CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
July-August 2019 / Volume 48 / Number 7-8
WHAT’S NEW IN SPC SPCs s? Regulatory news: removal of CPD activities cap IPReg
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Changes to infringement damages in China Toby Mak
Clearer rules for divisional patent applications Philippines update
Accelerated grants for AI patents Singapore update
Nominations for Elections to Council Lee Davies
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Contents
UP FRONT
ARTICLES
EDUCATION
3
9
25 38 41 42
Non-Institute events
44
IP Outside your Comfort Zone: Trade Marks
Council Minutes
Lee Davies 4
Elections for Council
4
CIPA Annual Dinner
Accelerated AI patent applications Denise Mirandah, Jehanna Huerto
Lee Davies 10
12 Dr Amanda R. Gladwin 6
Regulatory news
Removal of CPD activities cap IPReg 6
19
Patent infringement damages in China
Toby Mak 23
International Liaison Committee 7
EPO oral proceedings
Amicus brief – Enlarged Board of Appeals Referral G 2/19 Patents Committee 8
28
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Patent decisions IPO decisions
David Pearce & Callum Docherty 30
IP Inclusive update
46
Salary Survey
47 47
Announcements Letter to the Editor
Andrea Brewster Dawn Ellmore Employment
Remembering Vivien Irish 48 50
Obituary: Peter Kolker The Yellow Sheet
31
THE PINKS
EPO decisions
Bristows
Manual of Patent Practice
July update IPO
45
Beck Greener
Malaysia update
Swiss-type second medical use claims Ian Mirandah 8
DECISIONS 26
PERSONAL
Bad faith entities list
Enforcing patents in China Toby Mak
CIPA strengthens ties with North America
Webinar report
SPC summer review
Carpmaels & Ransford
Overseas update
Institute events Life Sciences Conference Scotland Meeting 2019
Seminar report
Philippines update
Clearer rules for filing divisional patent applications Ian Mirandah, Jehanna Huerto
NEWS 6
Singapore update
Trade marks
52-68 Courses & Events; Recruitment
Bird & Bird
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SPC
REVIEW
SPC summer review There have been several major developments for supplementary protection certificates (SPCs) in Europe over the past year. There has been new case law from the Court of Justice of the European Union (CJEU), new referrals to the CJEU on contentious legal issues and important national court decisions. This is the first of a two-part series, in which Carpmaels & Ransford summarises the main events that have transpired over the past year, grouping them into wider topics that have often been a point of debate amongst SPC practitioners. In this first part, the series opens with a look at what is required for a patent to “protect” the product that is the subject of an SPC. Next, the question of whether SPCs can be based on competitors’ products is discussed. The following article summarises a new referral that asks whether an SPC based on a patent for a new therapeutic indication is available when the applicant has an earlier SPC for the same active ingredient. This part concludes with a discussion of the latest developments in the interpretation of the requirement that an SPC is based on the “first authorisation”. The second part of this review will be published in the September 2019 CIPA Journal. The review will cover: article 3(c) and (d) in relation to SPCs for combination products; SPCs for drug-device combination products; the EU’s coming SPC manufacturing waiver; as well as SPC opportunities outside the EU. Daniel Wise (Fellow)
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SPC
REVIEW
Article 3(a): From “specified” to “specifically identifiable” • Ever since the CJEU held in Medeva (C-322/10) and its progeny that article 3(a) precludes the grant of SPCs for active ingredients which are not “specified” (or “identified” or “mentioned”) in the wording of the claims of the basic patent, there has been continued uncertainty as to how article 3(a) should be applied to claims that do not expressly mention the product for which an SPC is sought. Further guidance on this topic arrived in 2018, following the CJEU’s ruling in Teva v Gilead (C 121/17) concerning SPCs for combination products. The impact of the CJEU’s judgment in Teva v Gilead goes beyond combination SPC cases, however, as various national courts attempt to apply this test to other, commonly-encountered types of claims, including Markush claims and claims defined in functional terms.
