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

June 2019 / Volume 48 / Number 6

The US's patent eligibility puzzle

CIPA's response to the EPO’s Draft Strategic Plan Consultation

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Revision of the EPO's Boards of Appeal's Rules of Procedure

Brexit-related queries from UK representatives EUIPO

The EUIPO's robust approach to Brexit Alasdair Poore

Remote year: Everyone should travel? Lucy Holloway

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UP FRONT

CIPA JOURNAL Editor Deputy Editors Publications Committee Production and advertising Design Cover design Contact

Alasdair Poore Sean Gilday; Jeremy Holmes Bill Jones (Chairman) Iain Ross, 020 3289 6445, sales@cipa.org.uk Neil Lampert Jonathan Briggs editor@cipa.org.uk

Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third-party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions.

CIPA CONTACTS

Julia Florence President

Richard Mair Vice-President

Stephen Jones Immediate Past-President

Gwilym Roberts Honorary Secretary

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

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Contents 18 11 & 15

24 & 29 UP FRONT

ARTICLES

EDUCATION

60 61

Chief Executive’s report

Changes at CIPA Lee Davies 3

Christopher Rennie-Smith & Lucy Samuels

Council Minutes

Lee Davies

EPO Boards of Appeal – revised Rules of Procedure

Brexit: No slow marks for EUIPO

Alasdair Poore

NEWS 4 5

7 8

Institute events Midlands Meeting 2019

65 68

Non-institute events EPO oral proceedings

Seminar report

CIPA training course

Finnegan 35

US update: Precedential Opinion Panel

Finnegan

PERSONAL 55

IP Inclusive update

DECISIONS

From lawyer to teacher

EPO’s Strategic Plan

Patent decisions

Going Remote

Consultation response Patents Committee

IPO decisions

59 59 66

Announcements Obituary: Vivien E. Irish The Yellow Sheet

Business plan, budget and practising fees Patents Committee

David Pearce & Callum Docherty 44

EPO decisions

Trade marks

Draft Bill released to reform section 101 of the Patent Act Denise Main & Adriana Burgy Volume 48, number 6

Khasruz Zhaman Lucy Holloway

Bristows

US Roadshows 2019 US: subject-matter eligibility

Andrea Brewster

Beck Greener

Overseas update

Neil Lampert 28

Excluded subject-matter the US way

Regulatory – IPReg

Dr Amanda R. Gladwin 9

Barbara Cookson 62 64

US: Excluded subject-matter

Paul Cole

CIPA Annual Dinner EUIPO and Brexit

Response to Brexit-related queries from UK representatives EUIPO 6

Life Sciences Conference Book review: The Protection of Non-Traditional Trade Marks

Bird & Bird

THE PINKS 69

Courses & Events; Support; Recruitment JUNE 2019

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CIPA NEWS

CITMA Vice-President Richard Goddard promoted use of the Madrid System for the registration of trade marks in multiple jurisdictions. He said that the system had come of age, with all the world’s main economies now involved. CIPA Council member and Chair of the Life Sciences Committee Simon Wright (in Washington and Boston) and CIPA Honorary Secretary Gwilym Roberts (in Palo Alto) gave presentations on recent developments and hot topics at the EPO. They said that the US was the biggest filer by country of origin at the EPO and discussed graphics that illustrated the growth of applications and leading corporate filers. They explained that filings were up, that grant and prosecution were getting quicker and that oppositions were speeding up as well. They gave tips on prosecution and appeal strategy and offered insights into the political situation within the EPO. In Washington, Boston and Palo Alto, Mike Jennings of CIPA’s Computer Technologies Committee gave detailed advice on filing artificial intelligence and machine learning at the EPO. Clare Cornell, a member of CIPA’s International Liaison Committee, provided practical advice at all three events about filing designs in UK and Europe, contrasting this with US practice. Sir Colin Birss was joined in Washington by retired Federal Circuit Judge Paul Michel and in Boston by Chief District Court Judge Patti Saris, of Massachusetts, for some lively discussion of litigation matters. Sir Colin explained the benefits of litigating at the Intellectual Property Enterprise Court (IPEC) for smaller companies, due to the cap on costs and fast-track procedures. Judge Michel, in particular, was full of praise for the IPEC. At all three events we benefitted from international policy insights and details of modernisation programmes from Adam Williams and Andy Bartlett of the UK IPO. They were joined in Washington by Mark Powell, Deputy 10

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US ROADSHOWS

Delegates and participants at the Washington DC event, 22 April 2019

Commissioner for International Patent Cooperation at the USPTO, and in Boston and Palo Alto by his colleague Charles Pearson, who both spoke about the opportunities for UK-US collaboration and service innovations. In Palo Alto we were joined by senior in-house litigators Laurie Hill and Rebecca Grant of biotech giant Genentech, Catherine Maresh of Immersion Corp and Nick Aries, Partner and co-head of Bird & Bird’s San Francisco office, for an interesting panel session exploring best practice in international IP litigation strategy. At each venue the presentations were followed by a networking session which provided the opportunity for interesting and useful discussions with the delegates. The CIPA and CITMA officers made useful contacts and many fruitful conversations were had. CIPA is grateful to the American Intellectual Property Law Association (AIPLA) for supporting the roadshows and for providing moderators for most of the panel sessions. All panel sessions were well received with our AIPLA moderators doing a fantastic job. In Palo Alto two moderators travelled in from Chicago and Texas and we also had an award-winning entrepreneur in the audience – Patrick O’Neill, inventor of the iPhone removable lens, the Olloclip. CIPA thanks the following speakers on the UK delegation:

• • • • • • • • • • • •

Sir Colin Birss Andy Bartlett (Divisional Director, UK IPO) Clare Cornell (Finnegan) James Cross (Maucher Jenkins) Paula Flutter (EIP) Nicholas Fox (Finnegan) Mike Jennings (AA Thornton) Matt Maitland (eip) Gwilym Roberts (Kilburn & Strode) Richard Roberts (Potter Clarkson) Adam Williams (International Policy Director, UK IPO) Simon Wright (JA Kemp)

Awards for stamina go to Clare Cornell of Finnegan and Mike Jennings of AA Thornton who were the only speakers to join the CIPA, CITMA and UK IPO participants in presenting at all three locations. Mike’s insights into the hot topic of the patentability of AI at the EPO and Clare’s knowledgeable presentations on accessing UK design protection through the Hague System were received with great interest on both coasts. Feedback was very positive with delegates generally keen for the visits to become annual events. CIPA is grateful to its lead sponsor, Patent Seekers, and individual event sponsors Sughrue Mion (Washington), Finnegan (Boston) and Bird & Bird (Palo Alto). Neil Lampert (Deputy Chief Executive) www.cipa.org.uk

