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

November 2019 / Volume 48 / Number 11

Published 30 October 2019

Practice guidance on a no-deal Brexit Customs enforcement after Brexit Emma Green

Exhaustion of IP rights if there is a no-deal Brexit Katharine Stephens

SEPs and EU standard-setting post-Brexit Andy Spurr

Unified Patent Court and the UK after Brexit Alan Johnson

IP in a postBrexit world Questions & Answers


UP FRONT

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

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

Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third-party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions. © The Chartered Institute of Patent Attorneys 2019 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314

CIPA CONTACTS

Julia Florence President

Richard Mair Vice-President

Stephen Jones Immediate Past-President

Gwilym Roberts Honorary Secretary

Committee Chairs Business Practice Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs & Copyright Alicia Instone; Education Vicki Salmon; IP Commercialisation Catriona Hammer; IP Pro Bono Stephen Jones; Informals Matthew Veale; Internal Governance Catriona Hammer; International Liaison Richard Mair; IP Paralegals Julia Tribe; Life Sciences Simon Wright; Litigation Matthew Critten; Media & Public Relations Jerry Bridge-Butler; PEB Michael Yates; Patents Tim Jackson; Protected Titles Lee Davies; Regulatory Affairs Chris Mercer; Textbooks & Publications Bill Jones; Trade Marks Keith Howick. Head of Membership Dwaine Hamilton Membership Officer Frances Bleach Events and Professional Development Officer Emma Spurrs Events Co-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 Communications Officer Amy Williams External Affairs Officer Abby Lever Admin Generalist Kereiss Isles General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk


Contents

29 & 32 UP FRONT

BREXIT BRIEFING DECISIONS

2

28

Council Minutes

Lee Davies

BREXIT UPDATE 5

No-deal Brexit

29

Advice for IP practitioners 6

IP in a post-Brexit world

Questions & Answers 10

Trade marks – the Madrid system post-Brexit

12

Designs – the Hague system post-Brexit Practice guidance on a no-deal Brexit

Questions & Answers

16

Patents; SPCs; trade marks; designs; .eu domain names; Community Plant Variety Rights; Marketing Plant Reproductive Material in the EU; GIs 18

European patent work unaffected by Brexit

32

37

The UK plays a major role in European standard-setting. How will Brexit affect this? Andy Spurr

40

Exhaustion of IP rights if there is a no-deal Brexit

42

Government Brexit guidelines have sought to retain the present system of EEA-wide exhaustion of IP rights, but a no-deal Brexit would not allow this Katharine Stephens

44

Into the unknown

54 33

Non-Institute events

The Unified Patent Court and the UK after Brexit

56

Institute events

Can the UK still play a role in the UPC after Brexit? Alan Johnson

PERSONAL

Customs enforcement after Brexit Emma Green. 34

THE PINKS 59

Volume 48, number 11

SEPs and EU standard-setting post-Brexit

Courses & Events; Support; International; Recruitment

Patent decisions

Beck Greener Shanks v Unilever

Chris Ryan 41

IPO decisions

David Pearce & Callum Docherty EPO decisions

Bristows Trade marks

Bird & Bird

EDUCATION IP Outside Your Comfort Zone

Webinar report on IP Agreements

43

IP Pro Bono update

55 58

Announcements IP Inclusive update

Stephen Jones & Kate O’Rourke

Andrea Brewster OBE

NOVEMBER 2019

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NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 4 September 2019, at 14:30 Item 1: Welcome and apologies Present: Julia Florence (President, in the Chair), Richard Mair (Vice-President, by phone), Gwilym Roberts (Honorary Secretary), Roger Burt (by phone), Daniel Chew, Paul Cole, Anna Denholm (by phone), Matt Dixon (by phone), Stuart Forrest, Catriona Hammer, Greg Iceton (by phone), Alicia Instone, Rob Jackson, Tim Jackson, Keith Loven, Chris Mercer, Bobby Mukherjee, Emily Nytko-Lutz, Bev Ouzman (by phone), Alasdair Poore, Vicki Salmon, Andrew Sunderland and Matthew Veale (Informals Honorary Secretary, by phone) and Simon Wright (by phone). Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Stephen Jones (Immediate Past President), Andrea Brewster, John Brown and Tony Rollins.

Item 2: Conflicts of interest 173/19: Bobby Mukherjee declared a potential conflict of interest in relation to the discussion about trade agreements, because of his role in the IP Federation.

Item 3: Minutes 174/19: Julia Florence was unable to attend the last Council meeting and thanked Gwilym Roberts for chairing the meeting. The minutes from the meeting held on 3 July 2019 were approved. 175/19: From Minute 152/19, in relation to the concerns raised about the status of a Student Member and whether the Student Member was in breach of the Bye-laws. Lee Davies advised Council that he had spoken to the student member and was satisfied with the measures that have been put in place. Lee added that the membership committee agreed that the student 2

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member is now compliant with the Byelaws. The firm has appointed a full-time patent attorney and the student member has registered to sit the 2020 EQEs and committed to undertake training courses to sit the UK examinations. Julia Florence said that it was good that the issue had been resolved and was pleased that CIPA had been helpful and supportive in terms of providing the student member with constructive advice on the best action to take.

Item 4: Brexit 176/19: Julia Florence invited Council to consider what other actions CIPA might need to take now that the UK leaving the EU without a deal was looking more likely. Julia added that CIPA had carried out a lot of work in producing guidance and information on what would happen to patents, trade marks, designs and copyrights in terms of the IP law after Brexit and that this had been regularly communicated to members. Julia asked if there was anything else CIPA could be doing, for example disseminating information to a wider audience beyond the CIPA membership or providing general business advice relating to Brexit. Lee Davies advised Council that, in relation to the question of CIPA doing more by way of business advice to our members and the wider IP community, the government had launched the Business Readiness Fund to help UK businesses prepare for a no-deal Brexit. Lee said that the £10m fund was available for chartered institutes and professional bodies to support activities aimed at helping business to be ready for a no deal Brexit. Lee added that grants of £25,000 or more were available for producing advice packs, running events and putting on training courses and webinars. Lee said that the closing date for applications was 30

September and that all activities had to be completed by 31 October, 2019. Council supported a proposal from Lee Davies to make a bid to the fund to support a programme of activities for CIPA members and the wider IP community in the event of a no deal Brexit. Action: Lee Davies to prepare a bid to the Business Readiness Fund by 30 September, 2019. 177/19: Lee Davies advised Council that he had been approached by the Ministry of Justice (MoJ) about a roundtable meeting with Chris Philp MP, Parliamentary Under Secretary of State at the MoJ, on 25 September at 17:30 – 18:45. Lee explained that the meeting was intended to give managing partners, senior partners and IP business owners the opportunity to discuss the impact of a no-deal Brexit on legal services, regulation of the legal sector, business readiness and to ask any questions that they may have. Lee said that the MoJ was hoping to have representatives from the IPO and BEIS at the meeting and that CITMA had also been invited to send delegates to the meeting. Action: Lee Davies to liaise with Council members who are interested in attending the meeting and to invite managing partners to attend the meeting. Catriona Hammer informed Council that CIPA had been invited to attend the IP Expert Trade Agreement Group (ETAG) meetings. Catriona said that the first meeting was scheduled for 30 September and that she would be able to provide Council with more information after the meeting. [Redacted.] Action: Tim Jackson to lead on a discussion on the EPC and trade www.cipa.org.uk


NEWS

agreements with the Patents Committee and to liaise with Catriona Hammer, Chair of the IP Commercialisation Committee. 178/19: Gwilym Roberts provided Council with an update on the joint paper on ‘Brexit – Continuity and Certainty’ which Daniel Alexander QC is taking the lead on. Gwilym added that he hoped to receive a draft of the paper by the end of September for Council to consider. 179/19: Alicia Instone confirmed that she had updated the Brexit Practice Points paper on the CIPA website. [Also see page 16.]