Combination claims: Teva v Gilead and related national litigation The underlying SPC in Teva v Gilead related to Gilead’s Truvada® containing a combination of tenofovir disoproxil and emtricitabine. Teva had challenged the validity of the SPC under article 3(a) on the basis that the basic patent did not mention the name or structure of emtricitabine and therefore did not protect the combination product. During litigation before the UK High Court, Mr Justice Arnold held that the law relating to article 3(a) remained unclear and referred materially the same question to the CJEU as had already been referred by the UK courts in Medeva (C322/10), Queensland (C-630/10), Daiichi (C 6/11), Actavis v Sanofi (C-443/12) and Eli Lilly v Human Genome Sciences (C-493/12), namely: “What are the criteria for deciding whether ‘the product is protected by a basic patent in force’ in article 3(a) of the SPC Regulation?”. The CJEU ruled in July 2018 that: “Article 3(a) […] must be interpreted as meaning that a product composed of several active ingredients with a combined effect is ‘protected by a basic patent in force’ within the meaning of that provision where, even if the combination of active ingredients of which that product is composed is not expressly mentioned in the claims of the basic patent, those claims relate necessarily and specifically to that combination. For that purpose, from the point of view of a person skilled in the art and on the basis of the prior art at the filing date or priority date of the basic patent: •
the combination of those active ingredients must necessarily, in the light of the description and drawings
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of that patent, fall under the invention covered by that patent, and each of those active ingredients must be specifically identifiable, in the light of all the information disclosed by that patent.”
On return to the UK High Court, Arnold J held that the Truvada SPC must be revoked in the UK because neither of the tests laid down by the CJEU were satisfied. According to Arnold J, because the basic patent does not mention emtricitabine, and says nothing about the possibility that TD and emtricitabine may be combined to treat HIV, there is no basis for the skilled person to understand that the combination “falls under the invention covered by that patent” and, further, that emtricitabine is not “specifically identifiable”. By next summer’s SPC review, we should know whether the UK Court of Appeal is of the same view, having granted Gilead permission to appeal Arnold J’s judgment. The CJEU’s decision in Teva v Gilead has also been making waves outside the UK. The largest impact has probably been felt in Switzerland, where the arrival of the Truvada SPC litigation in Switzerland led to sweeping changes to the status quo. As a non-EU state which falls outside the jurisdiction of the CJEU, the Swiss courts have historically applied an “infringement test”. However, following the CJEU’s decision in Teva v Gilead, the Swiss Federal Supreme Court decided that it was time for Swiss SPC law to be harmonised with that of the EU and that the post-Medeva case law should be applied to future Swiss SPCs. Previously granted SPCs, however, continue to be assessed under the old infringement test, meaning that the validity of the Truvada SPC in Switzerland was confirmed. Markush claims: Sandoz v Searle (C-114/18) and related national litigation Another high-profile wave of SPC litigation in Europe in the HIV field relates to Searle’s SPC for darunavir. As reported in last year’s SPC review, in Sandoz Limited & Another v G.D. Searle LLC & Another [2018] EWCA Civ 49, the UK Court of Appeal was unable to determine whether a Markush claim covering, but not individually disclosing, the active ingredient darunavir, “protected” that active ingredient under article 3(a). In particular, the Court of Appeal seemed unsure whether it was relevant for article 3(a) that one of darunavir’s substituents was apparently not one which the skilled person would be able to identify from the patent based on his common general knowledge at the priority date. The Court of Appeal therefore referred a question to the CJEU regarding the application of article 3(a) to Markush claims (now proceeding as C-114/18). While the reference for a preliminary ruling remains pending, the Paris High Court granted a preliminary injunction (PI) on the basis that darunavir was protected by the basic patent. Elsewhere, the outcomes were less favourable for Searle. In Sweden, although a PI was originally granted by JULY-AUGUST 2019
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SPC
Sandimmun® formulation does not fall within the scope of the basic patent, which requires the particular emulsion. The Paris Court of Appeal held that in the context of this SPC application the Neurim decision did not provide sufficient guidance to decide the case and therefore referred questions on the interpretation of article 3(d) to the CJEU. Specifically, the French court is seeking to clarify the meaning of the concept of a “different application” and the expression “within the limits of the protection conferred by the basic patent” in the CJEU’s earlier Neurim decision, in light of the facts in Santen. The referred questions are:
SPC REVIEW – PART 1
REVIEW
Must the concept of a ‘different application’ within the meaning of the judgment of 19 July 2012, Neurim (C-130/11, EU:C:2012:489), be interpreted strictly, that is to say: •
As limited only to the situation where an application for human use follows a veterinary application?