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Rules that make a difference – Revision of the Rules of Procedure of the EPO Boards of Appeal In early 2018, the EPO announced a proposed revision of the Rules of Procedure of the Boards of Appeal (RPBA) and we are told to expect the amended rules to be introduced with effect from 1 January 2020. CIPA has arranged a seminar on the topic on 22 July 2019 for which the two articles below are essential background reading. Understanding the new rules is (not just will be) essential for all attorneys. The transitional provisions mean that what you do now may affect what can be done on appeal. One article is by Lucy Samuels (Fellow) who has very considerable experience of EPO appeals; the other by Christopher Rennie-Smith (Associate), who was previously a Board of Appeal chairman. Both Christopher and Lucy have been following the revision process closely and both attended the EPO’s user consultation conference on the draft revised rules in Munich on 5 December 2018. In the first article, Christopher summarises the proposed revisions and comments on the revision process; in the second, Lucy reports in detail on discussions at the conference about some of the specific proposed rule changes, giving a feel for possible problems to come.

Updating the RPBA – with a little help from the users By Christopher Rennie-Smith (Associate)

Volume 48, number 6

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Background I’ll begin by declaring an interest of sorts – I was one of the group of Board of Appeal members and chairpersons responsible for the RPBA in more or less their current form as introduced in May 2003. Since the version we prepared back then was drafted in English first and I was the only member of the group with English as a first language, you can guess who was expected to write the very first drafts. There were a few subsequent tweaks and renumbering, but that 2003 version is still pretty much the one in use now. While it has served fairly well (as you might expect me to say), it did produce one or two unexpected results and an overhaul some 15 years later is well overdue. Not that those of us in the group planned to wait that long. An unpublished proposal we made was that the RPBA should be kept under, if not constant, at least regular review by a group such as ours and in fact we were, after the 2003 revision came into force, asked to consider other changes (one was the introduction of cross-appeals in opposition cases which would have required changing the EPC, no less). Then we had the temerity to suggest that we might, as part of the ongoing review, invite users to comment on procedural issues and, depending on how that went, even co-opt some users to join the group. Within days the review group had been fired – reviewing rules JUNE 2019

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Brexit: No slow marks for EUIPO? On 22 February 2019, the EUIPO issued a Communication1 on the impact of the UK’s withdrawal from the EU and aspects of the EUIPO’s practice. Amongst other things, that Communication gave notice of the practice to be adopted by the EUIPO in relation to inter partes proceedings which pending before the EUIPO where the opponent or applicant relied on UK-based trade mark rights. Suspension (up to the withdrawal date) if those rights were the only rights relied on; disregard of the UK-based rights if the proceedings were still pending at the withdrawal date; dismissal if the UK-based rights were the only sustainable grounds for the challenge. (The Communication also gave notice of the proposed practice in relation to other matters, such as rights of representation.) On 12 April 2019, the EUIPO amended its communication, deleting the passages relating to suspension (referred to below as the “Suspension Practice”). In this article, Alasdair Poore examines the apparent rationale behind the practice, and considers whether, in adopting this practice the EUIPO has taken adequate account of the rights of the challenger: the challenger’s trade mark rights in the case of disregarding UKbased rights; its procedural rights in the case of suspension which has already occurred or may occur if the suspension practice is re-instated as 31 October (or some other withdrawal date) approaches; and both, if, consequent on the February Communication, some challengers have withdrawn their inter partes proceedings. 18

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he EUIPO has taken a robust approach to the UK’s proposed withdrawal from the EU. The UK will cease to be part of the EU. Therefore trade mark rights in the UK will no longer be recognized as EU rights, and they will cease to be relevant in relation to EU trade mark rights. Likewise, UK representatives will no longer be recognized as EU representatives before the EUIPO (at least based on their UK representation rights). Those seeking to rely on representation rights elsewhere in the EU will have to show proof of a genuine establishment.2 If there is “No Deal” on Brexit, the transition will be sharp, hard edged, like a sheer rock cliff. No doubt this is seen, not so much as punishment for the UK, but as a simple legal consequence of the UK no longer being part of the EU. An example of this is in relation to pending inter partes proceedings before the EUIPO – opposition proceedings or cancellation proceedings, challenging a third party’s application to register an EU trade mark, or their registration of such a mark. On 22 February 2019, the EUIPO issued a Communication relating to the practice (the “Practice”) it was adopting in respect of pending inter partes proceedings, which were based at least in part on UK trade mark rights, such as a UK registered trade mark or rights the basis of which was specific to the UK:  Any adversarial procedure (i.e. oppositions and invalidation/cancellation actions) in the files based solely on UK rights would be suspended until the withdrawal day.  Where opposition or invalidation proceedings, which are still pending on the withdrawal day, are based solely on UK rights, the EUIPO will, following withdrawal, dismiss those proceedings.  Where any such proceedings are based on a UK right or rights arising in the UK as well as non-UK rights, if the action cannot be upheld on the basis of non-UK rights it will be rejected. As paragraph 12 of the Communication explained: “As from the withdrawal day, UK rights cease ex lege (article 50(3) TEU) to be ‘earlier rights’ for the purposes of inter partes proceedings (opposition, EUTM invalidity, RCD invalidity). Further, the territory and public of www.cipa.org.uk

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TRADE MARKS

The EUIPO has taken a robust approach to the UK’s proposed withdrawal from the EU... trade mark rights in the UK will no longer be recognized as EU rights, and they will cease to be relevant in relation to EU trade mark rights.

