy of the MA. Although an inevitable consequence of the decision was to enable patentees to obtain SPCs over third party MAs, no question regarding consent was referred to the CJEU and the Biogen decision therefore does not consider whether or not the consent of the MA holder is a relevant factor. Further, the decision does not answer the question as to whether an SPC should be granted in circumstances where the applicant and the MA holder are unconnected third parties or no contribution has been made by the patentee to the development of the product the subject of the MA. Later CJEU cases, which have cited the decision, have done so primarily in relation to whether SPCs over the same product can be granted to multiple parties – the case has not been cited in connection with the issue of whether the consent of or a connection to the MA holder is required. In Lilly v HGS (C-493/12), the question of third party SPCs arose and in a decision of the UK High Court. Mr Justice Warren found that in his view there was nothing in the SPC Regulation that suggested a connection to or consent of the MA holder was required, but that he thought that it was appropriate to make a reference to the CJEU on the third party point at the same time as a reference under article 3(a) (see [2012] EWHC 2290 (Pat) at [30] to [62] and [105]). The issue later fell away and, as a result, only a reference on a question relating to article 3(a) of the SPC Regulation was made. Nevertheless, in its decision on that reference (C-493/12), the CJEU noted that, while SPCs were in theory available in respect of any type of basic patent, to grant an SPC to a patent holder in circumstances where it had made no investment in research relating to that aspect of its original invention would undermine the objective of the SPC regulation as referred to in recital 4 of the preamble ([41]-[43]).

Notes and references 1. A provision which requires the assessment of the connectivity between two companies has precedence in the regulatory framework in the context of the global marketing authorisation where a regulatory agency is required to assess whether two companies are connected by being controlled by the same physical or legal entity or connected pursuant to a tacit or explicit agreement – see page 14 of the European Commission’s Notice to Applicants. 2. Eli Lilly and Company & Ors v Genentech, Inc. [2019] EWHC 388 (Pat)

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SPCs

ELI LILLY v GENENTECH

Lack of a consistent approach On the issue of third party SPCs, there is no consistent approach. In the UK, the judiciary have spoken about the inconsistency between the grant of such SPCs and the policy underlying SPCs 1. In Novartis v MedImmune [2012] EWHC 181 (Pat), Arnold J commented that it might be thought contrary to the purpose of the SPC Regulation to enable a patent owner to obtain an SPC over an MA obtained in respect of a product made by an allegedly infringing process (see [61] of that judgment). However, in that case counsel for Novartis made clear that they were not arguing this point. Arnold J echoed again the sentiment that a patentee should not be rewarded with an SPC in circumstances where it had made no contribution to the research leading to the grant of an MA in Teva v Gilead [2017] EWHC 13 (Pat), (see [49]-[51] of that judgment). 2. In Sandoz v Searle [2018] EWCA Civ 49, the Court of Appeal in considering the degree of specificity with which the product needs to be identified in a patent, noted that part of the reason for requiring specificity is to hinder a patentee from obtaining SPCs based on third party marketing authorisations “to obtain an extended term which [it] has not earned” (see [105] of that judgment]. In the present case, Arnold J concluded at [43]: “In my judgment the law on this issue is not clear. In my opinion the policy arguments recognised by the CJEU in Eli Lilly and Teva CJEU and by the national courts in Novartis v MedImmune and Sandoz v Searle support Lilly’s interpretation. This interpretation is also supported by Jens Schovsbo, Ulla Callesen Klinge and Timo Minssen, ‘Reap what you sow! But what about SPC squatting?’ [2018] JIPLP 569, although the authors opine that reliance

upon a third party MA should be permissible in some circumstances. The arguments advanced by Genentech cannot lightly be dismissed, however.” In particular, it is common practice amongst national offices to grant SPCs on the basis of third party MAs – see section 13.3.1.1 of the Study on the Legal Aspects of Supplementary Protection Certificates in the EU (2018).

Certainty for industry The CJEU’s ruling will hopefully provide some certainty for industry on this issue and is being followed with keen interest by both IP lawyers and those in industry. The factual scenario presented is notably different to that which underpinned the Biogen decision and will require the CJEU to address the interpretation of the SPC regulation with respect to different ownership of the SPC and MA in circumstances where there is no connection between the parties. The SPC framework is intended to encourage the development of pharmaceuticals through compensation for the reduced effective patent exclusivity for approved medicinal products arising from the delay to market incurred by the requirement to obtain regulatory approval. In an environment where pharmaceutical development costs are ever increasing, but the potential gains from the final years of patent life are also increasingly lucrative, the consideration of whether patentees should be entitled to have ‘skin in the game’ to benefit from an SPC on a third party MA is now more important than ever – whatever the answer, it should be that which best promotes the underlying aim and incentivises the delivery of new treatments to patients. Marjan Noor is a Partner and Tom Edwards an Associate at Allen & Overy LLP. See more at www.allenovery.com

CIPA Life Sciences Conference Save the date Monday & Tuesday, 11-12 November 2019 The Brighton Grand 14

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DECISIONS

Patent decisions Validity | Dosage regime | Obviousness | Obvious to try | UK and EPO approaches to obviousness | Entitlement of Court of Appeal to reverse first instance judgment | Foreign judgments Actavis Group PTC EHF and others v ICOS Corporation and another [2019] UKSC 15; 27 March 2019; Lady Hale, Lord Kerr, Lord Sumption, Lord Hodge and Lord Briggs This Supreme Court decision relates to obviousness of a dosage regime patent. The appeal was dismissed, and the patent revoked for obviousness. The lead judgment was given by Lord Hodge, with the other judges agreeing. The Court of Appeal judgment was given by Kitchin, Floyd and Lewison LLJ ([2017] EWCA Civ 1671, reported December [2017] CIPA 23), and the first instance judgment was given by Birss J ([2016] EWHC 1955 (Pat), reported November [2016] CIPA 48). The Supreme Court decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 27 March 2019. European Patent (UK) No. 1173181 was owned by ICOS and exclusively licensed to Lilly. The patent related to the use of a dosage regime of tadalafil for male erectile dysfunction. Actavis had applied to revoke the patent on various grounds, including obviousness, and Lilly had counterclaimed for infringement. The patent was found not obvious at first instance on the basis that a 25 mg/day dose of tadalafil was obvious from a prior art document Daugan, but that the claimed 5 mg/day dose was not. This conclusion was overturned by the Court of Appeal on the basis that the skilled team would have extended dosage response trials down to a 5 mg/day dose. Lord Hodge agreed with the Court of Appeal, summarising his reasoning as follows: “The task which the notional skilled team would undertake was that of implementing Daugan. The target of the skilled team would be to ascertain the appropriate dose, which would usually be the lowest effective dose. The skilled team would know of that target from the outset of its research. The pre-clinical and clinical tests involved familiar and routine procedures and normally progressed to the discovery of the dose-response relationship in Phase IIb. In this case the trial

PATENTS: UK

judge’s findings of what would have been the sequence of the tests, which did not depend upon hindsight, included the finding, which the evidence clearly justified, that the team, having found a therapeutic plateau, would be very likely to test lower doses and so come upon the dosage regime which is the subject-matter of the patent… I am satisfied that the Court of Appeal was entitled to interfere with the trial judge’s assessment of obviousness and to hold that the 181 patent was invalid for lacking an inventive step.” Lord Hodge provided a non-exhaustive list of nine factors relevant to assessment of obviousness: 1. Whether the invention was obvious to try with a reasonable prospect of success (referring to MedImmune Ltd v Novartis Pharmaceuticals UK Ltd [2012] EWCA Civ 1234). 2. Whether the research was routine in nature. 3. The burden and cost of the research programme. 4. The necessity for and nature of value judgements by the skilled team in the course of research. 5. The existence of multiple paths for research (as an indicator of non-obviousness). 6. The motive of the skilled person. 7. Whether the results of research were surprising. 8. Hindsight must not be used, but it may be obvious to take a series of steps. 9. “Bonus effect” i.e. whether an invention has an added benefit but is obvious for another purpose. With regard to the first factor, Lord Hodge commented that: “I am not persuaded that, in the context of a dosage patent, it is necessary for the skilled team to identify in advance of the Phase IIb tests the specific dose which is the subject of the claim. Were it otherwise, many, if not most, dosage regimes would be patentable, whether the results of the tests were surprising or not, simply because the precise doses which ultimately are specified in the claim may not be sufficiently foreseeable. In my view, the MedImmune requirement is met if the step-by-step approach, without the benefit of hindsight, demonstrates that the skilled team would be very likely to pursue the tests to the point at which they would ascertain the product or process falling within the claims.” Lord Hodge confirmed that the Court of Appeal had been entitled to reverse the first instance judge’s decision:

The UK patent court case reports are prepared by John Hull, Anna Hatt, Jonathan Markham, Matthew Ng and Sarah-Jane Poingdestre of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.

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“I consider that the Court of Appeal was entitled to treat the judge’s failure to appreciate the logical consequences of the finding – that it was very likely that the skilled team would continue the testing – as an error of principle which allowed an appellate court to carry out its own evaluation.”

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DECISIONS

Lilly argued that the patent was non-obvious because it allowed daily rather than on-demand dosing. The judge disagreed, noting that the claims were not limited to daily dosing, and moreover that the possibility of daily dosing would have been discovered via the tests in an obvious manner. Lord Hodge commented on the relationship between the UK and EPO approaches to obviousness, quoting extensively from the EPO Guidelines for Examination. He stated that: “In relation to the second submission, that the Court of Appeal’s approach was in conflict with the EPO’s problem and solution approach, it is important to recall Jacob LJ’s words in Actavis v Novartis… that no-one has ever suggested that the problem-and-solution approach is the only way to go about considering obviousness. Like the Windsurfing/Pozzoli approach, it provides a structured approach which may assist in avoiding the dangers of hindsight and may be more helpful in some cases than in others. No formula should distract the court from the statutory question: Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd [2009] EWCA Civ 646; [2009] RPC 23, para 17 per Jacob LJ… I am not persuaded that the problem-and-solution approach would necessarily give a different answer from that of the Court of Appeal. The closest prior art is the Daugan patent and the well-established procedures of pre-clinical and clinical testing. The problem posed by Daugan was the identification of an appropriate dosage regime. The EPO approach to assessing the obviousness of the claimed invention would then be to apply the ‘could-would approach’, which means asking not whether the skilled person could have carried out the invention, but whether he would have done so in the hope of solving the underlying technical problem or in the expectation of some improvement or advantage: T-2/83 OJ 1984 265 (Rider/Simethicone tablet), para 7; T-1014/07 (above) paras 7 and 8. The tangible evidence which reveals why the skilled team would have been prompted to come upon the asserted invention [includes] (b) Dr Saoud’s evidence that it was a ‘no brainer’ to go on with the tests. The judge’s finding that the skilled team would not have had an expectation of effectiveness at a 5mg dose does not militate against the conclusion that the team would have investigated that dose in the course of a sequence of tests which had as its purpose the solution of the underlying technical problem, which the implementation of the Daugan patent entailed.” Lord Hodge also considered the relevance of judgments in parallel revocation proceedings in various EPC member states. He commented that: “Because of the differences in the evidence led, the manner by which it is tested, and the differing findings to which that evidence gives rise, one may derive support from the approach to the question and methods of reasoning of other 16

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national courts but should never rely uncritically on the outcome.” There were several interveners in the proceedings, including trade associations, which asked for guidance on obviousness of dosage regime patents. Lord Hodge replied as follows: “The UK BioIndustry Association asked for guidance on the relevance in the assessment of obviousness of (a) the reasonable expectation of success as a factor and (b) the problem-and-solution approach of the EPO. It expressed concern that the judgment of the Court of Appeal might support the view that empirical research in the field of bioscience would not be seen as inventive in so far as the methods of research were well-established. The IP Federation similarly expressed concern about a perceived risk that people might extrapolate from statements in the Court of Appeal’s judgments that the result of routine investigations cannot lead to a valid patent claim. It expressed a particular concern about the breadth of the statement by Lewison LJ (in para 180): ‘in a case which involves routine pre-clinical and clinical trials, what would be undertaken as part of that routine is unlikely to be innovative’… I do not construe the judgments of the Court of Appeal as supporting any general proposition that the product of well-established or routine enquiries cannot be inventive… there is no policy reason why a novel and inventive dosage regime should not be rewarded by a patent. A fortiori, efficacious drugs discovered by research involving standard pre-clinical and clinical tests should be rewarded with a patent if they meet the statutory tests.”

Construction | Validity | Amendment | Novelty | Obviousness | Plausibility | Infringement Eli Lilly and Company (and seven other Lilly companies) v Genentech, Inc. [2019] EWHC 387 (Pat) 1 March 2019; Arnold J This decision relates to European Patent (UK) No. 1641822 of Genentech. The patent covered an antibody and its use in treatment of rheumatoid arthritis (RA) and psoriasis. Lilly had a product, ixekizumab, and sought revocation of the patent and a declaration of non-infringement. Genentech counterclaimed for infringement. The decision runs to 618 paragraphs and Arnold J commented that “this is one of the most complex patent cases I have ever tried”. A brief initial report was provided on the IPKat blog – http://ipkitten.blogspot.co.uk – on 1 March 2019. The patent was found invalid, but would have been infringed if valid. The judge’s conclusions were summarised as follows: “For the reasons given above, I conclude that: www.cipa.org.uk

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i. Genentech’s unconditional amendments to the claims are allowable, with the minor exception of ‘comprises’ in new claims 1 and 14, but the conditional amendment to ‘consists of ’ is allowable. ii. Claims 1, 2, 13, 14 and 15 are obvious over US344, as are claims 12, 20 and 22 in so far as those claims are directed to RA. iii. Claims 1, 2, 13, 14 and 15 are novel but obvious over the IL-17A/A prior art, as are claims 12, 20 and 22 in so far as those claims are directed to RA. iv. Claims 12, 20 and 22 are insufficient for lack of plausibility in so far as they are directed to psoriasis. Lilly’s other insufficiency objections are rejected. v. If (contrary to my conclusions) the claims are valid, they have been infringed by Eli Lilly & Co Ltd and Eli Lilly & Co.”

