CIPA Journal, October 2019 by CIPA Journal

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

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Consultation on EUIPO’s Strategic Plan 2025 Alicia Instone

Changing role of patents in the global economy Léon Dijkman

October 2019 / Volume 48 / Number 10

Arrow declarations: origins and where to next?

Obituary: Sir Henry Carr Michael Silverleaf

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Contents

18-24 UP FRONT

ARTICLES

EDUCATION

14 50

Council Minutes

Lee Davies

NEWS 5

Huawei makes a surprising announcement Léon Dijkman. 18

Manual of Patent Practice

October update IPO 6

Amending patent claims in Malaysia

Chris Hemingway 6

Overseas update

Patentability of computerimplemented simulations

Dr Amanda R. Gladwin

Institute events

PERSONAL

Origins, development and where to next? Christopher Stothers, Laura Whiting & Ammina Rao

51 52

Announcements Obituary: Sir Henry Carr

Michael Silverleaf QC IP Inclusive update

Andrea Brewster

DECISIONS Patent decisions

THE PINKS

Beck Greener 32

IPO decisions

EPO decisions

EUIPO’s Strategic Plan 2025

Trade marks

Volume 48, number 10

G1/19 – a red card for simulation?

Arrow declarations

EPO Enlarged Board of Appeal: G1/19 – amicus curiae brief Computer Technology Committee Consultatione response Alicia Instone

Non-Institute events

Webinar report Giovanna Viganò

Cover Story: Trade secrets

Reasonable steps requirement in the Trade Secrets Directive John Hull

PCT applications

Fax replaced by Contingency Upload Service Theo Carter

Changing business models

David Pearce & Callum Docherty

57-72

Courses & Events; Announcements; Recruitment

Bristows Bird & Bird

OCTOBER 2019

CIPA JOURNAL

NEWS

OVERSEAS

Malaysia – amending claims Malaysian Federal Court rules that application to amend claims during court proceedings is allowed, fallback function of dependent claims restored.

he Federal Court has recently issued a majority decision in Merck Sharp & Dohme Corp v Hovid Berhad [2019], which is significant as it is only the third time a patent case has reached the apex court in Malaysia. Readers may recall that the first patent decision by the Federal Court, reported as SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor [2015] 6 MLJ, resulted in the finding that if an independent claim in a patent is held invalid, all the claims dependent thereon must also be held invalid, due to the inability of the court to ‘redraft’ a dependent claim to include the text of the independent claim. This decision significantly weakened the patent system, rendering dependent claims worthless (as they could no longer be used as fallback positions), and causing great concern among both practitioners and patent owners alike. The local IP associations worked with the Intellectual Property Corporation of Malaysia (MyIPO) in preparing amendments to the Patents Act to address this issue (primarily adding a clarification to explicitly give the Court the power of amendment) and submitting the same to the Attorney General’s Chambers. However, given the dramatic change of government in May 2018 (the first time in over 60 years), it seemed unlikely that the proposed amendments would be laid before Parliament with any urgency. Fortunately, the new Merck decision has largely addressed the above concern. The Federal Court reviewed the SKB Shutters decision and explained that when an independent claim contained all the features of a dependent claim (as for example may occur in chemistry claims where multiple options are included in the independent claim, with the dependent claims corresponding to the limitations

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for each option), and the prior art also comprised the same multiple options as the independent claim, then invalidation of the independent claim would lead to invalidation of the dependent claims (as determined in the earlier SKB Shutters case). However, it will be appreciated that this type of claim, referred to as ‘Type 1’ in the decision, is not commonly used. Claims of ‘Type 2’ are more prevalent wherein the dependent claims comprise additional features not found in the independent claim, and after reviewing the law and practice of several other countries, the Federal Court determined that invalidation of this type of independent claim would not automatically lead to invalidation of the dependent claims. Furthermore, the Federal Court stated that the conclusion drawn in SKB Shutters that amendments under the Act are prohibited, was not entirely accurate, and an application to amend a dependent claim may be permitted during court proceedings, and made after proceedings.