•
Or as relating to an indication within a new therapeutic scope, in the sense of a new proprietary medical product, compared with the earlier marketing authorisation, or a medicinal product in which the active ingredient acts differently from how it acts in the medicinal product to which the first marketing authorisation related?
•
Or more generally, in the light of the objectives of Regulation (EC) No 469/2009 of establishing a balanced system taking into account all the interests at stake, including those of public health, must the concept of a “new therapeutic use” be assessed according to stricter criteria than those for assessing the patentability of the invention?
•
Or must it on the other hand be interpreted broadly, that is to say, as including not only different therapeutic indications and diseases, but also different formulations, posologies and/or means of administration?
•
Does the expression “[application] within the limits of the protection conferred by the basic patent” within the meaning of the judgment [of the Court of Justice] of 19 July 2012, Neurim (C-130/11, [EU:C:2012:489]), mean that the scope of the basic patent must be the same as that of the marketing authorisation relied upon and, therefore, be limited to the new medical use corresponding to the therapeutic indication of that marketing authorisation?”
For more information on Carpmaels & Ransford or the authors of these articles, please visit www.carpmaels.com
VOLUME 48 NUMBER 07-08 2019
Jennifer Antcliff Senior Associate
Paul Kaufman Associate
Sam Menzies Technical Assistant
Fergus Tyrrell Associate
Although the facts are different, some aspects of these questions seem to overlap with the issues that were considered in Abraxis, and it remains to be seen if and how the CJEU’s judgment in Abraxis will impact Santen. The answers in Santen could provide additional clarity on the interpretation of article 3(d), in particular for cases that are factually similar to Santen. Natalia Wegner-Cribbs (Fellow)
Natalia Wegner-Cribbs Senior Associate
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Daniel Wise Partner
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This information provides a summary of the subject-matter only. It should not be acted on without first seeking professional advice. Any views expressed in this document do not necessarily reflect the views of Carpmaels & Ransford or its attorneys or clients. For more information, please contact: daniel.wise@carpmaels.com. Copyright © Carpmaels & Ransford LLP 2019. www.cipa.org.uk
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UPDATE
CHINA
Patent infringement damages in China
In the May issue1, we reported how Jaguar Land Rover had recovered substantial damages – all they had claimed – in unfair competition proceedings. The latest (fourth) revision of the Chinese Patent Law proposes to introduce an express provision that, if the accused infringer fails to provide accounts and materials or provides fake accounts and materials ordered by the court, the court may determine the compensation for patent infringement by reference to the patentee’s claims and evidence. Toby Mak (Overseas Member) in one of his regular reports argues that the practice is already in action – illustrated in Ningbo Aux Air Conditioner v Zhuhai Gree Electric Appliances.
Difficulties with low levels of compensation In addition to infringers who simply run away after being found to be infringing in court decisions, low levels of compensation is another problem for patent enforcement in China. The Chinese Patent Law specifies compensation for patent infringement should be awarded in the following order: a. b. c. d.
damages suffered by the patentee; profit made by the infringer; multiples (1 to 3 times) of a reasonable licence fee; and finally statutory damages of between ¥10,000 and ¥1,000,0002 (£1,140 – £113,800).
Of course, the first three points (a-c) above require substantive proof acceptable to a Chinese court. Because of the high evidence requirements in China, over 95% (if not 99%) of claims for compensation for patent infringement have been rewarded by Chinese courts as statutory damages, typically in the region of ¥50,000 to ¥500,000 (about £5,700 to £57,000). Such low levels of compensation is far from adequate in most cases, particularly in a large country like China. This has been criticized from all sides, domestic and international, and admitted even by the CNIPA. It has led to the following proposed revisions to the Chinese Patent Law (part of the “Proposed fourth revisions to the China patent law in front of the NPC”): 1. Raising of statutory damages from between ¥10,000 and ¥1,000,000, to between ¥100,000 and ¥5,000,000. 2. Introducing a provision that, when determining compensation for patent infringement, if the accused
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UPDATE
Considering the above, the court fully supported Aux’s claims of ¥10 million for compensation, as such did not exceed the reasonable scope.
All change – following the second infringement decision Aux’s ‘902 was found to be invalid in Gree’s second invalidation petition on 14 January 2019. Specifically, ‘902 was found by the PRB to be not novel in light of CN10107015A. This invalidation decision made the above compensation decided on 12 July 2018 ineffective.