Construction The claims required an antibody “which specifically binds to” a heterodimeric peptide complex, IL-17A/F. Lilly argued that this excluded antibodies which were also capable of binding to the homodimeric peptide complexes IL-17A/A and IL-17F/F. Genentech argued that all that was required was binding as an antibody. The judge adopted Genentech’s construction, noting that no negative screening step for binding was used in the patent. The judge also construed the terms “inhibits the activity of… IL-17A/F… to induce production of IL-8 and IL-6” and “for” the treatment of RA or psoriasis.

Amendment Genentech had made an unconditional request for amendment, with a further conditional request. Lilly opposed the amendment on the grounds of introduction of lack of clarity, extension of protection and added subject-matter. •

Clarity: the judge held that “which specifically binds to” and “induce protection of IL-6 and IL-8” were contained in the granted claims so could not be objected to; the former was clear in any case. “Comprises” was also clear.

Extension of protection: the amendment changed a requirement for the peptide complex to “consist of ” particular sequences to a requirement for it to “comprise” such sequences. The judge agreed that this extended protection, but granted the conditional request to amend the wording back to “consists of ”.

Added subject-matter: the judge noted that the EPO Opposition Division had revoked the patent on this ground, and that the Comptroller of the IPO had also objected to the proposed amendments. Nonetheless, the judge held that there was no added subject-matter on each of five points raised by Lilly.

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The judge applied the test of Vector Corp v Glatt Air Techniques Ltd [2007] EWCA Civ 805: whether a skilled person would, upon looking at the amended specification, learn anything about the invention which he or she could not learn from the unamended specification. The judge referred also to the EPO “gold standard” (Case Law of the Boards of Appeal 8th Ed. p. 401). However, the judge was unsympathetic to Lilly’s EPO-style argument that there had been an impermissible selection from multiple lists, finding that the relevant amendments narrowed the claim to part of the original disclosure without teaching the skilled person anything new about the invention. He was also unsympathetic to an argument by Lilly that the amended claims required an undisclosed subset of an originally claimed range of binding strengths. The judge commented that evidence is of minor significance in assessing added subject-matter, stating that: “the question of added matter is not one which falls to be resolved by reference to the burden of proof since it involves an objection comparison by the court of the two documents.”

Novelty and obviousness Lilly contented that the claims were obvious over a prior art document US344 which disclosed the heterodimeric complex IL-17A/F, as it would be obvious to make and isolate antibodies to this complex and test them for use in treating RA with a good expectation of success. The judge agreed. He commented also that: “there is nothing in the Patent that would give the skilled person any greater reason to believe that an anti-IL-17A/F antibody would be efficacious against RA. (This means that, if the skilled person’s expectation of success based on the prior art was not sufficient for obviousness to try, the claims would fail for lack of plausibility applying the principles discussed below; which is not to imply that the legal tests are the same.)” In relation to claims with the broad purpose limitation “for use in a method of medical treatment”, the judge commented that: “Given that these claims extend to absolutely any form of medical treatment, I consider that these claims cannot be independently valid. Either they require no threshold of efficacy, in which case it would be obvious to try humanised anti-IL-17A/F antibodies for treating various inflammatory diseases to see what happened; or they do require a threshold of efficacy, in which case it was and remains utterly implausible that IL-17A/F antibodies are efficacious for all forms of medical treatment.” The judge then considered novelty and obviousness over prior art relating to the better-known homodimeric complex IL17A/A: MAY 2019

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Novelty: argued that working this prior art would inevitably lead to antibodies that also bound to IL-17A/F, and that novelty could not be established by providing more information about the same invention. The judge disagreed. Obviousness: experiments had been conducted by Lilly and criticised by Genentech, and the judge considered these matters at length. He held that the claims were obvious because, whilst it was not inevitable that anti-IL-17A/A antibodies produced in implementing the prior art by obvious methods would bind to IL-17A/F, this was highly probable.

This aspect of the case related to the psoriasis-directed claims. The judge considered whether it would have been plausible to the skilled dermatologist reading the patent that an anti-IL17A/F antibody would be effective against psoriasis, applying the recent decision of the Supreme Court in Warner-Lambert Co LLC v Generics (UK) Ltd [2018] UKSC 56. He noted that the Supreme Court guidance related to second medical use claims, but was also applicable to the first medical use claims here. The judge held that the plausibility test was not met, so the patent was insufficient: “In my judgment the skilled person would not regard it as plausible that an anti-IL-17A/F antibody would have a discernible therapeutic effect on psoriasis for the reasons given by Prof Krueger. I would emphasise five points. First, the absence from the Patent of any experimental data concerning the role or effect of IL-17A/F, let alone an antiIL-17A/F antibody, in psoriasis. Secondly, the absence of any discussion of the role or effect of IL-17A/F in psoriasis. Thirdly, the limited support for IL-17A/A (let alone IL17A/F) having a pathogenic role in psoriasis provided by the papers cited in the Patent, particularly given the common general knowledge as to all the other cytokines which were implicated in psoriasis. Fourthly, the fact that the Patent shows that IL-17A/F is an order of magnitude less potent than IL-17A/A. Fifthly, the fact that the specification claims efficacy against a broad list of conditions which it is wholly implausible that an anti-IL-17A/F antibody (or any form of IL-17A/F therapy) would be effective against. Moreover, there is no emphasis on psoriasis in the specification. Such emphasis as there is concerns RA, which the skilled dermatologist would appreciate raised different considerations to psoriasis. In short, the claim of efficacy against psoriasis is speculative.” Lilly had also argued on insufficiency that the claims were ambiguous, and that it would be an undue burden to make antiIL-17A/F-only antibodies. The judge did not accept these points. CIPA JOURNAL

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Infringement Although in his view the patent was invalid, the judge went on to consider infringement. He considered that the patent, if valid, would have been infringed by Lilly’s use of ixekizumab. In case his construction of “which specifically binds to” was wrong, he considered whether the alternative construction would have led to a finding of infringement under the doctrine of equivalents set out in Actavis v Lilly [2017] UKSC 48. He considered that there would still have been infringement (noting in passing that there are likely to be few cases in which the second question is answered in the negative).

Application for inspection of property

Insufficiency

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Boehringer Ingelheim Pharma GmbH & Co. KG v (1) Generics (UK) Ltd t/a Mylan (2) Grupo Ferrer Internacional SA [2019] EWHC 584 (Ch) 6 March 2019; Henry Carr J This judgment related to an action by Boehringer Ingelheim for pre-action inspection of property under section 33(1) of the Senior Courts Act. Boehringer Ingelheim was the proprietor of European Patent (UK) No. 1326862 relating to crystalline tiotropium bromide monohydrate. Boehringer Ingelheim sold this product under the brand name SPIVIRA for treatment of asthma and other lung disease. Mylan sold generic tiotropium bromide, which it contended was anhydrous and therefore outside the scope of Boehringer Ingelheim’s patent. The parties agreed that samples should be provided by Mylan to Boehringer Ingelheim to allow experiments to take place. However, Mylan did not accept that it should provide an inhaler device as well as product capsules, and the parties disagreed as to how many packs of capsules should be provided. The judge held that an inhaler device should be provided, as the product was provided to patients in this form and experiments should be done on the product as it would be used by the patient. Mylan had not provided any reason why it should not disclose the inhaler device. The judge held that five packs of capsules should be provided, rather than the ten packs requested by Boehringer Ingelheim. It was disputed whether Boehringer Ingelheim should be granted an order allowing the samples and experimental results to be used in proceedings in other jurisdictions. The judge did not grant this order, but indicated that it was open to Boehringer Ingelheim to make an application later, once the experiments had been conducted and it was clear how it would want to use the results in foreign proceedings. Boehringer Ingelheim was required to pay Mylan’s costs for the application. www.cipa.org.uk

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IPO decisions Patentability: section 1(2) Arris Enterprises, Inc BL O/128/19; 7 March 2019 The application related to a user interface for controlling a thermostat. The ordering of various controllable attributes of the user interface was dynamically determined based on an ambient temperature. The examiner considered the invention to be a computer program and the presentation of information as such, and a hearing was requested to decide on the matter. Following the Aerotel approach, the hearing officer identified the contribution of the invention over the relevant prior art as being a computer-implemented method of displaying a set of controllable attributes on a user interface, where one of the controllable attributes (heat set) was displayed at a higher priority with a decrease in detected ambient temperature. The advantage of this invention was a reduction in the number of keystrokes that were needed by a user to navigate among the controllable attributes of the thermostat. The use of the ambient temperature in the determination of the ordering involved the detection of a physical parameter, which the hearing office considered a clearly technical process. The contribution represented a real world technical achievement outside of the presented information itself. The invention was therefore not excluded as the presentation of information. For the same reasons, the invention was not excluded as a computer program as such. The case was remitted to the examiner to be sent to grant. Fisher-Rosemount Systems Inc. BL O/148/19; 22 March 2019 The application related to a method of displaying process control search results via a user interface, in which a parameter was searched for to identify a control parameter, and a set of matched control parameters displayed via a user interface. The search results were dynamically updated dependent on the context of the search request, the result being a context dependent display of search results including control parameters and updated associated runtime data.

Patent decisions of the comptroller can be found on the IPO website via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/opinion-requests. David Pearce (Barker Brettell) & Callum Docherty (Withers & Rogers)

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The examiner objected that the claimed invention was excluded from patentability, although appeared to be novel and inventive. The applicant argued that the contribution made by the invention related to providing contextually tailored updated search results, enabling better management of a process control system, and that the invention was not excluded because it provided indications about the conditions prevailing in an apparatus or system, which was acknowledged in EPO decision T 115/85, referred to in AT&T, Symbian, Aerotel and HTC. The hearing officer considered that the contribution provided a technical effect on a process carried on outside of the computer because it gave visual indications about the conditions prevailing in a control system. Since this was a technical field of endeavour, the requirement for the invention to comply with section 1(2) (c) was met. The application was remitted to the examiner for further examination of added matter, which had not been dealt with prior to the hearing. ABB Inc. BL O/164/19; 28 March 2019 The application related to analysing control loops of a control system for controlling a process, in which assessments of predefined key performance indicators (KPIs) were generated for sections of a selected control loop and displayed in a screen of a graphical user interface along with control data of the selected control loop. The applicant argued that the contribution provided was not in direct control of a physical process per se, but in improved means for an operator to control the physical process. The hearing officer considered that the invention may make it easier for a user to analyse control loops and diagnose problems by having a range of KPIs presented and juxtaposed on a single screen. How the user acted on the information, however, was not indicated as being anything other than through use of conventional software and hardware in a conventional way. The contribution was seen to fall solely within the area of presentation of information as such because, although the information being presented was technical, there was no technical contribution in the manner of its collection, presentation or modification. The invention was therefore excluded from being patented and the application was refused.

Declaration of non-infringement: section 71 International Safety Components Ltd v DMM International Ltd BL O/147/19; 22 March 2019 A request for a declaration of non-infringement was made by the claimant (ISC) regarding a GB patent of the defendant (DMM). The patent claimed a metal carabiner incorporating an RFID tag surrounded by an electrically non-conductive resin to secure and protect the tag in a well within the carabiner, MAY 2019

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the resin including a magnetically-permeable material. The claimant submitted three of their products, all of which were carabiners having RFID tags held within a recess by means of a specified adhesive. The claimant asserted that the adhesive was not a resin and did not contain ferrite or particulate iron, which were described in the patent as being examples of magnetically permeable materials. The hearing officer first considered whether, as a matter of normal interpretation, the products would fall within the scope of claim 1 and found that they did not because the adhesive in the claimant’s products was not magnetically permeable in the sense defined in the patent. The hearing officer then went on to

consider whether the variant of using the claimant’s adhesive would be considered to be immaterial. The patent stated that the inventive concept was the use of a resin including a magnetically permeable material to encapsulate and secure an RFID tag in a metal component, the effect of which would be to increase the acceptable distance between the tag and a reader. The patent also stated that the use of such a resin allowed the tag to be recessed more deeply, affording the tag greater physical protection. The claimant’s products were not therefore immaterial variations from the invention because they did not achieve the same result in substantially the same way. The hearing officer therefore declared that the products did not infringe the patent.

EPO decisions

excipients as defined in claim 1 of the main request. Despite this, the TBA held that the skilled person would not have used this formulation as they would not have had a reasonable expectation of success that it would solve the problem defined. This was because the relevant document was a scientific paper dealing with basic research, not the provision of therapy. The TBA held that the skilled person would not have considered formulations used in basic research (i.e. research far removed from even preclinical situations) when aiming at providing a formulation for therapeutic treatment, because the requirements of safety/ tolerability and bioavailability are not decisive factors in basic research. Instead, experiments in basic research are done with formulations that primarily aim at ensuring that the compound tested will be present at the location where it was hypothesised to exert its activity. The TBA also noted that the skilled person would have had reservations about using a formulation with a combination of an unusually high number of excipients in unusual concentrations. The TBA further noted that the formulation under consideration in this final citation was not particularly preferred – it was not used in all the experiments carried out in that document. The TBA therefore held the patent to be inventive. The TBA also rejected the respondents arguments on extension of subject matter under (article 100(c) EPC), sufficiency (article 100(b) EPC) and novelty (article 100(a) EPC).