Item 5: Regulatory matters 180/19: Lee Davies advised Council that the guidance on the application of the Money Laundering Regulations to the work of patent and trade mark attorneys had been signed off by CIPA, CITMA and IPReg and was awaiting the return of Paul Ozin QC from holiday towards the end of September before publication. 181/19: Lee Davies advised Council that IPReg’s budget and business plan consultation had concluded and that a submission had been made to he Legal Services Board (LSB). Lee added that he understood the LSB would consider the practice fee submissions from all the regulatory bodies at a board meeting towards the end of September. 182/19: Lee Davies advised Council that the LSB had completed its consultation on the Internal Governance Rules (IGR) and that these had now been published. Lee added that the Delegation Agreement would now need to be reviewed and amended to reflect the changes to the IGR. Lee said that the Approved Regulators had been given 12 months to ensure that their agreements delegating powers to their Regulatory Bodies complied with the IGR. Action: Lee Davies to liaise with the CEOs of CITMA and IPReg on a first draft of the Delegation Agreement for Council’s consideration. Volume 48, number 11

COUNCIL

Item 6: IPO and EPO matters 183/19: Stuart Forrest informed Council that the UKIPO would be outsourcing searching to the EPO to help ease the backlog. Stuart said that this would initially be in the area of biotechnology and that it was likely that this would extend to electronic cases due to the backlog there. Stuart observed that examiners were being encouraged to make more positive comments when expressing examination opinions. 184/19: Julia Florence advised Council that she had had a very positive meeting with Tim Moss, CEO of the UKIPO, and the Presidents of CITMA, the IP Federation and FICPI-UK. Julia said that she would provide a note of the meeting to the Patents Committee. 185/19: Julia Florence advised Council that she was due to meet EPO President Campinos at the Union dinner on 12 September and that this would be followed by a formal meeting between CIPA and the EPO on 13 September. Julia said that she was looking forward to meeting with President Campinos and raising issues of mutual interest. Julia added that she was also due to meet with Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), during his visit to the UK for the AIPPI annual conference.

Item 7: Annual subscriptions 186/19: Lee Davies advised Council that Since 2010, the rate of subscriptions paid by members had increased twice, in 2014 and 2015. On both occasions, subscriptions were increased by 2.5%. Lee said that CIPA had worked hard in recent years to reduce its operating costs, rather than apply an annual increase to subscriptions. The move to Halton House brought about a small saving in rent and related office costs. The staffing structure of CIPA had been regularly reviewed and modified to bring about further savings. Lee said that, whilst operating costs had been reduced, CIPA had drawn on its

reserves to fund important projects including the renewal of its membership database, web management and finance systems and financing the move to Halton House. Lee said that CIPA had increased its representative activities, in part in response to the challenges brought about by Brexit and in part to improve the standing of UK patent attorneys internationally. CIPA’s international liaison work had increased and the Officers had become more involved in activities to promote the UK profession overseas. Lee added that CIPA had been at the forefront of important initiatives such as IP Inclusive and IP Pro Bono. Lee said that CIPA had increased its policy, research and lobbying activities, again partly in response to the challenges of Brexit. There had been a greater need for expert advice in the form of leading counsel’s opinion in relation to IPReg and Brexit. Lee added that the webinar and seminar programme had been significantly developed for members and that there was an increased number of regional events and other activities. Lee said that the membership was highly engaged in CIPA’s activities and that engagement brought with it the demand for CIPA to do even more for its members. Lee concluded by saying that CIPA has a great story to tell in terms of its work on behalf of its members. Lee Davies advised Council that the Internal Governance Committee was beginning the process of budgeting for 2020/21. Lee said that, in looking at CIPA’s income, the Committee took the view that it would be appropriate to increase the rate of annual subscriptions and the cost of other services to reflect the growth of members services and the need for this growth to continue in the future. Lee reminded Council that, in response to IPReg’s proposal to increase practice fees for 2020 by 2.3%, in line with the Retail Price Index (RPI), Council challenged IPReg on its use of the RPI as its benchmark, given that government has indicated that it intended to move away from this measure of inflation, toward the NOVEMBER 2019

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NEWS

Consumer Price Index (CPI) or the new CPIH benchmark, which includes owner occupiers’ housing costs. Lee informed Council that, as of 14 August, 2019, the RPI was 2.8%, the CPI was 2.1% and the CPIH was 2%. Lee invited Council to consider the Internal Governance Committee’s recommendation to increase the rate of subscriptions for 2020 and to approve the level of the increase. Decision: Council agreed to increase annual subscriptions and other membership services by 2.1%, in line with the CPI. [Also see page 55.]

COUNCIL

proposal to move away from the existing themes of Status, Influence, Learning and Community (SILC) towards four new themes based on the characteristics of CIPA’s members: Professional, Expert, Influential and Connected. Lee added that he had reduced the strategic priorities from 22 to ten, focusing on the objectives CIPA wanted to achieve, not how these will be achieved. Council members asked for time to consider the Strategic Plan and to provide feedback to Lee. Lee suggested that the October meeting would have a full agenda and proposed that the November meeting of Council should focus on the Strategic Plan, giving enough time for publication in January 2020.

Item 8: Annual General Meeting 187/19: The one hundred and thirtyseventh Annual General Meeting will be held on Wednesday 2 October 2019, following the Council meeting scheduled for that date. Lee advised Council that Richard Mair will serve as President with effect from 1 January 2020, following his election at the 2018 AGM. Lee added that Alicia Instone was the only candidate standing for election as President with effect from 1 January 2021. Alicia would serve as Vice-President with effect from 1 January 2020. Lee informed Council that, as required by the Bye-laws, eight members of Council are standing down with effect from 1 January 2020. The nominations for election to Council to serve a threeyear term commencing 1 January 2020, are: John Brown; Roger Burt; Rob Jackson; Tim Jackson; Parminder Lally; Bobby Mukherjee; Alasdair Poore; Sheila Wallace; Simon Wright. Lee said that, there being more nominations than seats available on Council, an election will be held in compliance with Bye-law 19. The ballot opens not less than 14 days prior to the AGM and closes 24 hours before the scheduled time of the AGM.

Item 9: Strategic Plan 188/19: Lee Davies presented the first draft version of the Strategic Plan to Council. Lee explained the rationale behind his 4

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Action: Council members to consider the Strategic Plan and provide feedback to Lee Davies in advance of the November Council meeting.

