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

September 2019 / Volume 48 / Number 9

Utility Models A summary of protection available in the G20 countries

SPC summer review: Part 2 Carpmaels & Ransford

Utility models – a cake too far? Alasdair Poore

Is the patent profession elitist? Pete Fellows

A retrospective on utility model protection Clifford Lees

Revised Rules of Procedure of the Boards of Appeal

Contents CIPA Life Sciences Conference PLACES ARE FILLING UP FAST IF YOU DON'T WANT TO MISS THE BOAT, BOOK NOW! Monday & Tuesday, 11-12 November 2019 • The Grand Brighton, 97-99 King’s Road, Brighton BN1 2FW See more details online and on page 58

UP FRONT

ARTICLES

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Life Sciences Conference West of England Meeting

Utility models – a cake too far?

Utility Models

Professional Ethics

Editorial Alasdair Poore

Protected improvements

A retrospective on Utility Model protection Clifford Lees

Licencing and IP Commercialization

An elitist profession?

Revised Rules of Procedure of the Boards of Appeal

Salary survey Pete Fellows

Seminar report, Mabel Lew and Alicia Instone

Seminar report, Sean Gilday

Richard Turner

Council Minutes

Lee Davies 5

Annual General Meeting

Lee Davies

NEWS

SPC summer review: part 2

Webinar report, Natalia Glinski

Seminar report, Alicia Instone

Carpmaels & Ransford

Introduction to blockchain

Webinar report, Giovanna Viganò

Rules of Procedure of the Boards of Appeal

EPO notice

DECISIONS

PERSONAL

EQE results show the UK still leading in Europe

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CIPA press release 8 9 9 10

Beck Greener

IP Federation’s new President Regulatory news

Iain Ross

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Dr Amanda R. Gladwin 10 10

Lord Justice Arnold promoted to Court of Appeal Myanmar – new patent law

EDUCATION

Mirandah Asia

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Volume 48, number 9

Obituary: David Tatham

Christos A. Theodoulou 67

The Yellow Sheet

Trade marks

Bird & Bird

Overseas update

EPO decisions

Bristows

Paralegal Awards IP Inclusive update

Andrea Brewster

IPO decisions

David Pearce & Callum Docherty

IP Inclusive

New Lead Executive Officer

Patent decisions

Non-Institute events Institute events

THE PINKS 69-88 Courses & Events; International ; Support; Recruitment

SEPTEMBER 2019

CIPA JOURNAL

Utility Models Utility models are often seen as the poor cousin of patents – a shorter term, frequently excluding some subject-matter such as compositions, often protectable with less stringent requirements and not necessarily examined on filing. Possibly that means they are less interesting to patent attorneys – but not necessarily so for clients. Richard Turner (Fellow) provides a useful and succinct summary of where and what is available in the G20 countries and Spain.

s patent attorneys we are very familiar with the different types of intellectual property protection that are available. Article 1(2) of the Paris Convention states that “The protection of industrial property has as its object patents, utility models, industrial designs, trade marks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition”. Included within this list is utility models, which is a form of protection that is not available in any form that covers the United Kingdom, but is, however, available in a number of other countries around the world. This includes some significant economies, such as China, Japan and Germany. These rights are accessible to UK-based intellectual property owners, either by filing a utility model application directly without a priority claim or by filing a utility model application claiming the priority of a patent or design application. A utility model is a right that is granted for an invention, so in many ways it is similar to a patent. However, there are a number of important differences between a utility model and a patent. The main difference is that the requirements for obtaining a

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utility model are less stringent than those for obtaining a patent. All inventions that are the subject of a utility model application must be novel over the prior art, but usually there is either no inventive step requirement or a reduced requirement for inventive step. The term of protection for a utility model is also shorter than for a patent. In Germany for example, the term of protection is ten years. Utility models are also usually cheaper to obtain and to maintain. It is also the case that the name “utility model” is sometimes interpreted literally, in that only physical “models” can be protected, so processes and compositions are often excluded from protection under a utility model system. There are also a number of quirky aspects to utility models that make them useful in certain circumstances. For example, under the Paris Convention, it is possible to file a utility model application in a foreign country that claims priority from a patent application or from a design application. This means that if a design application is first filed in the UK it is possible to use the UK design application as the basis for a utility model application in a foreign country that has utility model protection. This can be useful if a novel feature is present in a