Inventive step – article 56 EPC T 1680/17: Fulvestrant formulation / AstraZeneca AB TBA decision of 24 January 2019 Chair: A. Lindner Members: M. Pregetter, M. Blasi This was an appeal by the patentee against the Opposition Division’s decision to revoke its patent for a pharmaceutical formulation of fulvestrant for use in the treatment of breast cancer. The Opposition Division had held the patent to be invalid for lack of an inventive step. Before providing its reasoning, the TBA reiterated that the Boards of Appeal generally apply the problem-solution approach to assess inventive step, and that this approach was developed to ensure an objective assessment of inventive step and to avoid ex post facto analysis of the prior art. The TBA agreed that the one document that had been invoked as the closest prior art – a scientific journal article describing a clinical study – related to the same problem as the patent. However, the TBA held that there was no disclosure of the complete formulation of fulvestrant used in the disclosed clinical study and therefore this study could not have been reproduced. The TBA went on to assess the technical problem starting from this closest prior art document and to examine whether the solution as defined in claim 1 of the main request was obvious. In particular, the TBA considered the knowledge of the skilled person and the state of the art concerning the formulation of fulvestrant, by reference to various other citations. The knowledge of the skilled person was deemed to be too general to be applied to fulvestrant, which it was accepted was difficult to formulate. Yet further citations were rejected as they did not disclose complete formulations. However, there was no doubt that the final citation considered disclosed the use of a fulvestrant formulation that had the same 20 CIPA JOURNAL

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Accelerated processing – Notice from the Vice President, OJ EPO 2008, 220 T 0872/13: Factor VII Glycoforms / NOVO NORDISK of 28.8.2018 TBA decision of 28 August 2018 Chair: A. Lindner Members: T. Sommerfeld, M. Blasi This was an appeal by the patentee from a decision of the Opposition Division maintaining a patent in an amended form. The patent concerned a pharmaceutical composition comprising a preparation of factor VII polypeptide containing a particular www.cipa.org.uk

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motif, wherein the motif included a particular serine residue arrangement for use in the treatment of a bleeding disorder. The opponent, Strawman Limited, also appealed requesting that the patent be revoked in its entirety on the grounds of lack of novelty and that the various auxiliary requests be rejected on the grounds of lack of inventive step, added matter, extension of claims scope and lack of clarity. Strawman Limited requested accelerated processing of the appeal on two occasions. The TBA rejected these requests. The TBA can order accelerated proceedings, as far as the procedural regulations of the Boards of Appeal allow – Notice from the Vice-President DG3 of 17 March 2008 (OJ EPO 2008, 220). The following examples of circumstances justifying an acceleration request are given in the Notice: 1. where infringement proceedings have been brought or are envisaged; 2. where the decision of potential licensees of the patent in suit, that is the patent which is the subject of an appeal, hinges upon the outcome of the appeal proceedings; and 3. where an opposition which is to be given accelerated processing has been made the subject of an appeal. The opponent’s first request for acceleration in the present appeal was made on the grounds that the proceedings were “causing uncertainty and hampering investment and development decisions by interested parties”. The second request was made on the grounds that the company CSL Limited – the real party

PATENTS: UK IPO • EPO

of interest behind the opponent Strawman Limited – was developing a recombinant Factor VII albumin fusion protein and therefore needed certainty to continue its development activities, in view of the large financial sums involved. The opponent therefore argued that any decision of CSL Limited as a potential licensee under the patent depended on the outcome of the appeal proceedings, and thus the request for accelerated proceedings fell within the second example from the Notice. The patentee submitted that the opponent had provided no particular reasons why the proceedings should be accelerated. The TBA rejected the requests for acceleration. With regard to the opponent’s first request, the TBA reasoned that the opponent had relied on a general statement not particularly related to any party to the proceedings. With regard to the second request, the TBA noted that the opponent similarly had not argued that it had itself a legitimate interest in the proceedings being accelerated. CSL Limited was a third party to the proceedings and there was no basis on which to attribute the interests of this party to the opponent. The example in the Notice from the Vice-President relied upon by the opponent was inapposite, since it related to a situation where the party requesting acceleration was the patentee. In any case, there was no documentary evidence to suggest that any decision of a potential licensee of the patent in suit depended on the outcome of the appeal. The case was remitted to the Opposition Division with an order to maintain the patent as amended in accordance with the claims in auxiliary request 3 and with consequent amendments to the description and the figures.

Legal Board of Appeal (LBA) and Technical Board of Appeal (TBA) decisions are available on the EPO website at https://www.epo.org/law-practice/case-law-appeals/recent.html and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from https://www.epo.org/law-practice/case-law-appeals/eba/number.html. A list of the matters pending before the Enlarged Board is included at https://www.epo.org/law-practice/case-law-appeals/eba/pending.html. Recent notices and press releases of the EPO are published at http://www.epo.org/service-support/updates.html and http://www.epo.org/news-issues/press/releases.html respectively, and recent issues of the Official Journal can be downloaded from https://www.epo.org/law-practice/legal-texts/official-journal.html. This month’s contributors from Bristows are Rachel Mumby and Chloe Dickson

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: •

Research Handbook on Patent Law and Theory (Edward Elgar), Edited by Toshiko Takenaka, University of Washington, School of Law and Seed IP Law Group, US

Copyright and the Court of Justice of the European Union (OUP), Eleonora Rosati Mark Lemley, Stanford University, US; and Matthew Rimmer, Queensland University of Technology, Australia

Copyright in the Information Society – A Guide to National Implementation of the European Directive (Edward Elgar), Edited by Brigitte Lindner and Ted Shapiro

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

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TRADE MARKS

Trade marks Decisions of the GC Ref no.

Application (and where applicable, earlier mark)

CJ C-129/17 Mitsubishi Shoji Kaisha Ltd, Mitsubishi Caterpillar Forklift Europe BV v Duma Forklifts NV, G.S. International BVBA 25 July 2018 Reg 207/2009 Directive 2008/95/ EC

– motor vehicles, electric vehicles and forklift trucks (12) MITSUBISHI – motor vehicles, electric vehicles and forklift trucks (12) (EUTMs)

Reported by: Daniel Anti

– land vehicles and means of transport (12) MITSUBISHI – land vehicles and means of transport (12) (Benelux marks)

Comment

On a reference from the Brussels Court of Appeal, the CJ held that removing a proprietor’s marks from its goods and affixing other signs to those goods and subsequently importing them into the EEA constituted infringement under article 9 of the Regulation and article 5 of the Directive. Duma was in the business of purchasing Mitsubishi forklifts from outside the EEA. Following purchase, Duma would remove the Mitsubishi marks, rebrand the trucks and make alterations to them such that they were compliant with various EU regulations. Duma then imported the rebranded altered trucks into the EEA. The CJ noted that removal of the marks deprived Mitsubishi of its essential right to control initial marketing in the EEA of goods bearing its mark. Prohibiting it from doing so was contrary to the objective of ensuring undistorted competition in the EEA. Furthermore, despite the removal of the marks, the relevant consumers continued to recognise the forklift trucks as Mitsubishi’s (although the essential function of the mark could be harmed irrespective of the fact). Removal of the marks therefore precluded Mitsubishi from being able to retain customers by virtue of the quality of the goods. Finally, the CJ noted that removal of the marks in order to fix other signs would be considered ‘use in the course of trade’, as it involved active commercial conduct for economic advantage; this was particularly the case where the intention was to market the goods in the EEA.

The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the CJ and GC decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/home Abbreviations used: A-G = Advocate General; BoA = Board of Appeal; GC = General Court; CJ = Court of Justice of the EU; CTM = Community Trade Mark; EUIPO = European Union Intellectual Property Office; EUTM = European Union Trade Mark; IPEC = Intellectual Property Enterprise Court; PDO = Protected designation of origin; PGI = Protected geographical indication This month’s contributors are Katharine Stephens, Emma Green, Hilary Atherton at Bird & Bird LLP. 22 CIPA JOURNAL

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Ref no. GC T-122/17 Devin AD v EUIPO; Haskovo Chamber of Commerce and Industry

Application (and where applicable, earlier mark)

Comment

DEVIN – non-alcoholic drinks; mineral water; seltzer waters; fruit-flavoured beverages; juices; syrups; non-alcoholic aperifs; spring water; flavoured water; non-alcoholic fruit extracts; non-alcoholic fruit juices beverages; table water; water (beverages) (32)

The GC annulled the BoA’s decision that the mark DEVIN was descriptive of the geographical origin of the goods covered by the mark under article 7(1)(c). Devin is the name of a spa town in southern Bulgaria that possesses a number of hot springs, spa resorts and water reserves. The GC held that, when the BoA assessed the alleged descriptive character of the mark, it had incorrectly focused its assessment on tourists from neighbouring Greece and Romania who had visited Bulgaria or Devin. Instead it should have taken into consideration the entire relevant public in the EU. Tourists that had visited Bulgaria or Devin were more likely to be aware of Devin and its reputation than the average consumer of beverages in the EU as a whole. The BoA’s focus on these tourists led to the incorrect factual assessment that the relevant public would associate the mark DEVIN with the geographical origin of the goods concerned. The entire relevant public in the EU would not associate the mark with Devin in this way.

LESHARE – computer software; electronic publications; computer programs (9) – rental of advertising space; online advertising on a computer network; production of advertising films; advertising and marketing services; systemisation of information into computer databases (35)

The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1) (b). The BoA was correct to find that the relevant public was the English-speaking general public and IT professionals and that the level of attention of the relevant public varied from average to high. As regards the visual and phonetic comparison of the signs at issue, the average consumer would perceive the mark applied for as consisting of distinct ‘le’ and ‘share’ elements and the earlier mark as consisting of distinct ‘lex’ and ‘ware’ elements. This separation lessened the effect of the coincidence between the first and the last letters of the signs at issue and the BoA was therefore correct to find that the marks had an average degree of visual and phonetic similarity. As regards the conceptual comparison, as the term ‘ware’ was commonly used in relation to information technology goods and services, the mark LEXWARE would be perceived by the relevant public as being descriptive of the same. On the other hand, the term LESHARE did not have any specific meaning. As such, the marks were conceptually dissimilar. The GC agreed with the BoA that the conceptual dissimilarity outweighed the average degree of visual and phonetic similarity and that there was therefore no likelihood of confusion between the marks at issue.

25 October 2018 Reg 207/2009 Reported by: Mark Livsey

GC T-546/17 Haufe-Lexware GmbH & Co. Kg v EUIPO; Le Shi Holdings (Beijing) Ltd 15 November 2018 Reg 207/2009 Reported by: Mark Livsey

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LEXWARE – electronic publications; software, database software; data storage media; hardware; computer networks (9) – advertising; rental of advertising space on the Internet; IT and EDP outsourcing services, data collection; collection and maintenance of data in databases (35)

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Ref no.

Application (and where applicable, earlier mark)

GC T-263/18 Meblo Trade d.o.o, v EUIPO; Meblo Int 5 March 2019 Reg 2017/1001

– furniture, including beds and bed frames; spring mattresses; (20) – services relating to the sale of furniture, beds, bed frames, spring mattresses and other articles of sleeping equipment (35)

Reported by: Megan Curzon

GC T-220/16

PRO PLAYER – clothing, footwear and headgear (25)

Perry Ellis International Group Holdings Ltd v EUIPO 12 March 2019 Reg 2017/1001 Reported by: Ciara Hughes

GC T-107/18 Erkan Aytekin v EUIPO; Dienne Salotti Srl

– divan beds; bed chairs; armchairs; bunk beds; divan (20)

27 February 2019 Reg 2017/1001 Reported by: Louise O’Hara

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– furniture of any material (20, 24 and 25)

MAY 2019

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Comment

The GC upheld the BoA’s decision; the application for revocation under article 58(1)(a) was dismissed. Although the intervener had only used variants of the mark in issue, such variations in the use of the mark did not alter its distinctive character. The use of those variants of the mark was sufficient to establish genuine use. The GC further held that the use of descriptive elements with the mark, such as the type of goods and services, the date of establishment or the method of distribution did not alter the distinctive character of the mark.

The GC upheld the BoA’s refusal to register the mark applied for on the grounds of descriptiveness pursuant to article 7(1) (c). The GC noted that it was sufficient that the sign was descriptive in relation to only some of the goods within a category of goods. The goods applied for included goods relating to sport. Accordingly, the BoA was correct to conclude that the mark applied for would be perceived by the relevant public as indicating that the goods designated by the sign were either identical or similar to those used or worn by professional players of a sport or game. As the GC held that the BoA was correct in its conclusion on descriptiveness, there was no need for the GC to further consider whether the mark was devoid of distinctive character pursuant to article 7(1)(b). The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b). The BoA was correct in finding that the relevant public was the public at large, demonstrating a higher than normal level of attention (since items of furniture are not purchased regularly). The GC also agreed that the marks were visually similar to a very low degree, and somewhat phonetically similar. The GC further agreed with the BoA’s conceptual analysis of the marks. The BoA had held that, notwithstanding a semantic link between the marks in Italian, the marks were meaningless to the non-Italian speaking public. As such the conceptual elements did not influence the assessment of similarity of the marks. As the goods covered by the marks were generally chosen visually, the lack of similarity between the visual elements of the marks was ultimately determinative.

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-777/17 Xianhao Pan v EUIPO; Entertainment One UK Ltd; Astley Baker Davies Ltd 21 March 2019 Reg 207/2009 Reported by: Aaron Hetherington

– clothing, footwear, headgear (25)

TRADE MARKS

Comment The GC held that the later registered mark was invalid pursuant to article 53(1)(a) read in conjunction with article 8(1)(b). The GC found that the marks were visually similar. They both represented an illustration of an anthropomorphic pig. The shape of the head, facial features and snout were almost identical. The differences identified did not outweigh the similarities. The GC also held that there was a phonetic similarity between the word elements TOBBIA and PEPPA. Both words ended with the letter ‘a’, and were disyllabic words containing the repetition of strong consonants. Conceptually, the GC held the marks were similar to an average degree since the public would associate the signs with a pig. As the marks were similar, the goods were identical, and the visual similarity was particularly important for the sale of clothing items, there was a likelihood of confusion between the marks.