In conclusion, the Federal Court overturned the earlier position and confirmed that independent claims and dependent claims should be treated separately in court proceedings. If an independent claim is invalidated, the court has to look at dependent claims separately to determine the validity of patent, and the application may be amended by combining the features of a dependent claim with an independent claim to confer validity thereon. In other words, normal service has been resumed. Footnote: It may be pertinent to note that the minority view of the Federal Court indicated that the dependent claims would fall if the independent claim was invalidated, effectively based on the ‘Type 1’ claim described above (and the Merck claim was deemed to be of this type), but noted that a dependent claim may survive if it had independent features, i.e. a ‘Type 2’ claim, essentially agreeing with the majority on this point. Dr Chris Hemingway (Fellow)

Overseas update International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 31 July 2019, the Government of the Republic of Kiribati deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Kiribati, on 31 October 2019. Patent Law Treaty (PLT) On 30 July, the Government of Canada deposited its instrument of ratification of accession to the Patent Law Treaty. The Treaty will enter into force, with respect to Canada, on 30 October 2019. Dr Amanda R. Gladwin (Fellow), GSK

www.cipa.org.uk

AMICUS BRIEF

EPO – G1/19

Patentability of computer-implemented simulations at the EPO On 22 August 2019, CIPA filed an amicus curiae brief on computer-implemented simulation inventions at the EPO Enlarged Board of Appeal – G1/19.

Summary Industry has benefitted from a decade of consistency in Europe regarding the patentability of inventions involving computerimplemented simulation. This has been achieved by applying the reasoning of EPO Board of Appeal decision T1227/05, which looked at the technical purpose of a claimed computer simulation to decide whether it had technical character. CIPA supports the approach set out in T1227/05, and the significant body of case law which has followed this approach: claim features that serve a technical purpose have technical character and so contribute to the assessment of inventive step. We do not share the position of the Board in T0489/14, which is “not fully convinced by the… reasoning” of T1227/05. On the contrary, based on legal considerations and practical experience, we submit that the Enlarged Board should uphold the approach of T1227/05. Accordingly, we answer the questions in the referral as follows: Question 1: Yes – following the rationale of T1227/05, a computer-implemented simulation which is performed for a technical purpose cannot be denied a technical effect. Question 2: The relevant criterion is whether the simulation serves a technical purpose – again following T1227/05 Question 3: Claiming a simulation as part of a process for verifying a design may serve a technical purpose, and so support patentability as per T1227/05. However, we do not think this is the only way to serve a technical purpose (and our answers to Questions 1 and 2 are not affected). Our detailed reasoning in support of the above answers is set out below, along with some additional comments and concerns.

Legal Considerations Claim 1 of the patent application in T489/14 relates to modelling pedestrian crowd movement using computerimplemented simulation. Claim 1 of a fourth auxiliary request relates to the use of pedestrian movement simulation for designing a building structure. T489/14 (reasons 7) sets out the following approach for assessing patentability: “non-technical features are… to be taken into account in the assessment of inventive step to the extent that they interact with the technical subject-matter of the claim to solve a technical problem or, equivalently, to bring about a technical Volume 48, number 10

effect (see G 1/04, OJ EPO 2006, 334, reasons 5.3; T 154/04, OJ EPO 2008, 46, reasons 5, under (F), and 13 to 15)”. It is further added (reasons 11) that: “in the Board’s view, a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity”. The Board in T489/14 does not regard the claimed invention as providing such a technical effect. This would normally lead to a refusal for lack of inventive step. However, T489/14 sees an “evident analogy” (reasons 14) with T1227/05, in which

the claimed invention relates to the simulation of a circuit subject to 1/f noise. T1227/05 held (reasons 3.1): “a procedural step may contribute to the technical character of a method only to the extent that it serves a technical purpose of the method”. T1227/05 further held (reasons 3.4.2) that: “simulation methods cannot be denied a technical effect merely on the ground that they do not yet incorporate the physical end product”. Accordingly, the claimed invention in T1227/05 was found to be potentially OCTOBER 2019