Observations This case has several interesting points to note. 1. Gree’s infringement was decided based on equivalence As reported in an earlier article3, “Patent infringement claims with equivalence in China”, this is yet another case showing that Chinese companies working around patents are not very sophisticated.
CHINA
compensation of ¥10 million ineffective. This, unfortunately, is the risk a bifurcated patent system has to bear. 3. Court’s determination on compensation It is not unusual for a defendant to refuse to present evidence on compensation, or to present relevant evidence that the defendant actually made no profit from the infringing product (as in this case). From the handling of this case, the Chinese court will not allow defendants to wriggle their way out as before. They should have told a better story, with better evidence, if they wanted to convince the court that no profit was made from the infringing product. While this may be good news to patentees, it should be remembered that this could affect foreign companies when they are defendants to an infringement claim. I will be interested to hear from in-house colleagues how they would react when facing an order from a Chinese court to deliver accounting records for an alleged infringing products.
2. Invalidation petitions of ‘902, and no stay of the infringement proceeding The court’s decision not to stay the infringement proceeding due to the “failure” of Gree’s first invalidation petition was procedurally fine, as Gree’s first invalidation petition was not successful, and Gree was found to be infringing the surviving claims. The big reversal was that ‘902 was then found to be invalid on Gree’s second invalidation petition, making the
Toby Mak (Overseas Member), Tee & Howe Intellectual Property Attorneys.
Notes 1. April [2019] CIPA 19 2. We have used the ¥ symbol for the renminbi / RMB 3. February [2018] CIPA 26
Study Guide to the Patents Acts (2019) £58 non-members – £47 members, +PP outside the UK Doug Ealey’s Study Guide to the Patents Acts sets out to achieve the opposite of such books as Visser and Hoekstra. Rather than provide exhaustive commentary on patent law for reference during the open book EQEs, it instead simplifies the law and commentary as far as possible to provide a bare-bones reference that can be readily learnt by students taking the closed-book UK finals. This book is designed to help prepare for the PEB FD1 (formerly P2) examination. The eleventh edition has been updated to incorporate recent changes in law and to revise the guidance on taking the exam. To order a copy please email publications@cipa.org.uk or visit www.cipa.org.uk/eshop/ Or go to https://www.linkedin.com/groups/4425194/ to find out more on the FD1 / P2 Study Guide group on LinkedIn.
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UPDATE
CHINA
Enforcing patents – China's bad faith entities list
In addition to difficulties in producing evidence acceptable to authorities, including a Chinese court, and low damages awards it is not unheard of that the infringers in China simply run away, then open a new company to continue with the infringement. This problem has long been criticized by overseas observers. Toby Mak (Overseas Member) explains how China is now tackling this issue. In December 2018, 38 Chinese departments including the Chinese National Development and Reform Commission (NDRC), the People's Bank of China, and Chinese National Intellectual Property Administration (CNIPA, formerly known as SIPO) jointly signed a memorandum of cooperation to conduct joint “disciplinary” actions against serious dishonest subjects in the field of intellectual property (patent). This article highlights the measures to be adopted by this memorandum. Patent attorneys take note: the proposed action targets patent attorneys as well. As Toby notes the somewhat bizarre selection of punishments reflects the fact that these are determined by Government administrative bodies1.
Subjects of action The memorandum stipulates that for companies, the punishment may extend to the company legal representative, the responsible persons, and the actual controlling person of the company. Naturally, for a natural person infringer, the punishment is directed to the individual.