www.cipa.org.uk

UPDATE

product that is the subject of a design application, where that feature would not normally be considered to be strong enough to support a patent application. Similarly, if a UK patent application is first filed and the IPO search indicates that a patent is unlikely to be granted, then the patent application can still be used as the basis for foreign utility model applications, at the 12-month priority stage. Another useful feature of the utility model system is that an international patent application contains within it all designations of utility models in addition to the patent application designations. This means that at the 30-month stage it is possible to convert an international patent application into utility model applications. This can be useful for example if the search and examination during the international phase indicates that the invention in the international patent application is unlikely or difficult to be granted as a patent. Considering the major economies of the World as defined by the G20 membership, 11 of the 20 member states of the G20 provide utility model protection, as follows: Argentina, Australia, Brazil, China, France, Germany, Italy, Japan, Mexico, Russia and Turkey. Spain, which is a guest member of the G20, also has utility model protection. The situation in each of these countries is set out below.

Argentina In Argentina the certificate of a utility model has an effective term of ten years, which starts on the filing date of the application and is subject to the payment of renewal fees. The essential requirements for the grant of a utility model certificate is that an invention is new and has an industrial nature. There is no inventive step requirement. The utility model application is subject to an examination in which the substantive requirements (novelty and industrial application) are evaluated against the prior art. The substantive examination must be requested and the examination fee must be paid within three months of the filing date. A utility model application can refer to a new arrangement or construction obtained for or introduced into any known tools, work instruments, utensils, devices or objects suitable for practical work, which may involve a better performance of the function for which they were meant. A utility model cannot be directed to a process, uses or any object which is not destined for a practical use. A compound or composition cannot be protected by a utility model.

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Australia The “equivalent” of a utility model in Australia is the innovation patent, it has a maximum term of eight years. An innovation patent will proceed directly to grant provided all formal filing requirements (i.e. not including novelty and innovative step issues) are met. The claims of an innovation patent are only required to meet a lower validity threshold since they only require an “innovative step” as compared with an “inventive step” as is required for a standard patent. In this respect, provided that there is at least one novel feature claimed and that feature makes “a substantial contribution to the working of the invention” this will be sufficient. A maximum number of five claims are permitted. Renewal fees are payable each year from the second anniversary of the filing date onwards. Unfortunately, the innovation patent system is likely to be abolished in Australia in the next two or three years. However, until this legislation is passed into law and takes effect, new innovation patent applications can still be validly filed and appropriate transitional provisions will be put in place to maintain existing rights.

Brazil A utility model patent will be granted for a period of 15 years from the filing date. An object of practical use, or part thereof, is patentable as a utility model if it is susceptible of industrial application, has a new form or arrangement, and involves an inventive act, that results in a functioning improvement in its use over the prior art. A process, a use, or a product which are not destined for a practical use cannot be protected by a utility model. An application for a utility model may contain only one independent claim, but may contain a plurality of dependent claims. The utility model application is subject to an examination process where substantive requirements are evaluated against the prior art. Annual fees are due both in respect of pending applications and registered utility models starting with the third year from filing.

China Utility models have a term of ten years from the date of filing in China. Any utility model for which a patent right may be granted must possess novelty, inventiveness and practical applicability. Novelty means that, the utility model does not form part of the prior art. Inventiveness means that, as compared with the

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Protected improvements A retrospective on utility model protection by Clifford Lees, President of the Institute (1991-92). The article provides an interesting insight into the history of inventive step, followed by the ingenuity of practitioners – still persisting – in seeking alternative protection as the threshold to obtain patent protection becomes tougher. It is also fascinating to reflect on how many developments – particularly in protecting utilitarian articles and widening access to justice, with active support from CIPA, have now been adopted since Clifford’s paper. First published in June 1986, this paper is available in the members' area of the CIPA website.