– clothing, footwear, headgear (25) GC T-297/18 Wirecard Technologies GmbH v EUIPO; Striatum Ventures BV

supr – software (9); – data transmission (38) – computer programming and software design (42) Zupr

13 March 2019 Reg 2017/1001 Reported by: Adeena Wells

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– software (9) – administrative services (35) – design and development of computer hardware and software (42) (Benelux marks)

In an application for a declaration of invalidity under article 60(1)(a), the GC upheld the BoA’s decision that the later mark was invalid pursuant to article 8(1)(b). The BoA did not err in finding that the signs were visually similar to an average degree. In making this assessment the GC rejected the applicant’s submissions that the difference in the letters at the start of both marks should be given greater attention than that accorded to the other three letters. The GC further dismissed the applicant’s claim that the entirety of the relevant public would interpret the word ‘supr’ as ‘super’. The GC stated that for the part of the public who would associate the mark with ‘super’, the marks were conceptually dissimilar, but for the part of the public who would not make such association, the conceptual comparison was neutral. Ultimately, the GC held that the conceptual dissimilarity would not detract from the visual and aural similarities or from the similarity and identity of goods and services of the respective marks. The BoA was therefore correct to find that the mark was invalid based on the likelihood of confusion.

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Ref no.

Application (and where applicable, earlier mark)

CJ C-578/17 Oy Hartwall Ab 27 March 2019 Directive 2008/95/ EC Reported by: Aaron Hetherington

GC T-138/17 Prim, SA v EUIPO; Primed Halberstadt Medizintechnik GmbH

– mineral waters (32) Description: ‘The colours of the sign are blue (PMS 2748, PMS CYAN) and grey (PMS 877)’

PRIMED – various goods used for medical purposes (10) – drinking vessels and tableware for invalid and geriatric care (21) – wholesaling of various goods in class 10 intended for use by medically trained personnel (35)

20 March 2019 Reg 207/2009 Reported by: Daniel Anti – external applications, bandages, threads and fabrics for pharmaceutical and medical use; bandage material; material for tooth filling and dental care (5) – surgical, medical, dental and veterinary apparatus and instruments (10)

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Comment The CJ responded to questions that had been referred by the Finnish Supreme Court regarding the interpretation of articles 2 and 3(1)(b). The CJ held that the classification of the sign as a colour mark or as a figurative mark was a relevant factor in determining the scope of protection and subject matter of the mark, and in particular whether the contours of the sign were protected. It was also held that the classification was relevant in assessing the inherent distinctive character of the mark. Since distinctive character was to be assessed against the ‘actual situation’, taking account of all relevant circumstances, the classification of the mark was one relevant factor in this global assessment. In particular, the classification impacted the perception of the relevant public, who were not accustomed to perceiving colour marks as indicative of the origin of goods or services. The CJ held that article 2 precluded the registration of marks where the sign had been represented as a colour drawing with defined contours, but where the verbal description related to a colour combination without specified contours. Such inconsistencies in the application made it impossible to determine the exact subject-matter and scope of protection, such that the application lacked the required clarity and precision, and should therefore have been refused. In an application for a declaration of invalidity under article 53(1)(a), the GC annulled the BoA’s decision that the applicant had not established genuine use of the earlier national marks. The GC held that BoA had found there was no genuine use of the earlier national marks in respect of a period which was never discussed by the parties and on which they therefore had no opportunity to comment nor, consequently, to submit evidence at any stage of the proceedings before the EUIPO. In the particular circumstances of this case, the GC held that the BoA had infringed the applicant’s right to be heard by failing to invite the applicant to submit its comments on an item of evidence upon which the BoA had based its decision. The GC further held that there were no grounds upon which to hold the evidence of genuine use which the applicant allegedly could have submitted, would have been new evidence which the BoA would not have been required to take into consideration. The GC annulled the BoA’s decision in its entirety without there being a need to consider the other pleas in the application.

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DECISIONS

Bad faith and agent/principal relationships Mouldpro ApS (“Mouldpro”) v EUIPO; Wenz Kunststoff GmbH & Co. KG (“Kunststoff ”) GC; Fifth Chamber; T-796/17; 14 February 2019

The GC upheld the BoA’s decision that Mouldpro had not demonstrated sufficient earlier use of the sign “Mouldpro”, nor the existence of bad faith on the part of Kunststoff in registering it. Past commercial interactions between Kunststoff and certain Mouldpro group companies were not enough to give rise to any agency or representation relationship with Mouldpro. Francesca Rivers reports.

Background German company Kunststoff purchased moulding industry products from Danish company HCT Tool A/S (“HCT”), for sale in Germany. Mouldpro, a Danish group company of HCT, subsequently adopted “Mouldpro” as its company name, introduced the trade mark “Mouldpro” for its products in Denmark and began selling MOULDPRO-branded products in Germany. The following year, HCT and Kunststoff began discussions regarding a possible distribution agreement for MOULDPRO products in Germany. Later that year, Kunststoff filed for and was granted a EUTM for MOULDPRO for goods relating to hoses and hose connections in class 17. Mouldpro contested the validity of the mark, claiming that Kunststoff had applied for the mark in bad faith pursuant to article 52(1)(b). Mouldpro submitted that Kunststoff applied to register the contested mark solely to keep Mouldpro out of the German market. Mouldpro further contested registration of the mark on relative grounds based on Mouldpro’s earlier rights (article 8(4)/53(1)(c)) and Kunststoff acting as an agent/representative of Mouldpro without consent – article 8(3)/53(1)(b). The CD rejected Mouldpro’s application and the BoA dismissed its subsequent appeal. Mouldpro subsequently appealed the BoA’s decision to the GC.

TRADE MARKS

mere purchaser-seller relationship would not suffice, nor would negotiations concerning commercial cooperation. The GC further held that the BoA had not erred in rejecting as inadmissible the article 8(4)/53(1)(c) claim in so far as Mouldpro had invoked for the first time at the appeal stage an additional earlier right, namely an earlier Danish company name. Nor had it erred in finding that part of Mouldpro’s evidence in relation to an earlier unregistered Danish trade mark was inadmissible. The BoA was also correct to find that the admissible evidence was not enough to show that, before the contested mark was filed, Mouldpro had used its earlier mark in the course of trade and the mark had more than local significance. As regards bad faith, the GC held the BoA had not erred in considering that the arguments and evidence submitted by Mouldpro were inadequate to rebut the presumption of good faith. The BoA correctly found the evidence did not support a conclusion that Kunststoff knew, or must have known, Mouldpro was using the sign “Mouldpro” to market goods similar to those covered by the contested mark. Nor had Mouldpro sufficiently evidenced that Kunststoff had acted with dishonest intention when seeking registration of the mark.

Relevance of Nice Classification in non-use revocation proceedings Pathway IP Sarl v Easygroup Ltd* Carr J; [2018] EWHC 3608 (Ch); 21 December 2018

Carr J dismissed Pathway IP’s appeal from a decision of the hearing officer in which he revoked Pathway IP’s trade marks for EASYOFFICE in their entirety for nonuse. Even assuming that the hearing officer erred in law by narrowing the ordinary meaning of the words used in the specifications of Pathway IP’s marks by reference to the class in which they were registered, the evidence still failed to prove use during the relevant period. Hilary Atherton reports.

Decision

Background

The GC dismissed Mouldpro’s application, upholding the BoA’s decision in its entirety. The BoA had correctly determined that Mouldpro had not demonstrated the existence of an agent/principal relationship between itself and Kunststoff. Mouldpro had not demonstrated that an agency/representative relationship existed between Kunststoff and any Mouldpro group company. This was notwithstanding the fact that Kunststoff shared a director with an entity that was itself party to an agency/representative relationship with Mouldpro. In order for article 8(3) to apply, an agreement of commercial cooperation must have existed giving rise to a fiduciary relationship and duty of loyalty. A

Pathway IP’s marks were registered for “provision of office facilities, rental of office equipment”. The hearing officer interpreted the scope of the services in the specifications by reference to their natural and ordinary meaning. He then adopted a narrower interpretation of the specifications by reference to the Nice Classification lists in class 35, which was the class in which the marks were registered. In so doing, he relied upon the judgment of the Court of Appeal in Altecnic Ltd’s Trade Mark Application [2001] EWCA Civ 1928. He stated that as a matter of plain language, “rental of office equipment” was “no more and no less the rental of any equipment that may be used in an office”. He noted that, in the Nice Classification,

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the entry “Rental (Office machines and equipment –)*” in class 35 included an asterisk, which indicated that the rental of machines and equipment that may be used in an office could also be found in other classes. He also noted that while the rental of photocopiers was listed in class 35, the rental of fax machines, modems and phones was in class 39, the rental of computers was in class 42, and the rental of furniture was in class 43. He concluded that the specifications of the marks could therefore not cover these services. He added that the rental of printers would also fall into class 42 as a computer peripheral. The hearing officer also considered the natural and ordinary meaning of “the provision of office facilities” and concluded that, as the marks were registered in class 35, they could not encompass the service of renting office accommodation, which was listed in class 36. The approach taken by the hearing officer was in accordance with practice guidance published by the UKIPO and the EUIPO. However, Pathway IP contended that this approach was wrong in law, in the light of the judgments of Arnold J in Omega Engineering, Inc v Omega SA [2010] EWHC 1211 (Ch), Omega Engineering, Inc v Omega SA [2012] EWHC 3440 (Ch), and Fil Ltd v Fidelis Underwriting Ltd [2018] EWHC 1097 (Pat). Judgments in the latter two cases were handed down subsequent to the decision of the hearing officer.

The appeal Having refused Pathway IP’s application to adduce fresh evidence on the appeal relating to the contents of the prosecution file, Carr J went on to decide the remaining three issues: 1. Did the hearing officer wrongly construe the scope of registered services by reference to the classes set out in the Nice Classification? Carr J considered that the hearing officer did not err as a matter of law by narrowing the natural meaning of the specification by reference to class 35 of the Nice Classification.

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He considered it unnecessary to reach a concluded view, and thought it inappropriate to give one in light of the judgments of Arnold J and because further submissions would be required as to the interpretation of article 2 of the Nice Agreement. However, he gave a provisional view in light of counsel’s detailed submissions on the issue. His provisional view, in light of: (i) the IP Translator case (Case C-307/10), (ii) the interpretation of article 2(1) of the Nice Agreement, (iii) EUIPO and UKIPO practice, and (iv) the judgment in Altecnic not being confined to the facts of that case, was that it was appropriate to use the class number as an aid to interpretation of the specification where the words used in the specification lacked clarity and precision. He was of the view that this applied to granted registrations as well as to applications and therefore applied in the context of infringement actions and revocation claims. As regards the natural and ordinary meaning of the words used in the specification, Carr J considered that far from challenging the hearing officer’s conclusion, Pathway IP had accepted that it was correct. In his view, it was not open to Pathway IP to advance a contrary case during oral argument. In Carr J’s judgment, the phrase “provision of office facilities” was clear and precise. It meant the provision of facilities for use in an office. It was potentially of wide scope and so the hearing officer was correct to consider the core of the ordinary and natural meaning of the words used. The inclusion of the rental of office accommodation would interpret the phrase so liberally that it would be unclear and imprecise. However, the interpretation which the hearing officer set out was clear and precise. Therefore, this was not a case where it was necessary to consider the class number and limit the services (if any) in respect of which the marks had been used during the relevant period to exclude those which fell within the natural and ordinary meaning. Therefore, Carr J assumed in favour of Pathway IP that the hearing officer erred in law in excluding services, other than photocopying, by reference to the class number.

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DECISIONS

2. Exclusion of services which may fall into a number of different classes Pathway IP’s contention that the hearing officer made a further error of law by excluding those services from his consideration which might have fallen into a number of classes got it no further than the assumption that the Judge had already made in its favour based on his provisional view of the law, above. He therefore assumed again in favour of Pathway IP that the hearing officer erred in law in excluding services, other than photocopying, by reference to the class number. 3. Evidence of genuine use Despite the assumptions made in Pathway IP’s favour based on his provisional view of the law, Carr J considered that the hearing officer was entitled to find that there was no or insufficient evidence of genuine use in the relevant period. Therefore, the appeal was dismissed.

Exhaustion; selling component parts Nomination Di Antonio e Paolo Gensini SNC & Anr v Sebastian Brealey & Anr* Judge Hacon; [2019] EWHC 599 (IPEC); 13 March 2019

Nomination had legitimate reason to oppose Sebastian Brealey’s – trading as JSC Jewellery (“JSC”) – sales of genuine Nomination base links pursuant to article 7 of the Directive. The packaging sold by JSC was liable to damage the reputation of Nomination’s trade marks. JSC was also found to infringe Nomination’s trade marks by advertising and selling links which included its own as well as Nomination’s links. Passing off was also found. Louise O’Hara reports.

Facts Nomination was an Italian partnership which dealt in charm bracelets. One of its products was a ‘composable bracelet’ consisting of a number of individual links, which could be detached from each other and rearranged by the wearer. Some of these links, referred to by Nomination as ‘base links’, were stainless steel links bearing Nomination’s mark. Nomination also sold ‘base bracelets’, which were bracelets composed of 13 or 18 base links. JSC purchased Nomination base bracelets from retailers in Germany and Italy and disassembled them to separate out the base links. In some instances they also sourced single base links from UK and Italian retailers. Between April 2013 and July 2018, JSC sold single Nomination base links bundled together with a single JSC link. These bundles consisted either of two blister packs, one for each of the Nomination and JSC links, or alternatively the JSC link was supplied in a blister pack and Volume 48, number 5

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the Nomination base link was in a small plastic bag with a label stating: “Manufactured by Nomination Italy Repackaged by JSC Jewellery UK”. The bundles of two links were sold by JSC on ebay. Nomination alleged that JSC’s advertising and sales of the bundled base links infringed its EU marks for NOMINATION (including one stylised mark) registered in class 14 for, amongst other things, jewellery.

