CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
July-August 2019 / Volume 48 / Number 7-8
WHATâ€™S NEW IN SPC SPCs s? Regulatory news: removal of CPD activities cap IPReg
1-CIPA Journal_OFC_July-Aug-2019.indd 1
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
25 38 41 42
IP Outside your Comfort Zone: Trade Marks
Lee Davies 4
Elections for Council
CIPA Annual Dinner
Accelerated AI patent applications Denise Mirandah, Jehanna Huerto
Lee Davies 10
12 Dr Amanda R. Gladwin 6
Removal of CPD activities cap IPReg 6
Patent infringement damages in China
Toby Mak 23
International Liaison Committee 7
EPO oral proceedings
Amicus brief â€“ Enlarged Board of Appeals Referral G 2/19 Patents Committee 8
Volume 48, number 7-8
Patent decisions IPO decisions
David Pearce & Callum Docherty 30
IP Inclusive update
Announcements Letter to the Editor
Andrea Brewster Dawn Ellmore Employment
Remembering Vivien Irish 48 50
Obituary: Peter Kolker The Yellow Sheet
Manual of Patent Practice
July update IPO
Swiss-type second medical use claims Ian Mirandah 8
Bad faith entities list
Enforcing patents in China Toby Mak
CIPA strengthens ties with North America
SPC summer review
Carpmaels & Ransford
Institute events Life Sciences Conference Scotland Meeting 2019
Clearer rules for filing divisional patent applications Ian Mirandah, Jehanna Huerto
52-68 Courses & Events; Recruitment
Bird & Bird
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, firstname.lastname@example.org Neil Lampert Jonathan Briggs email@example.com
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 firstname.lastname@example.org. Iain Ross (email@example.com) 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 firstname.lastname@example.org. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact email@example.com to discuss any ideas for articles or submissions.
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-ordinators Grace Murray, Kathryn Espino Chief Executive Lee Davies Deputy Chief Executive Neil Lampert Executive Assistant Charlotte Russell Head of Qualifications Angelina Smith Head of Finance Spurgeon Manuel HR Officer Lea Weir-Samuels General enquiries 020 7405 9450; firstname.lastname@example.org; www.cipa.org.uk
© The Chartered Institute of Patent Attorneys 2019 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314 2
Council Minutes Minutes of the Council meeting held on Wednesday 1 May, 2019, at 14:30. Item 1: Welcome and apologies Present: Julia Florence (in the Chair), Richard Mair (Vice-President), Stephen Jones (Immediate Past President, by phone), Gwilym Roberts (Honorary Secretary), Andrea Brewster, John Brown, Roger Burt (by phone), Daniel Chew, Paul Cole, Anna Denholm, Stuart Forrest, Catriona Hammer, Alicia Instone, Rob Jackson, Tim Jackson, Keith Loven, Bev Ouzman (by phone), Alasdair Poore, Tony Rollins, Vicki Salmon, Andrew Sunderland and Matthew Veale (Informals Honorary Secretary). Lee Davies (Chief Executive) and Neil Lampert (Deputy Chief Executive) were in attendance. Apologies: Matt Dixon, Greg Iceton, Chris Mercer, Bobby Mukherjee, Emily Nytko-Lutz and Simon Wright.
Item 2: Conflicts of interest 99/19: Roger Burt declared a potential conflict of interest in relation to the agenda item on trade agreements, due to his involvement with the IP Federation.
Item 3: Minutes 100/19: The Minutes of the Council meeting held on Wednesday 3 April, 2019 were approved. 101/19: From minute 82/19. Lee Davies provided Council with an update on the request from a student member for support in relation to an appeal to the EPO against the decision of the Examination Secretariat for the European Qualifying Examinations to refuse to provide reasonable adjustments on the grounds of dyslexia. Lee informed Council that he had written a letter in support of the appeal, advising the EPO that dyslexia is a disability under the Equality Act 2010 and that all Volume 48, number 7-8
organisations providing services in the UK, including examination agencies, are under a legal duty to make reasonable adjustments for disabled people. Lee said that he had explained to the EPO the reasonable adjustments the PEB offers to candidates with dyslexia. Andrea Brewster said that the student had first contacted her through IP Inclusive and that she was pleased that Council had agreed to support the appeal. 102/19: Tony Rollins advised Council that the visit to the US to deliver the roadshow had gone well, though the number of delegates was not as high as he would have liked. Tony said that the timing of the roadshow across Easter might have had an impact on attendance but that the choice of dates was influenced by the diaries of the main speakers, in particular the judges involved in the events. Tony said that he felt that the roadshow had been worthwhile and that the feedback from delegates and speakers had been positive. Tony added that, if Council wanted to repeat the roadshow in the future, careful thought would need to be given to increasing the number of delegates attending the events. Tony concluded his report by saying that if Council wished to repeat the roadshow in 2020 with the support of AIPLA, this would need to be confirmed by June 2019 and that this might not be practical. Anna Denholm said that this was a good foundation to build on and that it would take time to develop momentum in the US. In response to a question on CPD from Anna, Tony Rollins said that the events had been accredited for CPD, where this was possible. Tony added that he would liaise with Neil Lampert to produce a full report for the Journal. Tony thanked Neil and Dwaine Hamilton for accompanying the delegation and
ensuring that the roadshow was organised effectively. Paul Cole proposed a vote of thanks to Tony Rollins for leading the roadshow, which was approved by Council by acclamation. 103/19: Lee Davies provided Council with a brief report from the CNIPA meeting held in Venice on 27 April, 2019. Lee informed Council that, owing to the rebranding of the former State Intellectual Property Office of China (SIPO) to China National Intellectual Property Administration (CNIPA), the meeting had discussed a change of name. This discussion would be concluded at the October meeting of CNIPA, following appropriate domain name and trade mark searches. The favoured name was the Association of National Institutes of Intellectual Property Associations, taking the acronym ANIPA. Lee added that the meeting had also agreed changes to CNIPAâ€™s statutes, which included provisions for national professional bodies without a patent footprint, such as CITMA, to become full members by invitation.
Item 4: Brexit 104/19: [Redacted]
Item 5: Regulatory matters 105/19: Julia Florence advised Council that representatives of CIPA, CITMA Trade agreements CIPA has been working with the Department for International Trade on the IP aspects of international trade agreements. If you would like to know more about this work please email Deputy Chief Executive Neil Lampert on email@example.com.
and IPReg had met to sign off counsel’s opinion on the application of the Money Laundering Regulations to the work of patent and trade mark attorneys. Julia said that work would now be done on an executive summary for publication to members which would be accompanied by typical scenarios. Julia said that it was hoped that something would be published early in June. 106/19: Council noted the proposed timetable for consultation on IPReg’s budget and business plan. 107/19: Council considered IPReg’s proposed consultations on run-off insurance and in-house attorneys providing pro bono advice and asked the Regulatory Affairs Committee to prepare a response when the consultation is published. 108/19: Council considered IPReg’s proposed consultation on the CPD cap and asked the Regulatory Affairs Committee to prepare a response when the consultation is published. Vicki Salmon said that the cap on what counted as CPD was originally introduced by CIPA to encourage the claiming of appropriate professional development activities. Andrea Brewster said that this was less relevant now that there was an established culture of CPD and that the CPD that attorneys undertake must be relevant to the needs of the individual. [See page 6.]
Item 6: IPO and EPO matters 109/19: Tim Jackson asked Council members to send him any issues that they would like to be raised at the meeting with President Campinos and the senior staff of the EPO on Monday 20 May, 2019. Rob Jackson said that there were concerns that examiners were not as well-trained as in the past but that when examples were given the EPO focussed on the examples rather than the wider issue of the training of examiners. Gwilym Roberts said that a suitable approach might be to raise the training of examiners when discussing the EPO’s strategic plan. Alicia Instone said that it was her experience at the EUIPO that President Campinos was prepared to listen to the views of users of the system.
Item 7: Accounts and audit report 110/19: Council considered the annual accounts and audit report, noting that both had been scrutinised by the Internal Governance Committee. Whilst Council members are not Directors of a company registered at Companies House, Council asked Lee Davies to investigate suitable governance training for Council members. Andrea Brewster proposed that Council should have more time to consider the accounts and the audit report as the documents were only received shortly before the meeting. Action: The annual accounts and audit report to be finalised at the June meeting
of Council. Lee Davies to investigate appropriate governance training for Council members.
Item 8: 2019 AGM and elections 111/19: Lee Davies presented Council with a paper describing how the 2019 AGM would be conducted under the new Bye-laws. Council agreed to hold the AGM immediately after the Council meeting scheduled for 3 October 2019. Council noted that, under the transitional provisions of the Bye-laws, John Brown, Roger Burt, Alicia Instone, Rob Jackson and Alasdair Poore would stand down on 31 December 2019, but could seek re-election at the AGM. In addition, three of the next longestserving Council members would need to stand down to bring the number of vacancies to eight. Lee Davies advised Council that Catriona Hammer, Greg Iceton, Tim Jackson, Bobby Mukherjee, Gwilym Roberts and Simon Wright were the next longest-serving members of Council. Lee Davies advised Council that Richard Mair would become President on 1 January, 2020, and that the AGM would need to elect the President to succeed Richard on 1 January 2021. Council members were asked to let Lee know if they were thinking about standing for President. Lee Davies advised Council that the Bye-laws required that, not less than 28 days before the Annual General Meeting,
Elections for Council
The 2019 AGM will be held on Wednesday 3 October at 5:30 pm, immediately following the Council meeting scheduled for that date. At the AGM, we will elect Fellows of the Institute to serve a three-year term on Council from 1 January 2020 and the President for 2021, who will serve as Vice-President from 1 January 2020.
Nominations for election will close on Friday 23 August 2019. Nominations for election should be made via email to Charlotte Russell (firstname.lastname@example.org) or by post to Charlotte Russell, Executive Assistant, The Chartered Institute of Patent Attorneys, 2nd Floor, Halton House, 20–23 Holborn, EC1N 2JD.
The transitional provisions of the Bye-laws require eight members of Council to stand down on 31 December 2019. Members of Council who stand down are eligible to seek re-election at the AGM.
If you are interested in standing for Council or want to know more about the governance of CIPA, please send me an email on email@example.com. Lee Davies, Chief Executive
Council shall publish a list of members who are eligible to stand in Institute elections who have informed Council of their intention to stand for election as President or to be ordinary members of Council. Lee said that he would draft a suitable call for nominations to go in the Journal in good time for this requirement to be met. [See below.]
Item 9: Committees and committee reports 112/19: Congress Committee John Brown informed Council that the preparations for Congress were going well, with all the main speakers now confirmed. John added that the Committee was now turning its attention to a suitable venue for 2020. John said that he was delighted to be able to inform Council that Roz Watkins, a former patent attorney who was now a published crime fiction author, had agreed to speak at the CIPA Dinner following Congress. 113/19: Patents Committee Council noted the report of the Patents Committee. 114/19: IP Commercialisation Committee Council noted the report of the IP Commercialisation Committee. 115/19: Litigation Committee Council noted the report of the Litigation Committee.
Volume 48, number 7-8
116/19: Copyright and Designs Committee Council noted the report of the Copyright and Designs Committee. Council granted the Committee the power to act on its behalf in submitting a response to the EUIPO’s consultation on CP10, the criteria for assessing disclosure of designs on the Internet. 117/19: International Liaison Committee Council noted the report of the International Liaison Committee. Richard Mair urged Council members to support the visit of IPIC to CIPA on 30 May, 2019, and the visit by AIPLA on 3 June, 2019.
118/19: IP Pro Bono Committee Stephen Jones advised Council that he would be writing to patent firms encouraging them to participate in the IP Pro Bono initiative. 119/19: Membership Committee Council noted the report of the Membership Committee. Council considered the list of those members who had not yet renewed their membership for 2019 and agreed that those members should have their membership lapsed. [Redacted]
Item 11: Chief Executive’s Report 121/19: Council noted the Chief Executive’s report.
Item 12: Any other business 122/19: Council considered the invitation from WIPO to observe the seventh session of the Committee on WIPO Standards and agreed that any Council member could represent CIPA if interested but that the agenda for the meeting was lengthy and that the timing of business was not certain. In response to a question from John Brown on how WIPO invitations were received at CIPA, Lee Davies said that he had asked for these to be routed through Charlotte Russell for consistency. 123/19: Richard Mair agreed to be CIPA’s representative at the 27th NGO Coordination Meeting, which will be held during INTA’s Annual meeting in Boston, on Tuesday 21 May, 2019. 124/19: In response to a question from Stephen Jones about CIPA’s attendance at the EPO’s European Inventor Award on 20 June, 2019, in Vienna, Council delegated this to the Officers to consider.
Item 13: Date of next meeting Item 10: Officers’ reports
125/19: Wednesday 5 June, 2019.
120/19: Council noted the Officers’ reports.
The President closed the meeting at 17:12. Lee Davies, Chief Executive
OVERSEAS • REGULATORY
Overseas update International treaties UPOV (International Union for the Protection of New Varieties of Plants) On 2 May 2019, the Government of the Kingdom of Belgium deposited its instrument of accession to the UPOV Convention. The Convention will enter into force, with respect to Belgium, on 2 June 2019. Singapore Treaty (Law of Trademarks) On 7 May 2019, the Government of the Republic of Finland deposited its instrument of ratification of the Singapore Treaty. The Treaty will enter into force, with respect to Finland, on 7 August 2019. WIPO Performances and Phonograms Treaty On 7 May 2019, the Government of the Republic of Costa Rica deposited a declaration withdrawing its earlier
declaration under article 15, paragraph 3, according to which the Republic of Costa Rica shall only apply the provisions of article 15, paragraph 1 of the Treaty in respect of broadcasting or communication to the public for commercial purposes, in accordance with what is established in Costa Rican legislation, and shall not apply the said provisions to traditional free non-interactive over-the-air broadcasting. The withdrawal shall take effect on 7 August 2019. Marrakesh Treaty (Access to published works for the visually impaired) On 15 May 2019, the Government of the Kingdom of Morocco deposited its instruments of ratification of the Marrakesh Treaty. The Treaty will enter into force, with respect to Morocco, on 15 August 2019. Dr Amanda R. Gladwin (Fellow), GSK
CIPA strengthens ties with North America CIPA’s International Liaison Committee hosted visits from the Intellectual Property Institute of Canada (IPIC) on 30 May, and the American Intellectual Property Law Association (AIPLA) on 3 June. Discussions ranged across many topics including patents, trade marks and IP litigation. In the afternoon, both
AIPLA and IPIC provided an update on law and practice in the US and Canada. CIPA together with FICPI-UK and AIPLA also supported the Diversity in IP Lunch Meeting that was held on 3 June, where speakers discussed the business case for diversity and inclusion. The delegation visits concluded with networking and drinks receptions.
Removal of CPD activities cap IPReg is no longer applying a 25% cap on the maximum number of hours that count towards overall continuing professional development (CPD) for certain “non-interactive” activities. Where previously watching a recording of a webinar as opposed to watching it live was deemed a capped activity, from now on an attorney will be entitled to claim 100% of the time spent watching the webinar regardless of whether it was live or not. IPReg considers that the waiver of this cap will help to ensure that attorneys undertake CPD activities that are relevant to them and their clients rather than activities that may be less relevant but count for more CPD hours. IPReg wants to ensure that its rules around CPD do not create a perverse incentive for attorneys to participate in or undertake CPD activities, which are not providing value to them or their practice, simply because they count for more hours than other more valuable or relevant activities. IP Inclusive also expressed a concern that such restrictions can unintentionally disadvantage patent and trade mark attorneys who – for medical reasons, or in order to care for children or other dependents – work part-time, as well as those who have difficulty accessing training that involves significant travel. All of this is clearly at odds with the purpose of a CPD programme designed to ensure that attorneys are continuing to stretch and develop in the areas that will most benefit their practice and therefore best serve their clients. See the CPD Activities webpage for information on the types of activities likely to automatically count as CPD – https://ipreg.org.uk/pro/manageyour-professional-development/cpdregulations.
Right to oral proceedings at the EPO On 2 July 2019, CIPA’s Patents Committee sent the following amicus curiae brief regarding the Enlarged Board of Appeals Referral G 2/19. The following questions were referred to the Enlarged Board of Appeal with Decision T 831/17 (EPO OJ 2019 A51): 1. In appeal proceedings, is the right to oral proceedings under Article 116 EPC limited if the appeal is manifestly inadmissible? 2. If the answer to the first question is yes, is an appeal against the grant of a patent filed by a third party within the meaning of Article 115 EPC, relying on the argument that there is no alternative legal remedy under the EPC against the examining division’s decision to disregard its observations concerning an alleged infringement of Article 84 EPC, such a case of an appeal which is manifestly inadmissible? 3. If the answer to either of the first two questions is no, can a board hold oral proceedings in Haar without infringing Article 116 EPC if the appellant objects to this site as not being in conformity with the EPC and requests that the oral proceedings be held in Munich instead? CIPA wishes to address the first two questions of the referral together. In the present case, the purported “appellant” is a third party who filed third party observations under Article 115 EPC, presenting clarity objections under Article 84 EPC. This third party purports to appeal against the grant of the patent, arguing that no other legal remedy is available since Article 84 EPC is not a ground of opposition. Article 107 EPC reserves the right of appeal to “Any party to proceedings adversely affected by a decision”. Volume 48, number 7-8
However, Article 115 EPC, last sentence, is absolute: a third party who presents observations “shall not be a party to the proceedings.” Therefore, in answer to question 2 of the referral: yes, any purported appeal against a decision to grant by a third party is manifestly inadmissible, whatever arguments it relies on. The only relevant parties to proceedings before the EPO who may appeal are the first and (where applicable) second parties, namely applicants / patentees and opponents. Article 116(1) EPC likewise reserves the right to request oral proceedings to “any party to the proceedings”. Since third parties are not parties to the proceedings, neither do they have a right to request oral proceedings. It is this which directly precludes the third party’s right to oral proceedings, not just because the appeal is manifestly inadmissible as suggested in question 1 of the referral. Therefore, in answer to question 1 of the referral: yes, the right to oral proceedings under Article 116 EPC is limited to any party to the proceedings. In the travaux préparatoires of the EPC, clarity under Article 84 EPC was deliberately omitted from Article 100 EPC as a ground of opposition. Decision G 3/14 of the Enlarged Board commented (at point 69 of the Reasons): “It can therefore be concluded that a ground of opposition based on Article 84 EPC was not included in the EPC 1973 at least partly because other grounds for opposition (Article 100(b) EPC in particular) were considered largely adequate to deal with the problem. It seems likely that it was also thought unwise to enable an opponent to assert (perhaps numerous) clarity objections in opposition proceedings
and thus delay them, although this cannot be said with quite the same degree of confidence. However, the President states in his comments that the reason for not introducing lack of clarity as a ground for opposition was ‘to streamline opposition proceedings’, and in this the Enlarged Board considers he is likely to be correct.” The present appeal attempts to circumvent that by providing an alternative to postgrant opposition. Whatever one’s view about whether Article 84 EPC should have been included as a ground of opposition, allowing such circumvention would be highly likely to have unforeseen and undesirable consequential effects. These consequential effects would not necessarily be limited merely to clarity objections. Patents whose claims lack clarity can instead be addressed under Article 83 EPC, as G 3/14 suggested, or under Article 56 EPC if the lack of clarity suggests they might be too broad, or by arguing non-infringement in any infringement action. As question three is dependent on a negative answer to at least one of the first two questions and we propose affirmative answers to both, we believe that the Enlarged Board should give no answer to the third question. Tim Jackson, Chair, Patents Committee
Footnote 1. If third parties did have a right to oral proceedings, this could result in vexatious requests for them, and additional costs for applicants. That seems unfair given that no fee is charged for filing third party observations.