EUIPO

the UK will no longer be relevant for the purposes of assessing a conflict between an earlier EU right and a later EUTM or EUTM application. This has certain consequences as to how files will be treated both before and as from the withdrawal day.” On 12 April 2019, the EUIPO amended the Communication deleting the paragraphs relating to the first bullet, that is to suspension. However, there is no certainty that this practice will not be reinstated when (if) the UK’s departure again becomes imminent. Superficially, this practice may seem to make good sense much like the EUIPO’s practice in relation to class headings – “class headings means all goods in class” – which was found to be unlawful in IP Translator3. After all, the UK rights cease “ex lege” to be “earlier rights”, so what alternative does the EUIPO have? However, it will also be seen as grossly unfair by challengers who initiate proceedings in good faith. Challengers have little control over how long proceedings take, especially as they may be subject to appeal to the Boards of Appeal, and there may even be cases still pending which were initiated prior to the UK referendum on Brexit. How fair is it to disregard UK-based trade mark rights in such cases? So what is the basis for the EUIPO’s approach? Is the fact that UK rights cease to be earlier rights not sufficient justification – indeed make a necessary requirement – to adopt the practice set out in the Communication? There are two parts to this question. Is the EUIPO justified in disregarding, after withdrawal, all UK-based rights? Is (or was) the practice of suspending proceedings, even if the EUIPO is justified in disregarding all UK-based rights, justified?

UK rights ceasing to apply on the withdrawal day The EUIPO Guidelines The Communication introduces the Practice by stating that UK rights cease (for the purposes of the EU without the UK) to be “earlier rights”. The current Opposition Guidelines give a clue as to what happens4: “If, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid, or it has not been renewed), the final decision cannot be based on it. The opposition may only be upheld with respect to an earlier right which is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. Since the CTMA and the earlier right which has ceased to have effect cannot coexist anymore the opposition cannot be upheld to this extent. Such a decision [to refuse the challenged mark] would be unlawful (see judgment of 13/09/2006, T-191/04, ‘Metro/Metro’, paras 33 and 36).” Volume 48, number 6

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US Federal Circuit: Excluded subject-matter Athena Diagnostics v Mayo Collaborative Services. An opportunity to review the US Federal Circuit’s cold shoulder for diagnostic methods?

“Excluded subject-matter” tests patent jurisprudence in many different ways. The US courts have focused on the principle that laws “of nature, natural phenomena, and abstract ideas are not patentable.”1 In the life sciences field in particular, this has been refined to whether the claim is “directed to a natural law” with some similarities to the exclusion of non-technical subject-matter in the EPO’s consideration of computer-implemented inventions and business method patents. The Federal Court appears to be developing this into a jurisprudence that boils down, in one hugely important area, to saying that diagnostic methods are not patentable (see Finnegan’s article on four recent Federal Court decisions on page 29). In this paper Paul Cole (Fellow) sets out arguments why this should be subject to a major rethink meriting en banc review by the US Supreme Court.

n Ariosa Diagnostics v Sequenom,2 the Federal Circuit belittled pioneering work at the University of Oxford, indisputably one of the world’s leading research institutions. In the present decision handed down early in 2019, the Federal Circuit surpassed itself by belittling pioneering work representing the combined efforts of the University of Oxford and the Max-Plank Gesellschaft, two of the world’s leading research institutions. A petition for en banc review has been filed and is supported by amicus briefs3. The present article further supports the need for review, emphasizing inadequate attention paid to the positive eligibility provisions of 35 USC 101, conflict with Diamond v Diehr, an inadmissible extension of admissions within the patent description regarding a genus of techniques to cover a previously undisclosed species of techniques within the genus and the need to give equal treatment to those who make pioneering inventions or discoveries and those whose inventions or discoveries are incremental. As explained in the Background to the majority opinion, Athena Diagnostics is the exclusive licensee of US Patent 7267820 (Vincent) covering methods for diagnosing neurological disorders by detecting antibodies to a protein called musclespecific tyrosine kinase (“MuSK”). In particular, the methods are useful for diagnosing Myasthenia gravis (“MG”) which is a neurological disorder where patients experience muscle weakness and symptoms including drooping eyelids, double vision, and slurred speech. The subject-matter claimed in claim 9 of Vincent US 7267820 on which the panel majority in Athena focused is as set out below: A method for diagnosing neurotransmission or developmental disorders related to muscle specific tyrosine kinase (MuSK) in a mammal comprising the step of detecting in a bodily fluid of said mammal autoantibodies to an epitope of muscle specific tyrosine kinase (MuSK), comprising contacting MuSK or an epitope or antigenic determinant thereof having a suitable label thereon, with said bodily fluid, wherein said label is a radioactive label and is 125I,

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EXCLUDED SUBJECT-MATTER

US FEDERAL CIRCUIT

immunoprecipitating any antibody/MuSK complex or antibody/MuSK epitope or antigenic determinant complex from said bodily fluid and monitoring for said label on any of said antibody/MuSK complex or antibody/MuSK epitope or antigen determinant complex, wherein the presence of said label is indicative of said mammal is suffering from said neurotransmission or developmental disorder related to muscle specific tyrosine kinase (MuSK).

The panel majority held that the claim was directed to a natural law, i.e. the correlation between the presence of naturally occurring MuSK antibodies in the bodily fluid and MuSK-related neurological diseases. However, appropriate and necessary attention to detail would have revealed process steps of a qualifying transformative character, and in particular to the following ordered combination of steps: 1. providing bodily fluid of a mammal, implicitly as an isolated sample (column 5 lines 18-19); 2. providing 131I-labelled MusK or an epitope or antigenic determinant thereof, being a novel compound disclosed neither in Valenzuela WO 97/21811 cited by Vincent nor in earlier-dated Bowen US 5814478, apparently the earliest disclosure of the MuSK protein;

This method can be understood with reference to the disclosed embodiment from the following diagram, with products of nature shown above the horizontal line and products created by human intervention shown below the horizontal line:

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for performing the detection steps, after which those others can freely benefit from the fundamental discovery or breakthrough and the original inventors receive nothing. No such disadvantage is imposed on inventors in Europe and there is no credible policy justification for such illogical and harsh treatment, which was not meted out to James Watt, Samuel Morse or Alexander Graham Bell. A better rule is in The Telephone Cases12:

affirmed by Justice Stevens in Bilski v Kappos13, where he said, also with reference to O’Reilly v Morse14:

“It may be that electricity cannot be used at all for the transmission of speech except in the way Bell has discovered, and that therefore, practically, his patent gives him its exclusive use for that purpose; but that does not make his claim one for the use of electricity distinct from the particular process with which it is connected in his patent. It will, if true, show more clearly the great importance of his discovery, but it will not invalidate his patent.”

It is to be sincerely hoped that the petition for en banc review will be granted and that the present unsatisfactory decision will be reversed. Indeed, the most appropriate outcome would be disapproval of the whole chain of unsatisfactory Federal Circuit decisions in life sciences inventions including notably Ariosa.