Article 7 It was common ground between the parties that JSC’s marketing of the individual Nomination base links constituted a use of the sign in relation to goods identical to those for which the marks were registered. JSC claimed the marks were exhausted, which was denied by Nomination on the basis of an analogy with Zino Davidoff v A&G Imports (Cases C-414 to 416/99). The Judge held that the analogy was not exact, but in any event Nomination had not expressed any restriction on sales of individual links at the relevant time. Absent any legitimate reasons for opposing the onward sales of the links under article 7(2), it was not clear to him why Nomination should have a sound basis for objecting to such sales.

Legitimate reasons under article 7(2) Whilst Nomination sold its products in elegant packaging which gave the impression that the goods were of a high quality, JSC sold Nomination-branded base links either in blister packets or in small transparent plastic bags. This was likely to damage the reputation of Nomination’s mark. In coming to this conclusion, Judge Hacon considered the case law of the CJEU in the repackaging cases and pointed to the inconsistency between Parfums Christian Dior v Evora (Case C-337/95) and Copad v Christian Dior Couture (Case C-59/08); the former requiring serious damage to the reputation of the mark, the latter merely requiring damage (the test adopted by the Judge). Furthermore, Judge Hacon held that, unlike pharmaceutical cases, Nomination should not succeed in their arguments that JSC had not identified who has done the repackaging or that the repackaging risked damaging the condition of the links (BMS v Paranova (Cases C-457, 429 and 436/93) conditions (3) and (2) respectively). Pharmaceuticals were sensitive products; there was no such sensitivity attached to the sale of bracelets.

JSC’s use of Nomination’s signs in relation to its own links The Judge considered that JSC’s advertising and supply of Nomination base links bundled with its own links had led to confusion in the mind of some of the relevant public and, although it could take different forms, amongst a significant proportion, the confusion took the form of a belief that the charms were genuine Nomination charms. He therefore found that JSC’s use of the trade marks in its advertising was infringing pursuant to section 10(1) and amounted to passing off. MAY 2019

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EDUCATION

PARALEGALS

Certificate Course in Patent Administration Origins of the CIPA Certificate Course in Patent Administration. By Stephen J. Mohun (Fellow)

T

he Patent Administrators’ Course was first run by CIPA in the Autumn and Winter of 1998/9 with 30 pioneering souls from across the profession as the guinea pigs. To date, almost 2000 individuals have passed the course and its examination. The qualification has become accepted as a standard for the profession, and variants of the course have been held in several countries. However, I envisaged none of this back in 1996 when I first approached the then President, Andrew Sergeant, to explore the idea of a CIPA training course for support staff. It was in the early Autumn of 1995 when I joined Reddie & Grose, at the invitation of my friend and mentor Jo Davies, that I first encountered a proper “formalities” department. Prior to this I had trained and qualified at Appleyard Lees in Halifax, where a range of what we would now call patent administrator duties were performed by a team of experienced and very knowledgeable secretaries, who would never have thought of themselves as formalities staff. R&G, like many of the larger London firms, had a sizeable formalities department, including a range of well-trained specialists performing particular tasks such as recording and monitoring deadlines, sending domestic and overseas applications for filing, handling renewals and managing correspondence with overseas attorneys. I got to know some of them well, including a young Matt Parkes, himself a recent recruit. Matt and I talked a lot about the formalities role and it was from him that I learned that support staff would often move between London firms with little in the way of recognised qualifications with which to demonstrate their status.

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Over the course of several conversations with Matt, a germ of an idea came into being. I had by now been involved in several Institute committees and this had brought me into contact with industry-based colleagues who would comment that it was sometimes difficult to persuade their HR departments of the value of their support staff, typically on the payroll as secretaries or clerks but whose importance to their departments was far greater than their company pay grade would reflect. With this in mind I approached Jo, then a leading figure on Council, and asked him what he thought of the idea of CIPA establishing a training course and qualification for people like Matt. Jo listened carefully to the idea but I remember thinking that if he was enthused by it he was giving nothing away at this early stage. However, he did say that he would put me in front of the President and then it would be up to me to make a case. He proved as good as his word and about a week later I was standing at the bar in the Kings Arms when Jo came in with Andrew Sergeant and several other members of Council for a pre-meeting lunchtime drink. My chance had come, I was hoping that the President would immediately warm to the idea, but he seemed sceptical that there would be sufficient interest from the Membership. However, eventually (and perhaps to get rid of me) he agreed to set up a meeting to look into the matter. In due course I became aware that one of my colleagues at R&G, Mike Cross (then Practice Manager), had been invited to participate in something called a “Steering Group” to set up and run a course. I wasn’t involved and almost a year, and several meetings later, I discovered to my

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EDUCATION

frustration that little real progress had apparently been made. By now I was a member of Council myself, and I think that enabled me to become involved with the Group, as its Chairman. We met regularly and the course gradually began to take shape. One of the earliest tasks was to think of a name for the course, and for those who would study it. After much debate we settled on the now-familiar term “Patent Administrator”. As we headed towards the summer of 1998, the Steering Group was well prepared. We had a syllabus, several lecturers signed up, a willingness from the Patent Office to host a student visit and an outline of a timetable for the first course, which would start in September and run to March/April, including a mock exam just after Christmas and a final exam at the end. What we didn’t have was a body of students, nor any real idea about the likely uptake for the course. I recall that in several of our meetings at that time there was a real concern that all our efforts might be wasted. Might the initial scepticism from several quarters prove to be justified?

The Brown Prize 2018-19 The Brown Prize is for the candidate achieving the highest mark in the PEB Introductory Certificate in Patent Administration Examination: Helen Desmond, Withers & Rogers LLP

EXAMINATION PRIZES

With this in mind, we set up the course with a conservative 30 places. Some thought even that was ambitious. CIPA ran some early notices, and then we anxiously opened the course for applications. I think the fee for the course was something like £195. (Was that too much? Too little?) We needn’t have worried. Within hours of the application forms being released we had our first customers. Within three days all 30 places were taken, and by the end of the month we had a full course and a waiting list of over 60. In those early days, we often had to make policy as we went along, but we mostly resolved any problems quickly between us. It was a great group of people to work with and we were supported well by the staff at CIPA, notably Mick Ralph and Di Burridge. After the first year, we expanded the number of places and opened a northern edition, based in Manchester. All the available places were snapped up quickly, and we knew we were on to something. Since then the structure and content of the course, and its management, have improved enormously, as they needed to. But I recall fondly those early years and the way so many committee members, lecturers and examiners gave their time generously. Although there are too many to name here, I hope they are all as proud as I am at what was achieved. Registration for the next Patent Administrators’ Course opens on 13 May 2019 – forms will be posted online at: www.cipa.org.uk/patent-examination-board/registration

Examination prizes 2018 Following the publication of the 2018 PEB examination results in March 2018, Council awarded these prizes: The Gill Prize for the candidate achieving the highest aggregate mark in the Final Diploma examinations (FD1, FD2, FD3 and FD4): David Leverett, Dehns

The Mike Higgins Prize for the candidate achieving the highest mark in the FC4 examination Design and Copyright Law: Stephen Moore, Potter Clarkson LLP

The Strode Prize for the candidate achieving the highest mark in the FD1 examination Advanced IP Law and Practice: Imogen Sophie Parry, J A Kemp

The Ballantyne Prize for the candidate achieving the highest mark in FD4 examination Infringement and Validity: Craig Stephen Slater, Barker Brettell LLP

The Drafting Prize for the candidate achieving the highest mark in the FD2 examination Drafting of Specifications. The Drafting Prize was won by two candidates: Merlin Cooper, Barker Brettell LLP; and Nina Szamocki, Haseltine Lake LLP

The Keith Farwell Prize for the candidate achieving the highest mark in the FC5 examination Trade Mark Law: Stephen Moore, Potter Clarkson LLP

The Moss Prize for the candidate achieving the highest aggregate mark in the FC1 and FC3 examinations UK Patent Law and International Patent Law. Helen Bartlett, Potter Clarkson LLP

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The Michael Jones Prize for the candidate achieving the highest mark in the FD3 examination Amendment of Specifications: Grace Wood, Haseltine Lake LLP The Chris Gibson Prize for the candidate achieving the highest mark in the FC2 examination English Law: Jian Siang Poh, Marks & Clerk LLP

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The Yellow Sheet

The Yellow Sheet May 2019

Honorary Secretary update Hello all, I hope everyone is enjoying the lighter days and feeling more productive as a result, summer is coming! A quick reminder that the IP Inclusive Mental Wellbeing Survey has launched, it Matthew Veale will take less than ten minutes to complete, your answers will provide valuable insight to help them offer more and better targeted mental health support. This month has also seen the inaugural meeting of the IP Inclusive Juniors, there were plenty of ideas that we cannot wait to share and have you all involved with it. Discussion regarding the exams/training is continuing and you will have seen that the CIPA Education Committee is looking for people to join. If you have strong feelings now is your chance to affect change, nothing happens unless you make it happen.

Yellow Sheet Editor May – the month of many bank holidays! I hope everyone is enjoying the sun and I Meg Booth also hope that by the time this goes out we are still benefitting from lovely sunny weather. We have a packed Yellow Sheet this month, with a guest wacky patent from Jamie Ingram of Murgitroyd, a second feature from Oz Aydin on the IP of coffee and some updates from your regional secretaries who have been busy organizing events. Also see below for another pup-date. As Matt has mentioned, IP Inclusive Mental Wellbeing Survey has launched and it takes less than ten minutes to 32 CIPA JOURNAL

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The Informals tutorials and mentoring schemes have launched, with mentors all over the country, the uptake has been remarkable. I was lucky to attend a pan-European meeting in Mallorca, whilst there I talked with fellow trainees from other countries and I was pleased to hear that the Informals is distinct in being something more than just an exam forum, but, I have extended the invitation to look at joint events in the future. I attended the South West & Wales Informal event in an uncharacteristically sunny day in Cardiff, the workshop was brilliant, attendance was high and we met up with the UKIPO examiners. I’ve had reports from the other Regional Secretaries doing fun events such as bowling and cocktail making, I look forward to hearing about more. As per usual we are always happy to hear from any of you and please do engage with our social media to grow our presence.

complete, so please endeavour to take part. The survey aims to determine the levels of stress and mental health problems in the patent and trade mark professions, to help uncover the cause and to suggest ways to address these issues. This year’s survey is open to both CIPA and CITMA members. It also includes questions that mirror those in a recent survey by the Law Society’s Junior Lawyers Division, so that the results can be compared with the wider legal profession. Mental Health Awareness Week will take place from the 13-19 May 2019 and both CIPA and IP Inclusive have a number of events to raise awareness and promote positive mental health. A joint event between IP Inclusive, CIPA and

Jonathan’s Voice will be held on 14 May and more details can be found here – https://ipinclusive.org.uk/events/ mental-health-time-to-listen-time-to-act/ or on the IP Inclusive website. Further still, Rachel Bell has been busy organizing the first meeting of the newly formed IP Inclusive Juniors. The aim of this organisation will be to increase representation of our community within IP Inclusive, as well as generating discussion and action around relevant topics. As “juniors” we have a particular responsibility in helping to increase inclusivity and diversity for the future, and this is a great chance to get involved. Please email: Rachel Bell at rbell@marks-clerk.com if you have any questions or would like to get involved. www.cipa.org.uk

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The Yellow Sheet

Regional Sec Updates Yorkshire and Humber Hi all! Thank you to everyone who joined us for our first Yorkshire Informals event back in March – we had a great turn out! We will be Amelia Barton having another event in the first week of June, so keep an eye out for the email and if you’re not on the mailing list then let me know. Hopefully see you all there! Scotland The Aberdeen trainees had a lovely evening in the pub back in March. We caught up on exams over dinner and drinks, Heather McKenna and it was great to see some new faces too. I am looking forward to seeing you all again at our next event, which we will begin to organise shortly. If you are based up in Aberdeen and would like to join in, please let me know! Ideas for meet-up locations and activities are always welcome too.

East Midlands I’ve had a bunch of suggestions for potential events that I will send out in a poll soon for the East Mids trainees Kevin Rich to vote on. Hopefully, we’ll be able to kick off the next social in June, well in advance of any exams. Drop me a line if you have any more suggestions on social events.

Have you sat FD1 (P2) or FD4 (P6) twice or more times without success? Do you intend to sit the examination again this October? Khushbu Solanki, The Informals Committee is Tutorials Organiser working with CIPA to offer mentoring if you have repeatedly sat one of these papers, to try to boost your selfconfidence and help you pass the exam. If you are in this situation and you would like help preparing for the 2019 exam, please email me, your Mentoring Coordinator Khushbu Solanki at k.solanki@csy-ip.com and tell me which exam you would like help with by 1 June 2019. The Informals Committee will then work with CIPA to find you a mentor. Please note that you must already have sat the same exam twice or more times without success to be eligible for mentoring. Your information will be treated in confidence and will be known only to me and your mentor. You will not be identified to your employer without your explicit consent. If you have any questions, please do not hesitate to get in touch with me.

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This month’s pupdate below – Darwin has graduated puppy school and he is enjoying the sunny weather. He goes on his first camping holiday in May. Looking at cute animals is a great stress reliever, so if anyone has any pet photos they would like to send in, then I am all for a Yellow Sheet ‘Pet of the Month’ feature. (Extra points for pets “helping” with revision or any budding trainee ‘Pawtent’ attorneys.)

South West and Wales On 29 March, we had our first social in Cardiff with a great Oz Aydin workshop hosted by Abel & Imray. After the workshop, much deserved drinks were enjoyed under the rare sunny skies of Cardiff. We had a great turn out and our patent examiner friends from the IPO joined us. Plans are in action for another social in June and this time we will be in Bristol. Feel free to get in touch with me if you have any thoughts for future events.