Punishable actions The memorandum specifies the following punishable actions: ☐ Repeated infringement of a patent by the same infringer. ☐ Non-compliance with the law, including refusing to implement administrative decisions on false marking (such as removing the false marking), or impeding local IP administration’s investigation. ☐ Patent agency activities with serious legal violations, specifically being put into the “abnormal operating list” for more than three years. [Such as filing abnormal patent applications. See below.] ☐ Patent attorneys acting in bad faith, including pretending to work in a Chinese patent agency, and faking, transferring, selling, leasing, and lending qualification/practicing certificates. [These may be unimaginable to fellow readers, but these are real in China. In fact, I have been approached to put my practicing certificate on lease…]2 ☐ Abnormal patent application behaviors as defined in “Certain stipulations regarding regulating patent
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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. Monday 15 July 2019 Webinar
FILING ELECTRONICALLY WITH THE COURT – PRACTICE AND PRACTICAL TIPS Time: 12.30–13.30 CE-Filing is compulsory for all Chancery matters at the High Court but can be used intermittently by those with a smaller litigation practice. This webinar is aimed at those recently qualified or otherwise less experienced in filing with the Court and will also touch on practical considerations for efficient filings and approvals. Speakers: Lucy Sewter, Bristows 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
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: 8.30-9.30 am This morning 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)
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 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 38 CIPA JOURNAL
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Thursday 18 July 2019 Webinar
THE UK’S PATENT BOX: A REMINDER AND UPDATE Time: 12.30–13.30 The UK’s patent box has been around since April 2013, and underwent a major modification in July 2016. Since then it has been “steady as it goes”. However the ability to enter the patent box under the simpler “old” rules is no longer available and any companies considering entering the patent box regime now will follow the “new” post July 2016 rules. The new rules introduce requirements to map R&D spend to patent/patented product generation. Those companies who
entered into the patent box before 1 July 2016 can continue to follow the old rules until 1 July 2021, but there are transition rules that need to be followed. Speakers: Margaret Savory (James Cowper Kreston) 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 www.cipa.org.uk
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CPD & EDUCATION
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). Tuesday 3 September 2019 Seminar
MOCK ORAL PROCEEDINGS Time: from 12.30-16.00 Location: Kilburn & Strode LLP, Lacon London, 84 Theobalds Road, London, WC1X 8NL Via a live video-link between our hosts Kilburn & Strode and The Hague, watch EPO examiners and EPA Chris Mercer enact a mock examining division hearing. Get a unique insight into the examiners’ thinking, not only during the oral proceedings themselves but also while preparing beforehand and in the adjournments. See how a highly experienced attorney navigates through objections on clarity, added subject matter, novelty and inventive step, with the chance to ask questions afterwards and to explore the issues raised with EPA Harry Harden. This event forms part of CIPA’s regular course on EPO proceedings, but is also open to other CIPA members. It is aimed at European patent attorneys with relatively little experience of oral proceedings, who would like to develop the knowledge and the confidence to conduct a case for themselves. Places are limited; please book early to avoid disappointment. CPD: 3 Prices: £96 (£72 members). Delegates on the current CIPA EPO proceedings course: £40 + VAT Volume 48, number 7-8
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INSTITUTE EVENTS
Thursday, 19 September 2019 Conference
CIPA CONGRESS Location: Queen Elizabeth II Centre, The Conference Centre, Broad Sanctuary, London, SW1P 3EE More details on speakers and the programme are available online. CPD: 8 Prices: See online Thursday, 19 September 2019 Conference
CIPA ANNUAL DINNER Sponsored by Patent Seekers and Thomson Reuters Time: from 19.00-22.00 Location: Queen Elizabeth II Centre, The Conference Centre, Broad Sanctuary, London, SW1P 3EE This event will immediately follow CIPA Congress 2019 and is open to both attendees and non-attendees of the conference. Don’t miss out on this excellent networking opportunity whilst enjoying the sights of Westminster! We will also be joined by special guest speaker Roz Watkins; author of ‘The Devil’s Dice’. Roz was previously a patent attorney but now writes a series of crime novels set in the Peak District. Interestingly, the corpse and main suspects in ‘The Devil’s Dice’ are patent attorneys! Prices: £96. Book now for £80+VAT per person or email cpd@cipa.org.uk to book a table of ten for a special rate where two attendees go free! Friday 27 September 2019 Conference
IP PARALEGALS CONFERENCE Location: Millennium Gloucester Hotel, Kensington, London Book online now!.