“One might think that the Court’s analysis means that any process that utilizes an abstract idea is itself an unpatentable, abstract idea. But we have never suggested any such rule, which would undermine a host of patentable processes.”

Paul Cole (Fellow) is a European Patent Attorney, a CIPA Council member, an editor of the CIPA Guide to the Patents Acts and a visiting professor at Bournemouth University. He has no direct or indirect interest in the outcome of this litigation.

The continuing relevance of the rule in the Telephone Cases was

Stop press: subject-matter eligibility in the US Draft Bill released to reform section 101 of the Patent Act Congress continues to discuss the patent eligibility requirements; on 22 May 2019, a bipartisan, bicameral bill was proposed, which could redefine what kinds of inventions may be patented. If enacted, the bill will remove the judicial exceptions to patent eligibility. This draft bill arrives on the heels of the USPTO’s revised guidance on patent eligibility that went into effect on 7 January 2019, and feedback from stakeholders, inventors, and industry representatives from an earlier draft in April. The draft bill text proposes the following:

According to the draft bill, the following additional legislative provisions are proposed: • •

• Section 100: (k) The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention. Section 101: (a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. (b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation. Section 112: (f) Functional Claim Elements — An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

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The provisions of section 101 shall be construed in favor of eligibility. No implicit or other judicially created exceptions to subjectmatter eligibility, including “abstract ideas,” “laws of nature,” or “natural phenomena,” shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated. The eligibility of a claimed invention under section 101 shall be determined without regard to: the manner in which the claimed invention was made; whether individual limitations of a claim are well known, conventional or routine; the state of the art at the time of the invention; or any other considerations relating to sections 102, 103, or 112 of this title.

Senate Judiciary Subcommittee on Intellectual Property hearings will be held on 4-5 and 11 June regarding the state of patent eligibility in the US. Those hearings are expected to generate additional stakeholder feedback. In addition, the Subcommittee will hear the perspective of a variety of witnesses from different industries regarding the current patent eligibility laws. Source: By Denise Main and Adriana L. Burgy Finnegan, Henderson, Farabow, Garrett & Dunner, LLP’s IP update, 28 May 2019. See: https://www.finnegan.com/en/ insights/blogs/prosecution-first/draft-bill-released-to-reformsection-101-of-the-patent-act.html

www.cipa.org.uk

07/06/2019 10:19:59

Excluded subject-matter the US way Do four decisions show signs of consistency on patent eligibility of diagnostic and treatment methods in the US?

Patent eligibility or excluded subject-matter are testing the patent system all over the world. Emily Gabranski and Timothy McAnulty of Finnegan explore four recent decisions of the US Federal Circuit asking whether they show signs of consistency – a consistency which will diverge firmly from the European approach to excluded subjectmatter in the Life Sciences field. In another article in this issue (page 24), Paul Cole explores arguments as to why the Federal Circuit has got it wrong in apparently excluding diagnostic methods from patentability in one of these cases, Athena Diagnostics v Mayo Collaborative Services.

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even years after the Supreme Court’s decision in Mayo Collaborative Services v Prometheus Laboratories1 and five years after Alice Corp v CLS Bank International,2 the law in the United States on patent-eligible subjectmatter continues to evolve. While many cases deal with software and computer-implemented methods, life sciences and biotechnology also come under scrutiny. And, in particular, the patent eligibility of diagnostic methods and methods of treatment are of particular interest. Four recent Federal Circuit decisions highlight how US courts determine patent eligibility for life sciences and biotechnology inventions and may suggest some consistency in this dynamic area of US patent law. In Endo Pharmaceuticals v Teva Pharmaceuticals USA,3 the Federal Circuit analyzed method of treatment claims relating to treating pain in renally impaired patients. The Court found the claims patent eligible. In Natural Alternatives International v Creative Compounds,4 the Federal Circuit analyzed method of treatment claims directed to using natural compounds. The Court again found the claims patent eligible and possibly suggested a bright-line distinction between diagnostic methods and methods of treatment. In Athena Diagnostics v Mayo Collaborative Services,5 the Federal Circuit analyzed claims relating to methods of diagnosing neurological disorders. The Court found the claims patent ineligible. And in Cleveland Clinic Foundation v True Health Diagnostics,6 the Federal Circuit analyzed claims relating to methods for testing risk of cardiovascular disease. The Court found the claims patent ineligible and discussed the impact (if any) of the USPTO’s own guidance regarding patent eligibility.7 Last year, in Vanda Pharmaceuticals v West-Ward Pharmaceuticals International,8 the Federal Circuit addressed the patent eligibility of methods of treatment using the Mayo/ Alice framework for the first time. The Court analyzed claims directed to a method for treating schizophrenia, and a split panel determined they were not directed to a natural law or phenomenon and were, therefore, patent eligible. Many practitioners viewed Vanda as a milestone decision, and the JUNE 2019

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US FEDERAL CIRCUIT

transform the natural law into a patent-eligible application of the natural law.53 In Cleveland Clinic II, decided almost two years later, a new panel54 analyzed method claims in continuation applications that share a common specification with the patent at issue in Cleveland Clinic I.55 Unlike the claims in the parent patent, which recited steps of assessing atherosclerotic CVD risk from blood MPO, the claims in the continuations recite methods of identifying and detecting MPO. For example, a representative claim recited: 1. A method for identifying an elevated myeloperoxidase (MPO) concentration in a plasma sample from a human subject with atherosclerotic cardiovascular disease comprising: a. contacting a sample with an anti-MPO antibody, wherein said sample is a plasma sample from a human subject having atherosclerotic cardiovascular disease; b. spectrophotometrically detecting MPO levels in said plasma sample; c. comparing said MPO levels in said plasma sample to a standard curve generated with known amounts of MPO to determine the MPO concentration in said sample; and d. comparing said MPO concentration in said plasma sample from said human subject to a control MPO concentration from apparently healthy human subjects, and identifying said MPO concentration in said plasma sample from said human subject as being elevated compared to said control MPO concentration.56 Under Mayo/Alice step one, the panel repeated its analysis from Cleveland Clinic I and found the methods were directed to the natural law that blood MPO levels correlate with atherosclerotic CVD.57 The panel rejected Cleveland Clinic’s argument that the patents were directed to techniques for detecting elevated levels of MPO (not assessing risk of CVD) and therefore distinguishable from the parent patent as “overly superficial.”58 It noted that the patents did not claim any new methods or techniques, and the “rephrasing of the claims does not make them less directed to a natural law.”59 Despite finding the claims ineligible at Mayo/Alice step one, the panel briefly considered step two and determined that the claims contained no inventive concept.60 Separately from the Mayo/Alice analysis, Cleveland Clinic II argued that its claims mirrored an example provided in the Patent Office’s guidance as an exemplary claim that was patent eligible.61 The panel generally dismissed this argument, stating that “[w]hile we greatly respect the [US]PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance.”62 The panel pointed out that the USPTO’s example was “strikingly similar” to a claim in Ariosa63 that the Court found 34 CIPA JOURNAL