CIPA JOURNAL

Trade secrets – reasonable steps How to satisfy the “reasonable steps” requirement in the Trade Secrets Directive and its UK implementing regulations. By John Hull (Associate)

n June 2018 the UK implemented the Trade Secrets Directive1 by bringing into force the Trade Secrets (Enforcement, etc) Regulations 20182. The Regulations allow trade secrets holders3 to enforce their rights against those who unlawfully acquire, use or disclose their trade secrets. A trade secret holder can also revert, in the UK, to a traditional action for breach of confidence provided the remedies and procedural aspects of the Directive and Regulations are adhered to.4 The Regulations therefore create a minimum level of protection to enforce rights in trade secrets but provide a wider level of possible protection for those who choose it. One thing any future litigant relying on the Regulations will have to establish, however, is the existence of a trade secret, as defined by the Regulations. English courts, in developing the breach of confidence action, have not provided any comprehensive definition of a trade secret5, preferring instead to concentrate on establishing a boundary of secrecy defined by whether the information is accessible in the public domain.6 Information which is accessible cannot by definition be secret. By contrast, the Directive provides a definition which has been adopted in the Regulations, as follows: “‘trade secret’ means information which – (a) is secret in the sense that that it is not, as a body or in the precise configuration and assembly of its components, generally known among, or readily accessible to, persons within the circles that normally deal with the kind of information in question; (b) has commercial value because it is secret; and (c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.”7 This is a cumulative definition. It adopts the English law concept of accessibility, but adds first a requirement of “commercial value” based on the secrecy (inaccessibility) of the information

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and second, a “reasonable steps” requirement. So, information related to a business can be secret because it is inaccessible, but still be denied protection because it lacks “commercial value” or because the holder cannot prove “reasonable steps” to keep it secret were taken. Where does the “reasonable steps” requirement come from? The Directive’s definition is taken directly from article 39(2) of the TRIPS Agreement. Neither the TRIPS Agreement nor the Directive provide any explanation of what “reasonable steps” means. The US Uniform Trade Secrets Act’s definition of “Trade Secret”8 also uses a form of “reasonable steps” language as follows: “information, including a formula, pattern, compilation, program, device, method, technique, or process, that: i. derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and ii. is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.” The US Defend Trade Secrets Act 2016 adopts a similar definition but uses the term “reasonable measures”. What steps are considered “reasonable” will inevitably depend on the views of courts in different EU countries. What may be regarded (possibly on the basis of expert evidence) as reasonable in one country may be regarded quite differently in another. Ultimately, it will be an issue for guidance from the CJEU though that may take some time to emerge. What is clear, however, is that this is a proportionate test: “… reasonable steps under the circumstances…”. What may be considered reasonable for a well-resourced pharmaceutical company will be wholly disproportionate to a medium-sized retail services business. The steps a business takes to meet the www.cipa.org.uk

ARTICLE

reasonable steps requirement is also a reflection of how the business measures the risks – internal and external - it faces, and how critical those secrets are to the future of the business. This article deals with some practical aspects of this “reasonable steps” test and considers what businesses and other organisations can do to prove to a court, should the need arise, that the steps they have taken to protect their trade secrets are indeed “reasonable” ones and hence that the information concerned does qualify as a “Trade Secret”9. The words in the definition “… reasonable steps… to keep it secret” are clearly aimed at the threats to secrecy and those threats can come from either or both internal and external sources and these are considered below. Some steps are, however, common to either source of threat and hence are considered first.

Steps to protect secrets which are common to internal or external threats. 1. Identifying and defining trade secrets. It may seem odd to suggest that a step to protect a trade secret consists of identifying what it is. But as many litigants have found to their cost, claiming to own and hence to enforce a trade secret and then being able to define it, are two very different things. English case law shows there is a clear requirement for a secret to be identified as clearly as possible as a precursor to its enforcement.10