Item 10: Committees and committee reports 189/19: Congress Committee Council was advised that the Congress Committee was compiling a list for the ‘hot topics’ session, following a request to members for suggestions. Council noted the final version of the programme. The Annual Dinner will be held immediately after Congress with guest speaker, author and former patent attorney, Roz Watkins. 190/19: IP Commercialisation Committee Council noted the report from the IP Commercialisation Committee. 191/19: International Liaison Committee Richard Mair gave a report to Council on the recent trip to Brazil. Council approved the appointment of Howard Read (Appleyard Lees) to the Committee. Richard advised Council that the next meeting of the Committee is scheduled for 5 September and will be preceded by an international liaison strategy meeting. Richard added that he would hand over the Chair of the Committee to Tony Rollins at the meeting. Richard thanked Council members for the support they had given him during his time as Chair of

the Committee. Julia Florence proposed a vote of thanks to Richard for his leadership of the Committee, which was passed by acclamation. 192/19: Computer Technology Committee Council noted the report from the Computer Technology Committee. 193/19: Designs and Copyright Committee Council noted the report from the Designs and Copyright Committee. Council granted the Committee the power to act on its behalf in making a response to the EUIPO’s Strategic Plan 2025. Alicia Instone advised Council that she was working on a response, which she hoped to circulate to members of Council before submitting to the EUIPO. Julia Florence thanked Alicia for her work on this. [See October [2019] CIPA 13] 194/19: Patents Committee Council noted the report from the Patents Committee. 195/19: Professional Development Working Group Council noted the report from the Professional Development Working Group. 196/19: Membership Committee Council noted the report of the Membership Committee. The Committee advised Council that the following membership applications had been approved: Fellows: Emile Choo Chia Chin; Jessica Ruth Williams; Stephen Murphy; Joanna Louise Pownall; Thomas Warren Williams; Carl Bryers; Alice Stuart‐ Grumbar; Samuel Charles Grayer; Joe Abdalla; Sarah Massara; Stefanie Lewis; Michelle Montgomery; Matthew Walsh; Alexander John Worley; Pippa Hothersall; Thomas Fraser; Nina Szamocki‐Hoffman; Robert Scott. EPAs: Emily Jane Crizzle

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NEWS

Students: Pip Hellier; Oliver David Henry Stocks; Amanda Taylor; Harry O’Brien; Edwina Mary Bishop; Adam William Frankland; Daren Croxford; Liam Benjamin Duffy; Philip Paul Wright; William Richard Smith; Henry Sebastian Worrall; Laura Brown; Ying Suet Choy. IP Paralegals: Melanie Rose Breckenridge; Darrell Brierley; Joanna Higgs; Linda Hedges; Gemma Masters; Chloe Elsom; Katherine Killick; Amanda Monaghan; Ebba Hagbro; Rachel Oldfield. Associates: Emma Frost.

Item 11: Officers’ reports 197/19: Council noted the Officers’ reports.

COUNCIL

Item 12: Chief Executive’s Report 198/19: Council noted the Chief Executive’s report.

Item 13: Any other business 199/19: Paul Cole advised Council that he was on course to publish the CIPA Guide to the Patents Act by the end of the year. 200/19: Paul Cole tabled a letter from WilmerHale seeking Amicus support in Athena Diagnostics v Mayo Collaborative Services. Paul requested the power to act on behalf of Council in submitting an Amicus Brief to the Supreme Court. Council remitted the decision to file an Amicus Brief to the Life Sciences Committee.

201/19: Simon Wright advised Council that the Life Sciences Committee and the Patents Committee were working together on an Amicus Brief in relation to case G 3/19 before the Enlarged Board of Appeal. 202/19: Emily Nytko-Lutz informed Council that this would be her last meeting for some time as she was due to go on maternity leave. Council thanked Emily for her work on Council and offered its best wishes on the birth of her baby.

Item 14: Date of next meeting 179/19: Wednesday 2 October, 2019. The President closed the meeting at 17:05. Lee Davies, Chief Executive

No-deal Brexit – advice for IP practitioners

Also see the animation on CIPA’s website and page 16 for no-deal Brexit advice

I

f the UK leaves the European Union without a deal, you need to be ready, so your clients experience the minimum of disruption and you can continue to provide the best possible service. If you do not have an office in the European Union you will not be able to file EU design and trade mark applications and you will not be able to

Volume 48, number 11

be an EUIPO representative for existing rights. One solution is to establish a reciprocal filing and representation arrangement with a firm in the EU, because there will be a lot of new design and trade mark work to do in the UK after Brexit. Make sure your EU partners know what you can offer.

An alternative strategy is to file at WIPO. You can continue to file designs designating the EU using the Hague system and trade marks designating the EU via the Madrid system – but this could be a more expensive option. More than one million EU-equivalent UK rights will be created overnight, with the representative listed at the EUIPO becoming the UK address for service. There will not be any notifications, so you will need to check they are accurate yourself, and ensure you’re recording all the details correctly in your records and renewals systems. You will also need to make clients aware that they can opt-out from these new rights if they want to, or if they are obliged to under an existing agreement. Patents will be unaffected - and the EPO has confirmed that a work permit will not be required to attend hearings. There will also be changes to how VAT works for EU clients. So check with your accountants. NOVEMBER 2019

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BREXIT

Q&As

IP in a post-Brexit world On Monday 28 October, CIPA Chief Executive Lee Davies chaired a live Q&A session with Institute President Julia Florence and Council members Alicia Instone and Matt Dixon. The panel considered the impact that Brexit will have on various aspects of intellectual property, from the cloning of European trade marks and designs onto the UK register to the continuing work of UK-based Chartered Patent Attorneys in the European Union. Patent work will not be affected by Brexit because the European patent system is not governed by the EU. This event, which was broadcast on YouTube from CIPA HQ on 28 October 2019, was watched by an audience in the UK, the US, Canada, Italy, Spain, Germany, Italy, Spain, Sweden, Finland and Poland. Set out below is a report of the discussion focusing on the questions asked and the responses provided by the panel. The event was organised with the support of the Brexit readiness fund and in conjunction with CIPA’s media partners Worktime TV. CIPA members can see the broadcast in full at: www.cipa.org.uk/whats-on/events/ip-in-a-post-brexit-world. also leads on CIPA’s work on designs and copyright and is influential in trade marks. Finally, Matt Dixon, the focus of CIPA’s work around business practice and what Brexit means for firms. The event started with Lee getting Alicia, Julia and Matt to outline their areas of interest and areas of work on Brexit. Alicia Instone (Chair, Designs & Copyright Committee and incoming vice-president)

A

s well as being live online, the event was broadcasted from CIPA’s office in London to regional hubs (with the support of member firms) in: Manchester (Appleyard Lees); Glasgow (Lawrie IP); Cambridge (Mills & Reeve LLP); Gloucester (Wynne-Jones IP Ltd); Hatfield (Cleveland Scott York); and Munich (Dehns). Lee Davies (CIPA Chief Executive) noted the huge interest for the broadcast, not just from around Europe, but across the world. Pointing out that there were already questions online from Italy, France, Germany, and Spain. Lee highlighted CIPA’s Brexit-related work. Since 2016, CIPA has worked tirelessly 6

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to ensure that the UK leaves the European Union (EU) without the IP system being damaged by any unintended consequences. International work for the last three years has been heavily focused on Brexit, stressing that as far as patents are concerned it is business as usual, but that there will be some changes particularly in the world of trade marks and designs. Council members have been the most active in the work on Brexit and Lee was delighted to be joined on the panel by three council members. CIPA’s president Julia Florence. Alicia Instone, the incoming vice-president (from 1 January 2020). Alicia

Alicia ran through her experiences in the world of trade marks and designs. It had been interesting to spend lots of time being thrown in at the deep end with lots of meetings with the UK government, in particular with the UKIPO and also with Defra and the Ministry of Justice (MoJ). There are quarterly meetings with the Marks and Designs Forum (MDF). There were two separate meetings to talk about rights of representation and the transitions of the rights onto the UK register. As well as special meetings about seniority claims and to make sure that the UK legislation is in place for the creation of comparable or re-registered rights. There have also been meetings to spot any errors in statutory instruments (SIs) before they are laid in Parliament (including the trade marks SI). www.cipa.org.uk