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EXCLUDED SUBJECT-MATTER

ineligible.64 The panel explained that “we are mindful of the need for consistent application of our case law,” and therefore, “Ariosa must control.”65 The court added that any deference to an examiner’s decision to allow claims is incorporated into the presumption that a patent once issued is valid. Ultimately, the Federal Circuit’s dicta in Cleveland Clinic II may be more interesting and informative than its ruling. The patent owner attempted to redraft claims in continuation applications and followed USPTO guidance regarding patent eligibility. Practitioners should be mindful of the Court’s guidance that “rephrasing of the claims does not make them less directed to a natural law” and should be aware that reliance on the USPTO’s patent eligibility guidance may have limited weight beyond patent examination.

Conclusion The Federal Circuit’s analysis and holdings in these four decisions raise at least two questions: (1) whether methods of using natural compounds are generally patent eligible; and (2) whether Vanda created a bright-line rule that methods of treatment are patent eligible. We will have to wait and see whether the Federal Circuit will extend the Natural Alternatives holding to other methods of using natural compounds or limit it to its specific facts. While practitioners may be optimistic, time will tell if the Natural Alternatives holding is limited. The statement in Natural Alternatives – “These are treatment claims and as such they are patent eligible” – seems to suggest a bright line rule at least for method of treatment claims. And the Federal Circuit seems to be applying this approach finding each post-Mayo diagnostic testing method patent to be ineligible and finding each treatment method patent to be eligible. With this in mind, and looking to the claims at issue in Vanda, Endo, and Natural Alternatives as examples, claims that include specific steps to be taken in order to bring about a change in the subject, include particular results to be obtained by practising the method, or include dosage limitations may likewise be found to be patent eligible. Until the Court more explicitly adopts a bright line rule against diagnostic method patents, practitioners may consider drafting claims that include specific steps applying or utilizing the results of a claimed diagnostic test Stay tuned as we monitor this area of US patent law and, in particular, wait to see if the Supreme Court will grant certiorari in Vanda. The specific question presented is “whether patents that claim a method for medically treating a patient automatically satisfy section 101 of the Patent Act, even if they apply a natural law using only routine and conventional steps.”66 The Solicitor’s brief is expected later this year, with the Supreme Court’s certiorari decision sometime thereafter. Timothy McAnulty is a partner and Emily Gabranski is an associate in Finnegan’s Washington, DC office. See more details at www.finnegan.com. www.cipa.org.uk

07/06/2019 10:18:48

US update: Precedential Opinion Panel More precedential decisions from the PTAB — is it a trend that will continue? By Kyu Yun Kim and Timothy McAnulty

n September 2018, the Patent Trial and Appeal Board (“PTAB”) created a Precedential Opinion Panel (“POP”) to establish binding authority before the PTAB.1 It is intended to serve two primary functions: rehear matters in pending trials and appeals of exceptional importance; and assist the Director in determining whether a previously issued decision should be designated as precedential or informative. The USPTO expects that it will result in more decisions being designated as precedential, effectively doing away with the previous procedure of having precedential designations put before the full PTAB. So far, the POP has issued one precedential decision on joinder, is currently hearing another on proving status of a printed publication, and recently agreed to hear another on time bars for IPRs. Any party to a proceeding may request a POP review of a particular PTAB decision, typically as part of a request for rehearing. Based on the recommendation from a Screening Committee, the Director may order a POP review. The POP typically includes the Director, the Commissioner for Patents, and the Chief Judge of the PTAB who decide the merits. Unless otherwise designated, the POP decision sets forth binding agency authority.2

Proppant – the PTAB may allow a party to add new issues to an earlier-filed IPR filed by the same party Joinder is a process by which a second petition can be consolidated with an earlier-filed IPR concerning the same patent. Joinder is at the Director’s discretion if the second petition meets the requirements set forth in 35 USC §315(c): Volume 48, number 6

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“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.” Thus, Joinder of a second petition is possible if there is an earlier instituted IPR and the second petition separately warrants institution.3 Perhaps importantly, the one-year time bar for filing petitions after a party is sued for infringement (separately set by statute) does not apply to a request for joinder.4 This interplay led to situations where a petitioner, sued for infringement, sought to add new grounds and challenges to its own earlier-filed petition after it would otherwise be time-barred if those challenges were raised in a separate petition. Before Proppant, the PTAB did not consistently decide this issue. For example, in SkyHawke Techs., LLC v L&H Concepts, LLC,5 the PTAB denied joinder and did not permit a petitioner to add new issues to an existing petition it already filed. The PTAB did not specifically discuss the time-bar when denying the motion, but instead concluded that the statute only provides for joinder of a person who is not already a party to the proceeding. That is, according to the PTAB, the same party cannot be “joined” to its earlier petition because it is already a party in that proceeding. Specifically, the panel explained that the statute “does not refer to the joining of a petition or new patentability challenges” but to joining a party. JUNE 2019

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PERSONAL

NOW TEACH

From lawyer to teacher Khasruz Zhaman spent over 20 years in the corporate legal world. Then he decided to start again with Now Teach, a programme designed to help career-changers who’ve already made a success of one profession retrain as teachers. Since September 2018, Khasruz has been teaching maths at Ark Walworth Academy.

y family moved to Birmingham from Bangladesh when I was eight. With their encouragement and support from some fantastic teachers, I managed to get through a failing comprehensive with A levels in maths, physics and chemistry and went on to study law at university. I then spent over 20 years in the corporate legal world. I was passionate about developing and promoting diversity in the workplace, and I did lots of mentoring, etc. But gradually my passion for being a City lawyer started to decrease. Since the financial crisis, I’d become increasingly concerned that social diversity in the City wasn’t just stalling but possibly going backwards. I realised that you need to reach people from diverse backgrounds much earlier to set them on the right track for a career such as law. I met Lucy Kellaway, co-founder of Now Teach, and initially thought that my firm could support the initiative, but in the end I decided to join it myself!