Volume 48, number 10

TRADE SECRETS

A business with a portfolio of registered rights – patents or trade marks – knows, or should know with a reasonable degree of certainty what it owns. Even businesses with a predominantly copyright based activity will usually be able to identify their key rights, such as specific computer software, musical or published works. Trade secrets are different because, as one US lawyer puts it: “The company’s entire trade secret portfolio is an amorphous, intangible and inchoate cloud of information stored on paper, computer drives and in the minds of employees.”11 And to this, we might now add: stored in the cloud – see below. So, being able to define, categorise and create an inventory of trade secrets will be a challenge for many businesses as new ones will be developed, existing ones enhanced and others fall away if they lose their secrecy. But for businesses that rely, for example, on a secret process or a highly sensitive customer list, the ability to identify and have an inventory of those significant trade secrets is likely to be seen as a significant reasonable step in their protection. Having an inventory of trade secrets (or at least the most significant ones) can also be a valuable way to enhance business value when the business is sold and its intellectual property portfolio comes under due diligence from a prospective purchaser. The question remains: how do you create this kind of inventory or record which will stand up to examination? One answer might lie in Blockchain technology12. Uploading

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CIPA JOURNAL

ARTICLE

Steps to protect trade secrets from external threats External steps are those addressed to those external to the business, but who may have access to the business’s trade secrets or possibly (for example as consultant) as someone playing a part in their creation.

1. Due diligence The point was made earlier that confidential information is a uniquely fragile commodity. Once disclosed to public view (or at least when it becomes “accessible”) its value disappears or is diminished. True, its disclosure to a potential commercial partner under a non-disclosure agreement, or its inclusion as know-how in a hybrid patent and know-how agreement with carefully drafted confidentiality provisions, provides the disclosing party with contractual protection if the other side breaches its obligations not to disclose the information. But if there is breach, the value of the potential deal or the know-how is lost or devalued. Taking action for breach provides the discloser with a damages claim but not the ability to “put the toothpaste back into the tube”. So due diligence on a potential recipient or licensee, assumes added significance. Has it a track record of contractual compliance? Does its management and those who will have access to the information understand the value of the information to the discloser? Does it have systems (of the sort discussed in this article) which underline its competence? In short, can it be trusted? It is possible, given the nature of confidential information, that proof that due diligence was carried out and the risk assessed will be considered a reasonable step a business should undertake to evaluate its business partners.

2. Non-disclosure agreements Non-disclosure agreements (NDAs) are the most ubiquitous of standard commercial agreements, are widely used and precedents are easily available. Disclosing confidential information as part of commercial discussions is commonly preceded by the signing of a NDA. There is little doubt that a court would expect a business to have in place and to use NDAs as part of a standard process for the protection of confidential information disclosed to third parties. This does not mean they are the universal panacea for business disclosures. They still need to be treated with a degree

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TRADE SECRETS

of caution, because not all NDAs are the same. One size does not fit all. They need to be adopted to fit the deal in question as the parties to Dorchester Project Management v BNP Paribas discovered when a non-disclosure and non-circumvention agreement was the subject of a preliminary hearing36 which went to the Court of Appeal37 just on the interpretation of 12 points of drafting. The parties had used an existing NDA and simply shoe horned it into a deal for which it was wholly inappropriate. Specific issues to be aware of when using NDAs include: •

The information to be disclosed should be specifically identified preferably by reference to documents or materials handed over. This is not always the case especially when information is disclosed orally with no subsequent identification and confirmation of its confidentiality. The need to identify what has been disclosed and that it meets the test of confidentiality applies even when a NDA is used.

•

Information is usually disclosed to specific individuals on a need-to-know basis. Since many NDAs are not effectively policed, the extent to which the information has been disclosed is often unclear thereby putting at risk the continued confidentiality of the information and the integrity of the “reasonable steps” policy

3. Contracts with third parties Most commercial contracts contain standard, usually reciprocal, confidentiality provisions. Some arrangements with third parties who have access to a business’s confidential information, its IT systems and premises will need more specific consideration. For example, consultants engaged to work on specific projects, especially those where trade secret material is created will need provisions to protect the information they acquire and information they create, either individually or jointly with others. Whilst trade secrets are not regarded as property as a matter of English law, a commercial agreement should be drafted to include the assignment of whatever rights the creator has in the information to emphasise the exclusivity which the business needs to establish. John Hull (Associate), Centre for Commercial Law Studies, Queen Mary, University of London.