OVERSEAS • IPO
Malaysia update Swiss-type second medical use claims patentable in Malaysia. .
he acceptance of second medical use claims in “Swisstype” claim format has attracted significant attention internationally as different jurisdictions vary in their approach. In Merck Sharp & Dohme & Anor v Hovid Bhd, the issue was first raised in the High Court (Civil Trial No. 22IP-71-12/2014) where the appellant (Merck) initiated an infringement action against the respondent (Hovid) for infringing the appellant’s Malaysian Patent No. MY118194-A entitled “Pharmaceutical Compositions for Use in Inhibiting Bone Resorption” (“the 194 patent”) by means of importation, manufacture, offer for sale, sale and stocking for the purpose of sale or offer for sale of the respondent’s Alendronate 70 mg tablets. The respondent counterclaimed through an action of invalidation against the appellant’s 194 patent. One of the grounds raised by the respondent was that the 194 patent constituted “A method for the treatment of human body by therapy” which is deemed as a non-patentable invention under section 13(1) (d) of the Patents
Act 1983 (“PA”). The question which arose is whether the 194 patent is considered a second medical use of a known product (i.e. Swiss-type claim), which is patentable under section 14(4) PA. The High Court dismissed the issue raised by the respondent and decided that the claims of the 194 patent are to be read as a “Swiss-type medical use claim”, which does not fall under section 13(1) d PA and instead is governed by section 14(4) PA. Swiss-type second medical use claims are patentable in Malaysia following the European Patent Office’s Board of Appeal and Enlarged Board of Appeal decision on the patentability of the use of a known compound in the manufacture of a medicament for the treatment of a disease also known as a Swiss-style claim. The claims of the 194 patent relate to the “use” of alendronate for the manufacture of a medicament to inhibit bone resorption in humans, which is adapted for oral administration of certain dosages according to certain continuous schedules. The 194 patent is not a treatment method in itself, but it is instead a known compound (i.e.
alendronate) in the manufacture of medicament resorption to inhibit bone resorption. Accordingly, section 13(1) (d) PA does not bar the patentability of Swiss-style claims. On the remaining grounds, the High Court decided in favour of the respondent that the 194 patent was invalid as claim 1 lacked an inventive step and as such, all of its dependent claims were found to be similarly invalid. The appellants appealed unsuccessfully to the Court of Appeal on the ground that the Judge erred in law on inventive step, relevant skilled person in the art, and common general knowledge. Although claims for Swiss-type second medical use are not provided in the PA, MyIPO has approved such claims in the practise of patent prosecution in Malaysia. The precedent set through this case gives significant value to the pharmaceutical industry and strengthens the matter on patentability of the use of a treatment method. Ian Mirandah is a director at Mirandah Asia. See more at www.mirandah.com.
Manual of Patent Practice updates The July 2019 changes that have been incorporated into the latest version of the Manual of Patent Practice are listed below. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp.
Updated in light of EPO Board of Appeal decision T 1218/14 (Dohler / DuPont Nutrition Biosciences)
Updated to clarify the extension regimes available when dealing with late filed divisionals
Updated in light of Regan Lab SA v Estar Medical Ltd & Ors  EWHC 63 (Pat)
Updated in light of judgment C-443/17
Singapore update IPOS accelerates grants of artificial intelligence patent applications. By Denise Mirandah and Jehanna Huerto .
he Intellectual Property Office of Singapore (IPOS) launched an Accelerated Initiative for an Artificial Intelligence (AI2) programme on 26 April 2019. This AI2 programme speeds up the file-to-grant process for AI-related patent applications to six months, instead what was taking between two and three years. According to IPOS, the AI2 programme makes Singapore’s patent granting for AI-related patent applications the fastest in the world. In order to be eligible for the AI2 programme, an applicant has to meet the following prerequisites: 1. the patent application is related to AI; 2. the patent application was first filed in Singapore; 3. the filing of Request for Grant of Patent (Patent Form 1) and Request for Search and Examination (Patent Form 11) are completed on the same day; 4. the patent application contains no more than 20 claims; and 5. a supporting document labelled as a “Fast-Track document”, stating that the patent application is an AI invention is to be furnished during the submission of the Request for Search and Examination (Patent Form 11).
It is essential to understand the meaning of AI before applying to the AI2 programme, as it is the first criteria an applicant has to satisfy. Briefly, “AI refers to the ability of a computer or a system to interpret external data, to learn from it, and to use the said learning to achieve specific tasks”. AI is also commonly associated with, but not limited to, machine learning, which is a form of AI that uses algorithms and statistical models enabling computers to make decisions without the need to be explicitly programmed to perform a particular task. Machine learning can be applied in various functional domains, including image recognition, speech/voice recognition, natural language processing, and autonomous systems. To further assist the prosecution of the AI-related patent applications and also in view of the AI2 programme, IPOS has included in the patent examination guidelines a section on patentable subject-matter for artificial intelligence and machinelearning methods. Volume 48, number 7-8
Just as a brief overview of the revised guidelines, a claim to an AI method characterised only by the mathematical steps of the algorithm would be considered as a mathematical method per se, and thus cannot be construed as an invention. In fact, where a method is defined to be implemented on a generic computer or using conventional hardware, the mere recitation of the said generic hardware in the claim is not likely to be sufficient for the actual contribution of the claim to be considered anything more than the underlying mathematical method. However, a claim to an AI method implemented on a computer and aimed towards solving a specific problem (e.g. a machine-learning method implemented on a computer for speech or image recognition or natural language processing) would most likely be considered as an AI invention eligible for patent protection. The push on AI technology is not just taking place at IPOS level. The AI2 programme runs parallel to the Singapore government’s requirement for ministries and agencies to have at least one AI project by 2023 (Digital Government Blueprint, June 2018). Additionally, Singapore is also creating significant advances in new technological landscape as demonstrated by heavy investment in digital infrastructure, a surge in IT expertise, and the growing support for the nation’s affinity towards hyper-connectivity, among others. These undertakings show the commitment of the government to ensure Singapore becomes one of the leading AI-driven countries in the world. Apart from the government’s relentless drive, AI also has significant benefits towards the public in general. One of the advantages of AI is to ease the burden of a person from the routine mundane chores so that one can focus on more valueadded tasks. AI is the next big thing in Singapore. It is here to grow. As stated by Mr Daren Tang, CEO of IPOS: “AI has become one of the biggest drivers of technological and societal change in the world, and it will increasingly underpin the country’s drive to build a digital economy”. Denise Mirandah (Overseas Member) is a director at Mirandah Asia and Jehanna Huerto is a patent executive in the firm’s Singapore office. See more details at www.mirandah.com. JULY-AUGUST 2019
Philippines update Clearer rules for filing divisional patent applications. By Ian Mirandah and Jehanna Huerto
n 1 September 2018, the Intellectual Property Office of the Philippines (IPOPHL) issued a Memorandum Circular No. 180031 setting out the conditions and considerations when filing a divisional patent application in the Bureau of Patents (BOP). According to rules 610 and 611 of the Revised Implementing Rules and Regulations2 (Revised IRR), an applicant can file a new patent application (divisional application) in respect of any part of the matter contained in the originally filed or first filed parent application (parent application). The said divisional application is accorded the same filing date as the parent application and has
the benefit of any right to priority. In the Philippines, a parent application may give rise to more than one divisional application and a divisional application (earlier divisional application) may also give rise to one or more further divisional applications – succeeding divisional application(s). The earlier divisional application must be pending at the time the succeeding divisional application is filed. A “mandatory” divisional application may be filed for inventions that are not elected following a requirement for restriction or as a result of a lack of Unity of Invention rejection in the parent application (rule 604, Revised IRR). It must be filed within four months from the date of election or from the date the requirement for
division becomes final. The examiner will explicitly state an indication that the restriction is made final in the next or subsequent office action and the prescribed period of four months shall commence from the mailing date of the office action. On the other hand, a “voluntary” divisional application may be filed upon the applicant’s own initiative before the parent application is withdrawn or patented, on the condition that the subject-matter does not extend beyond the disclosure of the parent application (rule 611, Revised IRR). Under the current practice, there is a final opportunity for filing a voluntary divisional application within one month from the mailing date of a Notice of Allowance. The divisional application’s term will not extend the 20-year patent protection period reckoned from the filing date of the first filed parent application. When filing a divisional application, the description must indicate, at the first paragraph of the first page, a statement that the application is a divisional application and an indication of the application number and filing date of the parent application. The claims of a divisional application need not be limited to subject-matter already claimed in the parent application, provided that the subject-matter does not go beyond the content of the parent application.
Related case law Prior to the above-mentioned Circular, the appeal decision by the Office of Director General (“ODG”) of the Intellectual Property Office of the Philippines in Takeda Pharmaceutical Co. Ltd. v Director of Bureau of Patents, 20 July 2018 shed light on the timely filing of a divisional application.
Timeline of the case 30 July 2002 – The examiner issued an official action that subjected Takeda Pharmaceutical Co. Ltd’s (“appellant”) application (“parent application”) to a restriction requirement. 30 September 2002 – The appellant elected Group 26 for prosecution without traverse and manifested that the divisional application will be filed in due course. 1 June 2004 – The appellant filed a divisional application based on the parent application. Subsequently, the examiner issued an office action denying the claim for priority date as the divisional application had allegedly been filed beyond the four-month reglementary period as prescribed under section 17 of Republic Act No. 6153 (the old patent law). 30 November 2004 – The appellant filed a reply submitting that section 17 of Republic Act No. 165 did not apply as the application was filed as a voluntary divisional patent application. The appellant’s arguments did not succeed and the earlier finding that the divisional application was not entitled to the claim of priority of the parent application was upheld by the examiner. 9 May 2005 – The appellant requested for the acceptance of its claim of priority but it was denied by the examiner who maintained that the appellant’s divisional application was not a voluntary divisional application.
examiner to consider its application as a voluntary divisional application as it was filed not as a result of the restriction requirement. 1 February 2008 – A final rejection was issued and thus the appellant appealed to the Director of BOP. 6 November 2013 – The Director of BOP denied the appeal and confirmed the examiner’s final rejection.
Appeal No. 01-2013-0005 The appellant appealed to the ODG on 27 December 2013. The main issue was whether the appellant’s Divisional Application was a voluntary divisional patent application that should be given the same filing and priority date as the appellant’s Parent Application. The ODG ruled, citing section 38.24 of the IP Code5, that since the appellant’s Parent Application was subjected to a restriction requirement, for the divisional application to claim the filing date of its parent application, it: “must be filed within four months after the requirement to divide becomes final, or within such additional time, not exceeding four months, as may be granted.” According to the ODG, the provision on voluntary divisional application only applies if there is no restriction requirement. Otherwise, the applicant is bound by the requirements under section 38.2 of the IP Code and rule 610 of the
Revised IRR. As a final remark, the ODG opined that: “As a privilege granted by the state that amounts to a grant of monopoly, patents should be strictly construed and given only to those inventions that have significantly contributed to existing arts. Innovations that are not anymore new, or which have been disclosed to the public, should not anymore be included in the patent protection. In addition, just like in lawsuits, reglementary period and time limits must be strictly followed, as they are considered indispensable interdictions against needless delays, and for orderly discharge of patent examinations. Procedural rules are not to be belittled or disregarded simply because their non-observance may have resulted in prejudice to a party’s substantive rights.” [Emphasis added.] Therefore, the appeal was dismissed and the examiner’s final rejection as well as the BOP Director’s decision was affirmed. In summary, the Memorandum Circular No. 18-003 provides clarity in terms of when one can file a divisional application. It codifies the position adopted by the Intellectual Property Office of the Philippines and provides certainty to applicants who are pursuing divisional patent applications. Ian Mirandah is a director at Mirandah Asia and Jehanna Huerto is a patent executive in the firm’s Singapore office. See more details at www.mirandah.com.
Notes and references 1. BOP Memorandum Circular 18-003 – Interpretation of Rules 610 and 611 of the Revised IRR and Considerations for Accepting Divisional Applications in the Bureau of Patents 2. The Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs 3. Republic Act No. 165 An Act Creating a Patent Office, Prescribing its Powers and Duties, Regulating the Issuance of Patents, and Appropriating Funds Therefor 4. Section 38.2 of the IP Code is similar to section 17 of Republic Act No. 165
27 March 2007 – The appellant proposed to amend the claims and requested the Volume 48, number 7-8
5. Intellectual Property Code of the Philippines (effective on 1 January 1998)
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)
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  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
the Swedish Patent and Market Court, that decision was later overturned by the Swedish Patent and Market Appeal Court, on the basis that darunavir was not specifically identified in the patent, and so the SPC was likely invalid. Similarly, in the Netherlands, the Court of The Hague denied Searle’s request for a PI on the basis that darunavir was unlikely to meet the second step of the Teva v Gilead test, because it was not specifically identifiable in the patent. In view of these conflicting decisions at a national level, further guidance on the application of the Teva v Gilead test, in particular the second “specifically identifiable” step, to Markush claims seems crucial. We hope that this will be provided when Sandoz v Searle comes before the CJEU. Functional claims: Royalty Pharma (C-650/17) and Eli Lilly v Genentech The other pending CJEU referral on article 3(a) is the Sitagliptin case referred by the German Federal Patent Court as Royalty Pharma (C-650/17), which relates to the application of article 3(a) to functionally defined claims. These types of claims are important and widely granted across the life sciences industry, and especially in the biotech sphere, to protect molecules related by a common function or effect. As a result, the outcome of this referral is eagerly awaited. In the meantime, the UK High Court has confirmed in Eli Lilly v Genentech  EWHC 388 (Pat) that claims to antibodies defined in functional terms remain suitable for meeting the criteria set out by the CJEU in Teva v Gilead. The underlying dispute concerned Genentech’s patent claiming antibodies which bind to interleukin-17A/F (“IL17A/F”) (claim 1) and their use in the manufacture of a medicament for the treatment of psoriasis (claim 12). Genentech does not have a marketed antibody that binds to IL-17A/F, but sought an SPC for Lilly’s ixekizumab antibody, authorised inter alia for the treatment of psoriasis (Taltz®). Ixekizumab was originally developed by Lilly as an anti-IL17A antibody without knowledge of the existence of IL-17A/F, but it was subsequently discovered that ixekizumab also binds to IL-17A/F. It seemed relatively straightforward for Arnold J to apply the Teva v Gilead test to the product per se (claim 1). Having already decided in a separate judgment that ixekizumab falls under the scope of claim 1, Arnold J held that the skilled team would readily understand that ixekizumab embodies the technical contribution of the patent, and therefore “necessarily falls under the invention covered by that patent”. Turning to the second limb of the Teva v Gilead test, Arnold J confirmed, following the CJEU’s ruling in Eli Lilly v HGS, that an antibody product may be specified in the claims of a basic patent in functional terms. Arnold J also noted that it was irrelevant under article 3(a) that ixekizumab was not created until after the priority date of the patent. Accordingly, he held that ixekizumab is identifiable by reference to the functions 14
specified in claim 1, and would therefore be “specifically identifiable” by the skilled team. The judge’s approach differed for second medical use claim 12, however. Even though the anti-IL-17A/F antibody itself was defined in claim 12 in the same way as in claim 1, Arnold J held that ixekizumab did not “necessarily fall” under the invention of claim 12 and was not “specifically identifiable” in claim 12, which is a claim to the use of an anti-IL-17A/F antibody for treating rheumatoid arthritis or psoriasis. Arnold J reached this conclusion because the skilled team would not have considered it plausible, based on the information in the patent, that an anti-IL-17A/F antibody would have a discernible therapeutic effect on psoriasis. It was only research undertaken after the priority date (by Lilly and other third parties) that establishes the therapeutic efficacy of ixekizumab in treating psoriasis – and also that ixekizumab’s inhibition of IL-17A/F (rather than IL-17A) contributes to that therapeutic effect, as required by the claim. However, the CJEU had already made it clear in Teva v Gilead that reliance on post-published results was impermissible under article 3(a). Does this point perhaps to a different article 3(a) hurdle for medical use claims (as compared with product claims) which incorporates grounds normally seen in the context of patent validity attacks, such as plausibility, as an element of that assessment? Potentially blurring the lines between patentability and eligibility for an SPC is controversial, and could create further complexity and uncertainty, so Arnold J’s approach might be limited to the facts of this case. The judgment in Eli Lilly v Genentech should nevertheless provide some welcome comfort to innovators in the biotech sphere because it confirms that claims to an antibody product defined in functional terms may satisfy article 3(a) in the UK. Conclusion It has become something of a tradition to conclude an article about article 3(a) with a concern about the growing uncertainty around how this provision should be applied in practice. While many will no doubt remain concerned, perhaps the Teva v Gilead test and its application by national courts to different factual scenarios will start to enable practitioners to form a clearer picture of how the courts will assess compliance with article 3(a). We hope that further judgments over the next 12 months, from the CJEU (in Sandoz v Searle and Royalty Pharma) and national courts, will build on the foundations laid this year, adding clarity to the way in which article 3(a) is applied, in particular to products covered by broad functional and structural claims. Jennifer Antcliff and Paul Kaufman (Fellow)
New referral to the CJEU on third party SPCs Europe’s highest court to consider whether SPCs are available to patentees in the absence of an agreement with the marketing authorisation holder.
The practice of seeking “third party SPCs” has become common in recent years, but will now be reviewed by the CJEU following Mr Justice Arnold’s decision to refer a question on this point Lilly v Genentech (C-239/19).