BREXIT

On the design side Dave Musker (Fellow) has been heavily involved in making sure documents were scrutinised so that nothing went through without CIPA having an opportunity to comment. Although CIPA did not have too much influence, the UKIPO was receptive when CIPA spotted any sort of nuances. All the way through the UKIPO has been very engaged with CIPA. There have been meetings with Defra for update on the geographical indications (GIs) process. As well as meetings with the MoJ about the issues surrounding the rights representation. CIPA will continue working with the government on the rights of representation. How have you found being an unpaid volunteer parachuted into this world of lobbying and campaigning on behalf of members and also the users of the IP system? This was something she had not come across before. It was quite daunting to be the person looking at and scrutinising SIs. It is quite a responsibility but very rewarding to provide feedback. At times, it has even been quite fun. What do you think has been the most challenging aspect of the changing world for designs and trade marks? How to make sure that the UKIPO did not do anything that would inadvertently give anything away in terms of rights. As well as making sure the UKIPO’s implementation was as smooth as possible for users and for business. This involved looking at the pros and cons of the various models put forward by the UKIPO and identifying any issues there might be. Lee thanked Alicia on behalf of our members and also users of the IP system for the work she has done. Julia Florence (CIPA President, and until her recent retirement was a senior patent attorney at GlaxoSmithKline)

Julia shared some of her experiences and thoughts in terms of CIPA’s work on patents but also the work that CIPA has been doing nationally and internationally. It has been very interesting. Much of the work on patents mirrors what Alicia has been doing on trade marks and designs. Certainly, for patents we are in a very fortunate position Volume 48, number 11

Q&As

CIPA’s Chief Executive Lee Davies chaired a live Q&A session with Institute President Julia Florence and Council members Alicia Instone and Matt Dixon

that Brexit does not actually affect European patent work for the UK. There has been a lot of misinformation and misunderstanding, particularly outside of the UK, as to how that could be the case. For the past three years, and before Julia was president, former presidents Stephen Jones and Tony Rollins as well as members of CIPA’s International Liaison Committee have travelled all around the world giving CIPA’s message that for European patents Brexit has no effect and it is business as usual. Julia’s mantra has also been that the Europe that we are trying to leave is quite distinct from the Europe that grants our patents. People are beginning to understand that the EPO is not an EU agency it is an international organization. Likewise, the EPC is not EU law, it is an international agreement and that is why Brexit has no effect on the EPC. CIPA has had to take that message far and wide and continues to do that. The UKIPO has been fantastic in making sure that CIPA is kept up to date with issues that are arising through Brexit. One part of the patent space that is partially affected by Brexit is around supplementary protection certificates (SPCs) and the EU regulation. All EU regulations that are in force on exit day will become retained EU law. The UK have the same effective legislation in the UK after Brexit. There has been a need to fix certain parts of the legislation, which for example refer to other EU agencies and EU legislation and those need to be amended so that they refer instead to UK bodies and UK legislation,

so that the law will operate smoothly once the UK left the EU. That is being done by means of such instruments as Sis, and again CIPA has been very heavily involved with the SIs relating to SPC regulations. Julia has travelled extensively to represent CIPA in her time as president. Lee asked how this has been received in terms of the business-as-usual message and the work on behalf of members when overseas? Julia remarked that CIPA has been very well received. Everybody’s been very interested to hear CIPA’s message and there have been lots of questions. People are glad that CIPA has gone out to demystify and clarify, as far as it can, what is happening with IP and Brexit. What would you say have been the biggest or most important questions you’ve been asked when you’ve been on your travels? There have been a lot of questions about using the EPO and whether UK attorneys will be able to continue to represent clients, which of course they will be able to. A lot of questions about the UPC. When Stephen Jones was president, he wrote to Theresa May urging that the government should ratify the UPC Agreement, so it was very pleasing when the UK did ratify. At the moment progress on the UPC is being held up by the German constitutional challenge. The UK government’s stated aim is to continue to negotiate with Europe to ensure that the UK can play a part in the UPC after Brexit. NOVEMBER 2019

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BREXIT

Q&As

Matt Dixon (Chair, Business Practice Committee)

Questions and answers

Matt shared some thoughts on how businesses are potentially affected by Brexit. Part of the challenge on advising on the business issues is that we have very few definite answers on some of the more general things. Although we work hard to demonstrate to the government and those in leadership that we are an important aspect of the UK economy, we come fairly low down on the government’s list of priorities. We are an international industry and issues come up such as: how am I going to continue to run this Anglo-European organization? These are difficult questions to answer because post-Brexit part of that becomes an issue for national law, which we do not necessarily know about yet. There are issues around the continued rights of employees both EU nationals in the UK and UK nationals that are working in the EU, for example in Munich. Those are very much things that are on our members minds but are difficult to provide any definitive answers of the kind that patent attorneys like. We do have a trump card because the EPC is an international agreement. It is independent of the EU and UK EPAs have the right to establish a place of business in Germany and the Hague. Like all businesses in the UK, and in Europe, it is that level of uncertainty that is unwelcome. Uncertainty makes it very difficult to plan for the future and also increases the level of risk on business decisions. In the patent attorney community, this level of risk and uncertainty is particularly unpleasant.

The introductions were followed by a range of questions from the audience in London, the regional centres, as well as questions posted online. Over 50 questions were posted online, so the panel did not have time to answer all of these. Members can email any other Brexitrelated questions to editor@cipa.org.uk, and responses will be published in the Journal and online.

In terms of that uncertainty, what is the biggest risk for the UK profession? How could that play out in terms of our relationships internationally? The biggest risk for us potentially is that we are seen as somehow sidelined. I think that is something that businesses really need to think about is how to turn what looks like a threat into an opportunity. A classic business strategy: we have the advantages of being within the EPC, which is important and from a patent perspective, but we are not within the EU and that gives us greater flexibility. 8

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EU trade marks post-Brexit The first question was from the audience in London. Vicki Salmon (CIPA Council) asked Alicia Instone for an update on EU trade marks. On exit day, any registered trade marks will have a comparable trade mark (EU) created on the UK register. The number allocated to the comparable mark (EU) will be the last 8 digits of the corresponding EU trade mark pre-fixed with UK009. It will have the same effective filing date, priority date and seniority date as applicable, and will cover the same goods and services – in effect a complete clone of the EU right. From exit day it will exist as if it were a UK right. On exit day, any pending trade marks will not be mirrored on the UK register. There will be a nine-month priority period to re-file in the UK, effectively claiming priority from the European designation. If you have a European designation on a Madrid trade mark application where the statement of grant of protection has issued, you will have a comparable trade mark(IR) generated the UKIPO on exit day. The number allocated to the comparable trade mark (IR) will be the last 8 characters of the corresponding International Trade Mark (EU) prefixed with UK008. Designs are basically handled the same way as trade marks. Any Community designs that are registered and published on exit day will have a re-registered design created. Again, with exactly the same details. The number allocated to the re-registered design will consist of the full 13-digit registered Community design number (without the – ) prefixed with the digit 9. Any pending designs, or any design that have been allowed, but are subject to deferred publication, will not have a re-registered design created. There

will be a nine-month priority period to re-file in the UK effectively claiming priority from the European application. If you have a European designation on a Hague design application where the statement of the grant of protection has issued, a re-registered International design will be created on the UK Register. The number allocated to the re-registered international design will consist of the full IR (EU) number (without the D) prefixed with the digit 8. If the statement of grant of protection has not yet issued it is the same procedure as above and there will be a nine-month priority period to re-file in the UK effectively claiming priority from the European designation. If you request deferred publication before the EUIPO you can also request deferred publication for the re-filed design for a maximum of 12 months up to the period of time you have left remaining on your registered Community design. CIPA has created Brexit practice points, outlining, particularly on the trade mark and design side, what is going to be happening and what attorneys need to do for businesses. [Also see pages 16-27.] Exhaustion of Rights post-Brexit? A second question from the audience related to Exhaustion of Rights. Mark Saunders understood that the UK government is going to provide a temporary period on exhaustion. He asked what will happen during and after that period and will it be reciprocated by the EU or member states relating to goods placed on the market within the European Economic Area (EEA) and whether they will be exhausted postBrexit? Julia stressed that exhaustion is fairly complicated. At the moment the system of exhaustion within the EU means that if you place a good on the market in the EU those rights become exhausted throughout the area. After Brexit the UK will effectively be a third country as regards the remaining EU 27 states. The government has said that for goods that are placed on the EU 27 market they will continue to regard those rights as exhausted, vis-à-vis the UK, so that parallel import of goods can continue from the EU www.cipa.org.uk