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Arrow declarations: origins, development and where to next? The recent decision of the High Court in Pfizer Limited v F. Hoffman-La Roche AG and Anor1 has provided further insight into when the English courts will exercise its discretion to award an “Arrow declaration”. By Dr Christopher Stothers, Laura Whiting and Ammina Rao (Freshfields Bruckhaus Deringer LLP)

What is an Arrow declaration? In 2007 in the case of Arrow v Merck2, the High Court held that it had the discretion to grant a declaration that a product (in this case a generic version of Fosamax®) was known or obvious at the priority date of a divisional patent application. The purpose of such an Arrow declaration, sought pre-grant, is to serve as a defence to any later claim for infringement by the patent-holder once the divisional application is granted. An Arrow declaration is related to the “Gillette defence”, a term which was coined in the 1913 case of Gillette Safety v Anglo America Trading3. In the judgment, Lord Moulton confirmed that under English law it is a good defence to show that an alleged infringement was “not novel at the date of the plaintiff ’s Letters Patent” (it was later accepted to apply equally to obviousness). If so, there is no need for the alleged infringer to show that the patent is invalid or not infringed. The rationale for the decision was to allow an “ordinary member of the public” to “feel secure if he knows that that that which he is doing differs from that which has been done of old only in non-patentable variations, such as the substitution of mechanical equivalents or changes of material shape or size”. Arrow declarations take this further by allowing a similar declaration to be sought pre-grant, whereas a Gillette defence can only apply to granted patents. The jurisdiction underpinning the grant of Arrow declarations is the English courts’ broad discretion to grant declarations, including negative declarations, in appropriate cases (set out in Messier-Dowty Anor v Sabena SA4). However, the remedy is discretionary. The three factors to be taken into account by the English courts when granting a declaration generally were set out by Neuberger J (as he then was) in Financial Services Authority v Rourke (trading as JE Rourke & Co)5: “whether it was appropriate in all the circumstances to make an order, taking into account justice to both parties, whether the declaration would serve a useful purpose and whether there are any other special reasons.” Volume 48, number 10

When is an Arrow declaration an appropriate remedy? Arrow v Merck: not struck out Kitchin J (as he then was) applied the factors set out in FSA v Rourke in Arrow v Merck in a strike-out application in 2007. Merck had a family of patents and applications relating to a onceweekly dosing regimen for a drug called alendronate (used for the treatment of bone wasting diseases, including osteoporosis). Arrow had invalidated the parent patent in the UK (confirmed on appeal) and at the Technical Board of Appeal of the EPO. Arrow then sought a declaration of invalidity of the only granted divisional patent and any other European patent claiming the same regimen, across all the EPC designated states. Merck sought to strike that out and Arrow did not pursue that claim (presumably in light of the obvious lack of jurisdiction). By the time the strike out application was heard, Arrow was seeking instead declarations in relation only to UK designations and a declaration that any invention relating to the administration of 70mg of alendronate once weekly for osteoporosis would be invalid. In effect, Arrow sought a declaration that its own product was obvious at the priority date of the divisional applications. This novel relief would give Arrow the confirmation that dealing in its generic alendronate would not give rise to any infringement of Merck’s pending applications or any further divisional applications arising under them. Kitchin J began his application of the factors by determining whether the declarations sought would serve a useful purpose. He considered they undoubtedly would, because the need for commercial certainty was in the public interest; particularly as Merck had not assured Arrow that it would not enforce the divisional patent applications. This precluded commercial certainty for Arrow in respect of its future business plans and as a consequence, there existed a real and valuable commercial purpose in ordering the declarations. Kitchin J also held that the underlying issue was sufficiently clear and defined and could be properly determined by the OCTOBER 2019