 “You tell me what you have invented, and I will tell you whether we can protect it”.  “Well I don’t think. I would call it an invention at all actually. It’s just an improvement”. We know better of course. This self-effacing modesty is a characteristic of some very clever people who are so clever that practically everything is seen by them as a mere improvement rather than an invention. What they mean is that they do not see themselves ranking with James Watt, Thomas Edison, Sir Frank Whittle or Percy Shaw1. On the other hand, sometimes what the person is saying is true; they have not made an invention – not as defined in the Patents Act 1977 anyway – but they have made an improvement. We realise instantly that it will never sustain a patent. Granted it is new to colour a cricket ball black and white2 but we could never persuade the examiner, let alone a court, that it involves an inventive step. Here I want to introduce you to my three low-technology, low-level innovations. (drawings and specifications of these innovations were provided for those attending the meeting). Mr Ali is a fictitious Yorkshireman whose innovation is readily ascertained from the drawing of his prayer mat fitted with a compass. Mr Molyneux is a real-life inventor who has a number of British and foreign patents to his name, and the innovation relating to overflows from washbasins which you have is one of his discarded ideas. You have to assume that he knows it is old to fit vertical overflow pipes into the waste outlets of laboratory sinks. Mr Petrie is a freelance consultant much concerned with innovation, who is acquainted with patent specifications and you will see that he has devised an inflatable bar for a horse jumping hurdle so that his daughter can lift it. Now probably most of the ideas, of which these three stand as examples, are never likely to catch on anyway; but some do – or would, if anyone could be persuaded to pursue them in the 16

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absence of protection. And there is the rub of course; what is the use of putting money, effort, time and emotional energy into the attempt to commercialise something, if it can be freely copied? One reason why the devisers of non-patentable improvements seek advice at all is because they have an intuitive notion that there must be some lower order of protection available for their lower order of improvement. It is my first proposition that, where a significant number of people concerned have such an intuitive approach, there is probably some primaeval force tending to bring the ‘thing’ to reality, which it would be Canutelike to resist.

Stopping the leaks (1. Patents) I think that there is justification for the proposition that when the Statute of Monopolies was enacted, the idea of different levels of inventive merit had not occurred to the legislators. It will be recalled that the operative words were “any manner of new manufactures” though the grant was to be “… to the true and first inventor of such manufactures”. A study of the use of words “invention” and “inventor” in a dictionary will show that, at that time (1623), and possibly for two centuries afterwards, the word “invention” was related to a discovery and bringing-in rather than to ingenuity. This of course is consistent with the situation: many inventions were literally “brought in” from other countries and the usage may be, perhaps, reflective of a nicely humble attitude to creation so that inventions were regarded as discoveries (i.e. the thing was there all the time, the inventor happened to be the person who discovered it3). Probably also the rarity of technical progress was such that inventions tended to be well separated from each other, which enhances apparent inventive merit, and anyway, patents were decidedly expensive and copying techniques not very refined, so that there was little incentive to attempt to protect anything short of a World Beater. I suspect that a number of patents were granted in those early days which would have come well short of the modern test of inventive step. www.cipa.org.uk

CIPA 1986

It could not last of course: there were undoubtedly fears that there would be far too many patents; the legal system would break under the strain of attempting to sort out one minor improvement from another and so on. So the courts introduced the concepts of: “inventive step”, “inventive height”4, “non-obviousness”. or whatever language is used to sort out the ingenious from the novel but not so ingenious. A study of the 19th Century patent cases reveals how the Courts struggled with the issue as to the degree of novelty which could support a patent. Somewhere along the line it became accepted that besides being a “manufacture” and being “new” it must have a curious property which the lawyers called “subjectmatter”. There were cases referring to a mere scintilla of invention being sufficient, but gradually the idea of lack of invention because of analogous prior use became the main criterion for assessing the mysterious property of “Invention”. Probably the crunch case was Harwood v Great Northern Railway Company (1860-65) 11 HLC 654 and if we need a linchpin, it is found in the words of Lord Westbury LC: “Then, My Lords, the question is, whether there can be any invention of the plaintiff in having taken that thing which was a fish for a bridge, and having applied it as a fish to a railway. Upon that I think the law is well and rightly settled, for there would be no end to the interference with trade and with the liberty of adopting any mechanical contrivance, if every slight difference in the application of a well-known thing should be held to constitute ground for a patent”. It is clear that the lack of subject-matter and analogous user cases were simply examples of the test of “Not obvious to the man skilled in the art” which seems to have taken a century or so to develop. So far as I can ascertain, the word “obvious” was first used in White v Toms (1867) 32 LJ Ch.204, but whatever its genesis “obviousness” became a ground of invalidity of a patent claim enshrined in the 1949 Patents Act. This gradual, (or perhaps erratic would be a better word), evolution had the effect of excluding from patent protection any very low-level innovation. It was at this point that I came in. Before June 1978, when confronted with what appeared to be a fairly low-level innovation one could always attempt to use the Patents Act to obtain protection. Providing one could draft the broadest claim so that there was some novelty (however slight) there was the prospect of obtaining the grant of a UK patent, unless one had the misfortune to have been so commercially successful as to draw an opposition in the Patent Office5. (Even then, the dice were loaded in favour of the applicant because in an opposition the issue turned on the words “obvious and clearly does not involve any inventive step”6. The intention of the 1977 Act was finally to close the hole through which low-level innovations had slipped into at least apparent patent protection, and to a large extent I believe it has succeeded – though not perhaps to the draconian extent some Volume 48, number 9