Taking time to make the decision I spent about a year exploring the option of becoming a teacher. In October 2017, I went to a Now Teach information event where I learnt more about the programme; they were really encouraging. Now Teach place people in tougher schools and if I wanted to make a big change and help students from socially diverse backgrounds then that was the kind of school I wanted to go to. Now Teach arranged for me to spend a week at an academy in January 2018 and I made a few more visits before Easter – observing lessons and also having a go at doing some teaching. I was keen to ensure that I could establish a connection with the students. I also gave a careers talk to the sixth formers who lapped it up. I realised that beyond the day-to-day teaching I could also help them with their career choices. About 75% of the academy’s students are from ethnic minorities and mostly from the nearby housing estates. They are not lacking in aspiration, but they often do not have a clear idea of what certain jobs or professions are like and what steps they will need to take to bring their dreams to fruition. I resigned and started as a trainee at the academy in September 2018. I was given my own class of Year 9 students from the start. Since then, my teaching load has been gradually increased and I am now also teaching students in Years 7, 10 and 11. One of the advantages of Now Teach is that you are 56 CIPA JOURNAL

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only in school four days a week, so I spend Fridays working on my PGCE assignments through Goldsmiths College in London.

Throwing yourself in at the deep end Once you have committed you have to throw yourself in at the deep end – the best way to learn is by doing. There’s a network of senior teachers who are available to provide support and they will often drop by to observe my lessons. I also have an assigned tutor. I have found handling disruptive behaviour the biggest challenge, but it is about gaining the students’ trust and doing everything you can to support and motivate them. I’m already becoming stricter than I anticipated, as you quickly realise that if you are not, there is no basis on which to teach. Professionals who are considering changing career will have the intellectual capability to be able to refresh their knowledge of the subject they choose to teach. However, the real test will be one of character and resilience – it is essential that you are a “realist” who understands the school environment. Change is not immediate and it will take time to make an impact on students and see tangible results of your efforts.

Inspiring future generations I have three children – a daughter, aged 12, and twin boys, aged 10. When I told them I was training to become a teacher, one of them exclaimed, “But I thought being a lawyer was a good www.cipa.org.uk

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PERSONAL

job and better paid?” Now they ask if I have figured out how to use an interactive white board! As a trainee I have learnt not to rely too much on the lesson resources. The key is to keep things simple and be flexible so that you can respond to how the students are progressing. Also, I am learning not to over plan my lessons and cram too much into the hour – you need to allow for flexibility as not everything goes to plan. Learning a new job is a skill in itself. Teaching is energetic, and double lessons can be tough if there is bad behaviour. But I have had plenty of good lessons and when the pupils are engaged then it is absolutely worthwhile. It is still early days and I know there will be more and more of them. For me, becoming a teacher was also about engaging with the kids outside of lessons. I want to organise work experience and day trips to the City to inspire them. Many of the pupils

LETTER TO THE EDITOR

have never met people like me or even been in an office before. I want to set them on the right path and help them fulfill their aspirations.’ Now Teach brings experienced professionals into teaching. As lives and careers last longer, Now Teach is uniquely tailored to support people as they change profession and redeploy their talent and experience in the classroom; addressing declining numbers of qualifying teachers and ensuring the students who need it most get the best education possible. In doing so, Now Teach aims to draw on the experience its teachers have from successful careers in industry and the public sector to inform the future direction of our education system and the teaching profession. Find out more about Now Teach at www.nowteach.org.uk.

Letter to the Editor

ust a few months ago I was seriously worried that by now we might be in a dystopian post-hard-Brexit world where we’d be struggling to make sense of intellectual property protection work across European boundaries. But 29 March came and went, and mercifully we have an extension now to the end of October with life sort of normal in the meantime. But of course life isn’t really normal at all. We simply don’t know what is going to happen at the end of October; and in the interim we are in the process of losing one Prime Minister, gaining who knows what new Prime Minister from within the ranks of the Conservative Party, and meanwhile the Brexit clock is relentlessly ticking. The one certainty is that Theresa May’s deal is dead. It had been a valiant attempt to square the impossible circle of trying to get rid of the Customs Union, the Single Market, and the European Court of Justice, whilst at the same time trying to protect some degree of economic interaction. Given those parameters, it was probably the best she could have secured, but because it tried to do the impossible it ended up being unloved by everyone. It won’t reappear. Let’s assume for the moment that the Conservative election throws up a hard-Brexit new leader. They will almost certainly try to obtain what they blithely

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describe as a “managed no-deal”. This is of course a contradiction in terms, and actually no deal means no deal. And the current Parliament has indicated on several occasions that this is simply not acceptable. They are right. Chaos would ensue, not least in the world of intellectual property. But it remains the default option. If Parliament cannot agree on anything else, we fall out of the EU without any sustaining provisions at all at the end of October. There are three other possible outcomes. One is a further extension; given the history of recent months, this is probably the likeliest result. One is that the EEA/EFTA option might re-surface and gain support; this would require more time to resolve, but might at least provide a sense of direction. It’s unlikely to happen, though. And the third is that the whole thing is put back to the people, because Parliament can’t resolve it. A new referendum with a clear choice, of no-deal or remain. This would be my preferred option, as I believe strongly that “remain” would win. It’s the only sensible get-out-of-jail-free route. But – and it’s a big but – is there enough support in Parliament to get us there? We just don’t know. And in the meantime, I fear the uncertainties are

still with us. For trade mark practice across European borders, this is seriously disconcerting. And whilst patent work is less immediately affected, it still has a serious impact. Whilst we wait for it all to be resolved, we simply have to carry on as best we can, making preparations where we can for the worst, but hoping for something better. I still hope. Lord Chris Smith, Chair of IPReg, 25 May 2019

Editor: Of course 29 March did not pass altogether quietly for trade mark attorneys and registered design practitioners, as they had to make and/or be ready to press the button on alternative representation arrangements for their clients and informing their clients, even if this was only a change of the office that would be handling their applications and registration with the EUIPO. For others it was more extreme, being prepared to appoint a new representative at a moments notice. For patent work, of course it has been and is expected to be business as usual in relation to the EPO, which is not an EU institution.