Tutorials

Volume 48, number 5

IP-uppy – Darwin Pupdate

Wacky Patent (application) Following on from last month’s wacky patent, Jamie Ingram from Murgitroyd sent us this image. Jamie also submitted this month’s wacky patent or rather wacky patent figure. US patent application US 2004181048 (which was later abandoned) relates to methods for identifying genes that are involved in human disease conditions by mapping a large number of single polynucleotides polymorphisms that occur within genes. All sounds ok so far. However, the wacky part comes in the form of figure 2, which “depicts” the 1,335,663 nucleotide sequences relied upon for this patent application. Therefore, figure 2 must go on for pages and pages? Not so much, figure 2 is in fact a photocopy of two CDs! Can a photocopy of two CDs really count as a depiction? We’ll leave it up to you to decide. If you come across any wacky patents, either a wacky invention or assuming figure, then please let me know! MAY 2019

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IP Tea and Coffee Oz Aydin brings us the second part of his review of the IP surrounding coffee! Previously (March edition, page 65), I have mentioned a thing or two about Moriondo and his contribution to our mornings (remember the low carb, gluten-free, vegan breakfast?). Unfortunately, his technical genius was not reflected to the commercial aspect of his invention. However, Moriondo’s successor in the coffee game did not make the same mistake. In 1901, Luigi Bezzera from Milan, introduced an improved version of Moriondo’s machine for “economic and instantaneous confection of coffee beverage”. It is speculated that Bezzera had seen and “studied” Moriondo’s machine and sensing the great potential it presented, he registered a patent (US726793A) for his improved design. There was, however, a small problem: Bezzera was broke! Back in those days, just like today, it was useful to know people who are not broke. Later on, Bezzera managed to assign this patent to Desiderio Pavoni and his company “La Pavoni” started mass production of this single-shot espresso machine. In hindsight, Bezzera’s machine was not a very complicated contraption: a large vertical cylinder containing a brass boiler kept under pressure by a gas stove. There was a little issue with this gas stove though: How do you control the pressure inside the boiler if it is heated by an open flame? Apparently Pavoni was not just rich. He knew a thing or two about pressurised containers and introduced a pressure release valve to the boiler. Although this may not seem like a big improvement, the baristas at the time were very thankful as they did not have to worry about the uncontrolled steam and boiling water rushing out, every time they pull out an espresso shot. The groups in which the coffee was placed were positioned laterally to the boiler. Turning a tap would allow the boiling 34 CIPA JOURNAL

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Luigi Bezzera’s patent, US726793A for “Coffee-making machine”

water and the steam contained within the boiler to pass through the coffee with about 1.5 atm (still not quite there yet with the pressurised containers), and the single shot espresso would be ready in a minute. The result of Bezzera and Pavoni’s collaboration was “La Ideale”, the first commercially successful single-serving espresso machine to be marketed for use in cafes and restaurants around the world. The steam wand, which enables the baristas to fashion those fancy latte art figures by frothing the milk, was also introduced to Bezzera’s machine allegedly by Pavoni. I could not find the one Pavoni introduced, but US9538878B2 might give you some idea as to what Pavoni intended to do. Unfortunately, Bezzera would later fall prey to the claws of the big corporation that was “La Pavoni”. The cheeky Pavoni was marketing Bezzera’s machine under the brand name “espresso” machines. However, this is certainly not the end of the story. Stay tuned...

“La Ideale”, the first commercially successful single-serving espresso machine. www.cipa.org.uk

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PERSONAL

IP INCLUSIVE • ANNOUNCEMENTS

IP Inclusive update By Andrea Brewster OBE

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s I write, Mental Health Awareness Week (13-19 May) is fast approaching. Please get involved in some of our activities to mark the event: we’ve three webinars (14 May, 13 June and 4 July), and a mental health first aid training pilot at CIPA on 26 and 27 June. We’re also running our second mental wellbeing survey, this year for CITMA as well as CIPA members. Please take ten minutes to complete the survey, and encourage your colleagues to do the same. There are separate versions for student and paralegal CIPA members as well. You can find details of these activities, and links to the survey, on our website Events page. You can also register for the webinars via the “What’s On” page of the CIPA website, or join one of our live viewings around the country as detailed on the IP Inclusive site. Meanwhile our Careers in Ideas task force is busy co-ordinating links between schools, universities and local IP organisations willing to give careers talks. Please contact careers.in.ideas@gmail.com if you’d like to be on a list for these kinds of contacts or to answer the queries we receive from students, teachers and careers advisers. The task force is also planning an event for the second half of the year. This

will focus on recruitment best practices, overcoming traditional stereotypes and biases, and improving socio-economic mobility on entry into the IP professions. We’re on the look-out for personal stories on this theme; if you’d be willing to share yours, please get in touch. Other events in the pipeline include a webinar on disability, with a view to setting up a new community; a webinar on neurodiversity and the autism spectrum; and a live seminar/workshop on outreach schemes and their impact on social mobility. Plus, there will be events organised by our three communities – IP & ME, IP Out, and Women in IP – including a webinar on inclusive leadership. As usual, we’ll post details on our Events page and on the pages for the

three communities, or you can join one or more of our mailing lists. To make it easier for us to reach our supporters outside London, we’re trying to establish regional networks of IP Inclusive Charter signatories. We’ve a successful network in Scotland already, and one about to be formed in the SouthWest. Let us know if you’d be interested in helping to form a network in your region: all that’s needed is a few firms willing to take it in turns to host get-togethers and share ideas. Finally, watch out for some new IP Inclusive lanyards, coming soon to an event near you! Please get in touch if you’d like to sponsor lanyards or “ally” badges – some for your own organisation, some for us.

IP Inclusive is open to all IP professionals and those who work with them. For more information, visit our website, www.ipinclusive.org.uk; follow us on Twitter (@IPInclusive, @ip_out, @bameipinclusive, @WomeninIPI, @CareersInIdeas) or join one of our LinkedIn® groups. And if you’re interested in getting involved, please contact andreabrewstercipa@gmail.com. To keep abreast of everything we’re doing, join our mailing list: there’s a “Stay in touch” form on the new website.

Announcements The partners of Dummett Copp LLP are pleased to announce that they have appointed Dr Derek Holmes (Fellow) as a partner of the firm, effective from 1 April 2019. Registration for the next Patent Administrators’ Course opens on 13 May 2019; the registration for the PEB Qualifying Examinations opens on 28 May 2019. See www.cipa.org.uk/patent-examination-board/registration/ Letters for the Editor and announcements should be sent to: editor@cipa.org.uk

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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.

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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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Patent Case Law Tour 2018 CIPA seminar report, Wednesday 28 November 2018, Glasgow

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y long journey time meant that I missed the networking lunch at the Radisson Blu in Glasgow but, judging by the early evening canapés, it will have been marvellous. Surrounded by Welsh dragons supplied by those knowledgeable and gentle folk at Patent Seekers, the talks began in earnest at 1.30pm.

UK decisions Bev Ouzman of CIPA Council introduced Dr Jonathan Markham of Beck Greener. Jonathan regaled us with tales of interpretation in the aftermath of Actavis v Eli Lilly. For those of you who are unfamiliar with this decision, start with Catnic, work your way through Improver and arrive with a few detours and re-statements at Actavis. I am not saying it is a strange decision, but I just cannot get my head around the concept that what would not anticipate before might still infringe after (the new UK doctrine of equivalents from Actavis applies to infringement not validity – so far anyway). Speaking with a UK patent attorney residing in Germany he did not see the problem, but is this bifurcation by the back door? Wiser minds than mine will help unpick this one. Jonathan took us on a meander through UK court decisions in 2018, mainly looking at how Actavis v Eli Lilly is being applied in the UK. Helpfully, he counted us down. At ‘11’, Accord Healthcare v Research Corporation1 on priority determined that equitable title is what matters; nevertheless it was saved as RCT was a bona fide purchaser for value under 35 USC 361, an innocent party. At ‘10’, we have Jushi v OCV2 on numerical ranges, where there is little UK case law, the judge finding that the text in issue in the patent was but a comparative example so there was no anticipation and this was affirmed at second instance. At ‘9’, sufficiency was discussed in Regeneron v Kymab3, which found a priority mouse insufficient at first instance, but by parcelling into small chunks it became much more satisfying in the Court of Appeal. The case was noted for its pro-patentee liberal approach! At ‘8’, FRAND licensing was dealt with (yet again!), in this case non-practicing entity Unwired Planet securing a FRAND injunction against Huawei in UP v Huawei4. Before moving on to ‘7’, Jonathan summarised Actavis v Eli Lilly explaining there are now two limbs to establishing claim scope. (i) claim construction as a matter of normal interpretation (purposive construction); and (ii) assessment of possible infringement by a variant outside the claim construction, making use of a modified version of the Improver (Protocol) questions (infringement by equivalents). 38 CIPA JOURNAL

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Next, at ‘7’, we have Actavis v ICOS5, Kitchin LJ said Actavis v Eli Lilly (doctrine of equivalents) does not apply to the question of validity! At ‘6’, in Generics v Yeda6, Arnold J sided with Yeda saying the doctrine of equivalents has no application to the law of novelty. At ‘5’, Fisher & Paykel v ResMed7 in this High Court the deputy judge, R Meade QC, followed Generics v Yeda explaining that the court must apply purposive and not literal construction and that, as a matter of law, there cannot be anticipation by equivalence. At ‘4’, Illumina v Premaitha8, Carr J explained “normal interpretation” means “purposive construction” [and see the bit about the question whether the variant is an essential part of the invention – still mulling that one over!] At ‘3’, Saab v Atlas9 indicates that point (ix) of Kirin-Amgen must be read in light of Actavis v Eli Lilly. At ‘2’, L’Oreal v RN Ventures10 indicates reference to prosecution history is the exception, not the rule. Finally, at ‘1’, in Icescape v Ice-World11 the Court of Appeal explains that parallel is equivalent to series and vice versa (so very different from Catnic said Lord Kitchin) and, in a practical tip, in any FTO make sure the “inventive core” is figured out (so as to take care of limb (ii) of infringement). Phew! Thank you, Jonathan!

IPO decisions Phil Thorpe, deputy director of the IPO took us through several published IPO decisions (48 ex parte in total, 28 inter partes in total). Landmark Graphics Applications are useful to practitioners in assessing how the technical contribution is assessed in practice at the IPO. Munchkin Inc’s Application BL 0/623/17 deals with an irregularity in an Extension of Time near the end of the Compliance Period. Diamond v University of Warwick BL 0/629/17 deals with entitlement, recusal of hearing officer, decline to deal and costs. Encore Envelopes v Heritage Envelopes about envelopes (!) deals with declaration of noninfringement.

References 1. [2017] EWHC 2711 (Pat)

7. [2017] EWHC 2748 (Pat)

2. [2018] EWCA Civ 1416

8. [2017] EWHC 2930 (Pat)

3. [2018] EWCA Civ 671

9. [2017] EWCA Civ 2175

4. [2018] EWCA Civ 2344

10. [2018] EWHC 173 (Pat)

5. [2017] EWCA Civ 1671

11. [2018] EWCA Civ 2219

6. [2017] EWHC 2629 (Pat)

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Phil touched on three appeals from Comptroller decisions, Merck Sharp and Dohme BL O/117/16, Abraxis BioScience BL O/410/16 and Angiotech BL O/466/15 concerning regulation (and in some cases SPCs). There have been 28 opinions including one on Sinclair’s Patent about a patent for a funeral vehicle in the form of a motorcycle sidecar; apparently not an opinion that generated much clarity on best practice according to Phil but perhaps a good example for discussing Actavis v Eli Lilly in this author’s view (think clam shell opening in comparison with a door). Finally, be warned, if an opinion at the IPO says it isn’t patentable, the UK IPO will seek revocation, but not before giving you a chance to respond.

EPO decisions Dr Dominic Adair and Gemma Barrett from Bristows delved into the intricacies of EPO decisions, noting not much of significance happened in 2018. G1/18 regarding conflicting decisions on Appeal fees is still pending. There have been two positive petition decisions R3/15 and R4/17 on right to be heard. G1/16 on undisclosed disclaimers confirmed disclosed disclaimers should follow G2/10 (Gold Standard) and undisclosed disclaimers should follow G1/03 (Undisclosed Disclaimers). T0282/12 J&J applied G1/15 to carve up of priority claims in the question of is this a ‘first application’ for that subject-matter (yes, you can carve up ‘first application’ status, much like a priority claim – who knew!). T2101/12 looked at state of the art – a notary’s signature (a trusted third party) is art to a computer-implemented invention using a trusted third-party server. T0239/16 looked at obviousness and clinical trials and T2570/11 looked at obviousness and drug targets (NB make the protocol confidential if possible). G1/18 looked at refundability of appeal fees on a referral from the EPO President and T191/12 looked at admissibility of latefiled arguments as opposed to late-filed facts and evidence, noting that the ‘traveaux preparatoires’ say ‘yes’ to late-filed arguments.

EVENTS

Strawmen in oppositions and interventions were dealt with (a bit!) in T0384/15. J4/17 looked at entitlement, and T2187/14 looked at machine translations. Ok, now pay attention! T0506/16 looked at an EPO originating error (missing pages of claims) that found its way into the R71(3) communication. This was missed and it went to grant. The error was then not correctable. Moral – always check the R71(3) – no matter how often you have to do it. And always remember to appeal the Grant Decision – our speaker is not saying it would have helped but it might have – nothing else did!