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into the UK. However, we are not aware that there will be a reciprocal arrangement, so goods that are placed on the market first in the UK will not necessarily be exhausted, vis-à-vis the EU 27 states. It may be that if you place your goods on the market in the UK you will still have to check whether there are relevant rights in the EU that would prevent you importing those goods from the UK into the EU. The whole issue of exhaustion is very difficult. The government has been consulting on it, but different sectors want different things from exhaustion. We will just have to see what the outcome of those consultations are. CIPA will be making representations whenever it has an opportunity. [Also see page 29.] Can my business continue to rely on panEU IP rights such as EUTMs and RCDs for protection in the UK after Brexit? For any registered rights on exit day, there will be a UK comparable trade mark or reregistered design created. A business would then be able to rely on those for enforcement in the UK, provided they are kept in force by paying any fees as required. Post-Brexit, for protection in the UK, filing a UK trade mark or a UK design would be required, if there was not already a right in place. Post-Brexit, you cannot file a pan-European registered Community design or EU trade mark and expect them to have an effect in the UK. In this case, the business is not relying on the EU right going forward but relying on the fact that the EU right has been mirrored in the UK on exit day. It is the mirrored UK right that will offer UK protection postBrexit, not the EU right. If a business was only interested in UK protection it could let the EU right lapse I have a number of registered Community designs at the EUIPO. Will these transfer to UKIPO? Is there a cost? What happens to my EU rights? On exit day, the UKIPO will automatically, and free of charge, create a comparable UK right for all EU registered trade marks and for every registered Community design. This will happen automatically. The existing EU right will remain as well. Post- Brexit there will be Volume 48, number 11

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two independent rights and owners will have to maintain and pay annual fees for these. You could choose to let the EU right lapse if it was not needed. If for any reason the UK right was not needed, for example if there was a licence agreement or a coexistence agreement in place, owners can opt-out. However, the opting-out process is not available until after Brexit. I have both patents and trade marks in the EU. How can it be right that patents continue unaffected and trade marks are revoked? The panel pointed out that it is just a simple point of harmonisation and that is the way it is. The EU has achieved some harmonisation across trade marks and designs, and got very close to some harmonisation across patents. Matt thought it is good news for UK patent attorneys, as they are able to progress this message of business as usual on patents. Julia added that the EPO is not an EU agency and the EPC is not EU legislation. So we are clear on the patent front, which is good. However, the question suggests that trade marks will be revoked. Alicia pointed out that that will not the be the case. The UK government has made it clear that no rights in trade marks or designs will be lost. In terms of the UK, it was creating a comparable trade mark or a re-registered design. The original EU trade mark or registered Community design will stay for the remaining EU 27 states as a separate entity. Both rights will remain as long as fees are paid. Is there a risk of an increase in sharp practise or scam activities as a result of Brexit? CITMA’s Keven Bader raised this point on the risk of Brexit being exploited by unscrupulous organisations issuing misleading invoices. The panel agreed that anything that is confusing or involves uncertainty provides an opportunity for sharp practise. For example, CITMA reported the practice of a particular firm that was suggesting that owners should re-register European trade marks in the UK on Brexit. At this point, the UKIPO had not clarified 100% that they were going to be creating these comparable rights. Alicia Instone has been involved in

some conversations at the EUIPO around misleading invoices. CNIPA (the Committee of European National IP Institutes) sits on the EUIPO’s Anti-Fraud Taskforce, and CIPA has been working with them as has CITMA. CNIPA will continue to be a member of the EUIPO’s Anti-Fraud Taskforce even after Brexit. The Taskforce is pan-European, not just pan-EU, and CIPA through CNIPA will have a voice on a body that includes Europol, as well as INTA and the USPTO. It is a case of members being vigilant. We would encourage CIPA and CITMA members to feed any misleading invoices back to their respective organizations and then we can do the reporting for them. The more evidence they can get the better chance they have of curbing and quashing these activities. Do I need to appoint an attorney in another EU country as a representative for my EU trade marks? If my trade mark is challenged somewhere in the EU, will I have to appoint a local (non-UK) attorney to represent me? Many firms in the UK already have or are in the process of setting up their own firms in the EU or reciprocal arrangements with other firms that are able to act post-Brexit. If you hold the right yourself and you do not meet any requirements then you might need to appoint somebody. You do not necessarily need to look outside the UK for appointing a representative. UK attorneys will most likely have arrangements in hand where they can assist. In terms of the mark being challenged, it depends when, where and how it is being challenged. If it is being challenged before the EUIPO the same representatives who act before the EUIPO can assist with that. Usually, you challenge the mark at the registration body. It is unlikely for a trade mark to be challenged in a court separately, unless you decided to bring an action in a court. Again, it would depend on where the action is taken and who is able to represent in the particular jurisdiction. However, the same professionals who could assist with the representation would be able to assist with the challenges and find the right people to help. NOVEMBER 2019

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What implications are there for UK firms with offices in Munich? Can UK firms continue to operate in Munich under UK corporate structures? Our understanding is that some of the structures that have been used by UK firms in the past will no longer be possible. This will depend on the particular structure and the status of the individuals involved. CIPA would suggest reviewing any AngloGerman structures or UK structures operating in Germany with your business advisors.

Trade marks – an alternative route? Pros and cons of using the Madrid system post-Brexit Pros  The Madrid Protocol trade mark filing system is a cost-effective way to file trade mark applications in multiple jurisdictions at once. A single application is filed at WIPO, and it then sends the application details out to the chosen places on your behalf, saving you the cost of having to use local agents. However, there is a standard application cost and separate designation costs for each territory, which are all different.  This system can be used to file last-minute priority claiming applications without the involvement of a local agent, which may be beneficial where time zones will have an impact.  The international right is renewed centrally at WIPO, rather than at the separate local offices.  It is also possible to add countries to an existing international registration, which is particularly cost-effective if the need arises. Cons  Madrid Protocol applications are not cost-effective if only designating one territory. So, while it would be possible to use the system to obtain just EU protection it would be much more expensive than using a local EU IP firm to file such an application. It is therefore only really an emergency option.  A Madrid Protocol application must be based on an existing national application or registration. The cost of that must be added into the equation if no such right already exists.  The application can only be owned by a person who is also qualified to use the system, which in the case of an application based on a UK base mark would be a UK citizen or company, or an entity with a real and effective place of business here. So, it is not something you could do for a US client for instance, which would have to file based on a US base mark, and via the US office.  If the base application or registration fails then the entire Madrid Protocol registration collapses. By Dr Alicia Instone (Fellow) and Jerry Bridge-Butler (Fellow)