PROTECTED IMPROVEMENTS

people envisaged in the frantic last days of May 1978. Perhaps just as important as the legal effect of the change was the psychological effect on many potential applicants, who were persuaded that much which was formerly patentable no longer was so.

Stopping the leaks (2. Registered designs) In my experience, the low-level innovator often mistakenly thinks that the registered design system is what he is seeking. He has seen articles marked “Regd. Des.” and assumes that this must be a second-class patent. This may be nonsense to us, who have been reared on the “features which appeal solely to the eye”a characteristic of designs, but perhaps it is not all that nonsensical to the potential user of the intellectual property system with his “improvement”. There is some evidence that in the early days of the registered design system, after it had ceased to be merely a means of protecting textile patterns, people did attempt to use it for the protection of what were actually methods of construction (see for example Moody v Tree 9 RPC 333) and it was this which led to the introduction of the notion of “appeal solely to the eye” and later to the introduction of the rejection of registration for functional designs – carried to its logical (?) conclusion in 1972 in AMP v Utilux (1972 RPC 103)b. Historically, this has amounted to a step-by-step closing of an opportunity located by some in the Registered Designs Act of finding ways of protecting low-level innovations. If one takes the case of Mr Molyneux’s overflow for-example, a registered design might go a long way towards giving protection for the inclination feature, since although in theory, it would be possible to make something of totally different appearance which would have this feature, it might not be easy in practice. I was not around before the 1919 Designs Act, but I was taught to operate the 1949 Registered Designs Act pre-AMP v Utilux. Since perhaps one third of the profession have qualified since AMP, it might be useful if I say how we did it. Everything turned on the word “solely” in the definition “solely functional…” the definition “solely functional”. If one was presented with an article frankly designed” to fulfil a function, one used to ask the rhetorical question “Could this article have been made with the same functional effect in any other shape?” It is fairly rare for every single feature in the design of an article to be dictated entirely by the function. Even when an engineer is designing the most mundane object, he usually has choice over certain dimensions or geometic features, and on that basis one salved one’s conscience in relation to the registration of what were essentially functional designs, by the notion that of course the design was not “solely functional”. All a.

Editor: of course now replaced by the appearance (Article 3) and function/matching exclusions Article 8 Community Design Regulation)

b. Editor: an electrical terminal does not appeal to the eye – even sadly of an engineer SEPTEMBER 2019

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SPC

REVIEW

SPC summer review – part 2 This is the second of a two-part series of articles, in which Carpmaels & Ransford summarises the major developments for supplementary protection certificates (SPCs) in Europe over the past 12 months. This part starts with a discussion of the possibility of obtaining SPC protection for combination products that comprise previously authorised active ingredients. Next, the SPC eligibility of drug device combination products is discussed. The following article reviews the implications of the SPC manufacturing waiver, which is soon to come into force. The final article looks beyond the EU to summarise some of the main developments that have occurred for patent term extension systems across the world. Daniel Goodman (Fellow)

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SPC

Article 3(c) and (d) in relation to SPCs for combination products Is it possible to obtain an SPC for a combination product on the basis of a patent which has already been the subject of an SPC for the monotherapy? SPCs for combination products have been the subject of several CJEU referrals over the years, on the issues of the requirement for the combination to be “protected” by the patent for the purpose of article 3(a), and the requirement for the product not to have already been the subject of an SPC under article 3(c). In many cases issues arise under both of these elements of article 3, for example when the combination is not explicitly disclosed in the patent. But what happens if the main invention in the patent is the monotherapy but the patent does explicitly claim the combination therapy, such that article 3(a) is not a problem?