US case law Yelena Morozova of Finnegan, Henderson, Farabow, Garrett & Dunner LLP gave a thorough talk on US case law. She touched on Oil States Energy SAS Institute and WesternGeco at the Supreme Court as well as cases at the Court of Appeals for the Federal Circuit. Advanced Video Tech v HTC is worth mentioning on inventor assignments (or how not to assign) and Gilead Sciences v Merck reminds us to keep our hands clean. In re VerHoef (2018) is for pet lovers who want to learn how (not) to hold a partnership together. UCB, Inc. v Accord Healthcare, Inc. is a decision on preserving progressive patenting with narrower subgenera as research continues to develop. Droplets, Inc v E*Trade Bank looks at the importance of the claim to priority claiming. Regeneron v Merus is about the two prongs of conduct (materiality and specific intent to deceive the USPTO). Saint Regis Mohawk Tribe v Mylan Pharm is about piercing the veil of civil immunity. Ericsson v Regents of University of Minnesota taught us you cannot have it both ways! Finally, a Final Rule Package on IPR claims construction took effect on 13 November 2018. With that, we repaired to the bar for a well-earned glass of fizz! Thank you speakers, Council and CIPA staff for a challenging and informative afternoon of CPD. Kate Macdonald (Fellow)

Non-Institute events IP Licensing for Life Sciences and Pharma, London Provider: Assimilate IP Date: Monday 20 May 2019 Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 23 May 2019 (see page 42) No cats and no doctrine of equivalence? 2019 Sir Hugh Laddie Lecture London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: Thursday 13 June 2019 (see page 50) Introduction to Licensing & IP Commercialisation, London Provider: LES Britain & Ireland Date: Monday 17 June 2019 (see page 44)

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Freedom to Operate for the Life Sciences and Pharmaceutical Industries , London Provider: Assimilate IP Date: Monday 17 June 2019 (see page 42) LES B&I 2019 Annual Conference & AG, London Provider: LES Britain & Ireland Date: Tuesday 18 June 2019 (see page 44) Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 24 June-19 July (see page 42) CITMA Summer Reception, London Provider: CITMA Date: Tuesday 2 July 2019

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INSTITUTE EVENTS

After-Final Practice at the USPTO CIPA webinar report, A Guide to Navigating After-Final Practice at the USPTO, Tuesday 26 February 2019.

E

rin M. Sommers, partner at Finnegans, gave a comprehensive tour of the options available to practitioners after receiving a “final” office action from the USPTO. Erin stressed that, although substantive prosecution is considered to be closed upon issuance of the final action, in practice there are processes and USPTO programmes that can continue the procedure and lead to allowance. However, it is important to respect the statutory deadline for reply to the “final” office action or else the application will become abandoned. Amendment after final rejection (under 37 C.F.R. 1.116) was the first option to be discussed. This option is suitable if an amendment can readily place the application into condition for allowance, e.g. by limiting claims to subject matter that has been indicated as allowable. Alternatively, this can be an approach for putting claims into better condition for a subsequent appeal. At the moment, the USPTO responds to such amendments after about 24 days on average. If the amendment is filed rapidly (within two months of the date of the office action) the USPTO will issue an Advisory Action which will indicate whether or not the amendments are admitted and may provide a hint regarding a possible direction for further action. The Advisory Action does not stop the clock, so additional action will be needed to prevent abandonment of the application. An interview may be helpful before submitting an amendment after final, especially if the examiner has a problem understanding some technical aspect of the invention. The USPTO has discretion as to whether or not to allow an interview at this stage, but often will do so. A second option is to lodge a Request for Continued Examination (RCE) – under 37 C.F.R. 1.114(a). A form and fee must be submitted, as well as a submission. The submission can include new claim amendments and new arguments, and can allow an IDS to be lodged. This approach is better suited than the first to cases where you wish to shift the focus of the claims/ arguments. Erin spoke of a possible combined approach, using an interview as well as an RCE. Examiners appear to respond well to this. However, UPSTO statistics show that the duration of examination is likely to be significantly extended. Third-party websites list information for different individual

Reporters Needed – CIPA is looking for volunteers to report on CIPA events. If you are interested, please contact cpd@cipa.org.uk.

examiners, including data regarding how they respond to different after-final strategies. A third option is to file a continuation application. The continuation application must be filed while the parent is still pending, must claim the benefit of the parent case and contain the same disclosure. If the claims are not amended there is a risk of receiving a final action as a first action on the continuation application. In some cases where the parent application has allowable dependent claims it may be appropriate to file a continuation application using a modified version of the broadest claims, and file an amendment after final amendment to limit the parent case to the allowable dependent claims. A fourth option, which Erin looked on favourably, is to use the After-Final Consideration Pilot (AFCP) Program 2.0. This pilot program has been renewed up until 30 September 2019 and seems likely to be renewed again. The applicant must make a non-broadening amendment to at least one independent claim. Use of this program allows the examiner additional time to search and/or consider the response filed by the applicant. However, if extensive searching is required an Advisory Action is likely to be issued. If the examiner can perform a search in the allowed time, but does not consider the response to be allowable, the examiner must conduct an interview. This approach suits middling amendments, more ambitious than accepting dependent claims but less ambitious than a complete change of focus. Finally, an appeal can be made to the Patent Trials and Appeals Board (PTAB), by lodging notice of appeal and paying the requisite fee. An interesting option exists to make use of another pilot program, the Pre-Appeal Brief Review Request and Conference Pilot Program, to put a brief paper before the PTAB for consideration by a panel including the Examiner of record and at least one supervisor, usually with another person. This can act as a kind of quality control and may lead to prosecution being reopened, allowance of the application, or the appeal may remain pending. From the point of view of cost, it is relatively expensive to file continuation applications and RCEs especially if a second RCE is lodged. Amendment after rejection and use of the AFCP have no associated official fees. Regarding delay, continuation applications are generally not examined until 14 months after filing. This useful webinar was an illuminating and thorough review of different techniques for advancing prosecution in the US despite the issuance of a final office action. Y. Suzanne Orian (Fellow), Cabinet Beau de Loménie

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Training Training for the EQE Dates: Dates: 11-12 11-12November November 2019 2019 6-8 6-8January January 2020 2020 Venue: Venue:De DeVere VereGrand Grand Connaught Connaught Rooms 61-65 5DA 61-65Great Great Queen Queen St, St, London WC2B 5DA

Areyou youtraining trainingto tobe beaaEuropean European Patent Patent Are Attorney? Are you preparing to take the EQE EQE Attorney? Are you preparing to take the in Spring 2020? Support your studies by in Spring 2020? Support your studies by attending our preparatory course, learn from attending our preparatory course, learn from experienced practitioners and previous experienced practitioners and previous candidates, and network with fellow candidates, and network with fellow professionals. professionals. This course is for candidates preparing for This is for candidates thecourse main papers (A, B, C and preparing D) of the for the main papers (A, B,Examination C and D) of (EQE) the European Qualifying European Qualifying Examination (EQE) RIWKH(XURSHDQ3DWHQW2IÀFH,WLV RIWKH(XURSHDQ3DWHQW2IÀFH,WLV VWUXFWXUHGLQWZRSDUWVDQGUHÁHFWVWKH VWUXFWXUHGLQWZRSDUWVDQGUHÁHFWVWKH practical nature of the examinations. practical of the examinations. Bookingsnature are now accepted for the EQE training Bookings for Parts 1 and 2for areboth nowPart accepted. programme. Registration 1 and Part 2 is compulsory.

Why Why book book Queen QueenMary MaryUniversity UniversityofofLondon’s London’s course? course? • In-depth study of previous EQE papers in small • In-depth study of previous EQE papers in small groups and with highly experienced tutors. groups and with highly experienced tutors. • The course is continuously adjusted to the • The course is continuously adjusted to the changing requirements of the examination and changing requirements of the examination and the profession. the profession. • Queen Mary University of London has nearly • 30 Queen Mary University of London has nearly years’ experience running this programme 30 years’ experience running this programme and provides close academic supervision. and provides close academic supervision. • The pass rates of Queen Mary University of • London The pass rates candidates of Queen Mary Universityinof trained are generally London trained candidates are generally in excess of 95%. excess of 95%. For more information and to register please go to For more information and to register please go to www.ccls.qmul.ac.uk/events www.ccls.qmul.ac.uk/events

www.ccls.qmul.ac.uk/events www.ccls.qmul.ac.uk/events pp41-QMUL_1.indd 41

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THE PINKS

COURSES

REVISION COURSES FOR THE PEB 2019 & EQE 2020 EXAMS MAY-AUGUST AND NOVEMBER-DECEMBER 2019 We are holding residential revision courses between May and August 2019 for the 2019 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations and November-December 2019 for the 2020 European Qualifying Examination (EQE). Our main suites of FC and FD courses are held between 24 June and 19 July and 19-23 August and our EQE courses between 25 November and 3 December 2019, including an EQE Pre-exam course. The courses, which are in Milton Keynes, include a residential element, but if accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

Assimilate IP is providing the following courses: IP Licensing for Life Sciences and Pharma 20 May 2019, London Freedom to Operate for the Life Sciences and Pharmaceutical Industries 17 June 2019, London Intellectual Property for Commercial Lawyers 23 September 2019, London Details and registration are on our website: https://www.assimilateip.com/courses

To advertise job vacancies, IP events or services to IP professionals in the CIPA Journal and / or the CIPA website please email sales@cipa.org.uk or call 01376 791632

If you have news, articles or events to submit to the CIPA Journal then please email them to editor@cipa.org.uk or call 01376 791632 to discuss your ideas. Issue June 2019 July-August 2019 September 2019

42 CIPA JOURNAL

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Editorial deadlines Friday 17 May Monday 17 June Friday 16 August

Issue October 2019 November 2019 December 2019

Editorial deadlines Tuesday 17 September Thursday 17 October Friday 15 November

www.cipa.org.uk


THE PINKS

COURSES

CEIPI preparation courses for the European Qualifying Examination 2020 A complete range of high-quality courses using proprietary high-quality training material Offer for English-speaking candidates:

Preparation for the EQE pre-examination 2020 Preparatory seminar for the EQE pre-examination from 4 to 8 November 2019 in Strasbourg Fee: €1700*. Closing date for receipt of applications: 13 September 2019.

Intensive course “Mock examination” for the pre-examination on 23 & 24 January 2020 in Munich Candidates take two complete CEIPI mock exams under examination conditions and discuss their papers with the tutors Fee: €750*. Closing date: 11 December 2019.

Preparation for the EQE main examination 2020 Introductory “Methodology” courses on papers A+B, C and D in Paris • Papers A+B: 4 October 2019 • Paper C: 5 October 2019 • Paper D: 2-3 October 2019 Each part (A+B, C, D) can be attended separately. Fee: papers A+B or C: €600, paper D: €900*. Closing date: 17 July 2019.

Preparatory seminars for papers A+B, C and D in Strasbourg • Papers A+B and C: 18 to 22 November 2019 • Paper D: 6 to 10 January 2020 Fee: €1700 for the five-day seminars (ABC or D), €875 for the A+B or C part, respectively*. Closing date: 30 September 2019.

Booster course: “Pass paper C” on 29 and 30 November 2019 in Strasbourg For candidates wishing to overcome specific difficulties with passing paper C Fee: €850 (incl. C-book, last edition). Closing date: 18 October 2019.

Intensive courses “Mock examination” for papers A+B, C and D in Munich Candidates take mock exams under examination conditions and discuss their paper with the tutors • Papers A+B: 20 & 21 (pm) January 2020 • Paper C: 21 & 22 (am) January 2020 • Paper D: 23 & 24 January 2020 Courses A+B, C or D can be taken separately. Fee per course: €750*. Closing date: 11 December 2019. *

The CEIPI offers reduced package prices for candidates enrolling simultaneously for the complete range of courses preparing for one or more papers of the EQE.

Further information about the courses and enrolment is available in OJ EPO 4/2019 and on our website: www.ceipi.edu Contact: Christiane Melz, CEIPI International Section, tel. +33 (0)368 85 83 13, email: christiane.melz@ceipi.edu

Volume 48, number 5

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THE PINKS

COURSES

LES100 Training Course Introduction to Licensing & IP Commercialisation Monday, 17 June 2019 10am - 5pm CIPA Office (2nd Floor, Halton House, 20-23 Holborn, London, EC1N 2JD) This is the introductory course in the Licensing Executives Society’s Intellectual Asset Management Series and it is designed for those who are relatively new to licensing. It is specifically aimed at: • • • • • •

Those who are considering a career in licensing and technology transfer, Lawyers and Patent and Trade Mark Attorneys looking for greater familiarity with the business of IP licensing, SMEs who require an introduction to licensing, Entrepreneurs who need to understand the value of their IP, Professors of entrepreneurship and Students interested in learning the basics of Intellectual Property (IP) and how to commercialise IP through licensing.

What does the course cover? An overview of IP and IP Licensing, divided into five Modules, with examples, exercises and interaction between instructors and fellow students in each Module: Module 1: Introduction & IP Basics: This Module introduces, defines and gives examples of the different types of IP including patents, trade marks, copyright, designs and trade secrets in the context of commercialisation. Module 2: Basics of IP Commercialisation & Licensing: Introduction to Licensing, including reasons for licensing, description of licensing agreements, infringement, competition law, and relationship-building. Module 3: Determining Reasonable Licence Fees & Royalty Rates: This Module talks about risks and rewards, different valuation methods (Market, Financial, Cost) and their pros and cons, together with royalty structures. Module 4: Managing Risks: Identify the different kinds of risk and how to manage them, i.e. confidentiality, infringement, liability, collection of royalties and other fees. Module 5: Licensing Game: Students put into practice what they have learned by dividing into licensee and licensor teams that then discuss and negotiate terms on a licensing case study. At the end of the session all teams report their results and reasoning.

• • • • •

How long is the course? One full day. Modules 1, 2 and 3 are presented in the morning, and Modules 4 and 5 in the afternoon. Module 5, with its negotiating and reporting sessions, is the longest of the modules. Lunch is included. Instructors LES100, as with all LES courses, is taught by LES member volunteers who are active practioners in their fields. CIPA Member: £175

Non-Member: £275

The LES100 Training Course will be followed by the LES B&I 2019 Annual Conference & AGM on Tuesday, 18 June. CIPA Member: £200

Non-Member: £250

For more details and to register please see www.les-bi.org/events-calendar.html Please contact les@northernnetworking.co.uk if you have any questions.