“Does the SPC Regulation preclude the grant of an SPC to the proprietor of a basic patent in respect of a product which is the subject of a marketing authorisation held by a third party without that party’s consent?” An affirmative answer to the above question is likely to provide more certainty for MA holders. However, in that scenario, the question of when and how an SPC applicant would be required to show that it has the MA holder’s consent would introduce an additional administrative hurdle for applicants, and may even generate further uncertainty. Fergus Tyrrell (Fellow)
Background According to the SPC Regulation, the holder of a basic patent is entitled to an SPC based on the basic patent. The consent of the marketing authorisation (MA) holder (often a party other than the patent holder) is not routinely required to obtain an SPC. This situation does not usually cause problems as there is typically a legal relationship between the two parties. For example, the MA holder may be a licensee under the patent, or the two parties may be part of the same corporate group. However, sometimes there is no legal relationship between the patent holder and the MA holder. In this situation, an SPC applied for by a patent holder based on an unrelated party’s MA is commonly referred to as a “third party SPC”. Third party SPCs are problematic for MA holders, who will be required either to take a licence under the SPC or to attempt to have the SPC revoked if they are to commercialise their approved product. Issues relating to third party SPCs often crop up when infringement disputes arise between innovator pharmaceutical companies. The products at the centre of these disputes are often biologics, as the relevant patents in this field commonly contain broad, functional claims which could protect multiple products. The CJEU’s ruling in Biogen (C-181/95) arguably stated that the practice of applying for and obtaining third party SPCs is permissible, although more recent decisions from the CJEU (most notably Eli Lilly v HGS; C-493/12) have cast doubt on this approach. Lilly v Genentech Against this backdrop, Lilly brought proceedings against Genentech in the UK in response to Genentech’s application for an SPC based on Lilly’s MA for the medicinal product Taltz®. Lilly requested a declaration that Genentech’s SPC, if granted, would be invalid under articles 2, 3(b) and/or 3(d) of the SPC Regulation due to the lack of a legal relationship between Lilly and Genentech. Lilly did, however, recognise that the situation is not acte clair, and as such sought a referral to the CJEU. Arnold J granted Lilly’s request for a reference on this point and sent the following question to the CJEU:
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New SPC reference to the CJEU on article 3(c) – Novartis (C-354/19) The Swedish court is asking whether article 3(c) precludes a further SPC to a new therapeutic indication for the same applicant.
The Swedish Patent and Market Appeal Court has made a reference to the CJEU relating to the interpretation of article 3(c) of the SPC Regulation for Medicinal Products, in light of article 3(2) of the SPC Regulation for Plant Protection Products. In brief, the court is asking whether, in a case such as the present, an SPC to a new therapeutic indication is available where the applicant has an earlier SPC to the same active ingredient. Article 3(c) of the Medicinal Products Regulation states that one of the requirements for SPC grant is that “the product has not already been the subject of a certificate” in the same member state and at the date of the SPC application. Article 3(2) of the Plant Protection Regulation provides that “[t]he holder of more than one patent for the same product shall not be granted more than one certificate for that product. However, where two or more applications concerning the same product and emanating from two or more holders of different patents are pending, one certificate for this product may be issued to each of these holders”, while Recital 17 of the Plant Protection Regulation suggests that article 3(2) is also valid for the interpretation of article 3 of the Medicinal Products Regulation. The Swedish SPC application underlying this reference is based on Novartis’s marketing authorisation for the medicinal product Ilaris®, which contains the anti-IL1beta antibody canakinumab. The marketing authorisation supporting the SPC application is a decision from 2013 that, for the first time, authorises canakinumab for the treatment of systemic juvenile idiopathic arthritis (SJIA), which is a serious condition responsible for high childhood mortality and severe morbidity. The corresponding basic patent is limited to the use of antibodies such as canakinumab in the treatment of juvenile rheumatoid arthritis. Novartis has an earlier granted SPC based on a separate patent which protects the canakinumab antibody per se. The SPC is supported by a marketing authorisation for canakinumab in the treatment of cryopyrin-associated periodic syndromes (CAPS), which is a different indication from SJIA and falls outside of the scope of the patent that supports the later SPC application. In view of the existence of the earlier SPC, the Swedish court is asking whether article 3(c) in light of article 3(2) precludes the grant of the later SPC application, which relates to a new therapeutic indication protected specifically by its own basic 16
patent. The Swedish court has therefore referred the following question to the CJEU (our translation): “Against the background of the basic objective that supplementary protection for medicinal products aims to accommodate and which consists of stimulating pharmaceutical research in the Union, does article 3(c) of the Regulation concerning SPCs for medicinal products, considering article 3(2) of the Regulation concerning the creation of a SPC for plant protection products, constitute an obstacle against an applicant, that has previously been granted a SPC concerning a product which is protected by a basic patent in force for the product as such, being granted a SPC concerning a new use of the product in a case such as the present where the new use constitutes a new therapeutic indication which is protected specifically by a new basic patent?” Carpmaels & Ransford represents Novartis AG in respect of its Ilaris® product. AWA represented Novartis AG before the Swedish patent office and courts in relation to the Swedish SPC application. Natalia Wegner-Cribbs (Fellow), Sam Menzies (Student)
Next time… The second part of this review will be published in the September 2019 CIPA Journal. Articles will cover: the possibility of obtaining SPC protection for combination products that comprise previously authorised active ingredients; the SPC eligibility of drug device combination products; a review of the implications of the SPC manufacturing waiver, which is soon to come into force; and a look beyond the EU to summarise some of the main developments that have occurred for patent term extension systems across the world.
The CJEU considers the interpretation of article 3(d) in Abraxis and Santen The CJEU has issued its judgment in Abraxis (C-443/17) but further questions on the interpretation of article 3(d) might be answered in Santen (C-673/18)
According to article 3(d) of the SPC Regulation one of the requirements for SPC grant is that the marketing authorisation supporting the SPC “is the first authorisation to place the product on the market as a medicinal product”. The CJEU’s judgment in the well-known case Neurim Pharmaceuticals (C-130/11) from 2012 interpreted article 3(d) as meaning that an earlier marketing authorisation does not preclude the grant of an SPC: “for a different application of the same product (…) provided that the application is within the limits of the protection conferred by the basic patent”. In the more recent cases Abraxis (C-443/17) and Santen (C 673/18), the CJEU has been asked to further consider the interpretation of article 3(d) in view of the facts of those cases. Abraxis (C-443/17) The SPC application relates to Abraxane®, which contains albumin-bound paclitaxel nanoparticles and is indicated in the treatment of metastatic adenocarcinoma of the pancreas as well as metastatic breast cancer and non-small cell lung cancer. It is the first product of this type that was authorised in Europe and the SPC application was based on the Abraxane® authorisation and a related patent directed to the innovative albumin-bound nanoparticles. In view of earlier authorisations for conventional paclitaxel products, which do not fall within the scope of the basic patent and which are not authorised for the treatment of metastatic adenocarcinoma of the pancreas, the CJEU was asked by the UK High Court whether an SPC could be granted where the marketing authorisation underlying the SPC is the first authorisation within the scope of the relevant basic patent and where, in the court’s view, “the product is a new formulation of an old active ingredient” (paragraph 62, Abraxis Bioscience LLC v The Comptroller-General of Patents  EWHC 14 (Pat)). In his opinion in December 2018, Advocate General Saugmandsgaard Øe proposed a broad negative answer to the referred question, which some commentators interpreted as potentially reversing the CJEU’s earlier jurisprudence in Neurim. The CJEU did not follow the Advocate General’s proposed broad answer and in March 2019 ruled more Volume 48, number 7-8
narrowly with respect to SPCs deemed to relate to “a new formulation of an old active ingredient”. Specifically, the CJEU said that article 3(d) of the SPC Regulation: “must be interpreted as meaning that the marketing authorisation referred to in article 3(b) of that regulation, relied on in support of an application for a SPC concerning a new formulation of an old active ingredient, cannot be regarded as being the first marketing authorisation for the product concerned as a medicinal product in the case where that active ingredient has already been the subject of a marketing authorisation as an active ingredient”. Carpmaels & Ransford represents the SPC applicant in this case. Santen (C-673/18) While the Abraxis case was pending at the CJEU, in October 2018 the Paris Court of Appeal referred further questions to the CJEU on the interpretation of article 3(d). The SPC application underlying this reference relates to Ikervis®, which includes the product “ciclosporin eye drop emulsion”. It is based on a patent that claims a particular ophthalmic oil-in-water submicron type emulsion in claim 1. The dependent claims further specify that the emulsion may comprise a pharmaceutically active substance such as ciclosporin, and that the emulsion may be used for treating a range of conditions including “ocular inflammatory diseases such as keratitis, uveitis (…)” The marketing authorisation supporting the SPC application is for the medicinal product Ikervis®, which uses the patented emulsion and is indicated for the treatment of “severe keratitis in adult patients with dry eye disease, which has not improved despite treatment with tear substitutes”. Keratitis is an inflammation of the cornea. The emulsion form of ciclosporin in Ikervis® allows effective topical delivery of ciclosporin to the cornea. An earlier marketing authorisation for ciclosporin has previously been granted for the medicinal product Sandimmun®. Sandimmun® uses a different formulation of ciclosporin and is provided for internal rather than topical administration, for a range of indications, including uveitis. Uveitis is an inflammation of the middle layer of the eye. The French patent office refused the SPC application for failing to comply with article 3(d) of the SPC Regulation, referring to the earlier Sandimmun® authorisation of ciclosporin in the treatment of inflammatory eye disease (uveitis). It was also noted that the basic patent relates to the emulsion and not a new indication, with keratitis being mentioned in a dependent claim only, and alongside uveitis. Santen argued inter alia that the earlier authorisation for Sandimmun® was not relevant in light of Neurim because the JULY-AUGUST 2019
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
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
Daniel Wise Partner
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: firstname.lastname@example.org. Copyright © Carpmaels & Ransford LLP 2019. www.cipa.org.uk
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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infringer fails to provide accounts and materials or provides fake accounts and materials ordered by the court, the court may determine the amount of compensation by reference to the patentee’s claims and evidence. The first point is straight forward. The second is highlighted in Ningbo Aux Air Conditioner Co., Ltd. (Aux) v Zhuhai Gree Electric Appliances, Inc. (Gree) below. This case was decided by the Ningbo Intermediate People’s Court (the court) on 12 July 2018. It should be noted that it is not unusual that planned changes to the law in China have already been experimented with for some time before the law and regulations are formally changed. [My own comments are in square brackets.]
Aux’s allegations a. Aux’s utility model ZL201520143902.0 (‘902), filed on 15 March 2015, was claimed to be infringed by Gree’s product model no. KFR-35GW/(35573)FNAa-A1 (the alleged infringing product). Aux purchased two sets of Gree’s alleged infringing product, with proper notarization, and submitted the evidence to the Ningbo’s Intermediate People’s Court.
indicating sales of just 17 units (including two bought by Aux as evidence) at ¥17,000, and a final conclusion showing an overall loss.
Court’s handling of various issues in the case 1. Gree’s prior art defence The evidence provided by Gree were accepted by the court on the basis of the compulsory official product certification and proper notarization of chain of evidence. However, this defence failed, as the prior art product at issue in fact had substantive differences from ‘902. Specifically, the two base installation holes and the lifting lugs were on a different horizontal line in ‘902, to effectively improve stability of installation in a limited installation space due to longer relative distance and displacement. By contrast, the two base installation holes and the lifting lugs in Gree’s prior art product were on the same horizontal line. 2. Gree’s non-infringement defence The independent claim in Aux’s ‘902 that survived after Gree’s invalidation petition, and was at issue in the infringement case is set out below:
b. Aux requested compensation of ¥10,000,000 (about £1.14 million) for patent infringement. They submitted as evidence Gree’s annual reports from 2015-2017, and media reports that Gree had on the infringing product. [Gree is a company listed in the China stock market.]
1. A motor switching installation seat comprising: a base (10) provided with a motor installation hole and a base installation hole, characterized in that the axis of the motor installation hole is not in the same direction as the axis of the base installation hole; the motor installation hole comprises a first motor installation hole (11) at an upper portion of the base (10), and a second motor installation hole (12) at a lower portion of the base (10), the base installation hole comprises a first base installation hole (21) at the upper portion of the base (10) and a second base installation hole (31) at the lower portion of the base (10); and further comprising a first lifting lug (20) at the upper portion of the base (10), and a second lifting lug (30) provided at the lower portion of the base (10), the first base installation hole (21) being provided on the first lifting lug (20), the second base installation hole (31) being provided on the second lifting lug (30).
c. Aux also requested compensation for its legal fees for enforcing ‘902, and submitted invoices from its attorney.
Gree’s defences 1. Gree asserted that it completed the design of the alleged infringing product in 2013 and obtained a national compulsory product certification in the same year. Therefore, the alleged infringing product belonged to the prior art. 2. Gree argued that their product did not infringe ‘902. 3. Aux’s utility model ZL201520143902.0 is invalid, and Gree has already filed an invalidation petition at the Patent Re-examination Board (the PRB) of the CNIPA. Further, Gree filed a patent ownership dispute of ‘902 at the Ningbo Intermediate People’s Court. Gree submitted acceptance of the invalidation petition by the PRB; and the patent ownership dispute of ‘902 by the Ningbo Intermediate People’s Court as evidence.
Gree argued that their alleged infringing product did not have lifting lugs but, screw columns instead. In Gree’s product, the lifting lug is located at another remote end but not close to the motor. The court decided that Gree’s product infringed due to the following reasons: •
4. Gree asserted that it did not make a profit from the alleged infringing product. Gree provided a one-page summary 20 CIPA JOURNAL
According to the specification, the lifting lug means an ear-shaped member that hangs from the main body of the installation seat. www.cipa.org.uk
As a stepper motor for air conditioner is small and light, the lifting lug in ‘902 was an ear-shaped member that functioned as a fixed point for hanging stabilization and bearing the motor switching installation seat.
The screw columns of Gree’s product hang from the main body of the base, which had the same function of installing the installation seat on the housing without interference, as in ‘902, and there is no substantial difference compared with the lifting lug in ‘902, and therefore fell within the scope of ‘902.
3. Gree’s invalidation petitions against Aux’s ‘902 The PRB decided on 27 December 2017 that ‘902 was partly invalid; only original claims 5 and 6 were valid [the above claim 1 in “Gree’s non-infringement defence” is the claim 5 surviving after invalidation]. Gree appealed to the Beijing IP Court on 10 January 2018. At about the same time, Gree filed a second invalidation petition using different evidence from the first invalidation petition. However, as the first invalidation decision was still in appeal, the PRB did not start this second invalidation petition. Although the first invalidation petition was under appeal and there was a second invalidation petition, the court decided that it was not necessary to suspend this infringement case as the PRB maintained ‘902, although only in part. 4. Aux’s request for compensation for patent infringement The court considered that Aux had presented as much evidence as Aux could on the infringement and profits made by Gree. Since the accounts and materials for proving the profit from the alleged infringing product were mainly possessed by Gree, the court ordered Gree to submit evidence such as accounts, materials and other relevant data on sales volume, sales unit price, profit rate, and the like, relating to Gree’s alleged infringing product. Gree replied to the court with its one-page form, a short summary showing sales of just 17 units (including two bought by Aux as evidence) at ¥17,000, and a final conclusion that a loss resulted. No complete financial accounts and materials in accordance with the Chinese accounting standards were provided by Gree. The court decided that Gree had not fulfilled the court’s request for submission of evidence for the following reasons: •
Gree’s submissions were inconsistent with Gree's selfproclaimed “huge national response and good branding”, and reports by third parties in the media of the product “being popular… with rapid sales”.
The development cost of the product was estimated to have reached tens of millions of ¥. The total annual business revenue of Gree’s air conditioner business was about ¥100 billion, which corresponds to a sales volume of more than
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260,000 of Gree’s air-conditioner. By contrast, the total sales volume of the alleged infringing product within 34 months was 17 at the unit price ¥17,000, that is the total turnover was only ¥280,000. The commercial cost and the total turnover are extremely divergent. •
According to Gree's annual reports, Gree’s airconditioner revenues in 2015, 2016, and 2017 were ¥83.7 billion, more than ¥88 billion, and more than ¥123.4 billion, respectively. The annual business revenue of airconditioners of about ¥100 billion directly reflected the overall production and sales of Gree’s air-conditioners. On just one e-commerce platform, Jingdong, Gree’s sales of a similar product were more than 260,000.
It was difficult to understand why Gree continued to produce the alleged infringing product for 34 months while suffering such substantial commercial losses.
Based on the above, the court ruled that Gree had failed to provide accounts and materials of infringement profit without any justifiable reasons, and should bear the consequences, i.e. the court would determine the compensation amount by referencing to the patentee’s claims and evidence. The court decision regarding compensation is summarised below: Sales – considering that the unit price of the alleged infringing product is ¥17,000, nearly five times the unit price of similar products with sales of 400,000 units, the corresponding sales of units were reasonably estimated to be about 80,000. Therefore, the sales of the alleged infringing product was estimated to be ¥17,000 x 80,000 = ¥1.36 billion. Profit margin and net profit rate – according to Gree’s 2016 and 2017 annual reports, these were: Year
Net profit rate
As the alleged infringing product is a new product with a higher price than those of ordinary products, and Gree’s profit margin was higher than the net profit rate, the court decided that the profit margin of the alleged infringing product was not less than 35%. Contribution rate – the alleged motor switching installation seat is an important component of the air conditioner, but not a finished air conditioner. Gree’s brand would also have an impact on the consumers, which should be taken into account by the court. JULY-AUGUST 2019
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.
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  CIPA 19 2. We have used the ¥ symbol for the renminbi / RMB 3. February  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 email@example.com 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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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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application behaviors” issued by the CNIPA (SIPO back then) in February 2017. Comments: Patent application behaviours considered to be abnormal in these stipulations are multiple patent applications filed by the same entity as below: 1. with apparently the same contents; 2. apparently copying existing art; 3. with simple replacement or combination with different materials, compositions, proportions, components, and so on; 4. with apparently fabricated experimental data or technical effect; and 5. with randomly computer-generated product shape, pattern or color. It is not clear of what number that would constitute “multiple”, for example two or above? There could be much room for argument in relation to points one, three, four and five. For the first point, it is usual practice that applications were filed with the same description but only the claims are different, in particular divisional applications. Therefore, my view is that “same contents” means exactly the same specification including description and claims. For point three, it cannot be ruled out that replacement or combination with different materials, compositions, proportions, components, and so on could result in a new invention. For point four, I am not sure how the CNIPA by itself could determine that the experimental data or technical effect is fabricated, notwithstanding that it is unimaginable for the CNIPA to carry out any experiments. If later relevant publications are to be relied on, whether the results in these later publications could be trusted is another issue. This may only work literally, i.e. apparently fabricated experimental data or technical effect. For point five, I have absolutely no idea how the CNIPA could determine that a product’s shape, pattern or color has been randomly generated by a computer. Any thoughts would be appreciated. ☐ Providing false documents.
Punishments The punishments are as below: At the CNIPA: a. canceling patent fees reduction; b. removing from priority examination; and c. removing from “Quick Right Assertion Pathway”. 24 CIPA JOURNAL
"Bad faith entities": more than 18 million people in China have been barred from air travel
Canceling various official titles including enterprise of advantage, pilot patent business enterprise, example enterprise, and so on, with a two-year restriction on reapplying. Restricting or reducing government funding support, and with stricter reviews on application. Restricting subsidies and social security funding support. Restricting participation in government tenders. Recording bad faith behavior in financial credit systems. Prohibiting from issuing corporate bonds. Strengthening the management of issuing financing instrument for non-financial debt, corporate credit bonds, and stock, including using the recorded bad faith behavior as reference. Restricting the establishment of financial institutions. Prohibiting from becoming the legal representative, actual controllers, directors, supervisors and senior management personnel of financial institutions and enterprises. Restricting the shareholding ratio of bank card clearing institutions and non-bank payment institutions to not more than 5%. Increasing property insurance premiums or limiting the provision of insurance services. Suspending or terminating the equity incentive plan of the domestic state-controlled listed company. Acting as reference [apparently in an adverse manner] for the approval of the following: a. Financing at financial institutions. b. Approval and management of foreign exchange. c. Acquisitions. d. The review of major assets restructuring of unlisted public companies. e. Eligibility to sell funds. f. Obtaining social welfare including subsistence allowances, medical assistance, temporary assistance, and affordable housing within a certain period. www.cipa.org.uk
Restricting obtaining certification, and/or becoming a certifying body. Increasing rate of product inspection by various authorities. Restricting from making and selling goods for a certain period. Restricting becoming a customs-certified enterprise (with ease to import and/or export goods). Imposing stricter customs controls on importing and/or exporting goods. Restricting access to government land resources. Restricting application for research projects. Prohibiting advertisement of products found to be infringing. Stricter review on telecommunication work permits. Restrictions on working as a civil servant or being employed by public institutions. Restricting high consumption activities including taking planes, first class seats on trains, and other consumption behaviors that are not necessary for life and work, for example taking holidays or traveling abroad. Restricting purchase of real estate or state-owned properties. Restricting to obtain public recognitions and/or awards, and revoking already those already obtained. Making the public aware of bad faith behavior, including publishing details online.