CIPA JOURNAL

PERSONAL

OBITUARY

Sir Henry Carr 1958-2019

enry Carr died peacefully during the night of Thursday 18 July 2019 at the Princess Grace Hospital where he was being treated for terminal pancreatic cancer. He will be greatly missed by his family and all of his friends and colleagues who have been lucky enough to benefit from his huge personal and professional contributions to their lives and work. Henry James Carr was born on 31 March 1958, the only son of Malcolm and Sara (known as Sally) Carr. Henry’s mother was a woman with huge drive and determination, qualities which Henry inherited to the full. The family lived in Liverpool where they had many connections. His father and uncle, Cyril Carr, were solicitors there and his uncle served as Lord Mayor of the city. The family had a liberal tradition, Cyril Carr was President of the Liberal Party. Henry was educated at the local Jewish day school, King David High School where he studied English, French and Latin at A level. It was perhaps obvious that Henry would eventually become a lawyer with the family’s legal background. It was equally obvious that he would be a barrister rather than a solicitor. He had expressed a desire to practice at the Bar from an early age and whilst at school won the school debating competition and gained a RADA gold medal for public speaking as well as appearing in many school dramatic productions. His love of racquet sports also manifested itself at school where he was captain of squash and badminton as well as an enthusiastic tennis player, interests which stayed with him in later life. In 1976, he went up to Oxford to read law at Hertford College, with which he retained a close connection throughout the rest of his life. The current Principal, Will Hutton, was one of those who visited him during his final days in hospital. Whilst at

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Sir Henry Carr was a specialist intellectual property judge at the High Court and a great friend of the Institute.

Oxford his natural warmth and wit brought him many friends who again remained with him thereafter. Although he read law, his love of English was apparent from many of the activities he engaged in. Everything he did was undertaken with enormous enthusiasm. He continued acting, appearing in many student productions, including A Winter’s Tale and The Merchant of Venice. He played squash for the college and became captain of the college team. He even tried horse riding and, although he was not in the slightest militarily inclined, joined the Officer Training Corps for a short time. At Oxford he was tutored by the legendarily taciturn Roy Stuart, who also tutored Lord Pannick, and was a great Oxford character. Although Henry was anything but a swot, it was apparent from his great intelligence and exceptional powers of concentration that he would graduate with First Class Honours in jurisprudence and he duly did so in 1979. After this he went to the University of British Columbia to study for an LLM in the legal protection of computer software. He later turned his thesis into a seminal textbook on the subject. Henry was admitted to Gray’s Inn as a student whilst at Oxford and became President of the Oxford Gray’s Inn Society through which he made enormous efforts to promote the Inn to Oxford students. After returning from British Columbia

he read for the Bar in 1980-81. Henry continued his stellar academic career at the Inn, being awarded the Uthwatt Junior Scholarship in 1978 and the Holker Senior Scholarship in 1980. Henry had by then started to consider pupillage and approached the Chambers of Stephen Gratwick at 11 South Square. As was traditional in those days, Chambers sent him to work in the office of a patent agent, Carpmaels & Ransford, to learn about the prosecution and litigation of patents through the Patent Office. On his call to the Bar in 1982, he began a common law pupillage with Michael Gettleson, with whom he used to exchange Shakespearian quotes, at 2 Harcourt Buildings. He then had the opportunity to spend a few months working in the patent litigation department of Lovell, White & King, for which he had to obtain a dispensation from the Senate of the Bar. His memory of his time there was dominated by the day he managed to post a complete set of cease and desist letters without putting stamps on them and then had to wait and persuade the postman emptying the box to let him have them back, a tale he recounted on his elevation to the Bench. Finally, in October 1982, he joined 11 South Square. 11 South Square has always been a particularly close-knit group and Henry immediately fitted in, contributing enthusiastically to Chambers events and activities. Informal squash evenings of the younger members and their friends were regular events and Henry was one of the key players. As a member of the RAC Club Henry often organised these and arranged for a number of years for the annual Chambers Christmas dinner to be held there. When he joined us, we were a small chambers practising mostly in what was then the rather recherché field of patent law. Despite his lack of scientific training