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02/05/2019 19:09:54


Let us help you target your next move

Biotechnology Patent Attorney Manchester

Senior Associate, Engineering/Physics London

This is a fantastic opportunity for a PQ or Finals Standard patent attorney to join the Life Sciences team of a well-respected and successful IP practice.

A truly unique opportunity has become available to MRLQDĂ€UPZLWKDQH[WHQVLYHDQGYDULHGSRUWIROLR which is seeking a Senior Attorney with either a mechanical engineering, electronic engineering or a SK\VLFVEDFNJURXQGWRMRLQWKHLU/RQGRQRIĂ€FHDIWHUD period of sustained growth.

You can expect exposure to work across a broad spectrum of biotechnology and life science related subjects. There is a good mix of drafting, prosecution and opposition work, and as such there is a great opportunity to get involved with some interesting matters at an early stage in your career – which can only help your development.

Seeking high-calibre candidates with extensive experience in the industry, a minimum of 2 years’ PQE, and a track record of success to maintain and improve their existing client relationships.

In-House Chemistry Patent Attorney Buckinghamshire

Biotechnology Patent Attorney Birmingham

A rare chance to join a well-established pharmaceutical company, to assist with a wide variety of patent and IP-related tasks to ensure that the company’s IP is comprehensively protected.

7KLVJURZLQJ,3Ă€UPLVORRNLQJIRUDVSHFLDOLVW/LIH Sciences Patent Attorney to join the busy and friendly WHDPLQWKHLUSURPLQHQW%LUPLQJKDPRIĂ€FH,I\RXDUH looking to take your career to the next level, do read on!

Seeking a EPA who has a strong academic background in D/LIH6FLHQFHVRU&KHPLVWU\Ă€HOGWKHLQWHUQDWLRQDOO\ renowned work offered by this company is sure to be of interest. Candidates who are dual UK and European TXDOLĂ€HGDUHSUHIHUUHGEXWWKLVLVQRWHVVHQWLDO

7KRVHDWĂ€QDOVVWDQGDUGDVZHOODVTXDOLĂ€HG attorneys, will all be given fair consideration. Serious consideration will also be given to a lateral hire at Salaried Partner level, for the right candidate who is DEOHWRDWWUDFWDIROORZLQJRIFOLHQWVWRWKHĂ€UP

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REC-pp45-47-DEEA-C&R-DEEA_3.indd 45

Dawn Ellmore Employment

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Patent, Trade Mark & Legal Specialists 02/05/2019 19:09:28


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carpmaels.com

Could you be the missing piece? :HDUHUHFUXLWLQJTXDOLILHGDQGSDUW TXDOLILHGSDWHQWDWWRUQH\VWRMRLQRXU WKULYLQJOLIHVFLHQFHFKHPLVWU\DQG WHFKWHDPV

For more information contact us: T +44 20 7242 8692 W carpmaels.com/careers E careers@carpmaels.com

46 CIPA JOURNAL

MAY 2019

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02/05/2019 19:09:30


Time to take the plunge?

Patent Paralegal (Partner Level) London

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Patent Secretary/Paralegal South West England

IP Formalities Specialist - EP Grant South East England

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REC-pp45-47-DEEA-C&R-DEEA_3.indd 47

Dawn Ellmore Employment

®

Patent, Trade Mark & Legal Specialists 02/05/2019 19:09:32


THE PINKS

RECRUITMENT

Uxbridge, United Kingdom

Patent Attorney & Patent Paralegal Patent Attorney As a Patent Attorney for Canon Europe Ltd you will be involved in the provision of high-quality, timely, flexible and cost-efficient patent services including filing, prosecution, opposition, freedom to operate searching and advisory services. Although support and guidance will be provided, as appropriate, it is expected that this work can be managed unsupervised. Some travel to European Patent Office hearings will be required. • • •

Good degree in a physics-related subject UK Chartered Patent Attorney European Patent Attorney

Although patent attorney qualifications are preferred, individuals with relevant experience who have not yet fully qualified may also be considered. Patent Paralegal We are looking for an experienced Patent Paralegal/ Administrator. You will work closely with attorneys, correspond with clients and overseas agents, and prepare documents to file with patent offices. The successful candidate will have: •

Canon is the world’s best imaging company – driven to enrich people’s lives and businesses with innovative products and smart digital solutions. Today we are a truly global brand, constantly challenging ourselves to find new ways of adding value through our growing portfolio of services and solutions. Across the EMEA region, we employ over 18,000 people. Together we work in a respectful yet ambitious environment – collaborating to achieve the exceptional for our customers and always honouring our corporate philosophy of Kyosei, ‘to live and work together for the common good’.

Expect the excepƟonal 48 CIPA JOURNAL

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• • • • •

Experience in all areas of administration from pre-filing all the way to post-grant matters Good IT skills (Word, PowerPoint, Proficient in Excel, etc.) The ability to work accurately and independently Commitment to excellence Strong attention to details CIPA IP Paralegal qualification (ideal but not necessarily)

What we give: With Canon, you’ll get the support and encouragement you need to do your best, from people who share your ambition. You will find leaders who give you the freedom to explore new things and a team where knowledge is shared openly. • •

Competitive salary Range of company benefits including pension scheme and private health insurance.

Interested? Apply online at: www.canon-europe.com/about_us/careers

www.cipa.org.uk

02/05/2019 19:09:08


We’ve got the time, you’ve got the talent

Senior Engineering Attorney : Midlands VAC58264 Autonomous yet collaborative working environment, direct client contact and the opportunity to train other members of staff and progress to Partnership in the short to mid-term. A tailor made caseload to maintain and develop, bi-annual bonus alongside a competitive salary and comprehensive benefits package. Head of Electronics Department : South West VAC57802 You will be able to enjoy definitive work / life balance as well as whatever combination of country living and city high life suits you best. On offer is an existing mix of software and physics work ready to pick up, the chance to be integral to the growth of the department and a fast track to Partnership if you want it. Patent Secretary : Cambridge TJB60973 Working at Partner level within a busy team, you will be exposed to a range of exciting work. Previous Patent experience gained from a similar positon and the CIPA qualification will be considered advantageous. This position comes with a highly competitive salary and excellent benefits. Patent Records Clerk (Flexible Hours) : London TJB61229 Rare and exciting opportunity for a skilled Patent Records Administrator looking for flexible hours. You will assist with late filings and be happy to be in the office until around 7pm / 8pm. In return, you will start later in the morning, missing the London rush hour! Superb salary and benefits package on offer. Patent Secretary : Manchester CEH61231 A fast paced role where you will produce correspondence and rough drafts, digital dictation, electronic filing and update records. You will be involved in processing Patent applications and ensure that all deadlines are met. Excellent training and support on offer.

PQ Biotech Attorney : London CEH61202 Friendly and collegiate practice. A unique caseload of Biotech work and a tailor made role to suit your scientific background. There is real variety here and you can be assured of lots of drafting, litigation, business development and client care - enhancing the firms already highly regarded reputation. In-House Attorney : North West RRM60042 Daily interaction with the R&D department means you will sit at the centre of exciting developments, working with external counsel to manage and build the extensive portfolio. EPA qualified, a Mechanical Engineering or Chemistry background and up to 5 years PQE sought. Biotech Attorney : West Midlands RRM60956 Impressive IP firm have an exciting opening for a Biotech Attorney. Working closely with the head of the department, the team are keen to continue to build and develop on their success to date and so Attorneys with an interest in marketing and business development are encouraged to apply. Electronics Attorney : Leeds CEF60960 Highly regarded IP firm with a global reach have an opening for Attorneys from Senior Associate to finalist level. This firm are renowned for their cutting edge, hi tech clients who they offer superlative IP advice to, there will be immediate client contact for the skilled Attorney who joins this close knit team! Bio/Chem Attorney : Glasgow CEF60921 On offer here is a varied client portfolio which includes start-ups, SMEs, major corporations and household names. Your commercial acumen will offer strategic and expert advice to your clients. This is a fantastic time to be joining the practice as they are at the forefront of exciting developments.

For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: catherine.french@saccomann.com • lisa.kelly@saccomann.com victoria.clark@saccomann.com • tim.brown@saccomann.com, rachel.molloy@saccomann.com or clare.humphris@saccomann.com

‘Tweet’ us at www.twitter.com/saccomannip

Scan the QR Code for our website

www.saccomann.com

www.linkedin.com at the ‘Sacco Mann Intellectual Property Group’

Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment. PQE Levels are purely for guidance. We are happy to consider all applicants with the necessary skills. REC-pp49-Sacco_1.indd 49

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THE PINKS

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IP Recruitment Specialists 35 years experience

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Skepsis: The Patent Killers Skepsis is a “strawmanâ€? patent revocation company specialising in patent invalidations before national courts. We have proven expertise in invalidating hi-tech patents, particularly standards essential telecoms patents. We are also the only company in Europe to offer “no win, no feeâ€? patent revocations. We have recently introduced an EPO opposition technical support service for patent attorneys. Our bespoke service can include technical tutorials with experts from the Ă€eld of the patent, as well as our unique expert-led prior art search. So, the next time you are drafting a complex opposition, give us a call to hear how we can help. Email: info@skepsis-telecom.com

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50 CIPA JOURNAL

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www.ip-support.co.uk 020 7776 8966 info@ip-support.co.uk

Remote Working Patent Paralegal - London & South East A rare opportunity for a highly skilled Patent Paralegal to work from home. Must have strong UK & EP procedural knowledge. Part-Time Records Administrator - London A flexible part-time role with a modern and forward thinking practice. Senior Renewals Officer - West Midlands A truly unique opportunity to secure a career-defining role. REC-pp51-Law-Support_1.indd 51

02/05/2019 14:55:17


THE PINKS

RECRUITMENT

European Patent Attorney Life Science Team Dublin/Belfast We’re developing our Life Science Team, and you can be a part of it! Join us in our EU-based Dublin Office or our UK-based Belfast Office if you are a fully-qualified European Patent Attorney (or part-qualified/final-year EQE candidate) with a PhD or equivalent in (micro)biological, biomedical, biomolecular, (bio)chemical, or natural science (or a related technical discipline). We particularly encourage European Patent Attorneys with technical expertise in small-molecule chemistry to talk to us.

About us: The technical competence of our Life Science Team ranges from pharmaceuticals and biotechnology to medical devices and healthcare – and we represent a range of inventors from SMEs, academic institutions, and international corporations – offering a varied and intensive work experience. We provide an open-door policy to give access to all professional levels, and we nurture a friendly atmosphere to contribute to a supportive working environment. As an inclusive workplace, we are invested in empowering, valuing, and celebrating the diversity of our highlymotivated European Patent Attorneys.

About the role: The role complements the expansion and progression of our Life Science Team to one of the most competent teams in Europe in all proceedings before the European Patent Office, with particular opportunity to directly manage higher level opposition and appeal proceedings. As part of our commitment to promoting a diverse and inclusive workspace, we offer a flexible working environment to provide you with clear and definitive opportunities to promote and progress your career. Regardless of your working arrangements, you will have occasion to work autonomously and function as part of a group, with direct access to clients and case work with a healthy combination of directly prosecuted and communicated matters – providing you with a varied and extensive caseload.

About you: We are looking for you to provide practical strategic advice through an analytical and organisational perspective, and an active approach to business development. A highly motivated and self-starting attitude to working as an individual must also be combined with the ability to interact and develop strong working relationships with colleagues. We’re dedicated to creating an environment where everyone, from any background, can do their best work, and so you can be you.

Application to the role: If you are a European Patent Attorney looking to be part of the development of our Life Science Team, please contact Jane Rice, HR Officer, by email (hr@frkelly.com) no later than 5pm on 24 May 2019.

52 CIPA JOURNAL

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02/05/2019 14:54:56


Your partners in Patent recruitment

G2 Legal is one of the UK’s largest privately owned legal recruitment firms. Our dedicated Patent & Trade Mark Division was formed in 2013. We are proud to have assisted Attorneys, from trainees through to partners, achieve the next step in their careers

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your work and a supportive team environment. The

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My client is widely regarded as a field-leading Patent

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enables them to deliver a very high quality of work to

renewals experience within their support team. This

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the teams they work and viewed as a person rather

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REC-pp53-G2_1.indd 53

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PATENT TRANSLATING Since 1997 we have specialised in providing translations for patent and trademark attorneys, with meticulous attention to detail and ensuring the correct terminology, in the right format for filing anywhere in the world. To achieve this, our specialist translators include former patent agents who only translate into their mother-tongue, with all assignments being proofread before delivery. Areas of expertise: Aeronautical • Automotive • Bio-chemical • Chemical Computing • Electrical • Electronic • Mechanical Pharmaceutical • Telecommunications

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REC-pp55-QED_1.indd 55

02/05/2019 14:50:57


THE PINKS

INTERNATIONAL

  

             

56 CIPA JOURNAL

REC-pp56-Utd_1.indd 56

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02/05/2019 14:50:28


For full details on the range of opportunities weâ&#x20AC;&#x2122;re recruiting for or just to have a general chat about your career, please call Pete Fellows or Phillipa Holland on 020 7903 5019 or email: contact@fellowsandassociates.com. www.fellowsandassociates.com

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Fellows and Associates Ltd. acts as an agency within the meaning of the Conduct of Employment Agencies and Employment Businesses Regulations 2003. We operate a strict equal opportunities policy. Fellows and Associates is a trading name and registered UK trade mark of Fellows and Associates Limited

2-IBC-FellowsL_1.indd 68

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4-OBC-DYoung_1.indd 4

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