Observations It should be noted that the memorandum is not only directed to infringement of patents, but also other bad faith actions, such as false marking. The memorandum is directed to administrative decisions made by an intellectual property administration, that is, the local intellectual property offices. Although this does not seem
to be very useful as most concerns are on patent infringement mainly handled by the courts. It is not well known to many foreigners that in fact similar measures have already been applied to any party refusing to enforce a court’s decision, including decisions relating to patent infringement cases. The Chinese court has a website that lists the so-called “dishonest entity subject to enforcement” – http://zxgk.court.gov.cn. As of 6 February 2019, the statistics are: a. 13.08 million entities are on this list; b. 18.53 million people are barred from air travel; and c. 5.56 million people are prohibited from traveling on trains. It should be apparent that the punishments for being listed as a IP bad faith entity are severe. In my view, it is equivalent to being declared bankrupt in a Western country. These measures would be very intimidating to IP infringers in China. After all, no company executive will relish the idea of being restricted to traveling second class on trains due to IP infringement. Business costs could also be significantly increased with, for example, higher insurance premiums, and the loss of government businesses could have a serious impact on many businesses. The introduction of these will be on the table for any US-China trade negotiations. Toby Mak (Overseas Member), Tee & Howe Intellectual Property Attorneys.
Footnotes 1. Editor: The list also highlights how extensive the long hand of Government can be in China. 2. Editor: Not altogether unheard of. The UK has recently shut down a web site selling “replacement” (AKA fake) examination certificates.
Non-Institute events Drafting and Negotiating Contracts with Universities, London Provider: Anderson Law / UCL IBIL Date: Tuesday 30 July
Intellectual Property for Commercial Lawyers, London Provider: Assimilate IP Date: Monday 23 September
Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 19-23 August (see page 52)
Union-ip – British Group Dinner Meeting, London Provider: Union-ip Date: Wednesday 2 October
Basic Litigation Skills Course, London Provider: CPD Training Date: 9-13 September
EQE main examination 2020 – papers A+B, C and D, Paris Provider: CEIPI Date: 2-5 October
Standard Essential Patents, Solvay Brussels School Provider: Premier Cercle Date: 10 September Web: www.premiercercle.com/sep (see the inside front cover)
IP Seminar @ VOLVO CARS, Gothenburg, Sweden Provider: Premier Cercle Date: 8-9 October Web: www.volvocars-ips.global
See full details at www.cipa.org.uk/whats-on/non-institute-events • To list an event please email firstname.lastname@example.org Volume 48, number 7-8
Patent decisions Obviousness (1) Allergan, Inc., (2) Allergan Limited v Aspire Pharma Limited and between Accord Healthcare Limited and Allergan, Inc.  EWHC 1085 (Pat); Arnold J This decision relates to the validity of European Patent (UK) No 1753434. The patent relates to ophthalmic solutions. Allergan marketed a product (Lumigan 0.1 mg/ml) in the UK containing 0.1 mg/ml of bimatoprost for ophthalmic administration for the treatment of glaucoma, which was covered by the patent. This product replaced an earlier product which contained 0.3 mg/ml bimatoprost (Lumigan 0.3 mg/ml). The invention of the patent essentially covered a formulation with a lower concentration of bimatoprost and a higher concentration of a preservative benzalonium chloride (200 ppm rather than 50 ppm). Aspire and Accord (the defendants) had obtained marketing authorisations to market generic versions of Lumigan 0.1 mg/ ml and intended to sell them in the UK. The defendants did not dispute that their intended actions would constitute infringement of the patent. However, they contended that the patent was obvious over the disclosure of a document known as Laibovitz. Allergan had applied unconditionally to amend the patent to include a new claim 18, which was narrowly directed to the composition of Lumigan 0.1 mg/ml, containing 0.01% bimatoprost and 0.02% BAK and some conventional excipients. It was common grounds that the skilled team to whom the patent was address would comprise an ophthalmologist with an interest in and experience of treating glaucoma and a formulator with expertise in the field of ophthalmic formulation. The principal area of dispute of the common general knowledge of both the ophthalmologist and the formulator was whether it was common general knowledge that BAK enhance the corneal permeability, and hence bioavailability, of ophthalmic drugs. Based on the evidence, the judge considered that this was common general knowledge in both cases. Laibovitz described a Phase II dose-ranging study on bimatoprost covering doses of 0.03, 0.1 and 0.3% (mg/ml). It
The UK patent court case reports are prepared by John Hull, Deborah Hart, Anna Hatt, Jonathan Markham, Matthew Ng and Sarah-Jane Poingdestre of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.
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compared the safety and efficacy of bimatoprost with timolol (another active ingredient) in patients with ocular hypertension or glaucoma. No preservative was used. Closing arguments were focused on the obviousness of claim 18. It was common ground that Laibovitz disclosed the use of 0.01% bimatoprost to treat glaucoma but it did not disclose the use of 0.02% BAK. The defendant’s argument was that the skilled ophthalmologist would be interested in reducing the incidence of conjunctival hyperaemia observed with Lumigan 0.3 mg/ml. The defendant considered that the skilled ophthalmologist would see from Laibovitz that 0.01% bimatoprost provided this. The experts agreed that there were problems with the study in Laibovitz. However, the judge considered that it would be an obvious step to repeat the tests. Although Allergan argued that the costs of repeating the trial would be enormous, the judge disagreed. The judge then moved on to consider whether it would have been obvious to use BAK as a preservative from a technical point of view. He concluded that it would have been obvious to the skilled person to use anywhere from 50 to 200 ppm of BAK. He noted that although 200 ppm was more than the minimum necessary to achieve adequate. Arnold J also reached the conclusion that it was obvious to try including 200 ppm BAK in order to increase the bioavailability of bimatoprost when used in lower doses when repeating Laibovitz, and the skilled team would have a good expectation of success. The judge, therefore, concluded that new claim 18 would be invalid, as were all the granted claims of the patent. The judge made reference to two pieces of secondary evidence as supporting their case of non-obviousness. However, he considered it not necessary to consider them in detail based on his conclusion based on the primary evidence. He also noted that he agreed with the defendant’s insufficiency squeeze. He considered that if the use of 200 ppm BAK was not obvious because of safety concerns, there was nothing in the patent to dispel such concerns. However, he considered that his conclusion on obviousness meant that this issue fell away.
Interim injunction (1) Evalve Inc., (2) Abbott Cardiovascular Systems Inc., (3) Abbott Medical UK Limited v Edwards Lifesciences Limited  EWHC 1158 (Pat); 3 May 2019; Carr J This decision relates to an application by Abbott for an interim injunction to prevent Edwards from launching a product known as PASCAL, which is a medical device for treatment of mitral regurgitation. A claim has been issued by Abbott that the PASCAL device infringes two of Abbott’s patents. Edwards has denied infringement and counterclaimed for invalidity. Abbott applied for an expedited trial, and this application was granted by Arnold J in March 2019, with the trial scheduled to take place in www.cipa.org.uk
December 2019, with a likely date of judgment of January 2020. Edwards has proposed to roll out PASCAL to a small number of hospitals between October 2019 and February 2020 as a controlled trial. Therefore, the expected number of infringing acts expected to take place before the date of judgment is approximately five. Edwards had agreed that a maximum of ten such tests would take place before judgment. Abbott provides its own product for the treatment of mitral regurgitation called MitraClip, which is already available. The evidence provided demonstrated to the judge that the MitraClip was an important first-in-class medical advance that had saved lives. The judge considered the American Cyanamid test, noting that it was necessary to decide whether the claimant would suffer irreparable or unquantifiable harm before considering whether the defendant would do so. If the claimant did not suffer irreparable or unquantifiable harm, then intervention by the court by grant of an interim injunction was not justified. The judge rejected all of Abbott’s arguments as to why the harm it would suffer was irreparable or unquantifiable. He considered that as Edwards had admitted that each test it undertook constituted a sale which would have gone to Abbott, this was directly quantifiable. Abbott also argued that Edwards should have cleared the way of patents before deciding to launch PASCAL. The judge agreed that this was a relevant point but was one to take into account only if the irreparable harm. He reached the conclusion that Abbott would not suffer irreparable harm and that damages would be an adequate remedy and that therefore there were no grounds for interference with Edwards’ freedom of action. The judge went on to consider whether the grant of a preliminary injunction would cause irreparable prejudice to Edwards. He followed the argument that Edwards could potentially miss out on the change in the market of the NHS reimbursing mitral regurgitation procedures, which was expected to happen soon, and that it would not be possible to quantify the loss for that change. He agreed that this would cause difficulty in quantification. The judge therefore refused the injunction.
Entitlement | Breach of confidence Prosyscor Ltd v (1) Netsweeper Inc & (2) Netsweeper (Barbados) Inc & (3) Jeremy Erb  EWHC 1302 (IPEC); 22 May 2019; HHJ Hacon This decision relates to an unsuccessful entitlement action under section 12 of the Patents Act 1977, brought by Prosyscor against Netsweeper. Netsweeper was a company that developed software to selectively block access to websites. Netsweeper had filed a PCT application (WO2013/1177687). Mr Erb was an employee of Netsweeper and named as inventor. Volume 48, number 7-8
Prosyscor Ltd was a UK company set up by Bradley Kite, a former employee and later a consultant for Netsweeper. Mr Kite claimed that he developed the invention in circumstances such that he, and not Netsweeper, was entitled to rights in the invention. Prosyscor also alleged that the information had been obtained through a breach of confidence Netsweeper accepted that Mr Kite should be named as joint inventor along with Mr Erb on the PCT application. Netsweeper argued that naming Mr Kite an inventor left the ownership unaffected as Mr Kite’s contribution was made while he was Netsweeper’s employee. The judge reviewed the case law in relation to section 39 including LIFFE Administration and Management v Pavel Pinkava  EWCA Civ 217;  RPC 30; Harris’ Patent  RPC 19, 28; Armstrong Whitworth Rolls Ltd v Mustard  1 AER 598 and Carmichael v National Power Plc  IRLR 43, , and formulated a number of relevant principles including: (1) An invention made by an employee will belong to him unless it was made in the course of the categories of duty expressly identified in s.39(1): ‘normal duties’ or ‘duties specifically assigned to him’ under s.39(1)(a), or duties of a nature such that the employee has ‘a special obligation to further the interests of the employer’s undertaking’ under s.39(1)(b). … (4) The starting point in defining normal duties is the contract of employment; having considered the terms of the contract one must ask: what was the employee employed to do? … (8) An invention is made ‘in the course of ’ an employee’s normal duties under s.39(1)(a) generally in contradistinction to being made in a frolic of his own. Mr Kite started working for Netsweeper in January 2009, having signed an employment contract and a further non-disclosure, non-compete agreement. The contract of employment set out Mr Kite’s roles and responsibilities including designing and coding product capabilities for Netsweeper. In addition, it stated that he was to bring all ideas to the product managements function within Netsweeper so they could build the best products possible. Mr Kite acknowledged that at the time of his employment, Netsweeper offered web-filtering software, which controlled access to the Internet in such a way as to make certain types of content unavailable to certain users. In March 2009, Mr Kite began to develop an idea of how to allow access to users independent of their IP address using a “pending pool”. He said this was done at home, using his own equipment, in his own time. He published his idea on an intranet site, that was only accessible to Netsweeper staff, on 30 March 2009. Following this post, Mr Erb had a conversation with Mr JULY-AUGUST 2019
Kite, pointing out a difficulty with the system, and suggesting a solution, termed “URL mangling”. Mr Kite continued to develop the idea and put an amended summary on the intranet site in August 20009. This was further updated in September 2009. However, Netsweeper did not support the idea. Mr Kite left Netsweeper’s employment and became a consultant as of 1 September 2010. Mr Kite continued to develop his system. In early 2011, Netsweeper began work on an “authenticated override” system addressing the problem of limiting access to individual users using a single IP address. This development was continued and resulted in two US provisional application being filed on 31 May 2012 and 4 June 2012. These acted at the priority applications for the PCT application in this case. In May 2011, Mr Kite realised that he could commercialise his idea with Netsweeper, and so entered into a confidentiality agreement with them on 7 June 2011. Mr Kite stated that he had a call with Mr Erb on that date disclosing confidential information about his system. Mr Erb denied that the phone call occurred. As Mr Kite could not be specific about the information disclosed in the alleged call, only that the system worked, Netsweeper was found not to be in breach of confidence. Prosyscor argued that Mr Kite devised the entirety of the inventive concept. Netsweeper’s case was that Mr Kite devised
IPO decisions Patentability: section 1(2) Daegu Gyeongbuk Institute of Science and Technology BL O/241/19; 9 May 2019 The application related to a method of designing DNA primers by identifying potential primers from large-scale genomic or other DNA sequence data using a parallelised algorithm that allowed implementation of primer search and filtering on a computer cluster. Following Halliburton, the examiner acknowledged that primer design could be a technical task, but concluded that the particular method defined in the application did not provide a technical contribution because the end product of the method was a database of all potential pairs for a given sequence of data, which was an abstract and extensive list of all possible primer pairs, rather than a narrow result or set of results as in Halliburton. As a result, the examiner considered the application to relate to an unpatentable computer program, and the matter came to a hearing to be decided. The applicant argued that Halliburton was not limited to producing a “narrow result or set of results”, pointing out that the result of the drill bit design method in Halliburton was “at least one drill bit design parameter”. The applicant also noted that, just as the drill bit design in Halliburton was not tethered to 28 CIPA JOURNAL
PATENTS: UK • IPO
the main part of the inventive concept, but Mr Erb devised an improvement – the URL mangling. During cross-examination Mr Kite acknowledged that the URL mangling idea had come from Mr Erb, and so he was a co-inventor. The judge considered that the most important issue of the trial was the scope of Mr Kite’s “normal duties”. He reviewed the terms and contract of employment, and concluded that creating software as covered by claim 1 of the PCT application fell squarely within his normal duties. Prosyscor argued that as the work was carried out by Mr Kite at home, in the evenings using his own computer that it was not part of his normal duties. The judge disagreed and concluded that acts that would be within the normal course of an employee’s duties do not stop being so merely because they are carried out at home and/or outside office hours and/or on the employee’s own equipment. In addition, the judge considered that Netsweeper could reasonably believe that the inventive concept belonged to the company as Mr Kite had published everything covered by claim 1 on the company intranet, which contained trade secrets. The posting of this information supported the inference from the contract of employment that devising the inventive concept was part of Mr Kite’s normal duties. Netsweeper was found to be entitled to ownership of the PCT application.
a particular manufacturing step, there was no requirement that the present invention be connected to any downstream use of the primer. The hearing officer agreed that there was no need for a downstream connection. The task performed by the method was, however, characterised by processing sequence data to provide a reduced, but still large dataset, which did not represent something specific and external to the computer. As a result, the method could not be said to provide a design for a particular technical artefact, and so the task was not technical. The hearing officer concluded that the claimed invention was excluded as a computer program as such, and refused the application. ABB Technology AG BL O/286/19; 24 May 2019 The application, defining a computer-based method for propagation of changes in the configuration of technical equipment, was considered by the examiner to relate to a computer program as such. At the hearing, the hearing officer had to construe the term “technical equipment”, which had been inserted after a clarity objection from the examiner. Using the description, the term was construed as relating to physical machinery found in production plants. Turning to the issue of patentability, the hearing officer noted that the contribution identified by the examiner did not include the purpose of the invention. The hearing officer determined the contribution to relate to propagation of changes in the functional configuration of physical equipment of the type found www.cipa.org.uk
on a production plant but questioned whether the contribution required a step of explicitly controlling performance of the physical equipment to have an effect outside of the computer. The only reason for making changes to the configuration files of the technical equipment was, however, to apply a configuration that changed the way the physical equipment functioned. The method therefore had an effect outside of the computer, and so was not excluded as a computer program as such. The application was remitted to the examiner for further consideration.
Revocation: section 72 Rockwool International A/S v Knauf Insulation Limited BL O/291/19; 28 May 2019 Two patents, one deriving from a divisional of the other, were granted to the defendant (Knauf). Both patents concerned a binder for a mineral wool insulation product, where the binder was free from formaldehyde and derived from sugar, one patent claiming a binder solution and the other a method of manufacturing a product using the binder solution. Following applications filed by the claimant (Rockwool), the defendant filed unconditional requests to amend the claims of both patents, resulting in the claims for each being directed to a method of manufacturing a mineral wool insulation product using a binder solution comprising a carbohydrate and an acid precursor derivable from an inorganic salt. It was agreed that both patents would stand or fall together in light of the prior art cited by the claimant. The claimant relied primarily on a single prior art document, identified as D3, which disclosed a way to convert sugar with an organic acid into an insoluble three-dimensional network to form a binder for a mineral wool insulation. The reactions involved in converting the sugar included one known as the Maillard reaction, most commonly referred to in relation to browning and flavouring reactions in food. The claimant argued that, on the basis of D3 referring to other documents detailing the Maillard reaction, the skilled person would have this reaction as part of their general knowledge. The defendant argued that the skilled person would not have a detailed knowledge of the Maillard reaction, as it lay outside their field of interest in binders for insulation products. The defendant referred to the judgment in Vernacare v Environmental Pulp Products  EWPCC 41, in which HHJ Birss stated that, although the skilled person would read
Patent decisions of the comptroller can be found on the IPO website via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/opinion-requests. David Pearce (Barker Brettell) & Callum Docherty (Withers & Rogers)
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any given piece of prior art with interest, there was nothing to say that they were not entitled, depending on the context, to consider that they were in the end not actually interested. The hearing officer considered that the skilled person would be aware of the Maillard reaction and its relevance in making binders for insulation, but they would not have a detailed knowledge simply through reading the documents referred to in D3. The use of a sugar-based binder characterised by the inclusion of an acid precursor derivable from an inorganic salt, as opposed to an organic acid as disclosed in D3, was considered by the hearing officer not to be obvious to the skilled person given their lack of understanding of the Maillard reaction. The claims, as amended, in each of the patents were therefore found to be inventive and the hearing officer allowed the amendments and made no order for revocation.