CJEU guidance on the interpretation of article 3(c) for combination products The CJEU considered the issue of article 3(c) in Actavis Group PTC EHF and Actavis UK LTD v Sanofi (C-443/12), where it stated that article 3(c) precludes the grant of a combination SPC when the “core inventive advance” of the patent, i.e. the monotherapy, has already been the subject of an SPC. Subsequently, in Actavis Group PTC EHF and Actavis UK Ltd v Boehringer Ingelheim Pharma GmbH & Co. KG (C577/13), the CJEU held that article 3(c) precludes the grant of the combination SPC when an SPC has already been granted to the active ingredient constituting the “sole subject-matter of the invention” protected by that patent. This CJEU guidance has recently been applied by various national courts, including in Germany, France, Belgium, Spain and the Netherlands, in relation to SPCs for Merck’s combination product, Inegy. Merck’s combination SPCs for Inegy Inegy is Merck’s cholesterol-lowering fixed-dose combination of ezetimibe and simvastatin. Merck obtained SPCs directed to this combination based on patent EP0720599 for ezetimibe per se, which also claims a number of different combinations, including the specific combination of ezetimibe and simvastatin. Previously, SPCs had been obtained by Merck to protect Ezetrol, its ezetimibe monotherapy product, on the basis of the ‘599 patent, but these SPCs expired in April 2018. SPCs for the combination product would remain in force until April 2019. The inclusion of specific claims directed to the combination with simvastatin meant that there was no problem under Volume 48, number 9

REVIEW

article 3(a). However, whilst the combination product had not itself been the subject of an SPC – as required by article 3(c) – the combination product was not considered to be part of the “core inventive advance” of the patent according to the national courts in Germany, France, Belgium, Spain and the Netherlands. The SPCs for this product were therefore considered by the courts to fall foul of the requirements laid out in the Actavis CJEU referrals. In Merck’s view, the patent covered two independently inventive inventions, the ezetimibe monotherapy and the combination of ezetimibe with statins such as simvastatin. The inventive concept linking both of the products was found by the courts to be compounds of the substituted azetidinone family (of which ezetimibe is a member), with simvastatin being considered not to be protected as such and not to contribute to the inventive nature of the combination. This meant that ezetimibe was held by the courts to be the “sole subject-matter of the invention” and the combination not to form part of the “core inventive advance” in the patent. What is required to demonstrate that a combination is part of the “core inventive advance”? So what would have tipped the balance in Merck’s favour? What would the patent have needed to include to demonstrate that the combination was part of the “core inventive advance”? The courts provided some indication of the ways in which this threshold might be reached. The District Court of Düsseldorf in Merck Sharp & Dohme Corp v Hexal AG indicated that if data or a technical explanation had been provided in the patent to show that the combination addresses a specific problem in the treatment of high cholesterol for which the solution is different from that provided by the monotherapy, then the combination might have been considered to be part of the “core inventive advance”. For example, where an additive effect of the two active ingredients is expected, the District Court considered that synergy between the actives would render the combination product deserving of an SPC. However, the Court specifically explained that synergy was not a requirement and there could be other ways in which a combination product qualified for SPC protection when the monotherapy had already been the subject of an SPC. For example, if the patent demonstrates that the combination results in a reduction of side effects or makes administration easier, the combination may form part of the “core inventive advance”. The District Court also suggested that it is important that the inventive nature of the combination itself is provided in the patent, or that it is derivable by the skilled person from the patent using their common general knowledge at the priority date. The Court indicated that any advantages that became apparent later, which are not mentioned in the patent cannot be relied upon to establish that the combination product is part of the “core inventive advance”. SEPTEMBER 2019

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SPC

Brexit – current outlook Earlier this year, readers might have heard that the original Brexit deadline was extended to 31 October 2019, after the UK Parliament repeatedly rejected the proposed UK-EU Brexit agreement, but also voted against leaving the EU with no deal. Many hope that an alternative proposal can be reached to avert a no-deal Brexit, with some calls for a second confirmatory referendum on any future deal, or indeed Brexit itself.