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GOING REMOTE • ANNOUNCEMENTS

Everyone should travel? Going Remote part 13, by Lucy Holloway (Fellow)

have been back in the UK for over two months. Adjusting to being back in the office hasn’t been as hard as I expected, not least because Barker Brettell has been very good about letting me work from wherever I like, most of the time. A lot of my fellow remotes are still out and about travelling. Every day Facebook bombards me with pictures of cocktails on beaches, warm seas, smiles and sunglasses. Mexico, Bali, Australia, Japan... somehow Birmingham in winter just isn’t quite the same. Despite that, I’m glad to be back. If I learnt anything this year it’s how to resist FOMO and how to appreciate what I’ve got. I want to hang on to that grounded feeling. Something I have heard bandied around a lot this year is that “everyone should travel”. Another one is “travel broadens the mind”. It definitely does, I won’t deny that. But “everyone should travel”? I’m not so sure. What is often not mentioned in articles targeted at middle class millennials is that travel is a privilege, not a right. Not everyone has the means to travel, or the opportunity, and the implication that those who do travel are somehow superior to those who don’t is the precise opposite of what broadening your mind is meant to be about. There is a charity in Bogotá called Techo that builds homes for those who need them. A house costs $2000, and for every $2000 they raise the Techo volunteers source and deliver materials, then go and build a house for a family. I say “house”. It’s really more of a large shed: each wall a wooden panel, a wooden floor built on piles and a low-pitched roof. The barrios on the edge of Bogotá are precipitously steep and there’s a limit to what you can build on a 45-degree slope with not a lot of cash. I went out to help just a week after I got rid of my crutches, and spent the whole time terrified I’d break my foot for a third time. The family who were to be given the house had already prepared the site for us: they had dug into the slope to flatten out a tiny terrace that was just barely larger than the footprint of the new building. They currently lived right next to the site: a young couple with a young daughter and a baby, sharing a space barely larger than my office with one of their parents, five chickens and a dog. They had running water from over-ground pipes and sporadic electricity, but no road access, heating or foundations – the house sat directly on its dirt floor. Every winter houses in the barrios come down in mudslides, and so the key to preventing that is to make sure the piles on which

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the houses are built are driven in deep enough. The materials for the build had already been carried up from the nearest road for us – up steps, round other houses, across tiny ankle-breaking streams hidden in long grass. We turned up expecting to be banging in nails and painting things and instead were horrified to find ourselves spending a full day doing nothing but digging 12 holes. It is no mean feet to dig a 2.5 meter-deep hole through clay and rock with just a metal pole and something that looks like a huge pair of salad tongs to scoop out the dirt. No reliable electricity means no power tools, and so everything had to be done the old-fashioned way. I think of these people when I hear someone say “everyone should travel”. This family had applied to Techo for a house because they wanted a quiet space for their daughter to do her homework without being surrounded by chickens. They wanted a bedroom they didn’t have to share with their mom and two children, and a floor that didn’t turn to mud when it rained. I’m sure they would give a right arm for the opportunity to travel even within Colombia, but school and food and somewhere to live had to be more pressing concerns first. Remote Year was an incredible experience, but I never want to forget what a privilege it was. It is easy to lose that sense of gratitude when you are in the UK and complaining about the weather, or the traffic, or your workload. I think my new mantra will be “everyone should be able to travel”. But equally there’s no shame in staying here in the UK and appreciating what we’ve got. Lucy Holloway (Fellow) is an associate at Barker Brettell.

Announcements Neil Kilpatrick (Fellow) appointed a Salaried Partner of Barker Brettell, with effect from 1 April 2019. Annette Flaherty (Fellow) is running 2,500 miles in 50 weeks, in support of two charities. If you want to support her see https://UK.virginmoneygiving.com/AnnetteFlaherty Please send letters and announcements to: editor@cipa.org.uk

www.cipa.org.uk

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PERSONAL

OBITUARY

Vivien E. Irish 1942-2019 was very supportive of our small, mainly female, office and always enthusiastic about any new prospects and new technology. She was always quick to grasp principles and often turned around initial claims and at very short notice. Vivien was always supportive of colleagues and thoroughly enjoyed being part of the team and attending any events. Outside of work, Vivien threw herself into volunteering at York Theatre Royal, the York Philosophical Society and FairFax House alongside many other activities. Vivien Irish (11079) at Race for Life at York Race Course with the BRANDED! Team, 16 September 2018.

Vivien Irish passed away on 3 March 2019 and her funeral was held on 28 March 2019 at York Crematorium. In the mid-eighties, Vivien was working in the Intellectual Property Unit of British Telecom, based at the top of Gower Street, on the site now occupied by University College Hospital. Initially, as a head of section reporting to Rob Wilcox, her role might be described as substantially conventional for a patent agent but perhaps with a more managerial content compared to a similar position in private practice. Thus, she had an involvement with training, but for those not familiar with the classic BT structure, it should be stressed that another level existed before one reached trainee patent officer, with appropriate distributions of brief cases. Vivien was active within BT (and outside) in the field of advancing women’s interests. This included assisting with the advancement of women within BT and outside of it. A debate in the eighties involved finding a female equivalent of the CIPA tie. Has this ever been resolved?

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Although skilled at preparing quality work in short time-frames (such as drafting a specification overnight in a hotel room) she developed wider interests, including licensing and more esoteric commercial instruments. During the late eighties, she was working with a firm of solicitors and then had a period working in Scotland. She also maintained an ongoing interest with the Federation Against Copyright Theft, which was initially a BT interest due to the increasing importance of computer software. For anyone who has worked with her, no doubt she will be remembered most fondly for being neat, tidy and organised. This may have been prompted by a strict clear desks policy in a previous position but it must be remembered that no-one got promoted in industry for leaving piles of files on the floor! Ralph Atkinson (Fellow) In the early noughties, Vivien was working as a consultant patent attorney in York and inspired BRANDED! to start to develop a patents offering. Vivien

Carin Burchell (Associate) Vivien was an inspiring and independent lady. Not only did she push barriers for women in IP but also took on the challenge of training the next generation of patent attorneys and paralegals. Vivien was my mentor during my CIPA paralegal course and I was grateful for her wisdom and patience. Being part of many social groups and charitable causes whilst being a consultant for BRANDED!, Vivien always had a very packed agenda. I asked her once how she fitted it all in, she replied “I love what I do, so it doesn’t really feel like working to me”. Vivien would wholeheartedly join in our Christmas socials and once hired a fabulous 1920s dress from the York Theatre Royal and dazzled us all. We will sorely miss receiving postcards from Vivien’s fantastic holidays around the globe – usually where the good snow could be found. The last one was posted in February from Kleine Scheidegg in Switzerland, one of her most cherished ski resorts. Sarah Cantrill (Paralegal Member)

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CPD & EDUCATION

INSTITUTE EVENTS

CIPA events in 2019 For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events. See page 66 for Informals regional events.