Added matter: section 76(1) California Institute of Technology, and Thermo Fisher Scientific (Bremen) GmbH BL O/254/19; 15 May 2019 A divisional application was filed from an application that claimed a system and method of using a combination of two mass spectrometers to perform an analysis on a sample. The divisional claimed a method of performing analysis using the two mass spectrometers but without specifying a feature in one of the spectrometers that was described and claimed in the parent application. The examiner objected that the omission of the feature meant that the application disclosed matter extending beyond the parent application and could not proceed as a divisional application. The applicant disagreed, arguing that the skilled person would recognise that there were two inventive concepts described in the application, one of which did not require the feature to be present. In relation to whether the omission or removal of a feature could constitute added matter, the hearing officer referred to Nokia v IPCOM  RPC 5, which referred to the three-part test as set out in the EPO decision T 331/87, in which the skilled person must be able to recognise directly and unambiguously, that: 1. the feature is not explained as essential in the original disclosure; 2. it is not, as such, indispensable for the function of the invention in light of the technical problem is serves to solve; and 3. the replacement or removal requires no real modification of other features to compensate for the change. The applicant referred to various places in the description in support of an argument that the feature was not essential, but the hearing officer considered that the test was to determine JULY-AUGUST 2019
IPO • EPO
what the application as a whole taught the skilled person, and an argument based on a few paragraphs in the context of a very long specification, which needed to be understood in a very particular way, was not persuasive. The paragraphs referred to did not contain a clear and explicit statement that the feature was only preferable and lacked an explicit reference to an embodiment where the feature was not present. While it could be obvious to the skilled reader that an embodiment could be envisaged
Patent Case Law Seminars 2019 London • Thursday 31 October Edinburgh • Thursday 7 November Manchester • Wednesday 20 November Bristol • Thursday 28 November
without the feature, this was not the same as saying that such a combination was implicitly disclosed, given that the test for added matter was a strict one. The hearing officer concluded that the application disclosed subject matter not disclosed in the earlier application, and its filing date could not be treated as the date of filing as the earlier application. The applicant was offered an opportunity to put forward amendments to overcome the added matter objection prior to the end of the compliance period.
The CIPA Patent Case Law Tour is returning for 2019. For more details visit: www.cipa.org.uk/whats-on/events CPD: 3.5; Prices: £234 (members £156) The tour will focus on patent decisions from the UK and US courts and the EPO Boards of Appeal in 2019.
EPO decisions Undisclosed disclaimers and priority / Articles 123(2) and 87(1) EPC T0437/14: Complexes of form L2IrX / The Trustees of Princeton University, The University of Southern California TBA decision of 12 March 2019 Chair: W. Sieber Members: A. Veronese and F. Blumer During the appeal hearing before the TBA, the patent proprietors had applied to amend their main request to include two disclaimers excluding: (i) compounds of a given Markush formula; and (ii) a single compound of a given structure. The TBA decided that both disclaimers were undisclosed disclaimers as defined in G1/03 as neither the subject-matter excised nor the disclaimers themselves were disclosed in the application as filed, they did not remove more than was necessary, were
not relevant for inventive step, and were included to exclude novelty destroying “accidental anticipations” within the prior art. However, the TBA questioned whether the “gold standard” for disclosed disclaimers provided for in G2/10 was applicable to undisclosed disclaimers and referred various questions to the Enlarged Board of Appeal (EBA). The EBA answered these questions in G1/16, finding that the allowability of a claim amendment for an undisclosed disclaimer was governed exclusively by the criteria set out in G1/03. In the continuation of the appeal the TBA, therefore, found the undisclosed disclaimers allowable as their addition did not add matter. The TBA then went on to consider a poisonous divisional attack on the basis that the inclusion of the undisclosed disclaimers meant the patent in suit was no longer entitled to priority. Following the decision in G1/03, as an acceptable undisclosed disclaimer does not provide a technical contribution, its inclusion does not change the identity of the invention and therefore the right to claim priority. On that basis, the two acceptable undisclosed disclaimers did not affect the right to the claimed priority date and the anticipation attack failed. The TBA therefore remitted the case to the OD for further determination.
Legal Board of Appeal (LBA) and Technical Board of Appeal (TBA) decisions are available on the EPO website at https://www.epo.org/law-practice/case-law-appeals/recent.html and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from https://www.epo.org/law-practice/case-law-appeals/eba/number.html. A list of the matters pending before the Enlarged Board is included at https://www.epo.org/law-practice/case-law-appeals/eba/pending.html. Recent notices and press releases of the EPO are published at http://www.epo.org/service-support/updates.html and http://www.epo.org/news-issues/press/releases.html respectively, and recent issues of the Official Journal can be downloaded from https://www.epo.org/law-practice/legal-texts/official-journal.html. This month’s contributors from Bristows are Gemma Barrett and Adrian Chew
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Trade marks Decisions of the GC and CJ
Application (and where applicable, earlier mark)
GC T-558/18 Victor Lupu v EUIPO; Et Djili Soy Dzhihangir Ibryam 30 April 2019 Reg 207/2009 Reported by: Louise O’Hara – sunflower and pumpkin seeds; dried and boiled fruits and vegetable extracts; (29) – agriculture, horticulture, forestry products and cereals; nutrients for animals (31)
Comment The GC upheld the BoA’s finding that Mr Lupu’s appeal had no basis as the mark upon which he relied had been found invalid in a final decision of the Romanian High Court of Justice. Mr Lupu opposed the application under articles 8(1) (a) and (b). He had not put forward any relative grounds for refusal in the required time period and could not claim an extension of time to file his opposition. Mr Lupu submitted that proceedings should not have resumed until the grounds for the annulment were published by the Romanian High Court of Justice. He also submitted that the BoA proceedings should have remained suspended until he had had an opportunity to appeal the national decision before the European Court of Human Rights. Both of these submissions were rejected on the basis that they did not affect the validity of the mark upon which Mr Lupu relied, nor could they call into question the reasoning or conclusion of the BoA.
DJILI – meat; fish; dried and cooked fruits and vegetables (29) – agricultural, horticultural and forestry products and grains; living animals (31) – beers, fruit drinks and fruit juices (32) (Romanian mark)
The reported cases marked * can be found at http://www.bailii.org and the CJ and GC decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/hom Abbreviations used: A-G = Advocate General; BoA = Board of Appeal; GC = General Court; CJ = Court of Justice of the EU; CTM = Community Trade Mark; EUIPO = European Union Intellectual Property Office; EUTM = European Union Trade Mark; IPEC = Intellectual Property Enterprise Court; PDO = Protected designation of origin; PGI = Protected geographical indication This month’s contributors are Katharine Stephens and Tom Pugh at Bird & Bird LLP.
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Application (and where applicable, earlier mark)
NEYMAR – Clothing, footwear, headgear (25)
In an appeal to an application for a declaration of invalidity under article 52(1)(b), the GC upheld the BoA’s decision that the applicant was acting in bad faith when he filed the application for the contested mark. The GC confirmed that the application was filed deliberately with the purpose of creating an association with the intervener’s name (the intervener being the Brazilian professional football player, Neymar) in order to benefit from its attractive force, even though it was not protected as a trade mark at the relevant date. The GC rejected the submission that the application was mere coincidence and dismissed the action in its entirety.
T-795/17 Carlos Moreira v EUIPO; Neymar Da Silva Santos Júnior 14 May 2019 Reg 207/2009 Reported by: Daniel Anti GC T-152/18 T-153/18 T-154/18 T-155/18 Sona Nutrition Ltd v EUIPO; Solgar Holdings, Inc. 7 May 2019 Reg 207/2009
Reported by: Adeena Wells
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[submitted as separate applications but joined for the purposes of the GC judgment] – vitamins; dietetic substances; food for babies; pharmaceutical preparations; herbal preparations; all for human use (5)
The GC annulled the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b). The GC confirmed the BoA’s finding that the mark MULTIPLUS was non-distinctive as it comprised MULTI and PLUS, which were non-distinctive elements in themselves. The GC also held that the BoA was fully entitled to find that MULTIPLUS designated the goods at issue, being multivitamins and multi-mineral supplements. Further, the GC accepted that the BoA had been entitled to consider that the earlier mark had a very low distinctive character, but what the BoA was not entitled to do was say that MULTIPLUS was totally devoid of distinctive character in the marks applied for. Such a finding was not compatible with the coexistence of EU and national trade marks on the register. In light of the BoA’s error, its reasoning had been marred and therefore the GC annulled its decision.
MULTIPLUS – vitamins, minerals, nutritional supplements, dietetic products and tonics (5) (Irish mark)
Ref no. GC T-7/17 John Mills Ltd v EUIPO; Jerome Alexander Consulting Corp 15 October 2018 Reg 207/2009
Application (and where applicable, earlier mark)
MINERAL MAGIC – hair lotions; soaps; perfumery; cosmetics (3) (EUTM mark)
The GC annulled the BoA’s decision that JACC’s agent, JML, had applied for a trade mark in its own name without JACC’s consent under article 8(3). Having found that JML was JACC’s agent under a distribution agreement, the BoA upheld the opposition under article 8(3) on the basis that the signs at issue were similar, the goods were both identical and highly similar, and there was a likelihood of confusion on the part of the public. However, the GC found that the BoA erred in their interpretation, and application, of article 8(3). The GC held that article 8(3) applies only where the proprietor’s mark and the mark applied for by their agent or representative are identical and not merely similar. When considering identity, the GC affirmed that the test was whether a sign reproduces, without any modification or addition, all the elements constituting the earlier trade mark or where, viewed as a whole, it contains differences so insignificant they may go unnoticed by the average consumer. Given that the signs were similar and not identical, the GC annulled the BoA’s decision.
MAGIC MINERALS BY JEROME ALEXANDER – face powder featuring mineral enhancements (3) (US mark)
Reported by: Robert Milligan
GC T-423/18 Fissler GmbH v EUIPO 7 May 2019 Reg 207/2009 Reported by: Megan Curzon
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VITA – food processors, electric; related parts and accessories (7) – pressure cookers, electric; related parts and accessories (11) – household or kitchen utensils and containers; cooking pot sets; pressure cookers, non-electric; parts and accessories (21)
The GC annulled the BoA’s decision that the mark was descriptive and devoid of distinctive character in accordance with articles 7(1)(b) and (c). The mark was capable of being recognised by Swedishspeaking consumers as meaning “white”. Whilst the mark had various meanings in a number of languages, when considering descriptiveness, it was sufficient that one of the mark’s possible meanings was descriptive. Nevertheless, the BoA erred in its finding that the mark was descriptive, as the colour white was not an intrinsic characteristic of the goods. The BoA was incorrect in determining that the mark was a statement of fact and therefore lacked distinctive character. The GC found that consumers would understand the mark to be an indication of origin as it would be affixed to goods of any colour, not just to those which were white.
What constitutes bad faith and how can it be established? Koton Mağazacilik Tekstil Sanayi ve Ticaret AȘ v EUIPO; Joaquín Nadal Esteban A-G Kokott; C-104/18 P; 4 April 2019
A-G Kokott advised that dividing an application for registration of a trade mark into a part filed in bad faith and a part filed in good faith is inadvisable, as it would offer an applicant an incentive to apply to register trade marks for a larger set of goods and services than was justified by the actual intended uses. Louise O’Hara reports.
Background In response to Mr Esteban seeking to register the mark shown below in classes 25, 35 and 39, Koton filed a notice of opposition relying upon its earlier mark (also shown below) registered in classes 25 and 35. Mr Esteban was granted a trade mark registration in respect of class 39 only. Koton then filed an unsuccessful application for a declaration that the trade mark was invalid by reason of bad faith in accordance with article 52(1)(b), followed by an unsuccessful appeal to the BoA and an unsuccessful appeal to the GC. Mark applied for
BoA and GC decisions The BoA held that bad faith on the part of an applicant within the meaning of article 52(1)(b) presupposed that a third party was using an identical sign or similar sign for an identical or similar product or service. Consequently, Mr Esteban had not acted in bad faith because the contested mark was registered for services dissimilar to those designated by Koton’s earlier marks. Whilst the GC took other factors into account, it ruled that the BoA was fully entitled to come to such a conclusion. The A-G noted that this gave rise to a contradiction in the grounds of the judgment under appeal. The A-G opined that the GC’s decision should be vitiated. It was necessary to take into account all the relevant factors when determining whether an applicant had acted in bad faith. The use of an identical or similar sign for identical or similar products or services was only one of those factors. The A-G explained that the need to take into account all the relevant factors is an inevitable consequence of the subjective 34 CIPA JOURNAL
nature of bad faith. She also identified a number of situations where an applicant would be acting in bad faith, which do not require any overlap with an already existing application, such as where an applicant files an application with the sole aim of preventing an imminent trade mark application by another (‘trade mark squatting’). This part of the GC’s decision should, the A-G suggested, be vitiated.
The additional factor identified by EUIPO The EUIPO based its appeal on an additional factor not taken into account by the GC. It claimed that Mr Esteban’s initial application to register the trade mark in respect of goods and services in classes 25 and 35 was pertinent to the determination of whether he had acted in bad faith. It was only on account of the successful opposition from Koton that there was no overlap in the goods and services covered by the two marks. The A-G considered whether this argument was admissible given that it had not been expressly raised by Koton either before the GC or in its appeal. Article 174 of the Rules of Procedure, read with article 178(1) and (3), indicates that the reply may not seek the annulment of the judgment under appeal on the basis of distinct and independent grounds from those raised in the appeal; these should be raised as part of a cross appeal. On a strict reading, therefore, the argument would be inadmissible. However, the A-G indicated that such a reading would be too strict. The original overlap between the goods and services applied for was before the GC and the CJ as part of the undisputed facts of the case and was therefore part of the subject-matter of the proceedings before the GC and the CJ and must be taken into account in examining bad faith. The GC therefore failed to take into account one factor in examining bad faith. In this regard, Koton and the EUIPO submitted that it was not possible to divide the application for registration for the purposes of assessing bad faith such that only one part was considered to have been filed in bad faith whilst the other part was not. Article 52(3) suggested such divisibility was possible. Nevertheless, the A-G suggested that, unlike some other grounds for validity, bad faith was not an inherent defect in the trade mark itself, but stemmed from the circumstance in which it was applied for. Where there were defects in the trade mark it was possible that these only applied to certain goods and services, but it was far more difficult to draw that distinction when it came to the intention of the applicant. The A-G warned that allowing such a division would incentivise applicants to apply to register trade marks for a larger set of goods and services than was justified by their intended activities given there would be no fear of disadvantage for the trade mark actually used if bad faith were discovered. Ultimately, however, the A-G did not think there was any need to make a definitive finding on this point given Mr Esteban knew or should have known that the identical or similar trade mark existed at the time of making the application, which was a further indication that the application to register the mark was made in bad faith. www.cipa.org.uk
The A-G then indicated that it was for Mr Esteban to allay doubts as to whether the application was filed in good faith. The judgment under appeal contained no indication that Mr Esteban was given an opportunity to present and have his purpose assessed behind pursuing the application. As a result, not all the relevant factors for possible bad faith were taken into account in the judgment under appeal and the A-G concluded that it should be set aside. The A-G advised that the decision of the BoA should be annulled without referring the case back to the GC. She did not consider it appropriate that the trade mark at issue should be declared invalid as this was a decision for the EUIPO.
Cyber-squatting alone is not passing off Media Agency Group Limited & Transport Media Limited v Space Media Agency Limited and Ors* Floyd LJ,  EWCA Civ 712, 12 March 2019
The Court of Appeal found that cyber-squatting (the act of registering well-known trade marks as domains in the attempt to sell them later for profit) by itself does not amount to passing off. The requirements for passing off (i.e. goodwill, misrepresentation and damage) still need to be satisfied. Tom Hooper reports.
were Space Media Agency Limited (SMA) and two individuals, Mr Shafiq and Mr Buksh, who between them owned all of the shares in SMA. Importantly, Mr Shafiq was once employed by MAG as a consultant. Shortly after Mr Shafiq left his position, SMA was incorporated and began to trade as an advertising agency under the name Transport Media Agency. The second defendant, Mr Buksh, had acquired the domain names www.transportmediaagency.co.uk and www.trackaccountableadvertising.com, among others. The claimant issued proceedings against SMA, Mr Shafiq and Mr Buksh alleging passing off on the basis of their unregistered rights in TRANSPORT MEDIA AGENCY and TRACCOUNTABLE. Mr Buksh admitted cyber-squatting. In the first instance decision, the judge following British Telecommunications v One In A Million ( 1 WLR 903) found that the claimant owned sufficient goodwill in the names TRANSPORT MEDIA and TRACCOUNTABLE and that by registering the domains names www.transportmediaagency.co.uk and www.trackaccountableadvertising.com that amounted to misrepresentation and damage (or likelihood thereof), and an actionable passing off. The defendants confirmed, prior to the hearing, that they were no longer using the name TRANSPORT MEDIA or the associated domain name as that line of business had been unsuccessful. TRACCOUNTABLE remained of interest, however. One of the defendants, Mr Buksh, appealed the decision to the Court of Appeal.
The first claimant and respondent in the appeal, Media Agency Group Limited (MAG), carried on business as an advertising agency. At the date of its incorporation, its name was Transport Media Limited. The second claimant and respondent, Transport Media Limited (TML), was a dormant company since incorporation. On 19 February 2013, the two claimants swapped names to the names which they currently hold. The defendants
The first ground of appeal was based on the fact that it was TML that had acquired goodwill in the name, not MAG. That was easily dismissed because both claimants had raised the claim as to the ownership of goodwill. The second ground of appeal alleged that both the trading name TRANSPORT MEDIA and the domain www.transportmediaagency.co.uk were descriptive and so could be used freely by the defendants. Floyd LJ found that the defendants
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had not been using the sign in an “ordinary descriptive sense” but as a means of attracting business and custom. In addition, whilst intention to pass off was not a component in the cause of action, it was plainly clear that it existed. The third ground of appeal was successful. It was clear from the evidence that the trading name TRACCOUNTABLE had never been publicly used by the claimants. As a result of the lack of use, it was not possible for the claimants to have the requisite goodwill to succeed in the claim for passing off. The first instance judge decided this point incorrectly based on the knowledge of one of the defendants (being an ex-consultant) and the admission in respect of cyber-squatting. He also wrongly took the defendants’ response to the particulars of claim as an implied admission. Floyd LJ, giving judgment for the court, held that, even if the domains had been registered for cyber-squatting purposes or as an instrument for fraud, the requirements of passing off still needed to be satisfied. As the TRACCOUNTABLE mark had not been used by the claimants, they could not have acquired goodwill in the name for a passing off action to succeed.
Average consumer test Gap (ITM) Inc v Gap 360 Ltd* Carr J;  EWHC 1161 (Ch); 10 May 2019
The hearing officer found that the there was a likelihood of consumers being confused into believing that services in classes 35 and 39 provided by Gap 360 were those of Gap (ITM) or a linked undertaking, but that there was no such likelihood of confusion in relation to services in classes 36 and 41. This decision was based on the hearing officer’s conclusions that the word “gap”: 1. had a low level of distinctiveness when used in context of services related to “gap travel” in classes 36 and 41 and that the similarity between the marks was outweighed by the difference created by the presence of the 360 element in Gaps 360’s mark; and 2. when used on services in classes 35 and 39 which did not have the limitation, was not directly or indirectly descriptive of the services and had an average level of inherent distinctiveness and there was a risk of confusion. In coming to this decision, the hearing officer considered the understanding of the words “gap”, “gap year” and “gap travel” by the majority of average consumers. He did not deal with the understanding of the minority. Gap (ITM) appealed against the rejection of its opposition in relation to classes 36 and 41. Gap 360 cross-appealed against the decision to allow the opposition in relation to classes 35 and 39.