REVIEW

guidance from the European Commission indicates that any authorisation issued by a UK competent authority before the withdrawal date will be considered the “first authorisation” in the EU, even if the UK subsequently leaves the EU. However, an authorisation granted by a UK competent authority after Brexit will no longer be considered the “first authorisation” for the purposes of the SPC Regulation. Emily Nikolić (Fellow)

Impact for UK IP rights While considerable uncertainty still remains over the possible shape of any Brexit deal, holders of EU-governed IP rights, including SPCs, regulatory data protection and orphan medicine exclusivity, should be reassured by the UK government’s commitment to incorporate EU provisions into UK law, and to preserve all existing rights post-Brexit even if the UK leaves without a deal. The agreement previously reached with the EU provided for a transitional period until the end of 2020, during which SPC rights would have been dealt with under the existing EU regime. Although this agreement has been rejected by Parliament, it seems likely that similar provisions would be incorporated into any future deal, providing a degree of certainty at least in the short term. The rejected agreement did not cover future SPC applications, but the UK has separately issued the Patents (Amendment) (EU Exit) Regulations 2019, which effectively implement EU SPC legislation into UK law. This new legislation will apply even in a nodeal scenario. Some important differences include the fact that an EEA marketing authorisation will no longer count as the “first authorisation” for the purposes of article 3(b). Accordingly, companies which have used the centralised procedure route will need to take additional steps to obtain a UK MA before applying for SPCs. However, for the purposes of calculating SPC duration under article 13, the first MA in the EEA or the UK is taken into account, meaning that the exclusivity period conferred by an SPC in the UK could effectively be reduced if there is a time lag between EEA approval and subsequent grant of a UK MA. Finally, although paediatric extensions are not covered by these regulations, there are plans to implement them by introducing the relevant EU provisions into the separate Human Medicines Regulations 2012 legislation. Impact for the EU-27 The European Commission has also released guidance notes outlining the effects of a no-deal Brexit on SPCs in the remaining 27 EU states. Because the first marketing authorisation to be granted in the EU determines both the term of the SPC under article 13 of Regulation 469/2009, and its fate if an earlier authorisation has been granted with effect in the EU in accordance with article 3(b), it is important to understand which authorisation is the “first authorisation” in the EU. The 36 CIPA JOURNAL

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This information provides a summary of the subject-matter only. It should not be acted on without first seeking professional advice. Any views expressed in this document do not necessarily reflect the views of Carpmaels & Ransford or its attorneys or clients. For more information, please contact: daniel.wise@carpmaels.com. Copyright © Carpmaels & Ransford LLP 2019.

SPC REVIEW – PART 2 For more information on Carpmaels & Ransford or the authors of these articles, please visit www.carpmaels.com

VOLUME 48 NUMBER 09 2019

Anna Leathley Senior Associate

Emily Nikolić Associate

Daniel Goodman Associate

Liz McKinley Senior Associate

Tanja Preissner Senior Associate

www.cipa.org.uk

DECISIONS

PATENTS: UK

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

Construction | Infringement | Equivalence | Modified Improver questions under Actavis v Lilly | Revocation | Validity | Inventive step | Marflow Engineering Limited v Cassellie Limited [2019] EWHC 410 (IPEC) • 26 February 2019 • HHJ Hacon Marflow, a manufacturer of plumbing products, was the owner of United Kingdom Patent No. 2368888 for a method of installing an appliance such as a shower using a fixing plate. Cassellie was a competitor of Marflow. Marflow brought infringement proceedings against Cassellie in relation to its use of a fixing plate in installing showers. Cassellie counterclaimed for revocation. The judge noted that no issue of law arose. He construed the patent and considered issues of inventive step and infringement. He found that the patent was valid. On infringement, he found that the patent was not infringed on a “normal construction”. He went on to apply the modified Improver questions test for infringement by equivalence under Actavis v Lilly [2017] UKSC 48. On this basis he found that Cassellie’s method was an infringing variant. Thus, the patent was held valid and infringed.