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Does article 134 EPC, providing a right for an EPA to establish a place of business in Germany, automatically provide a right of residence? There is no explicit reference to residence in the article and it is our understanding that there is no enabling legislation under German law, the EPC having direct effect as an international convention. However, it seems hard to see how a European Patent Attorney can have an effective right to a place of business without also having an implicit right of residence. Whilst UK attorneys retain their right to represent clients in EPO hearings, getting there is a different matter. Will we need a visa? The EU has adopted a legal act agreeing mutual exemption from visa requirements. Even if the UK leaves the EU without a deal, British citizens will still be able to enter the Schengen Area, which includes Germany and the Netherlands. The rules on short stays will apply, that is you may stay in the Schengen Area for up to 90 days in any 180day period (all stays within the Schengen Area are added together). The day of entry to and the day of exit from the Schengen Area count as full days of stay. Source: www. bmi.bund.de/SharedDocs/faqs/EN/themen/ migration/brexit/faqs-brexit.html Matt Dixon’s short answer was: “we do not know”. Our expectation is that travel to a hearing will be viewed as travel to a business meeting, in which case we would expect light-touch immigration provisions. Lee added that the crux of this is around whether it is working for gain or not, www.cipa.org.uk


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because that is where it takes you out of the 90 days in 180 days flexibility, that we would otherwise have if it was a business meeting. CIPA has had different advice about whether that is working for gain or not working for gain, but it seems like it is going to be just a seen as a business meeting. Matt remarked that some of the different advice that CIPA has received has been aimed at other kinds of professional advisors. He stressed that EPAs have that trump card: a right to establish a place of business. Julia added that one difference that we have with say lawyers is that we do not need to worry about mutual recognition of qualifications because the EPA qualification is the same across Europe. Every EPA sits the same exams and gets the same qualifications. Furthermore, the EPO is incredibly supportive and wants to see UK EPAs continue to be able to travel to the EPO and represent before the EPO. Julia met EPO President António Campinos in September 2019, the EPO is going to put another statement on its website, nearer exit day, to make it quite clear that UK EPAs still have the right to act before and go to hearings at the EPO. Will Germany ratify the UPC Agreement even if the constitutional challenge is resolved or wait until after Brexit? There is currently no hard information on the progress of the German constitutional challenge. [Also see the item on page 34.] Julia commented that there are various rumours that Germany is getting close to resolving the matter or that they are holding off until Brexit is done. There was some concern that if the decision came out very close to the Brexit date there would be a scramble to get the sunrise period sorted out and all the other things needed before the court opens. But it is hard to know how true any rumours are. Unfortunately, it is just a case of watch this space and CIPA is watching it very closely. The understanding is that if the UK leaves with the Withdrawal Agreement in place then that allows for UK participation in the UPC during the implementation period, so that would be up to December Volume 48, number 11

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2020. After that, our continued participation needs to be part of the negotiations for the future relationship with Europe. This is something the UKIPO is working on. CIPA has been working very closely with CITMA and with other IP organizations to ensure that we give the strongest possible message to the government about the importance of continuity, stability and certainty in IP post-Brexit. The government is hearing that message loud and clear. If UK trade mark attorneys cannot represent clients at EUIPO, will non-UK attorneys be prevented from representing clients in the UK? Alicia Instone tackled this with a simple “no” (that Lee Davies described this as a lobbying response that should be heard loud and clear by government). As things are, the UK government is not changing the rules on representation and address for service within the UK. Provided that there is an EEA address for service, it is business as usual for non-UK attorneys. The Withdrawal Agreement has a threeyear time period for looking at changes to this. However, a no-deal Brexit means there is no delay period and therefore no reason why this cannot be looked at sooner. CIPA (in partnership with CITMA, FICPI and other IP organisations) has been lobbying the government. In meetings with the Ministry of Justice, CIPA has made it clear how unfair the situation is and “that they have just given this away willy-nilly without any recourse”. The government has assured CIPA that this is under review, but in the meantime people’s jobs are at risk. CIPA will continue to push at every opportunity, but this is probably some way down the government’s list of priorities. Is there any information on how the UKIPO will deal with errors generated when mirroring existing EU rights into the UKIPO’s records? This was a question from the Manchester regional hub, again tackled by Alicia Instone. For errors in translations, the UKIPO has specifically said if the original application was not in English, and the

second language was not English, and you notice a nonsense in the translation this can be corrected. Since the EU marks are already on the UK appeals register, members can see everything there. Hopefully, there should not be too many errors, but if you do spot one the UKIPO is very open to things being corrected. So be vigilant and provide feedback. Alicia stressed if you spot any errors to let the UKIPO know straightaway. There are email addresses in CIPA’s practice notes [see online or page 16-27]. The UKIPO website has generic email addresses for reporting when you have renewed a trade mark late or you have restored a trade mark or a design. Will there be any change to the admission requirements for nonGerman national patent attorneys to the Patentanwaltskammer? The Kammer requires registration of patent attorneys qualified in another EU member state who wish to “temporarily and occasionally” practise as patent attorneys in Germany. This requirement relates to providing services under a national qualification and not to providing services as a European Patent Attorney. The relevant law (EuPAG 26) extends the geographical scope beyond the EU to EEA and Swiss patent attorneys. When the UK leaves the EU an amendment to this scope would be required to allow registration of UK patent attorneys. Most of the discussion has been looking at how we might mitigate the effects of Brexit. Are there any opportunities offered by UK leaving the EU? Matt Dixon highlighted the opportunities around the volume of work, because not everything will be covered by EU rights. There is a nine-month period to re-register a bundle of rights. There is a potential doubling of the number of rights that clients have. In theory, there should be more things to do depending on the appetite of clients for protection in the UK. The UK is number seven in terms of world economies, so is still an important market. NOVEMBER 2019

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Although all current EU legislation will, as of day one, be retained as UK law in the same form, after Brexit the UK is at liberty to change those laws. Julia Florence said that this may present opportunities in the IP space in particular around supplementary protection certificates (SPCs). For example, the SPC Regulation will be adopted into UK law, including the hotly debated SPC waiver (a recent amendment that enables generics to manufacture for certain limited purposes within the SPC period). After Brexit, the UK will have its own SPC waiver. But whether or not the UK wants to keep that

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the same as the EU version is something that will probably be looked at. Our view has always been that alignment is the best position. In terms of SPCs (and because an SPC is based not only on patents but also on pharmaceutical marketing authorizations), it is going to depend on how close the alignment is between the UK Medicines Agency and the EU Medicines Agency. If the UK is going to keep the authorizations for medicines in step, then it probably wants to keep the SPC Regulation in step (as far as possible). Post-Brexit, the next phase will be to look at if anything needs to change once

Designs – an alternative route? The pros and cons of using the Hague system post-Brexit Pros  The Hague design filing system is cost effective if filing in multiple jurisdictions, even just in the UK and EU. It is only £200-ish more expensive on official fees for a single design, and for a multiple design can even be cheaper on official fees.  The system can be used to file last-minute priority claiming applications without the involvement of a local agent, which may be beneficial where time zones will have an impact.  There is no need for a base application or registration as with the Madrid Protocol. Cons  Care needs to be taken when designating any examining jurisdictions to make sure requirements are met.  Can only be owned by a person who is also qualified to use the Hague System By Dr Alicia Instone (Fellow) and Jerry Bridge-Butler (Fellow)