Decision on appeal Carr J held that, while a majority of average consumers would recognise terms relating to “gap year” as being descriptive in the context of travel, a significant proportion of consumers would have no, or no uniform, understanding of the word “gap” when used in context of travel. Mark Day reports.
Facts The well-known clothes retailer Gap (ITM) opposed the application for the word mark GAP 360 in respect of various services in classes 35, 36, 39 and 41 in the name of Gap 360, a company providing gap year opportunities. Gap (ITM) was the proprietor of various EUTMs registered in respect of the word mark GAP in the same classes. The services identified in the specifications of the application and the earlier marks were generally connected with travel, with the hearing officer finding that the respective specifications were “identical for the most part, with only minor exceptions”.
Summary of earlier decision under section 5(2) In the original hearing, Gap 360 was permitted by the hearing officer to amend the specification in respect of the class 36 and 41 services to add the limitation “all relating to gap travel”. The amendment was not made in relation to the class 35 and 39 specifications. 36 CIPA JOURNAL
The judge noted that this appeal was unusual because both sides identified and relied upon the same error of principle in the decision of the hearing officer. The specifications of the earlier marks were broader than those of the application; the earlier marks covered a super-set, which notionally included the words of the limitation “all relating to gap travel”. The Judge stated that, as the hearing officer had correctly concluded that Gap (ITM)’s specifications were unlimited and therefore covered services relating to “gap travel”, the same decision should have been reached in relation all classes. The Judge was of the view that the limitation “all relating to gap travel” lacked clarity and precision and created an unacceptable level of uncertainty regarding the scope of the protection given by the application. Further, the judge held that Gap 360 could withdraw the limitation, but that would be the same as ignoring it when considering the likelihood of confusion. The Judge held that, while he accepted that a significant proportion of average consumers would understand the term “gap year”, a significant proportion of consumers would have no or no uniform understanding of the word “gap” when used in the context of travel, nor of the expression “gap travel”. Accordingly, a significant proportion of average consumers would not consider that “gap” was descriptive of travel and would likely be confused. The appeal was therefore allowed and the cross-appeal dismissed. www.cipa.org.uk
Evidence required to prove honest concurrent use Manpower Direct (UK) Ltd v Manpower Group Inc* Birss J;  EWHC 849 (Ch); 11 April 2019
Birss J agreed with the hearing officer’s assessment that evidence of use over a long period of time is not sufficient to show honest concurrent use. The evidence provided must be sufficient to prove that the relevant consumers had been exposed to the two sets of trade marks to an extent sufficient for them to distinguish between the marks. Justin Bukspan reports.
Facts This appeal concerned the decision of the IPO to uphold an opposition by recruitment company Manpower Group Inc (MPI). MPI opposed an application by Manpower Direct (UK) Ltd (MDUK) for marks containing MANPOWER in classes 37 (installation of security equipment) and 45 (security services) based on the reputation of its MANPOWER word marks in class 35 (for temporary and permanent recruitment services). MPI was a recruitment company that had been supplying temporary and permanent staff in the UK since 1956. MPI owned EU and UK trade marks for the word mark MANPOWER in class 35 covering employment and temporary recruitment services. MDUK, a smaller business, had been providing security services in the UK since 2003, and had applied to register, as UK trade marks, a series of logos and word marks with MANPOWER as the dominant word component in classes 37 and 45 covering the installation of security equipment and the provision of security services. MPI successfully opposed those applications under section 5(3) on the basis of its reputation in the word MANPOWER. Both parties appealed. Does every single service listed in an application need to be reviewed in detail when assessing whether the average consumer will establish a link between the marks? Birss J agreed that some of the evidence of actual confusion provided by MPI covered only the services actually provided by MPI, not all of those covered by the specification. The hearing officer did not go through all the other individual services listed. The Judge found that the hearing officer had effectively reviewed best case scenarios for both parties and that the services that had not been reviewed in detail were not so different from the ones reviewed. In any case the hearing officer had treated the evidence of confusion in respect of some of the services as only “supportive” of the argument that a link could be made, and not actually indispensable to establishing that link. On that basis, the Judge concluded that the hearing officer had been entitled to infer that such a link could be made in relation to all the services listed, without having to review each and every one of them in detail. Volume 48, number 7-8
The methodology used to evaluate the similarity of the marks In assessing the hearing officer’s methodology of the evaluation of the similarity of the marks, Birss J underlined that a hearing officer can take into account the acquired distinctiveness of a senior mark to evaluate whether both marks are sufficiently similar for an average consumer to establish a link at any stage in their assessment. The Judge agreed with the hearing officer’s decision that the fact that the security services provided by MDUK required a licence and the services offered by MPI did not was not relevant to the comparison of the services. Birss J further held that the fact that the hearing officer did not address whether the parties’ services were addressed to overlapping customers did not undermine her decision; the customers of both parties clearly overlapped. Finally, the Judge confirmed the hearing officer’s observation that MDUK had done little to alleviate the possible confusion. The evidence provided showed that MDUK had clearly used MANPOWER as a word alone, without the rest of the stylisation or additional words as found in some in the applications. That was relevant for the hearing officer’s assessment. The lack of due cause does not have to be explicitly addressed MDUK’s second main ground of appeal was that the hearing officer should have separately addressed whether MDUK had due cause to use the marks. The Judge pointed out that Counsel for MDUK had not explicitly raised that point earlier. He also pointed out that while lack of due case was indeed a statutory requirement, it did not have to be analysed if it naturally derived from the other findings (see Jack Wills v House of Fraser  EWHC 110 (Ch) where Arnold J did not expressly discuss due cause before finding that there had been unfair advantage). Evidence of use over a long period of time does not automatically demonstrate honest concurrent use MPI provided evidence of use in the shape of tenders and contracts since 2003 and awards from the Sunday Times in 2008. However, the hearing officer found there was no evidence to show the extent to which those contracts had actually been fulfilled, nor other evidence like turnover figures, marketing expenditure or market share. The Judge agreed that the evidence provided was insufficient to prove that the relevant consumers had been exposed to the two sets of trade marks to an extent sufficient for them to distinguish between the marks. The hearing officer’s failure to take into account the specialised nature of MDUK’s services, its long client list and the size of its staff (200) were not sufficient to change that. MDUK’s appeal was therefore rejected. Outcome likely to be different without MPI’s reputation Birss J provided useful commentary on the circumstances of this appeal at the end of his judgment. He stated that without the very substantial reputation of MPI as shown, the outcome of the appeal would likely have been very different. He further stated that had the stylised and other word elements of MDUK’s marks been more distinctive, then the outcome may have been different. JULY-AUGUST 2019
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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
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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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
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 email@example.com 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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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
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 firstname.lastname@example.org.
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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
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 email@example.com for more information.
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Scotland Meeting CIPA Scotland Meeting, Thursday 16 May 2019, Glasgow. Julia Florence, CIPA President, chaired the meeting.
e were welcomed by Julia Florence, President of CIPA, who also brought us up-to-date with several CIPA initiatives. First, CIPA is reinvigorating support for the professional examinations and indeed have had a very good response to a request from members for support for the Education Committee (thank you and please be patient if you have not heard back yet). Secondly, CIPA is working with CITMA and others to strengthen our voice re representation at the EUIPO post-Brexit. Thirdly, the IP Paralegal membership category has been set up to provide training and social events. Fourthly, CIPA, CITMA and IPReg have taken guidance from counsel re the money laundering regulations with a view to providing guidance to members as to when these do or do not affect our work (which appears to be that these do not affect the case work of filing and prosecuting IP but comes into play for transactions, e.g. a business sale – but do watch this space for the guidance in due course).
ADR / Mediation in IP His Honour Judge Michael Fysh, gave a very amusing talk on ADR / mediation in IP, championing this not-often-usedenough alternative to litigation, as litigation can be frighteningly costly. He reminded us of the less than serious quote: ‘better that a man should lose his family to influenza than be involved in patent litigation’. He explained the development of mediation by Professor Dame Hazel Genn and his conversion to the benefits of it several decades ago. He explained as follows: A trial results in a judgment, a winner and loser (as does arbitration, a form of private trial). In mediation, by contrast, there is no winner and it is secret. Parties meet with a mediator in a suite of rooms, the mediator introduces the matter (based on written submissions) then each party gets their case ‘out there’ for 15 minutes – then they separate and the mediator ‘shuttles’ between them, listening and making suggestions. Typically, a heads of agreement is circulated, signed (usually within the day, presumably subject to contract) and turned into a full legal contract quickly. Remarkably, it works very well, very often and mediation pre-trial is now encouraged and indeed can be a requirement in case management orders and at case conferences in some jurisdictions. Advantages include far reduced cost, less hassle, no appeals, can deal with international disputes and subsidiary disputes, fast, avoid loss of face, win-win, can catalyse new commercial relationships, and secret. But mediation is no use for setting commercial precedent, interlocutory injunctions, summary judgment or revocation. Training in mediation is available at CEDR (civil law style) in London and WIPO in Geneva (Continental law style). As 42 CIPA JOURNAL
Judge Fysh explained ‘a bad agreement is usually better than a bad judgment’.
Accelerated Processing at the IPO Next, Charles Jarman from the UK IPO brought us up-to-date with accelerated processing at the IPO. Combined search and exam (CSE) is not accelerating as such but useful if considering filing overseas. The CSE usually arrives within six months. Acceleration of Search, Exam or CSE is available upon written request if there is a case-specific reason (accelerated publication is available on written request). If you get grant very early, the IPO will look for section 2(3) art at around 20 months and you may then need a post-grant amendment. Green Channel is available for ‘green’ or environment friendly technology. The PCT(UK) Fast Track was introduced in 2010 and is available to PCT applications entering the UK if claims have been found to be acceptable in the IPRP or WO from the ISA or IPEA (the request must be received before the UK exam starts). The UK has 27 PPH (patent prosecution highway) agreements (25 via Global PPH plus China and Brazil). This is work sharing not rubber stamping. Since PCT PPH was introduced, this can be based on positive PCT work products rather than ‘national’ work products. Some countries still apply the original MOTTAINAI type restrictions around priority and order of filing [MOTTAINAI means a sense of regret at not using resources wisely and was the name given to one of the first initiatives to share work products]. The Global PPH was launched in 2014 but does not yet include CN and EPO. Under PPH there is no need to provide a reason and there are typically reduced rounds with the examiner and reduced pendency to first action/grant. There were 192 requests at the IPO in 2018 but numbers between the IP5 are much higher (e.g. over 10,000 from the USPTO to the JPO and over 20,000 from the JPO to the USPTO). Charles’ tips include using the PPH Request Form and Checklist and if requesting acceleration put at the top of the letter ‘URGENT – ACCELERATED PROCESSING REQUESTED’, else the request may be missed!
Recent Developments at the EPO Next, Chris Mercer, of CIPA Council, provided a smorgasbord of EPO updates touching on the reorganisation into three Directorate Generals (DGs) and the Boards of Appeal (BoA). My favourite DG is the M and Ms (Mechanics and Mechatronics) otherwise know as the ‘chocolates’, the others being Healthcare Biotech and Chemistry (HBC) and Information and Communication Technology (ICT). There has been a large www.cipa.org.uk
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increase in grants (127,625 in 2019) without a commensurate increase in oppositions – do these facts imply anything re quality? There is a potential proposal to provide a search and preliminary examination within a week. Re credit card payments – it is the date the EPO receives the money that counts so be careful, there can be a delay. Early payment of the third year renewal fee is now possible. Chris reminded us about the safeguards under rule 134(1) EPC in the event of unavailability of electronic communications attributable to the EPO (Author: see Notice dated 18 January 2018). Rule 126(1) EPC re postal receipts no longer being issued will come into force on 1 November 2019. Rule 154 EPC brings in stricter time limits for paying epi subscriptions – be aware and tell your accounts departments. The new rules of procedure of the Boards of Appeal are coming into force 1 January 2020 and these are quite tough – make sure everything you do now meets these new rules, e.g. that every possible auxiliary request, comment and document is introduced as early as possible, e.g. before the Exam Division, as not everything filed with the Appeal form will be allowed in! Finally, Chris cantered through some recent referrals to the EBA. •
G1/18 re refunds of the appeal fee – if the fee is filed late, is the appeal not filed and the fee refundable, or is the appeal inadmissible and the fee non-refundable – it seems this decision will apply to other fees such as exam and opposition fees. G1/19 deals with questions of computer-implemented simulations. G2/19 deals with the question of right to oral proceedings in appeal proceedings for third party observers not party to the original proceedings. Question 3 expands on the thorny
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geographical question of: ‘is the Haar (where the BoA are now located) in Munich, and so EPC compliant, or not?’ G3/19 is stir fry of broccoli and tomatoes asking: ‘are plants made by essentially biological methods patentable?’ And raises the question: can the rules clarify the articles without this clarification a priori being limited by a BoA/ EBA decision? Again, this has broader implications and is perhaps brought on by the difficulty in organising a diplomatic conference to amend the articles. G4*/19 (T0318/14) (*the G- reference was not at the time of writing formally numbered) deals with questions of double patenting, which is not mentioned in the EPC.
Tax Incentives in Relation to IP Next, Anna Dempsey, of Mazars LLP, discussed tax incentives in relation to IP covering capital allowances, patent box and R&D tax credits. R&D tax credits are vastly underutilised and can be justified if the activities represent: 1. An advance in science or technology. 2. Resolving a scientific or technological uncertainty. 3. That is not readily deducible by a competent professional. Providing a narrative outlining the background to these three steps will help provide a robust submission to HMRC, but inquiries by HMRC are, in any case, rare. These do not need to be world firsts. Anything that was a problem resulting in a ‘scratchy head moment’ – how do we do/solve that – could be eligible. Consult a tax expert for further information. Julia thanked our excellent speakers warmly and invited attendees to head barwards – which we were very happy to do. Dr Kate Macdonald (Fellow), Capella IP Ltd
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IP Outside your Comfort Zone: Trade Marks Report on CIPA’s webinar on Trade Marks, 18 April 2019
n 18 April, Sophie Maughan of Cleveland Scott York gave an impressive and comprehensive webinar on trade marks, as part of CIPA’s “IP Outside your Comfort Zone” series. In the first section of the webinar, Sophie emphasized the role of trade marks as “badges of origin” and summarized the types of marks that can be protected: including, besides words, phrases, letters, numerals and logos, non-traditional marks such as packaging, shapes, sounds, colours, and “position marks”. Sophie provided helpful examples of non-traditional marks, for instance the colour red on the sole of a Christian Louboutin shoe (position mark). Recent changes in the law dispense with the requirement for a graphical representation, as long as the mark can be represented on the register in a manner which enables the clear and precise subject-matter of the protection to be determined. In the first of many commercially-minded tips, Sophie emphasized that trade mark protection – especially for non-traditional marks – can be a worthwhile avenue for protecting some innovations without limitation in time. Next, Sophie discussed the requirements for registration, recalling that – in the absence of evidence that distinctiveness has been acquired through use – a mark is unregistrable if it is devoid of distinctive character, or if it may serve in the trade to designate a characteristic of the goods/services, or if it consists exclusively of a sign that is customarily used in the relevant trade. Marks are also unregistrable if they consist solely of features (shape or other characteristics) that result from the nature of the goods, which are necessary to obtain a technical effect or which give substantial value. In addition to these absolute grounds for refusal of registration, there are also relative grounds for refusal, in cases where the candidate mark for registration is: the same as a mark registered earlier for the same goods, or the same as/similar to an earlier mark that has been registered for the same/similar goods and there is a likelihood of confusion, or the same as/similar to an existing registration that has a reputation (in a case where use of the candidate mark would take unfair advantage of or be detrimental to the distinctive character/repute of the earlier mark). Sophie also outlined the process for registration, and reasons why it can be beneficial to register a trade mark. She then moved on to summarize the essential elements of the common law cause of action “passing off ”, i.e. the existence of goodwill in the unregistered trade mark/get-up that has been copied, a misrepresentation made as to trade origin, and damage to the beneficiary of the goodwill. The reference decision is the Jif lemon case. Outside the UK, legal action may be based on unfair competition law.
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During the webinar, and in answer to questions, Sophie dealt with the issue of Brexit in relation to EU trade marks. Up until exit day, EU trade marks will continue to cover the UK as well as the 27 other EU states. At exit day, owners of registered EU trade marks will automatically obtain corresponding UK national rights (and may like to start planning how to cater for these automatically-created rights in their docketing systems). Owners of EU trade mark applications, which are pending at exit day, will have nine months in which to apply for UK rights. Sophie flagged up the useful tips available on the CIPA website and in the Journal in regard to Brexit planning. The interplay between trade marks and other forms of IP protection, notably designs and copyright, were then discussed. Astutely, Sophie proposed various situations where design registration could be a useful alternative to trade mark registration: e.g. when the mark is a 2D image that may fail the trade mark requirement for distinctive character, when the client has multiple variants for packaging but does not yet know which one will be marketed, when it is not yet clear upon which goods a logo will be applied, or when time to registration is critical (an EU design registration may be obtained in a matter of days). Overlap between copyright and trade marks is more likely to arise in the case of music or logos, as word marks are generally too short to acquire copyright. Sophie stressed the importance of ensuring assignment of copyright in a case where a designer is commissioned to produce a logo. The issues that had been explained were then illustrated by discussion of decided cases, including: the (so-far) unsuccessful attempt to register the shape of Kit-kat® as a shape mark, Toblerone’s success in forcing Poundland to change the shape and packaging of their “Twin Peaks” product (which might not be decided the same way today, given that consumers are more savvy in regard to copy-cat products), and Gama Healthcare’s unsuccessful action against PAL International in regard to packaging for wipes. Sophie’s presentation was interesting and informative, and also demonstrated a striking focus on how to obtain outcomes that satisfy the client’s commercial needs. Well worth the listen! Y. Suzanne Orian (Fellow)
The next IP Outside your Comfort webinar is on Patent Searching on 19 November 2019, see more details online.