Striking out | Abuse of process | Amendments | Case management | RAND TQ Delta, LLC v (1) ZyXel Communications UK Limited (2) ZyXel Communications A/S [2019] EWCA Civ 1277 • 18 July 2019 • Lewison and Floyd LLJ This decision relates to an appeal against the judgment of Birss J in [2019] EWHC 1089 (Pat). ZyXel and TQ Delta had been engaged in infringement proceedings since 2017. A technical trial took place in March 2019, in which Carr J held that one of two patents in suit (belonging to TQ Delta) was valid, essential to DSL standards, and infringed. A non-technical trial was scheduled to take place in September 2019 to decide on RAND issues. In the time between the decision of the technical trial and the date of the non-technical trial, ZyXel submitted a waiver to all its rights to enforce TQ Delta’s RAND obligations in the UK, including the obligation to offer a RAND licence. This resulted Volume 48, number 9

in an immediate injunction on ZyXel. TQ Delta then began further infringement proceedings based on two further patents. In response to this development, ZyXel applied to have the nontechnical trial taken out of the court listing and to strike out the further infringement claim. At the same time, TQ Delta applied to amend its pleadings for the non-technical trial. At first instance, Birss J dismissed ZyXel’s application and allowed TQ Delta’s amendments. In the appeal, ZyXel argued that Birss J erred in concluding that there was still a real dispute between the parties based on insufficient evidence. ZyXel also argued that Birss J should have found the scope and effect of the wavier was clear, and that he should have adjourned proceedings or requested further written submissions to resolve any outstanding issues. ZyXel advanced a number of reasons for the appeal. Referring to the Unwired Planet decision, ZyXel argued firstly that they could not be forced to take a licence in view of the waiver and were entitled to elect not to do so. Secondly, ZyXel argued that it was a waste of court resources to argue on terms that they have confirmed they will not and cannot be compelled to take. Thirdly, ZyXel argued that there was in fact no “real and lively dispute” because the only other litigation outside the UK was in the US, which would not make any assessment on global RAND rates. Fourthly, ZyXel argued that Birss J should have dealt with matters before him as the court would be in no better position to do so at the non-technical trial. Floyd LJ noted that the injunction imposed on ZyXel was properly invoked and that as a consequence of the irrevocable waiver ZyXel legitimately had no reasonable interest in a determination of any licence terms. Floyd LJ also noted that ZyXel accepted the imposition of the injunction and agreed to pay the full amount of damages claimed. In this respect, Floyd LJ commented that: “I can see no basis whatsoever for saying that such a waiver should be treated as ineffective or invalid. To say that the waiver is ineffective is equivalent to saying that the proceedings must go on as if ZyXEL were still relying on the RAND undertaking to resist the grant of the injunction in the UK, when ZyXEL are prepared to give an irrevocable undertaking not to do so. SEPTEMBER 2019

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CPD & EDUCATION

INSTITUTE EVENTS

CIPA events in 2019 For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events.

Thursday, 19 September 2019 Conference

Friday 27 September 2019 Conference

CIPA CONGRESS

IP PARALEGALS CONFERENCE

Location: Queen Elizabeth II Centre, The Conference Centre, Broad Sanctuary, London, SW1P 3EE

Location: Millennium Gloucester Hotel, Kensington, London

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

Book online now!. More details on speakers and the programme are available online. CPD: 8 Prices: See online

Tuesday 24 September 2019 Webinar

IP OUTSIDE YOUR COMFORT ZONE: IP AGREEMENTS Time: 12.30–13.30

Thursday, 19 September 2019 Social

CIPA ANNUAL DINNER Sponsored by Patent Seekers and Thomson Reuters Time: from 19.00-22.00 Location: Queen Elizabeth II Centre, The Conference Centre, Broad Sanctuary, London, SW1P 3EE This event will immediately follow CIPA Congress 2019 and is open to both attendees and non-attendees of the conference. Don’t miss out on this excellent networking opportunity whilst enjoying the sights of Westminster! We will also be joined by special guest speaker Roz Watkins; author of ‘The Devil’s Dice’. Roz was previously a patent attorney but now writes a series of crime novels set in the Peak District. Interestingly, the corpse and main suspects in ‘The Devil’s Dice’ are patent attorneys! Prices: £96. Book now for £80+VAT per person or email cpd@cipa.org.uk to book a table of ten for a special rate where two attendees go free!