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these regulations become UK law. Alicia Instone highlighted two alternative areas of work that members might want to look into as business opportunities. First, there is a huge amount of geographical indications (GIs) work that is up for grabs. The UK will set up schemes that mirror the existing EU schemes. However, unlike trade marks and designs, the only GIs that are being brought over automatically are the 88 UK-based GIs. If anybody on the EU registers wants rights in the UK (e.g. to protect Champagne or Bordeaux) they must reapply onto the UK register within nine months. There may also be some plant variety work. Plant variety rights that have been granted two months before exit day, will be on UK register. Any that are pending at the time or granted less than two months before exit day (because the appeal process is two months) will not be included on the UK register. There is a six-month window to reapply onto the UK register if you want those rights in the UK. Are there are differences in representation rights for representatives based in Northern Ireland? In the latest version of the Withdrawal Agreement the differences for Northern Ireland relate to goods rather than services. The expectation therefore is that Northern Ireland would be in the same position as the rest of the UK as far as representation rights are concerned. What effect is there on EU EPAs employed in UK firms, for example a French EPA employed in the industrial department of a UK business? The same considerations will apply to EU EPAs in the UK as to any other EU national seeking to remain in the UK post-Brexit. Details of the EU Settlement Scheme are available on the www.gov.uk website. What effect is there on UK EPAs employed in EU firms, for example a UK EPA employed in the industrial department of a French business? The same considerations will apply to UK EPAs in other EU countries as to any www.cipa.org.uk


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other UK national seeking to remain in an EU country post-Brexit. Members would need to take local advice. It should, however, be relatively straightforward as UK EPAs do not need to worry about mutual recognition of qualifications because these are the same across EPC countries. Why is the government allowing the UK to leave the EUIPO and stay in the EPO? Does this not result in a really bad deal for UK businesses? This is a consequence of the EUIPO being an EU agency, in which only EU member states can participate, whereas the EPO is constituted by an international agreement, and already includes a number of members who are not EU member states. CIPA has lobbied both for the UK to remain a part of the EUIPO and to retain rights of representation at the EUIPO. Can the UK move forward with trade negotiations if it is part of the European patent system? Will other countries negotiate with the UK still in an EU agency? The EPO is not an EU agency – it is an international organisation whose member states extend to several non-EU members. Therefore, Brexit has no bearing on the UK’s membership of the EPC. It was also noted that being part of a strong and well-recognised patent system could be seen as a strength for the UK in trade negotiations. There are of course discussions within government about future trade negotiations and CIPA is well connected with those discussions. CIPA will do its absolute best to make sure that the UK IP profession (and UK IP rights holders) are not disadvantaged by any negotiations. What are the differences between the Withdrawal Agreement, approved by Cabinet, and the no-deal scenario for IP rights? In terms of the IP rights being created there is no difference. There is, however, a difference in relation to the representation rights. In the Withdrawal Agreement, UK attorneys not Volume 48, number 11

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otherwise qualifying to be able to represent post-Brexit, will be able to represent until the conclusion of a pending matter rather than the abrupt ending of rights in the no-deal scenario.

not be required to follow judgments of the CJEU issued after exit day, as these will not be binding. They may be taken into account, but it will be for the court to determine the extent to which the post-exit case law applies.

I am run a small creative business in Sweden. Will I need to be patenting my inventions in both the UK and the EU after Brexit? Currently there is no single patent that covers the whole EU. If you want to obtain protection in more than a few European countries, the most cost-effective route is to file a European patent application with the European Patent Office (EPO). This can be done on your behalf by a European Patent Attorney. Once the European Patent is granted you can choose the countries in which you want the patent to come into force, including the UK. The EPO is independent of the EU and you will be able to continue to use UK patent attorneys to obtain European patents that cover the EU and the UK after the UK leaves the EU.

Does this distinction of the UK being outside of the EU, and the jurisdiction of CJEU, make the UK a more attractive place to conduct litigation? Julia stressed that the UK is an attractive place to conduct litigation anyway. It may be, that on a case-by-case basis if somebody does not like a decision of the CJEU they might see if they can get a different decision in the UK. However, in many cases people do actually like the decisions of the CJEU. The CJEU is often held up as something we do not want to follow but it has been useful in in some areas and perhaps less useful in other areas. Alicia remarked that the CJEU was a hotbed for trade marks, issuing some interesting decisions, and would benefit from having more specialised trade mark judges. Matt saw a potential opportunity to use the strength of the patents courts to promote the UK as a flagship jurisdiction for litigation, delivering well-reasoned decisions based on expert evidence to a global market. The message is very much: the UK is open for business when it comes to litigation.

A number of UK firms have actually taken Brexit by the horns and opened offices in the EU or partnered up with somebody else in the EU. Is that an opportunity for UK firms to provide clients with a broader service? If it is going to happen let’s be positive about it. Matt Dixon agreed. Many commentators suggest that there is going to be consolidation of firms either at a national level or at a European level. If firms are getting larger on a pan-European or Anglo-European level then that does make sense because firms will be covering more opportunities. An excellent example of turning what seems to be a threat into an opportunity now. Will UK courts find rulings of the CJEU on the provisions of the Biotech and IP Enforcement Directives persuasive, even if they are no longer binding? Judgments of the CJEU that were issued before exit day will continue to apply to the retained EU law. The amendments made by the Patents Regulations are written to have the same meaning as the original EU legislation, so that existing case law on its interpretation still applies. UK courts will

Are there any moves to amend the rules on Madrid Protocol registrations, so that EU designations will give rise to UK designations rather than UK registrations? The short answer is no. If there is a nodeal Brexit, the UK parts that are divided out from the European designations will become UK national registrations. You can put them back in again, but not automatically. WIPO has some special rules where you can surrender a UK trade mark and it goes back in again as a UK designation. But if we end up in the Withdrawal Agreement situation it will be something that the UK and WIPO will revisit. See the broadcast in full on CIPA’s website. NOVEMBER 2019

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More Questions & Answers Almost 60 quetions were asked online during the event. The panel did not have time to answer all of these. However, responses to some of these questions are listed below. Members can email any questions to editor@cipa.org.uk and we will aim to publish responses via the Journal and online at www.cipa.org.uk/policy-and-news/brexit-updates

What happens if my application for a trade mark, registered design or patent is pending at the time the UK leaves the EU? In relation to patents, there is no change and the patent will continue unaffected. In relation to trade marks and designs, the UKIPO will not create a comparable / reregistered right and you will have nine months from exit day to reapply in the UK to be able to claim the same dates as your pending application. Do you know the cost to refile pending EU trade marks in the UK? The official fees will be the same as for filing a standard UK trade mark For designs that are pending on exit day, the statutory instrument refers to designs that are not granted. What exactly does “granted� mean? In this context granted means registered and published. When it comes to trade marks/designs, is there a distinction at the EUIPO between the EU and the European Economic Area. If so, what difference does it make? Yes, there is a difference, the EU is currently the EU28 countries whereas the EEA is the EU28 countries plus Iceland, Liechtenstein and Norway. There is an EEA requirement for trade mark representation (after the recent changes in the legislation) whereas it is EU for design representation as standard. I recently filed a trade mark via Madrid. Will I still have the same protection in the UK and EU post-Brexit? It depends on where you designated in the application and at what stage the application is at. If you designated the UK and the EU then there is no change, if you only designated the EU, and the statement of grant of protection does not issue before exit day a comparable Trade Mark (EU) will not be created and you would need to re-apply in the UK directly at the UKIPO within nine