Friday 27 September 2019 Social
IP PARALEGAL 20TH ANNIVERSARY DINNER Time: 18.00–23.00 Location: Millennium Gloucester Hotel, Kensington, London This event is to mark 20 years of the CIPA Patent Administration Course now the Introductory Certificate in Patent Administration which started back in 1998 with the first group of students passing their examination in 1999. Price: £65+VAT Thursday 24 October 2019 Webinar
EDUCATING THE CLIENT Time: 12.30–13.30 The IP practitioner is only too familiar with lay clients who possess a weak grasp of even the most basic IP law, despite frequent dealings with the practitioner through routine casework. Even fellow lawyers such the client’s in-house general commercial solicitor can find IP law challenging. This is bad both for the client side and for the IP practitioner, because it can lead to the client’s failing to seek timely advice, in which case the client gets poorer value for money from the practitioner and becomes disillusioned. Providing IP awareness training sessions to clients seems to be better than expecting clients to learn through routine casework. In this webinar, by use of actual target audiences as examples, it is suggested that an audience-focused approach (e.g. “legal-light” in the case of lay clients) allows such sessions to pay off not only for the client but also for the practitioner, who in general will not be charging for such sessions. Speaker: Dr Michael Jewess CPD: 1; Prices: £72 (£48 CIPA members)
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CPD & EDUCATION
Friday 4 October 2019 Webinar
TRADE SECRET METADATA Time: 12.30–13.30 Understand why having good-quality trade secret metadata is crucial. Trade secret metadata summarizes basic information about trade secrets, which can make finding and working with this unique form of IP much easier. Simply deciding to keep something secret is not sufficient. Trade secret asset management is about the policies and procedure, processes and systems, education and governance defined and taken into use to help manage such assets. Speaker: Donal O’Connell (Chawton Innovation Services) CPD: 1; Prices: £72 (£48 CIPA members) Wednesday 23 October 2019 Webinar
IP AGREEMENTS – KEY PROVISIONS AND PITFALLS Time: 12.30–13.30 This talk will guide you through: (1) key contract law principles; (2) how to take initial instructions from a client on the rights to be assigned; (3) how to draft key assignment provisions such as Parties, the Assignment clause and Warranties/Liability. As well as examining top assignment pitfalls such as title and accurate identification of the rights to be assigned. Speaker: Lucy Harrold (Keystone Law) CPD: 1; Prices: £72 (£48 CIPA members) Thursday 31 October 2019 Seminar
INSTITUTE EVENTS
Case Law Tour. Our panel will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in the past year. See more details on page 30. CPD: 3.5 Prices: £234 (£156 members). Monday 4 November 2019 Webinar
AI – UNDERSTANDING IT, PATENTING IT AND WHAT MIGHT HAPPEN NEXT Time: 12.30–13.30 Artificial intelligence (AI) and its enabling dual machine learning (ML) are pervasive in technology and society and becoming more so by the day. To join the conversation about this patent attorneys need to know what AI and ML are, what is and is not possible today, where the challenges lie and what patent offices make of this technology. I will look at some basics of AI and ML and the current approach to patenting through the lens of the updated EPO guidelines. I will also touch on how AI might influence the future of patent law and issues that will be central in thinking about the impact of AI on society. Speaker: Alexander Korenberg (Kilburn & Strode LLP) CPD: 1; Prices: £72 (£48 CIPA members) Thursday 7 November 2019 Seminar
PATENT CASE LAW SCOTLAND Time: 12.30–17.30 Location: DoubleTree By Hilton, 34 Bread Street, Edinburgh, EH3 9AF
Time: 12.30–17.30 Location: Crowne Plaza London The City, 19 New Bridge Street, London EC4V 6DB
Join CIPA on the Patent Case Law Tour. Our panel will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in the past year. See more details on page 30.
Join CIPA for the first stop of the Patent
CPD: 3.5 Prices: £234 (£156 members).
PATENT CASE LAW LONDON
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11-12 November 2019 Conference
LIFE SCIENCES 2019 Location: The Brighton Grand The Life Sciences Committee is working on the 2019 programme – save the date!. Also see page 41. Thursday 14 November 2019 Seminar
PCT AT THE EPO Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD The European Patent Office, jointly with CIPA is offering a whole-day training event dedicated to the Patent Cooperation Treaty (PCT). This seminar is an opportunity to find out more about the services provided by the EPO and the latest developments in the PCT system and many practical aspects of the PCT procedure. The seminar is targeted at patent attorneys, as well as their support staff. Topics include: • • • • •
PCT procedure before the EPO as receiving Office PCT procedure before the EPO as International Authority Practical advice and examples New PCT Rules (as of 1 July 2019) Report on the latest discussions at the PCT Working Group in June 2019
This event will be followed by a drinks reception at CIPA. See full details online. CPD: 6; Prices: £234 (£156 members)
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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CPD & EDUCATION
INSTITUTE EVENTS
The Life Sciences Committee is pleased to announce
The 2019 CIPA Life Sciences Conference Monday and Tuesday 11-12 November 2019 The Grand Brighton, 97-99 King’s Road, Brighton, East Sussex, BN1 2FW Up to 9 hours CPD
The CIPA Life Sciences Conference is the UK’s premier annual educational and networking event for patent and IP professionals active in the pharma, medical technology and biotechnology sectors. Over nearly two decades the Conference has provided unrivalled expert insight into the latest developments in patents, regulatory and IP law in the global life science industry. Most importantly, the event provides a friendly environment for in-house and private practice professionals to network and share experiences. Pre-dinner speech by Lord Kitchin Topics to include: •
UK, EPO, Asia-Pacific and US law updates
•
Litigation Strategies and Recent Changes in UK, Europe and US
•
Panel Discussion on Hot Topics in Pharma
•
Scientific Presentation
Prices held from last year Full conference: £550+VAT (members), £765+VAT (non-members) Day one: £250+VAT (members), £375+VAT (non-members) Day two: £130+VAT (members), £195+VAT (non-members)
To book, please visit the Institute events page of the CIPA website or contact cipa@sequenceofevents.co.uk for more information.