Join Lucy Harrold, Consultant Solicitor at Keystone Law for this lunchtime CPD Webinar targeted for IP Paralegals and those new to the profession! This talk will guide you through; • Understanding when your client needs an IP agreement; • Types of IP agreement: e.g. memorandum of understanding, assignment, license, confidentiality agreement; • An introduction to some basic contract law principles; • Top IP agreement pitfalls such as correct parties and accurate identification of the rights. Speaker: Lucy Harrold, (Keystone Law) CPD: 1; Prices: £72 (£48 CIPA members) Friday 27 September 2019 Social

IP PARALEGAL 20TH ANNIVERSARY DINNER Time: 18.00–23.00 Location: Millennium Gloucester Hotel, Kensington, London

Wednesday 2 October 2019 Meeting

2019 AGM Time: from 17.30 Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD 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.

Thursday 3 October 2019 Social

READING HAPPY HOUR Time: 18.00–19.00 Location: Pitcher & Piano, 18 Friar Street, Reading, RG1 1DB Join CIPA and other members of CIPA in your area for after work drinks and a great opportunity to network. Please note this event is for all members of CIPA from Students, to Fellows to IP Paralegals. However, it is compulsory to book prior to the event. We hope to see you there!

This event is to mark 20 years of the CIPA Patent Administration Course now 62 CIPA JOURNAL

SEPTEMBER 2019

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CPD & EDUCATION

Friday 4 October 2019 Webinar

INSTITUTE EVENTS

Thursday 10 October 2019 Regional Meeting

TRADE SECRET METADATA

MANCHESTER MEETING

Time: 12.30–13.30

Time: from 12.30 Location: Innside Manchester, 1 First Street, Manchester, M15 4RP

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 9 October 2019 Webinar

PRACTICAL TIPS ON HOW TO FILE A HAGUE DESIGN ONLINE AT WIPO Time: 12.30–13.30 Once (if) we leave the EU it will become important to look for cost-effective ways to protect client’s rights in the UK and the EU and beyond in relation to registered designs. In this webinar we will look at some practicalities of how to go about actually filing a Hague design using the online platform at WIPO, and the type of information you need to have to hand when carrying out the filing. This webinar will be relevant for the support staff filing in the form itself but also for fee-earners so that they can gather the correct information from their clients in preparation. As well as looking at filing “straight-forward” UK/EU designations we will also touch on some of the filing nuances of some of the examining jurisdictions that you can designate. Speaker: Dr Alicia Instone, Cleveland Scott York LLP and Chair of the Designs & Copyright Committee CPD: 1; Prices: £72 (£48 CIPA members) Volume 48, number 9

Come and join CIPA at the Manchester Regional Meeting 2020! There will be a range of speakers giving talks on different aspects of IP as well as a great networking opportunity after the event. Topics include: EPO Changes, with Julia Gwilt (Appleyard Lees IP LLP). See the full programme online. CPD: 3.5 Prices: £234 (£156 members). Wednesday 23 October 2019 Webinar

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 audiencefocused 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) Tuesday 29 October 2019 Seminar

IP AGREEMENTS – KEY PROVISIONS AND PITFALLS

UPDATE ON COMPUTERS AND IP SEMINAR

Time: 12.30–13.30

Time: from 12.30-17.30 Location: Connaught Rooms, 61-63 Great Queen Street, London, WC2B 5DA

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 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

Join CIPA and the CIPA Computer Technology Committee for this afternoon seminar at the De Vere Grand Connaught Rooms! A range of speakers will cover recent developments and practice relating to computing inventions. Topics include: • Patenting Computer-Implemented Inventions in Healthcare at the EPO • Assessing the Patentability of AI Inventions: Future Strategies See the full programme online. Speakers include: Igor Dydenko (EPO); Rachel Free (CMS); Simon Davies (Chair of Computer Technology Committee) CPD: 3.5 Prices: £234 (£156 members). Thursday 31 October 2019 Seminar

PATENT CASE LAW LONDON Time: 12.30–17.30 Location: Crowne Plaza London The City, 19 New Bridge Street, London EC4V 6DB Join CIPA for the first stop of the Patent SEPTEMBER 2019

CIPA JOURNAL