Wednesday 19 June 2019 Webinar

EPO APPEALS – PRACTICE AND PRACTICAL TIPS? Time: 12.30–13.30

In this webinar Ilya Kazi, Mathys & Squire, will cover the whole EPO Appeal procedure, including what to include in the Grounds, how to respond, what to do when you receive the Preliminary Opinion and, importantly, how to approach the hearing. Oral Proceedings in general can be one of the most critical parts of the job as an EPA and Appeal Oral Proceedings before the Board of Appeal are literally your last chance to get it right. The webinar will include what to do, what not to do, how best to prepare, and how to deal with the things you can’t prepare for. CPD: 1; Prices: £72 (£48 CIPA members) Wednesday 24 June 2019 Webinar

IP PRO BONO – AN UPDATE & REQUEST FOR SUPPORT Time: 12.30–13.30

In this joint webinar with CITMA, we will explain the ethos behind IP Pro Bono and give practical illustrations of how it works. Kate O’Rourke and Stephen Jones have been involved with IP Pro Bono since its launch and are members of the Committee that oversees its operations, together with representatives of other professional bodies, the UK IPO and Judge Hacon of IPEC. Stephen also has experience of working as a Case Officer within IP Pro Bono and as pro bono partner in an international law firm. Lea Weir Samuels acts as the first point of contact for applicants and works with Case Officers and Member Firms in the operation of the scheme. 62 CIPA JOURNAL

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Please join this webinar to find out more about how you and/or your firm can help contribute to IP Pro Bono and make an impact for those who don’t have the resources to navigate the complexities of the IP system. IP Pro Bono deals with all areas of IP including trade marks, designs and copyright, as well as some patent issues, so there is something for everyone. CPD: 1; Prices: Free to members Tuesday 25 June 2019 Webinar

ADDED MATTER AT THE EPO – HAS IT GONE TOO FAR?

Time: 12.30–13.30

It is said that on the spectrum of patent offices, the EPO is the most strict regarding added matter. Some welcome a strict approach, others not. This topic was debated at a CIPA round table in London in June 2018 with Pia Björk from the European Patent Academy – join us for a follow-up of the discussion. Pia will also high-light some of the recent changes on added matter in the EPO Guidelines for Examination. The webinar is targeted at patent attorneys but could also be of interest for a wider public following patent prosecution at the EPO. CPD: 1; Prices: £72 (£48 CIPA members) Friday 28 June 2019 Webinar

US/EPO PATENT CASE LAW

decisions to have come from the EPO and the US Courts. Book your place now to learn what’s been happening at the EPO and courts across the pond! CPD: 1; Prices: £72 (£48 CIPA members) 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”. 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) Monday 8 July 2019 Webinar

UK PATENT CASE LAW UPDATE

Time: 12.30–13.30

Join speakers Yelena Morozova (Finnegan LLP), Dominic Adair and Gemma Barrett (Bristows LLP), for this CPD webinar that will focus on interesting recent patent

The popular CPD webinar UK Patent Case Law Updates returns with speakers Jon Markham (Beck Greener) and James Porter (IPO). This webinar will focus on www.cipa.org.uk

07/06/2019 10:48:46

CPD & EDUCATION

on interesting patent decisions to have come from the UK courts over the past 12 months. CPD: 1; Prices: £72 (£48 CIPA members) Wednesday 10 July 2019 Webinar

THE FUTURE OF PATENT DRAFTING Time: 12.30–13.30

Patent drafting is presented as the central skill of the patent attorney, and we are certainly very good at it. However, it does not seem to be brilliantly valued by all patentees and the discrepancy between the cost of drafting a patent application and the cost of litigating is unbelievable. In addition to the commercial challenges, drafting also faces threats from evolving computer technology solutions and yet another player in this sinister plot is the sheer outdatedness of the mechanics of the patent system. Put them all together, and the future of patent drafting is, if not bleak, definitely murky. Gwilym Roberts explores some of the current issues and challenges and discusses where we might see the market going in the future. Chair: Gwilym Roberts, CIPA Honorary Secretary / Kilburn & Strode CPD: 1; Prices: £72 (£48 CIPA members

Tuesday 16 July 2019 Webinar

FUNDING EVEN MORE INNOVATION – A PRACTICAL GUIDE TO FUND R&D IN YOUR CLIENT COMPANIES

Time: 12.30–13.30

This webinar will highlight the key sources of funding available to companies to help them to innovate and grow. The UK is a great place for companies to innovate and successive governments have improved the funding and tax breaks available to R&D intensive companies year on year. From tax Volume 48, number 6

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breaks for investors through the EIS and SEIS investment schemes, the range of grants underpinning many key technology sectors to pump prime ideation and new product development, R&D tax incentives to reward innovation and then Patent Box to further reward commercialisation and ongoing R&D activities. The webinar will touch on all four areas giving a brief background to the schemes, the benefits to the company and hints and tips of how to access the funds with the narrative accompanied by appropriate anecdotes and case studies. Speakers: Sam Stephens, TBAT Innovation CPD: 1; Prices: £72 (£48 CIPA members) Wednesday 17 July 2019 Webinar

AUSTRALIA AND NEW ZEALAND PATENT UPDATE

Time: 12.30–13.30

This webinar provides an update on Australian and New Zealand patent law and practice, with an emphasis on providing practical tips for UK practitioners coordinating global prosecution of clients’ patent portfolios. Key differences between AU, NZ and EPO law and practice will be discussed, and an overview of key court decisions provided. Speakers: Steve Gledhill and Dr Toby Thompson (FB Rice) 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 1920s 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 Monday 22 July 2019 Seminar

REVISED RULES OF PROCEDURE OF THE BOARDS OF APPEAL

Time: from 17.00-20.00 Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD

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. The institute, 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 before that 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. CPD: 1.5 Prices: £96 (£72 members). Also see pages 11 and 15. Thursday, 19 September 2019 Conference

CIPA CONGRESS

Location: Queen Elizabeth II Centre, London More details on speakers and the programme are available online.. CPD: 8 Prices: See online JUNE 2019

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07/06/2019 10:48:54

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4-OBC-DYoung_1.indd 4

07/06/2019 09:37:24