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PERSONAL
OBITUARY
Peter Kolker 1936-2019
D
r Peter Kolker, Fellow and former Head of Intellectual Property for the Zeneca Group of companies, died unexpectedly at his home in Goostrey, Cheshire in May 2019 at the age of 82. What follows is a snapshot of his interesting and fulfilling life. Peter Leigh Kolker was born on 13 October 1936 in Birch Vale, near Hayfield in Derbyshire but spent much of his early childhood during World War II in Welwyn Garden City where his father worked as a textile finishing chemist. Peter was educated first locally in Welwyn and then at the age of ten as a boarder at Wycliffe College in Gloucestershire. Then, after two years of National Service in the RAF working as a radar fitter and instructor, he went up to Lincoln College in 1957 to study chemistry, supported by a BP University Apprenticeship. At Oxford Peter both met his wife-to-be, Judith (they married in September 1962), and gained an MA and D Phil with a thesis on the Electron Spin Resonance (ESR) spectroscopy of free radicals. Peter’s life-long interest in cricket and support for Lancashire C.C. started at Wycliffe and burgeoned at Lincoln where he kept wicket for the College as his father had done whilst at Manchester University. He has remained actively in contact with the College as Treasurer of the Crewe Society for Lincoln alumni. His corporate career began in 1963 when he joined ICI as a Technical Officer in the General Chemicals (subsequently Mond) Division in Runcorn and Widnes, Cheshire, working first in the research department on bipyridyl herbicide precursors and from 1966 in the technical service department supporting sales in the Iberian and Scandinavian markets. However, the prospect of managing a soda ash plant for an extended time,
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coupled with a career-changing lunch with his patent agent brother-in-law, John Cropp, persuaded him that his personality and talents might be better applied in patent law – but where to train in order to qualify? Fortunately, ICI’s Plastics Division in Welwyn had a vacancy for a trainee in the Patents Section then managed by the late Richard Lloyd with a good track record of success in CIPA Finals. Peter transferred in 1970 and benefited from the excellent in-house training programme first set up in ICI by Walter Scott and, after much out of hours study, soon qualified as a CPA in 1974. The following May, he relocated with his family (Judith and three sons – Richard, Andrew and Anthony) to ICI Europa in Everberg, Brussels, to work in Peter Bawden’s IP group providing patent support for the ICI’s European plastics, polyurethanes and fibres business interests. The final shift in Peter’s corporate career took him (and the family!) back to Cheshire in 1978 to ICI Pharmaceuticals in Alderley Park to manage its Industrial Property Department of 80 staff responsible for patents, research and commercial libraries, technical information services and archives. [Ironically, he almost missed applying for the position since ICI Europa had translated the vacancy as for an Estate Agent! Soon afterwards the Department was renamed to the more transparently named Intellectual Property Department!] Peter’s management style at Alderley was “low key”, allowing patent professionals to use their specialist knowledge to manage their own portfolio of medical product patents with minimum intervention but always providing good counsel, encouragement and general direction when needed.