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PERSONAL

Henry took to patent law with relish and rapidly began to master the most technically demanding and complex cases. His final case at the bar involved antibody therapies to treat cancer, one of the most difficult scientific fields for non-practitioners to grasp. But nothing in the case fazed him and his cross-examination of the opposing expert was a model of how to demonstrate that the evidence against his client was scientifically unsound. Indeed, Arnold J, a former colleague in chambers, commenting following Henry’s death said: “Among many other distinguishing qualities, he had a fine legal mind and a remarkable facility, for someone without a STEM degree, for grasping the most complex technical subject matter.” He went on to point out that Henry was “also a very warm and funny person who was excellent company”, something with which everyone in chambers would wholeheartedly concur. Indeed, all of those who have known him throughout his career know that he was great fun to have a drink with as well as to work with. As Henry’s junior practice developed, the patent bar metamorphosed into the Intellectual Property Bar, and trade marks and copyright became far more prominent both legally and for business. Henry excelled at acting as the interface between his clients and the legal system. His advice was always spot on and he rose rapidly through the ranks. He took silk in 1998 after only 16 years as a junior. He was universally recognised as one of the leading practitioners in the field at this time. Indeed, it was remarked on many occasions that he was so busy that solicitors had to be extremely lucky to find a gap in his diary. Throughout his career at the Bar, Henry demonstrated exceptional skill both in and out of court. He was the ‘go to’ barrister of his generation for any technically complex case because he would always prepare meticulously to master it and present the facts and legal analysis with compelling persuasiveness. His cross-examinations were exemplary. He was listed in the directories as a star of the bar for many years and was

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OBITUARY

repeatedly awarded IP/IT silk of the year. He managed to be both hard working and socially active, a combination which is very difficult to achieve. Henry had a unique combination of expertise, analytical ability and charm which made him a complete pleasure both to work with and to appear against – although in the latter instance one frequently found oneself unexpectedly on the losing side. The comments by those who instructed and worked with him were uniformly positive. He was often described as being “a really nice guy”. Despite his outstanding ability, he was never pompous or overbearing. As one of those who instructed him regularly said “Henry was unfailingly polite, kind and generous with his time, never flustered and always good-humoured”. All of us who worked with him in Chambers remember that he was always happy to help with advice and guidance when we had a tricky problem; and the suggestions he made usually provided a solution. Henry’s personal qualities included a number of characteristic and endearing foibles which we all recall; indeed they feature in the speeches of welcome made when he went onto the bench. His powers of concentration were formidable. So much so that he would literally lose himself in thought when working on a tricky issue. Many was the time that he forget where he was and accidentally upended a nearby glass of water or cup of coffee. We all became adept at swabbing up the result. Everyone who worked with him also knew never to lend him anything other than a disposable pen – if it did come back, it was with the top chewed to destruction as he masticated his way through the thinking process. When Henry became a bencher of Gray’s Inn in 2005 he threw himself thoroughly into Inn life in his customary fashion. He chaired the Events Committee and served on the Management Committee for several years and, had he lived, would no doubt have gone on to become Treasurer. Henry was appointed a Deputy Judge of the Chancery Division in 2007, a Deputy Chairman of the Copyright Tribunal

in 2010 and Chairman of the IP Bar Association in 2012, a role in which he served with distinction until leaving for the Bench. He was appointed to the Bench in 2015 and immediately began sitting on major cases. Amongst the most notable was his decision in 2017 to grant the first “Arrow declaration”, a major jurisdictional advance which enabled defendants to seek a declaration which would protect particular product or process against successive actions by a patentee on what could be a raft of ‘divisional’ patents granted over a period of time for the same or related inventions. Henry married Jan Dawson in 1988. Everyone from Chambers who was able went to the wedding and all remember it as a wonderful day. Henry and Jan had a long and happy marriage, living first in Fulham and then moving to Kent, where Jan kept horses and they enjoyed the country life. They had four children, Oliver, Harry, Charlie and Lily. His happiest times, he said, were holidaying with his family – they would take a large house in France for a few weeks in the summer and their children would invite their friends to stay in what he regarded as blissful chaos. Henry was first diagnosed with cancer in 2016. He took this with his customary aplomb and dealt with the many medical incidents that followed over the last years of his life with humour and fortitude. He worked tirelessly up to a few weeks before his death when his health deteriorated so as to make this impossible. He took the time and care to see many of his friends and colleagues in the days before his death so they could properly say goodbye. His approach in his last days was serene, telling us that he was at peace and loved us all. It is hard to believe that he has really gone, so great was his influence on all of us in Chambers, even after he left for the Bench. We will miss him terribly and our hearts go out to Jan and the children who have lost a loving and devoted husband and father. Michael Silverleaf QC, 11 South Square This obituary was first published online at www.11southsquare.com