IP Inclusive update By Andrea Brewster OBE
’m focusing this month on some of the great events we’ve already enjoyed and those that you’ve still time to sign up for. But before that, I’m delighted to announce that we have a brand-new networking and support community, IP Futures, especially for early career stage IP professionals. You can find out more on their web page at https://ipinclusive.org.uk/ community/ip-futures/ – including about their opening survey. Please encourage your junior colleagues to get involved. On 21 May our LGBT+ community IP Out organised a private viewing of Boy Erased, hosted by NBCUniversal. The film, on the dangers of so-called “conversion therapy”, played to a packed house and I gather was both moving and thought-provoking. On 3 June, our Women in IP community provided content for the CIPA/FICPI/AIPLA Diversity in IP Lunch, with guest speakers Carolyn Pepper (Chair of the Law Society’s IP Law Committee) and her intern Kacey Ibirogba sharing their thoughts on the business incentives for diversity and inclusion. Marks & Clerk hosted our 12 June panel discussion and workshop on socioeconomic mobility and recruiting without bias; we hope to publish the key outcomes from that event soon, in the form of a toolkit to help with recruitment and outreach activities. On 13 June, we heard from Nick Bloy of Wellbeing Republic, in a CIPAhosted webinar about the character traits that can make IP professionals vulnerable to mental health problems. The following day, our new South West chapter launched with an event hosted by Mewburn Ellis in Bristol, focusing on wellbeing in the workplace and with speakers from both the IPO and the
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charity Jonathan’s Voice. And on 26 and 27 June, we ran our pilot mental health first aid training course, hosted at CIPA HQ. We hope to work with CIPA to run versions of this successful event in other locations. The Women in IP community also laid on an ambitious programme of “Connected Bubbles” social events, which took place simultaneously on 27 June at eight different cocktail bars around the country. The three northern ones also marked the launch of our new North of England network. Huge thanks are due to the companies that organised and sponsored these events, which brought IP Inclusive supporters together to share some celebratory fizz and discuss quirky topics such as “Flexible working: where is the strangest place you’ve taken a work call?” Coming up later in the year (details of all of these on the Events page of our website): •
4 July, 12.30 pm – webinar on workplace dress codes and their impact on inclusivity, plus live viewing in Sheffield.
12 July, mid-day – “Picnic in the Park”, a South West network social gathering in Bristol. 12 July, 12.30 pm – webinar on disability-confident employers. 9 September, 12.30 pm – webinar on inclusivity for colleagues on the autism spectrum, plus live viewings in Sheffield and York. 19 September, 5.30 pm – post-CIPA Congress drinks reception, with a talk by Daniel Winterfeldt of the InterLaw Diversity Forum on “Allies and Intersectionality”. 24 September, 4 pm – seminar and workshop on social mobility and outreach schemes for the IP professions, with a keynote speech by Nicholas Cheffings, Chair of the PRIME initiative. 1 October, 12.30 pm – webinar on inclusive leadership. 11-17 November – IP INCLUSIVE WEEK. Over to you to organise some fantastic in-house events and activities to mark our second annual #ipinclusiveweek. We’re also hoping to run a webinar version of our January joint allies event, with live viewings around the country, so watch this space!
IP Inclusive is open to all IP professionals and those who work with them. For more information, visit our website, www.ipinclusive.org.uk; follow us on Twitter (@IPInclusive, @ip_out, @bameipinclusive, @WomeninIPI, @CareersInIdeas) or join one of our LinkedIn® groups. And if you’re interested in getting involved, please contact firstname.lastname@example.org To keep abreast of everything we’re doing, join our mailing list: there’s a “Stay in touch” form on the website.
Good news for IP professionals Dawn Ellmore Employment’s research reveals that UK intellectual property salaries are on the rise. to £9,000 more than in 2018, while those at partner and director level can also expect a significant increase. Partner level trade mark attorneys are on track to earn at least £3,500 more than last year, and qualified trade mark attorneys with up to four years’ experience are looking at an increase of around £5,000. Another striking increase in the report is for intellectual property managers with between four and seven years’ experience. They could be earning as much as £7,000 more than the top level of the range in 2018.”
recent survey conducted by Dawn Ellmore Employment highlights substantial increases for sought-after patent attorneys, trade mark attorneys and IP solicitors, as well as management, technical and support staff at all levels. Dawn Ellmore Employment compiles a salary guide every year to give information on pay ranges and benefits across the industry, and this has become an indispensable career guide for those wanting to make their move into these industries or people looking to make their next career move. Covering patent, trade
mark and solicitor roles from trainee to partner level, as well as a plethora of patent and trade mark support, business support and technical support roles, it gives a guide as to how much one could be expecting to earn in these positions this year. “Every year, the team at Dawn Ellmore compiles a salary guide, packed with information on salary ranges and benefits across the UK,” says Dawn Ellmore, Director at Dawn Ellmore Employment. “We’re pleased to announce that qualified patent attorneys with up to four years’ experience are earning up
Books for review We have review copies of intellectual property titles. If you are interested in reviewing a book for the CIPA Journal please let us know, email@example.com. Some of the titles we have include: •
Is Intellectual Property Pluralism Functional? (Edward Elgar), Edited by Susy Frankel, Victoria University of Wellington, New Zealand
3D Printing and Beyond (Edward Elgar), Edited by Dinusha Mendis, Mark Lemley and Matthew Rimmer
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Salaries are increasing across the industry, including management and support staff as well as trainee, newly qualified and fully qualified patent attorneys and intellectual property solicitors. Key findings include: •
A trainee patent attorney can expect a salary between £27,000 – £35,000 in 2019, an increase from £26,000 – £34,000 in 2018 A qualified trade mark attorney with between one and four years’ PQE will command a salary of up to £78,000 in 2019, increasing from the 2018 figure of £73,000 A records/formalities manager can earn up to £90,000 in London, compared to an upper figure of £80,000 in 2018
The full report covers the salary ranges for patent and trade mark attorneys and support staff, IP solicitors, IP litigation and business support staff, as well as technical support staff, and shows the differences by region and level. The Dawn Ellmore Employment 2019 Salary Survey can be seen in full at www.dawnellmore.co.uk/salary-survey www.cipa.org.uk
Letter to the Editor Remembering Vivien Irish Like other people of my age, when I receive the CIPA Journal, I turn to the obituaries to see who has departed. Last month, I was shocked to read of the death of Vivien Irish, who was my predecessor in the NRDC/BTG Patent Department. When Vivien left for a new venture in 1982, there was a recruitment embargo at NRDC, which was in process of merging with the National Enterprise Board to create the British Technology Group. Like other members of our dual-qualified profession, Vivien was a skilled engineer and her departure left a huge hole in the patent department’s technological expertise. By creative thinking, Steve Crespi, invited me to accept a succession of six-monthly part-time contracts to help bridge the gap, by taking over Vivien’s portfolio. I did not join the full-time staff, or sign the Official Secrets Act, until three years later. (I had had security clearance in all of my previous jobs.) Vivien was a prolific worker – she also served on committees of the Institution of Electrical Engineers (now the Institution of Engineering and Technology) but her skilled drafting of patent specifications made it easy for me to take over from her. I particularly remember the metrology inventions from the National Physical Laboratory. A couple of years ago, Dr Deborah Sewagudde, one of my PhD students, was appointed as IP Manager of NPL and invited me back there for a visit, so I was able to revisit the scene of the work I had acquired when I was attempting to perform the role of a virtual Vivien Irish. I was not aware that Vivien was four years younger than I, so her death has made me realise that I need to keep my nose to the grindstone because I have a four-year research programme to complete.
LETTERS • ANNOUNCEMENTS
Announcements Law firm CMS is pleased to announce two new partner appointments. Dr Rachel Free (Fellow) and Jane Evenson (Fellow) have been promoted to the partnership. See more at www.cms.law. Reddie & Grose LLP is pleased to announce that Robin Ellis (Fellow) has joined Reddie & Grose GmbH as a partner. He will be based in the firm’s Munich office. Testimonials on paths to qualification needed Calling all Fellows! We are looking for testimonials from our members regarding your individual paths to qualification. The intention is to compile them on the website to offer insight to our Student members. The submission can be up to 500 words and should include: • • •
How you to came to enter the profession. Insight into your own path to qualification. One or two things you wish you’d known as you trained.
Please send your submissions to firstname.lastname@example.org. Salary surveys Two new salary surveys have been released: • •
Fellows and Associates – www.fellowssurveyresults.com Dawn Ellmore Employment – www.dawnellmore.co.uk/salary-survey
You can see a short report of the Dawn Ellmore Employment survey on the facing page. In the next issue of the CIPA Journal, there will be a summary of the Fellows and Associates survey. Honorary QC award Honorary QC is an award unique to the legal profession, and is a dedicated opportunity to award those who have made a major contribution to, and significant impact on, the law of England and Wales and how it is advanced, outside the courtroom. The Ministry of Justice has launched the 2019/2020 Honorary QC competition and welcomes high-quality nominations to award those who have made a significant, positive impact either on the shape of the law of England and Wales, or on the profession. Examples of what these contributions may look like are: • • •
making an impact on the law by influencing legislation or case law; making a considerable impact on the legal profession as a whole; or making an impact through a standout achievement or through innovation.
Entries close on Tuesday 13 August. The following link sets out what the MoJ is looking for and how to nominate someone: www.gov.uk/government/news/ honorary-queens-counsel-nominations-deadline-tuesday-13-august-2019 Letters for the Editor and announcements should be sent to: email@example.com
Professor Roger Cullis (FIET, FInstP, Fellow) Volume 48, number 7-8
Peter Kolker 1936-2019
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).
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.
The Yellow Sheet
The Yellow Sheet July-August 2019
Honorary Secretary update Hello again, I hope everyone has been enjoying the summer! Once again it has been a busy month, and more are planned. We have seen the launch of IP Futures. This new community is for early career stage IP professionals, the Matthew Veale people who represent the future of the IP sector. It’s intended to offer networking and support for those who are not yet fully qualified or less than three years post-qualification, in all IP-related roles. If you’re interested in, or, want to be involved with, IP Futures please visit the website: https://ipinclusive.org.uk/community/ip-futures/ The Women’s World Cup isn’t the only big football event on the calendar, this year’s Informals five-aside Football Tournament will be taking place on Friday 26 July at the Powerleague pitches in Shoreditch. This year still has the rule
requiring one woman for each team on the pitch. There may still be time to sign up a last couple of teams. As a little teaser of events to come, CIPA Student Congress has been given the green light, I look forward to sharing more details with you all shortly. I also attended the CIPA West of England Meeting in Bristol, where there was a very interesting talk on the future of FemTech. It would be great to see more Informals attending these CIPA events. Following on from comments received at the New Students Day the Yellow Sheet is going to be replicated on the blog. As a quick heads up for next month, we will be looking for new Informals Council Members, I encourage you all to consider a role. Finally, there will be lots of summer socials happening all over, ask your Regional Sec’s. and even offer to help out! As usual we are always happy to hear your thoughts and ideas.
Yellow Sheet Editor It’s July! The sun has been out for about a day and a damp BBQ sits on my lawn waiting in earnest to be used! Many trainees, myself included, are off to JDD this month and preparations for foundation exams has well and truly begun! There are many Meg Booth social events happening over the summer so keep an eye on your inboxes for emails from your social secretaries. The social events are a good excuse for a revision break and to socialise with fellow trainees who may also be sitting exams. At the end of June, I attended the Women in IP ‘Connected Bubbles’ event in Cambridge hosted by Appleyard Lees and Mills & Reeve. The event was just one of eight happening across the UK at the same time as part of an ambitious networking event to encourage a safe, inclusive and light-hearted environment to network and make connections. The event was open to everyone within the IP profession and I attended with one of my best friends who is an IP Administrator. Have a lovely July!
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Equality & Diversity Secretary Further to the previous announcement of a new IP Inclusive community for early career IP professionals, IP Futures, we have now set up an initial Rachel Bell survey to inform our future work. The survey gathers some basic diversity data, including on social mobility, as a benchmark to help us track the progress of future generations of IP professionals. The survey also provides a chance for you to tell us what IP Futures can do for you. It’s totally anonymous, and you can skip any of the questions if you don’t feel comfortable answering them. The survey can be found via the IP Futures web page, or by this link: https://www.surveymonkey.co.uk/r/FD9D555. If you have any questions or would like to get involved with IP Futures, then please contact firstname.lastname@example.org.
The Yellow Sheet
IP-uppy Update Darwin has competition this month as we have another cat photo! The very cute Shackleton belongs to the North West Regional Sec, Cassie! It appears the studying became too much, and he needed a G&T! Darwin has been a poorly puppy this month! Being the inquisitive (naughty) puppy he is, he happened upon a bird carcass on a morning walk, which he found difficult to relinquish! The day after he was having symptoms of something being stuck in his throat so a trip to the vets, X-ray and a much lighter purse later, it thankfully turned out that there were no feathers or bones stuck down there, he just had a sore throat!
Regional Sec Update South West and Wales We are having our next social in Bristol on Friday 16 August. I will be sending out the details of the event within next week. Format Oz Aydin will be same as last time: a workshop followed by drinks in town. Although workshop will be first-come-first served, drinks afterwards will be open for all. The more the merrier…
Tutorials and Mentoring Coordinator The Informals Committee is working with CIPA and the Fellow members to offer tutorials to try and help you with the exams. We also need your Khushbu Solanki help to keep the tutorial scheme running. Firstly, I call out all the trainees to check the Yellow Sheet webpage for regular updates on the upcoming tutorials. I invite you to participate in the scheme and take advantage of the tutorials that are available to you. Secondly, considering we have a very limited number of volunteers, we request you to also help us organise these tutorials through your supervisors or colleagues. This will not only help you to be able to take advantage of the other tutorials but will also help the committee to continue the tutorial scheme. Finally, the trainees who are unable to organise such tutorials, please do not hesitate to get in touch if you are interested in any of the available sessions. If you would like to participate in the scheme or if you have any questions or suggestions regarding the scheme, please do not hesitate to contact me at email@example.com
Wacky Patent In hope that this month’s Wacky Patent will encourage the sun to come out, I present – the motorised ice cream cone! The invention of US5971829 pertains to a device in which a cup is mounted upon a motorized, handheld housing which rotates to allow a malleable food portion contained in the cup to be fed against a person’s tongue. This can allow the formation of interesting shapes and patterns in the food portion while it is being consumed. The device allows the consumer’s hand to remain stationary, whilst the ice cream is rotated and according to the description, enhances the overall eating experience for children and adults! Don’t forget to pack one for your next sunny holiday, because the way the weather has been for June, I doubt we’ll need one of these in the UK!
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REVISION COURSES FOR THE PEB 2019 & EQE 2020 EXAMS MAY-AUGUST AND NOVEMBER-DECEMBER 2019 We are holding residential revision courses between May and August 2019 for the 2019 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations and November-December 2019 for the 2020 European Qualifying Examination (EQE). Our main suites of FC and FD courses are held between 24 June and 19 July and 19-23 August and our EQE courses between 25 November and 3 December 2019, including an EQE Pre-exam course. The courses, which are in Milton Keynes, include a residential element, but if accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: firstname.lastname@example.org / email@example.com Fax: +44(0)800 0664016
Roel van Woudenberg
Sander van Rijnswou
EQE TRAINING! We are proud to be a leading training organization for the European Qualifying Examination (EQE). We offer a complete range of courses and high quality training material. The knowledge and experience gained from more than a decade of EQE training provides a solid basis for our expanding range of training courses.
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Courses offered in the rest of Europe Pre-Exam Training • 12-day Pre-Exam Integrated Main Exam Training • 2- or 3-day Methodology courses • 2-day Guided Exam Training • 4- or 5-day Guided Trial Run Under for Paper D (inc. 1-day D Crash Methodology) EQE Distance Training • Distance Learning for Pre-Exam • Correction Papers
LOCATIONS Our courses can be followed either at our base in Eindhoven, The Netherlands, or throughout the rest of Europe. This minimizes your travel costs and gives you a choice of dates. DK UK
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more information on www.deltapatents.com 52 CIPA JOURNAL
Training Training for the EQE Dates: Dates: 11-12 11-12November November 2019 2019 6-8 6-8January January 2020 2020 Venue: Venue:De DeVere VereGrand Grand Connaught Connaught Rooms 61-65 5DA 61-65Great Great Queen Queen St, St, London WC2B 5DA
Areyou youtraining trainingto tobe beaaEuropean European Patent Patent Are Attorney? Are you preparing to take the EQE EQE Attorney? Are you preparing to take the in Spring 2020? Support your studies by in Spring 2020? Support your studies by attending our preparatory course, learn from attending our preparatory course, learn from experienced practitioners and previous experienced practitioners and previous candidates, and network with fellow candidates, and network with fellow professionals. professionals. This course is for candidates preparing for This is for candidates thecourse main papers (A, B, C and preparing D) of the for the main papers (A, B,Examination C and D) of (EQE) the European Qualifying European Qualifying Examination (EQE) RIWKH(XURSHDQ3DWHQW2IÀFH,WLV RIWKH(XURSHDQ3DWHQW2IÀFH,WLV VWUXFWXUHGLQWZRSDUWVDQGUHÁHFWVWKH VWUXFWXUHGLQWZRSDUWVDQGUHÁHFWVWKH practical nature of the examinations. practical of the examinations. Bookingsnature are now accepted for the EQE training Bookings for Parts 1 and 2for areboth nowPart accepted. programme. Registration 1 and Part 2 is compulsory.
Why Why book book Queen QueenMary MaryUniversity UniversityofofLondon’s London’s course? course? • In-depth study of previous EQE papers in small • In-depth study of previous EQE papers in small groups and with highly experienced tutors. groups and with highly experienced tutors. • The course is continuously adjusted to the • The course is continuously adjusted to the changing requirements of the examination and changing requirements of the examination and the profession. the profession. • Queen Mary University of London has nearly • 30 Queen Mary University of London has nearly years’ experience running this programme 30 years’ experience running this programme and provides close academic supervision. and provides close academic supervision. • The pass rates of Queen Mary University of • London The pass rates candidates of Queen Mary Universityinof trained are generally London trained candidates are generally in excess of 95%. excess of 95%. For more information and to register please go to For more information and to register please go to www.ccls.qmul.ac.uk/events www.ccls.qmul.ac.uk/events
www.ccls.qmul.ac.uk/events www.ccls.qmul.ac.uk/events pp53-QMUL_1.indd 53
Patent Attorneys – Recently and Part Qualified London/Munich With offices in more than 175 locations and a presence in over 78 countries, Dentons is the most highly awarded law firm in the world, and uniquely placed to advise its clients across the globe. The firms “polycentric” culture means that there is no single headquarters or dominant culture, allowing practices to thrive and swiftly respond to its clients’ needs wherever they operate. Locations in purple represent Dentons offices. Locations in blue represent associate firms, offices and special alliances. Locations in green represent proposed
We provide the world's leading technology businesses with a comprehensive one-stop shop capable of dealing with all aspects of IP and technology law anywhere in the world. The team in Europe includes talented patent attorneys and is expanding rapidly in support of the worlds largest technology business. Developing talent is our passion and our learning and development program, from "trainee" to "leader" presents best in class career growth opportunities. With a fascinating work mix including high value patent prosecution, portfolio strategy, opinions, due diligence, opposition, tech transfer and litigation, our patent attorneys are also enthusiastic supporters of our venture technology practice, which supports over 1000 early stage companies dealing with everything from artificial intelligence through to biotechnology. www.dentonsventurebeyond,com
Dentons is now looking to build further capability in the patent prosecution both in London and Munich and is keen to speak informally with potential future candidates. If you are a newly qualified European patent attorney or a part qualified trainee based in London or Munich, we would be interested in hearing from you. We are looking for highly talented and commercially minded individuals that wish to contribute to an exciting mix of patent work. On offer is the opportunity to play a role in development of our client base and pursue a career with. For a confidential discussions, please send a CV to : Dr Justin Hill (firstname.lastname@example.org or call +44 20 7246 7492)
Challengers never rest. dentons.com © 2019 Dentons. Dentons is a global legal practice providing client services worldwide through its member firms and affiliates. Please see dentons.com for Legal Notices.