Dr Peter Kolker, Fellow and former Head of Intellectual Property for the Zeneca Group of companies
Professionally, he himself looked after non-medical products including medical aids and ICI’s ground-breaking, visible light cured dental filling materials, which involved much licensing work with US and European companies. Nevertheless, he kept closely involved with important patent litigation and extension actions, particularly in the US, such as those involving ICI’s major cardiovascular and cancer medicinal products such as TENORMIN and NOLVADEX. During his tenure at Alderley, as well as expanding and developing a talented team of professionals, Peter was active representing ICI in pharma and chemical industry bodies including Interpat, IFPMA, EFPIA and the ABPI, lobbying for removal of adverse discriminatory pharmaceutical patent law provisions. This was at critical times during the negotiation (1984-1994) of TRIPS under the GATT Uruguay Round and legislation to restore patent term in the US (Hatch-Waxman Act: enacted September 1984) and Europe (medicinal SPC provisions: in force January 1993).
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PERSONAL
In 1993, ICI’s structure changed substantially with the demerger of its global pharmaceuticals, fine chemicals, crop protection and seeds businesses into an independent, separately FTSE quoted company, Zeneca plc, and Peter became the Head of its new IP Executive. Immediate challenges were extricating and changing ownership of the relevant IP from that held by ICI, ensuring commonality of IP policy across the Zeneca UK and US businesses, and establishing robust procedural systems for patents and trade marks so that all fees were paid and no IP rights lost. Peter established a small inter-business group to build a new, bespoke Zeneca information system to manage the procedural formalities previously provided by ICI’s Head Office IP Group, which remained in ICI after the demerger. This new information system was a major success, coming in on time, under budget and meeting all the operating requirements of the formalities staff. A fitting achievement before Peter’s retirement in 1995 and the subsequent merger of the pharmaceuticals businesses of Zeneca and Astra to form AstraZeneca plc in April 1999. After leaving Zeneca, besides taking the opportunity of more frequent foreign holidays with Judith, Peter continued his professional career as an independent IP consultant, discovering some of the benefits (and challenges) of private practice. This required him to deploy his drafting skills and persuasive arguments to protect diverse inventions and trade marks. He was also in demand to lecture on claim drafting for patent trainees both at Manchester University and internationally in conjunction with the late Ted Blake of the IPO, taking him to Mongolia, Turkmenistan, Armenia and Azerbaijan. Peter was a widely respected tutor in the patent claim drafting courses organised by FICPI in various major cities for patent trainees from developing countries. Eric le Forestier of FICPI's
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Education and Training Commission, who knew Peter well said: “We will miss Peter as a true gentleman and a superb teacher of IP practice, allowing students to benefit from his huge experience. His sense of humour and the funny stories he used in his lectures were also unique.” Similarly, Axel von Hellfeld, FICPI EuroSEAD Course Co-ordinator, who worked with Peter for 20 years said: “It was my privilege to work with Peter as one of the seven tutors running FICPI’s training seminars. He was probably the oldest in years but he was the youngest in spirit and enthusiasm. To me he represented the ‘good old’ classical British Patent Agent. Even after many years it was still most enjoyable to listen to his lecture on ‘Chemical Drafting’. I have learned from him probably more than many students have.” In addition to his continuing professional activities, Peter also found time to be active politically becoming a Congleton Borough Councillor in 2000 (before the Council was subsumed into the larger Cheshire East Council in 2009) and Chairman of the Congleton Constituency Conservative Association. His middle son, Andrew, followed him into politics
as a Cheshire East Councillor and Peter, just two weeks before his death, was out helping deliver leaflets as Andrew’s election agent, and then attending the count. He was also active in the Goostrey village community and a prominent member of the local Rotary Club. Always practically minded and a successful DIY-er, Peter was fascinated by railways, stemming from time spent as a young boy working with signalmen during family visits to grandparents in Brinscall near Chorley, Lancashire. He continued to have an extensive model railway layout at his home into his retirement and frequently enthused about train journeys through the Canadian Rockies and on the Japanese Shinkansen bullet train. In typical fashion, in recent months he adapted quickly to the new challenges of managing domestic activities, supporting Judith as her own health declined. Peter led an active life touching very many people and will be much missed by his friends and colleagues. He had an impressive energy, and although frustrated by increasingly poor health was always there when needed to support his family. We send our sincere condolences to Judith and all the family. Steve Smith (with input from Peter’s many friends and colleagues and his own autobiography).
The rebuilt Flying Scotsman (60103) visiting Peter’s local station in Goostrey in June 2016.
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