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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 17 October 2019 Social

CAMBRIDGE HAPPY HOUR Time: 18.00–19.00 Location: The Geldart, 1 Ainsworth Street, Cambridge, CB1 2PF Come join us and other members of CIPA in your area for after work drinks and a great opportunity to network in Cambridge. We hope to see you there! 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!

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 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 54 CIPA JOURNAL

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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 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

UPDATE ON COMPUTERS AND IP SEMINAR Time: from 12.30-17.30 Location: Connaught Rooms, 61-63 Great Queen Street, London, WC2B 5DA 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 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 12. 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) www.cipa.org.uk

CPD & EDUCATION

Tuesday 5 November 2019 Webinar

INSTITUTE EVENTS

11-12 November 2019 Conference

LIFE SCIENCES 2019

Time: 12.30–13.30

Location: The Brighton Grand

The Internet has developed into an essential piece of infrastructure for businesses and society more generally. The growth in the UK’s digital economy continues apace and the government has prioritised the sector in order to take advantage of and accentuate that trend. This growth coupled with the technological innovations in the Internet sphere create significant legal challenges for those making and interpreting the law, particularly copyright law which is central to protecting digital content. This webinar will explore the foundations of UK copyright law and look at some of the ways in which the courts are dealing with copyright in the Internet age by looking at some recent leading copyright cases.

See online for full details and to book your place.

Speaker: Piers Strickland (Waterfront Solicitors LLP) CPD: 1; Prices: £72 (£48 CIPA members)

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: •

Thursday 7 November 2019 Seminar

•

PATENT CASE LAW SCOTLAND Time: 12.30–17.30 Location: DoubleTree By Hilton, 34 Bread Street, Edinburgh, EH3 9AF 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 12. CPD: 3.5 Prices: £234 (£156 members).

• • •

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) Monday 18 November 2019 Webinar

INTRODUCTION TO COPYRIGHT Time: 12.30–13.30 Reporters Needed – CIPA is looking for volunteers to report on CIPA events. If you are interested, please contact cpd@cipa.org.uk.

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Are you interested in movies, art, music or theatre? If so, you will enjoy learning more about copyright in this high level introduction to the topic. Varuni will provide answers to the following:

• • • •

How does copyright arise? What works does it relate to? What rights does it give to the owner? How does copyright relate to the digital world?

The webinar also provides practical advice as to how copyright is relevant to the patent profession. Speaker: Varuni Paranavitane (AA Thornton) CPD: 1; Prices: £72 (£48 CIPA members) Wednesday 20 November 2019 Webinar

OUT OF YOUR COMFORT ZONE: PATENT SEARCHING Time: 12.30–13.30 Accessing the important information contained in patent documents, that was once the sole domain of the professional searcher, has become increasingly mainstream with the introduction of a number of free, webbased patent search tools. The search engines and interfaces are adequate and very user-friendly for novices, and those who are occasional searchers, to retrieve useful patent information without too much effort. Highlighting some key free patent search tools, such as Espacenet (EPO), PatentScope (WIPO) and Google Patents, this webinar will help you better understand the structured nature of the information within a patent document and how it relates to the patent search process, as well as provide awareness and tips to enable you to carry out effective and efficient patent searches in support of your patentability, freedom to operate and validity assessments. The webinar is aimed at the novice searcher, but can also provide a useful refresher for those who carry out patent searches on an occasional basis. Speakers: Susan Bates (Shell International), Grayce Shomade (Patent Analyst) CPD: 1; Prices: £72 (£48 CIPA members)

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CIPA JOURNAL