IN-HOUSE QUALIFIED PATENT ATTORNEY â€“ ENGINEERING (PHYSICS/MECHANICS) â€“ NW
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FOR MORE INFORMATION OR TO APPLY, CONTACT
(0$,/ *5$+$0-21(6#4('/(*$/&20 3+21( :(% KWWSVZZZOLQNHGLQFRPLQJUDKDPMRQHVTHG
Seeking New Talent 4XDOLÂ¿HG3DWHQW$WWRUQH\/LIH 6FLHQFHV&KHPLVWU\<HDUV34( Midlands/Cambridge/Oxford 4XDOLÂ¿HG3DWHQW$WWRUQH\/LIH 6FLHQFHV%LRWHFK<HDUV34( Midlands/Cambridge/Oxford
4XDOLÂ¿HG3DWHQW$WWRUQH\V /LIH6FLHQFHV0HG7HFK(QJLQHHULQJ Midlands/Cambridge/Oxford Part Time or Consultancy ([SHULHQFHG3DWHQW$GPLQLVWUDWRUV Cambridge
:RUNLQJH[FOXVLYHO\ZLWKRXUFOLHQWZLWKRÏ’FHVLQWKH0LGODQGV&DPEULGJHDQG2[IRUG:HDUHORRNLQJIRU Attorneys with experience in the Life Sciences, Bio Tech and Engineering sectors to join their expanding team with a YDULHGSRUWIROLR ,I\RXZRXOGOLNHWRZRUNLQDÂ¿UPZLWKDGLÏ‘HUHQFHDQGFRQWULEXWHWRDWHDPGHYHORSLQJSDWHQWVWUDWHJLHVIRUKLJK SURÂ¿OHFOLHQWVWKHQZHZRXOGORYHWRKHDUIURP\RX
For more information contact:
Katia@perfectkatch.co.uk Or call 01789 772526
We are looking for an exceptional individual to fill a rare consultancy role in our award-winning patent intelligence team in our band 1 Intellectual Property team in London. The candidate should be a: Patent Attorney; trainee Patent Attorney; or Associate Solicitor, and should have the aptitude to learn how to combine cutting-edge analytics with legal expertise. You will work within our Pattern team, which is our multi-award-winning patent intelligence consultancy offering. Pattern has a unique business model and offers clients a unique blend of legal and analytical advice. As such, the role is a hybrid of lawyer, consultant and analyst. Pattern is a highly-successful new offering which is growing quickly and has the feel of a technology start-up, supported by an international law firm. Pattern assists high-profile technology clients solve complex problems relating to patent portfolio licensing, enforcement and valuation. We work closely with our patent litigators and are often involved in managing international legal disputes. You will be working with a multi-disciplinary team of lawyers, analysts and IT developers. You will have the opportunity to interface with clients and become an expert in our consultancy offering, with the potential to progress to a more senior level. You will be advising on various aspects of patent law, analysing complex datasets, reviewing patent licenses and advising clients on patent portfolio enforcement strategies. You should have an aptitude and passion for problem solving, innovation and creation outside of the box solutions to client issues. If this sounds like you, please make an application (including a covering statement) on our careers page.
56 CIPA JOURNAL
For an open, honest and straightforward approach to recruitment you might want to call us. For full details on the range of opportunities weâ€™re recruiting for or just to have a general chat about your career, please call Pete Fellows or Tamara Gardner on 020 7903 5019 or email: email@example.com. www.fellowsandassociates.com
Fellows and Associates Ltd. acts as an agency within the meaning of the Conduct of Employment Agencies and Employment Businesses Regulations 2003. We operate a strict equal opportunities policy. Fellows and Associates is a trading name and registered UK trade mark of Fellows and Associates Limited
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58 CIPA JOURNAL
Working with you to get the wheels in motion
Patent Secretary : Leeds CEH62009 Friendly and flexible IP firm in the heart of Leeds seek a skilled Patent Secretary to join their expanding team. Audio/copy typing, filing applications and full administrative support will be rewarded with a competitive salary, a friendly working environment and a varied caseload of work. Patent Analyst : Southampton RRM62068 Collaborating daily with scientists and inventors, you will be at the forefront of technology assisting with searches, analysis of Patent landscapes and Patent rights as well as FTO issues. A background in Engineering / Physics / Electronics essential. In-House Attorney : North West RRM60042 Daily interaction with the R&D department means you will sit at the centre of exciting developments, working with external counsel to manage and build the extensive portfolio. EPA qualified, a Mechanical Engineering or Chemistry background and up to 5 years PQE sought. In-House Patent Attorney : London VAC61337 Cutting-edge technology, highly ranked blockchaincompany offer a hands on role within an engaging team. You will be involved in portfolio management, drafting and prosecution, invention harvesting and collaboration with researchers. Flexible working & comprehensive benefits available. Life Sciences Attorney : West London CEH62094 Friendly firm with a mixed client portfolio including SMEs, multi-national corporations and large organisations seek a determined Life Sciences Attorney to develop their Life Sciences practice. You will be a skilled Attorney with a following. Excellent salary and a welcoming working environment.
For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: firstname.lastname@example.org • email@example.com firstname.lastname@example.org • email@example.com or firstname.lastname@example.org
‘Tweet’ us at www.twitter.com/saccomannip
Patent Secretary : Cambridge TJB62072 Joining a busy Engineering and IT team, you will take on responsibilities such as drafting and filing Patent Office forms, billing, diary management, client correspondence and audio typing. Demonstrable experience and the ability to work autonomously while prioritising accordingly. Patent Secretary / Administrator : South West TJB61980 Superb opportunity to join a firm at the very top of its game as they continue to go through a period of exciting growth and change, with you playing an active part in this ongoing development. Partner level secretarial and administrative support. Flexi-time & a competitive salary on offer. Electronics/Engineering Attorney : Cambridge/London CEF59991 Well established, forward thinking and creative firm with a client base that is the epitome of innovation. Direct client contact and the opportunity to grow and strengthen the existing client network with excellent support in a collegiate and collaborative environment. Engineering Attorney : Southampton CEF60920 The varied client portfolio on offer here includes start-ups, SMEs, major corporations and household names. You will have a sound knowledge of drafting and a thirst for close client contact. Clear cut progression routes, flexible working and a competitive remuneration. Patent Paralegal : Cambridge CEH62049 Collegiate and inclusive Law firm offer an excellent opportunity for personal growth and progression. You will be responsible for full Paralegal and formalities support across the developing Patent function. This is a unique opportunity not to be missed.
Scan the QR Code for our website
www.linkedin.com at the ‘Sacco Mann Intellectual Property Group’
Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment. PQE Levels are purely for guidance. We are happy to consider all applicants with the necessary skills. REC-pp59-Sacco_1.indd 59
Patent Attorneys – Cambridge We have exciting opportunities for qualified patent attorneys (all levels) to join our growing in-house IP department based at our office in the heart of Cambridge. Cambridge Mechatronics Limited We are a multidisciplinary engineering company that leverages smart materials to design and develop miniature actuators for use across a variety of applications. Our patented platform technology uses a smart material called Shape Memory Alloy (SMA), which is well suited for precision applications including smartphone cameras, haptics, facial recognition and augmented reality. Our SMA camera actuators are in production under license by global manufacturers and are currently shipping in volumes of millions in smartphones, drones and wearables. If you would like to work directly with inventors of high-tech inventions and products in a stimulating and collaborative environment, we would like to hear from you.
Key activities • Drafting, filing, managing and prosecuting patent applications • Providing legal and commercial IP support and advice to technical and managerial staff • Patent searching and advising on third-party IP rights Key requirements • Good degree / PhD in the physical sciences or engineering • UK / European qualified patent attorney
Apply online now at www.cambridgemechatronics.com Or submit your application to email@example.com
60 CIPA JOURNAL
PATENT FEE EARNER VACANCIES... CHEMISTRY ATTORNEY FS/FQ â€“ LEEDS Â» $EUDQGQHZRSSRUWXQLW\WRMRLQ DÃ€UPWKDWLVUHDOO\JRLQJSODFHV Â» <RXZLOOHQMR\DYDULHGPL[ RIZRUNFRYHULQJPDQ\ DVSHFWVRIFKHPLVWU\LQFOXGLQJ SKDUPDFHXWLFDOV Â» 2SSRUWXQLWLHVIRUDGYDQFHPHQW ZLWKLQWKHÃ€UPDUHJRRGZLWKD WUDQVSDUDQWSURPRWLRQVFKHGXOH
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Visit www.dawnellmore.co.uk to browse all our current vacancies
firstname.lastname@example.org 020 7405 5039 www.dawnellmore.co.uk
Dawn Ellmore Employment
Patent, Trade Mark & Legal Specialists 03/07/2019 14:38:11
QUALIFIED/NEARLY QUALIFIED PATENT ATTORNEY – COMPETITIVE SALARY PLUS EXCELLENT BENEFITS – HURSLEY, HAMPSHIRE Do you want a career where no two days are the same, where you are constantly learning and growing as a commercially focused IP professional? Do you want to be part of a dynamic global IP team, where your growth will be supported and where you will become a key IP adviser to your business clients? Do you want to work on a beautiful 100-acre site? If yes – IBM is the place for you! IBM has a long history of innovation and continues to invest in research which matters to the world – pioneering technologies that will transform industries and society. The IP Law team’s role is to harvest and protect those innovations. Based in Hursley, near Winchester in Hampshire, you will provide IP and commercial advice and counsel on a broad range of IP related topics to your clients and other internal stakeholders, you will work with inventors to identify inventions, manage the drafting and prosecution of patent applications, provide freedom of action opinions, participate in patent enforcement and licensing activities and draft and negotiate IP terms in commercial contracts. For more information and to apply: https://careers.ibm.com/ShowJob/Id/671223/Patent-Attorney/
Engineering Patent Attorney – Part-time London We have a new vacancy in our rapidly expanding team for a confident, commercially astute patent attorney with a flair for client care. The workload will be varied with an excellent mix of pre-grant and due-diligence matters. Our direct clients include multinational pharmaceutical, FMCG and engineering companies, to name but a few. The successful candidate can expect to receive an attractive remuneration package with private health insurance and contributory pension. The position is based in our office in Shoreditch; however, all our systems are cloud based, so our working practices are genuinely flexible. If you want to be part of a dynamic and growing firm simply email us with a CV at email@example.com. No recruitment consultants, thank you.
62 CIPA JOURNAL
PATENT SUPPORT VACANCIES... SENIOR PATENT ASSISTANT cÂ£40,000 â€“ CAMBRIDGE Â» $EXV\UROHVXSSRUWLQJWKH +HDGRI'HSDUWPHQWLQDZHOO UHVSHFWHGÃ€UP Â» $UROHWKDW\RXFDQWUXO\PDNH \RXURZQ Â» 7KHLGHDOQH[WVWHSIRUVRPHRQH ZLWKSDWHQWH[SHULHQFHZKR wants a new challenge
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Visit www.dawnellmore.co.uk to browse all our current vacancies
firstname.lastname@example.org 020 7405 5039 www.dawnellmore.co.uk
Dawn Ellmore Employment
Patent, Trade Mark & Legal Specialists 03/07/2019 14:38:47
Mohun Aldridge Sykes is a young and growing ďŹ rm based in Leeds. Our reputation for quality is becoming well-known and weâ€™re taking on more work, which means we need more professionals to assist our clients. Weâ€™re looking for competent, conďŹ dent and commercially minded attorneys at all levels to work directly with our clients, the majority of which are UK-based. We trust our staff and so you can expect to work in an autonomous and ďŹ‚exible manner, without rigid monitoring of your time and location. An initial caseload can be provided and you will beneďŹ t from our support and guidance to help you expand that. The roles will suit those who are eager to build a client base and to develop their own professional practice, whilst giving top quality service to businesses and individuals.
12 Park Square East Leeds LS1 2LF United Kingdom www.mohun-ip.co.uk t +44 (0)113 246 9820 e email@example.com
If youâ€™re looking for something better and a fresh approach to working in intellectual property, send your CV to firstname.lastname@example.org Patents | Trade Marks | Copyright | Designs
3DUDOHJDObVRXJKWbIRU2[IRUG/RQGRQRU'XEOLQ2IÄ†FH The IP Asset Partnership Limited is a well-established, Oxford-headquartered, fast-growing IP practice with an excellent client base. Having recently expanded the business, to help support current work and future growth we are now seeking a capable, self-motivated, patent paralegal (formalities professional) to join our existing team of paralegals. The candidate should preferably hold a CIPA Patent Administrators Certificate, but those without this certificate will also be considered. The role will include records management and assisting with foreign filing and assignment programmes, so previous record keeping and patent formalities experience is a pre-requisite. The role may also include some secretarial/PA duties in support of the senior staff, so dynamism and a willingness â€˜to muck inâ€™ are important qualities in someone seeking this position. If you want to be part of a dynamic and growing team or simply wish to discuss the possibility, please call Dom Icely or Ian Bingham on 01865 339 414 or apply by email to Helene Schaefer â€“ Head of Formalities at the below email address. Applications by email to email@example.com.
64 CIPA JOURNAL
No recruitment agencies, please.
Your partners in Patent recruitment
G2 Legal is one of the UK’s largest privately owned legal recruitment ﬁrms. Our dedicated Patent & Trade Mark Division was formed in 2013. We are proud to have assisted Attorneys, from trainees through to partners, achieve the next step in their careers
Patent Formalities Officer
Qualiﬁed - Manchester
NQ - London
My client is a well-established law ﬁrm looking to
An excellent role has arisen for an experienced
mechanical engineering backgrounds in demand.
develop their Intellectual Property team further and
Patent Legal Secretary to join a well-established and
You will work closely with the lead Partner in the
hire an experienced Patent Formalities Officer. You
respected City based Patent and Trade Mark ﬁrm. My
group and pro-actively to contribute towards the
will be responsible for providing a full formalities
client is looking for someone who is highly organised
development of the group. The successful candidate
support service to the Head of Intellectual Property.
with 1-2 years of experience working in the Patent
will also have the opportunity to work independently
You will liaise with clients on a regular basis both
ﬁeld. They offer excellent career progression which
and directly with small, medium and large industrial
verbally and via letter/email correspondence, as well
would include having the opportunity to gain the
clients and universities in the UK and overseas, as
as dealing with ﬁling and general support work for
well as universities and overseas ﬁrms of Attorneys.
Part Qualiﬁed - Cambridge
Associate - London
Suited to a part/newly qualiﬁed Patent Attorney
Exciting new instruction for G2 Legal to work
Ideal for a progressive and commercially astute
in biotech and life sciences. The ﬁrm undertakes
remotely as a Patent Attorney anywhere in the world
qualiﬁed Patent Attorney (CPA or EPA) with a
interesting work acting for a mix of direct client
for a well-respected Patent & Trade Mark IP ﬁrm.
proven life sciences/biotechnology background
and SMEs and will involve all aspects of offering
You may have an ambition to relocate, but securing
and drafting/prosecution experience with direct
patent advice from drafting and ﬁling strategies to
employment within your chosen country is difficult
clients. Therefore, you must be comfortable in
prosecution and working on EPO oppositions and
to secure. This top IP ﬁrm have Attorneys working
liaising directly with clients and feel conﬁdent in
appeals. The ﬁrm has an excellent reputation for
globally in multiple destinations including the UK, US
advising and defending complex patent portfolios.
supporting part qualiﬁed Attorneys with training and
and Germany, thus you can equally work from an
First-hand experience of dealing with blue-chip,
through to qualiﬁcation.
office location, if you would prefer.
SMEs and university-based clients is desirable.
Electronics & Mechanical Engineering
Electronics & Engineering
IT & Engineering
Qualiﬁed - London
In-House - North West
Part Qualiﬁed - London
Genuine market-leading salary available, high
Time to make that move in-house? With cutting-
Forward thinking company is seeking a part qualiﬁed
volume of contentious work, high proﬁle clients
edge technology to lay your hands on, this company
Patent Attorney with expertise in either mechanical
and a fast track progression to Partner. The ﬁrm is
seeks a European Patent Attorney to join their
engineering or electronics to join the London
in a fantastic position within the market place and
growing IP function. This is still a relatively new
team. Whilst there is an existing caseload for the
deserve their top tier ranking. It is set up to reward
company that have impressive growth ambitions.
successful candidate, a desire to acquire, foster and
fee earners effectively without having to work
You will have overall responsibility for the IP service
grow new clients and contacts is a key aspect of
extensive hours. The right individual can beneﬁt
delivery, thus the role is suited to innovative,
the role. Therefore, you will need to demonstrate
from a professional, yet relaxed environment and to
commercially astute and progressive individuals
effective communication skills and the drive to grow
learn from leading industry professionals.
who enjoy working in a fast-paced environment.
For further details regarding any of the roles please contact Lee Townsend, Principal Consultant. Absolute conﬁdentiality is assured.
Tel 020 7649 9298
G2 Legal 26 Finsbury Square London EC2A 1DS
Mob 07426 043744
Dyson technology is unique We need new Patent Attorneys to keep it that way At Dyson, we invest £8 million a week in research and development, enabling us to invent new technology that works better. And such unique technology needs protecting. We’re looking for newly and part qualiﬁed Patent Attorneys with a mechanical, electrical or chemical background to help us keep these future inventions safe. You’ll work directly with Dyson engineers to protect and steer our future technology. You’ll be involved in projects that span a diverse range of categories, including automotive, health and beauty, energy storage and robotics. We have an established career development programme. And our campus is in the Cotswolds, less than an hour’s drive from the thriving cities of Bristol and Bath, and just two hours from London. Protect the next generation of Dyson technology. Apply at careers.dyson.com.
66 CIPA JOURNAL
A LOT HAS HAPPENED IN THE PAST 18 MONTHS AT MEWBURN ELLIS... You may notice we look a little different: we’ve rebranded to become ‘the forward-looking IP ﬁrm’. We’ve also opened an ofﬁce in Munich, moved to larger ofﬁces in three locations and fully opened our doors to lateral hires. Our plans do not end there though… You will see and hear from us more as we continue to help businesses use intellectual property to imagine, plan, nurture and protect their innovations.
We’re looking for talented people to join us now. Whether you’re fully qualiﬁed or a part-qualiﬁed Chemistry, Life Sciences or Engineering Patent Attorney, we’d love to hear from you. Find out more at mewburn.com or e-mail firstname.lastname@example.org
www.ip-support.co.uk 020 7776 8966 email@example.com
Senior Patent Legal Assistant - London An opportunity for a highly experienced Paralegal to step up into a senior position full of variety and autonomy. Formalities Administrator (Names Specialist) - London A unique role offering a challenging and interesting workload. Senior Patent Secretary - London Secure a senior role that comes with supervisory responsibilities.
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CIPA Journal, July-August 2019. SPC review by Carpmaels & Ransford.