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months of exit day if you wanted protection in the UK – if you then wanted this back in the Madrid Registration there is a process to achieve this, which WIPO has set out. If a UK trade mark stemming from the EU registration has only been used in France and Germany, will it suddenly be vulnerable to a non-use attack? No, it will not. The UKIPO has confirmed that use in the EU27 before exit day will count towards use. However, if no use is made of the mark in the UK in the following years then the mark will then become vulnerable to a nonuse attack. Assuming that the use is consistent with other EU use requirements. What difference will Brexit make to enforcement of trade marks, in particular arising from domicile of the parties? In relation to pending cases before the UK courts acting as EU courts in infringement actions relating to Community Designs, EU trade marks and international (EU) design and trade mark rights the actions and remedies taken or granted by the court will only be applicable to the reregistered designs or comparable trade marks only. The government has also indicated that as the UK will no longer be under the jurisdiction of the EU legal system after exit day, any EU-wide injunctions granted after this date will not apply to the comparable UK rights. Existing injunctions will be treated as if they also apply to the reregistered or comparable trade mark. As supplementary protection certificates (SPCs) for pharma and plant protection are governed by an EU Regulation, what effect will there be on UK patents? The current EU SPC regulations will be retained in UK domestic law, although certain references to EU directives and EU agencies will be replaced by UK equivalents. These changes will be implemented via the Patents (Amendment) (EU Exit) Regulations 2018. The main change is that following exit day it will be necessary to obtain a separate UK marketing authorisation for the product. Under the UK SPC rules it will be necessary to

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provide details of the relevant UK marketing authorisation as well as the earliest EEA marketing authorisation, which predates the UK authorisation. Otherwise the procedure for obtaining an SPC in the UK will be essentially unchanged. As companies have started to move operations from the UK to elsewhere in the EU, will the UK stop being as relevant a market and will the UK IP profession shrink? In some industries, such as automotive, the move of manufacturing facilities from the UK to Continental Europe may affect the choices of patentees as to where they seek protection. However, the UK remains the sixth largest economy in the world, which means that IP rights in the UK still protect a market that represents more than 3% of global GDP. The strength of the UK IP profession is not just determined by the value of the UK market, however. The UK IP profession is recognised globally as a centre of excellence and we expect overseas attorneys to continue to select UK EPAs for representation before the EPO for this reason. In relation to trade marks and designs, the need for independent protection in the UK alongside an EU registration provides additional opportunities for the UK IP profession. The UK currently represents about 15% of EU GDP, which is a market large enough for rights-holders to choose to protect independently. Will a UK patent attorney be able to act directly with Irish Patent Office? Does it depend on if UK stays in EEA and/or position view of Irish Patent Office? Information from the Irish Patent Office indicates that UK attorneys will have no such rights once the UK leaves the EU/EEA: UK Patent Attorneys on the Irish register. Section 107(1) of the Patents Act 1992 (as amended) inter alia, entitles any person who resides in the State or an EEA state or has a place of business in the State or in an EEA State to be eligible to be a registered on the Irish patent mark agent. However, when the UK leaves the EU, persons who do not meet the requirements of Section 107(1) (a) and (b), may cease to be eligible to be registered. UK based Patent Attorneys providing patent agent services in Ireland on a cross border basis. When the UK leaves the EU, persons established in the UK and qualified under UK law to act as a patent agent in the UK, and who have notified the Controller in

Volume 48, number 11

Q&As

accordance with the Services Directive [1] and Section 106 (3A) of the Patents Act 1992 (as amended) of their intention to carry on the business of a patent agent for others in connection with a patent, or any procedure relating to a patent or the obtaining thereof, will no longer be able to carry out such business on a cross border basis. Does the EPC offer any rights to British EPAs acting in EU states, which are not Germany or the Netherlands? Article 134(6) EPC entitles a European Patent Attorney “to establish a place of business in any Contracting State in which proceedings established by this Convention may be conducted”. That applies to Germany and the Netherlands, at least, but would not cover other EPC states in which proceedings are not conducted. As a small firm, we have an office sharing relationship with a German firm as an economical means to have an address in Munch, can this continue after Brexit? Given your right as a European Patent Attorney to establish a place of business in Germany, we would expect your office sharing arrangement to be able to continue. Why is CIPA not lobbying for us to leave the EPC? The EPC is an International Agreement and therefore nothing to do with EU. It is a model of European cooperation outwith the EU. It would not be in the interests of our members for the UK to leave the EPC. A significant proportion of the revenue of private practice firms is derived from EPO work, and in-house attorneys in the UK benefit from their rights of representation before the EPO. UK patent attorneys represent the second largest community of EPAs in Europe, about twice as many as France. This large community of successful, experienced IP professionals benefits the UK economy by providing the expertise to protect British innovation internationally. There would be no net advantage to the UK in withdrawing from the EPC. If the UK is no longer in the EU, can I prevent my traditional EPC patent from falling under the jurisdiction of the UPC? Once the UPC comes into force, there is a provision allowing ‘traditional’ i.e. non-unitary EPC patents to be opted-out of the UPC jurisdiction for a period of seven years. At present it is unclear whether the UK will remain a member of the UPC following exit day. If it does not, the UPC will not have jurisdiction over a UK designation in an EPC patent. [Also see page 34.]

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PRACTICE GUIDANCE

Practice guidance on a no-deal Brexit CIPA has updated its no-deal Brexit advice to members, prepared by Alicia Instone, CIPA Council member and Chair of the Designs and Copyright Committee with help from Julia Florence, CIPA President. The No-Deal Brexit Practice Points advise on elements of patent, trade mark and designs practice in the event of a no-deal. See the members’ area of the CIPA website for further updates.

Introduction The status of intellectual property rights in the UK after Brexit will be determined by: • • • •

European Union (Withdrawal) Act 2018 Withdrawal Agreement (October 2018) Technical Notices from EU and UK The Future Relationship with the EU

If no deal is agreed between the EU and the UK government by 11pm, on exit day, the planning and guidance detailed in much of the documents and agreements above will cease to apply. The implications are summarised in the following government guidance: • •

• •

• •

Intellectual property and Brexit: www.gov.uk/guidance/intellectual-property-and-brexit Patents and SPCs if there’s no Brexit deal: www.gov.uk/guidance/changes-to-spc-and-patent-law-after-brexit www.gov.uk/guidance/supplementary-protection-certificates Trade marks and designs if there’s no Brexit deal: www.gov.uk/guidance/changes-to-trade-mark-law-after-brexit www.gov.uk/guidance/changes-to-eu-and-international-designs -and-trade-mark-protection-after-brexit Copyright if there’s no Brexit deal: www.gov.uk/government/publications/copyright-if-theres-no-brexit-deal Exhaustion of intellectual property rights if there’s no Brexit deal: www.gov.uk/government/publications/ exhaustion-of-intellectual-property-rights-if-theres-no-brexit-deal Geographical Indication Protection if there’s no Brexit deal: www.gov.uk/guidance/protecting-food-and-drink-names-if-theres-no-brexit-deal Plant variety rights and marketing plant reproductive material if there’s a no deal Brexit: www.gov.uk/guidance/plant-variety-rights-and-marketing-plant-reproductive-material-if-the-ukleaves-the-eu-without-a-deal

In this document, we set out the key practice points that members may like to consider in a no-deal scenario.

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Patents Deal or no deal, there will be no change in relation to European (EPC) Patents before the European Patent Office (EPO). This is because the EPO is not an EU Institution and the EPC is not EU law. UK-based European Patent Attorneys can continue to act before the EPO and the UK can still be designated in an EPC filing. It is “business as usual”, and we must take every opportunity to reinforce this message internationally. In dealings with associates overseas, many of who remain confused about the effects of Brexit, members may wish to utilise some of the international marketing materials collected in the members’ area of the CIPA website. The position regardingUK involvement in the Unified Patent Court (UPC) and the Unitary Patent system following EU exit day is unclear. The UPC Agreement is governed by an international treaty outside the EU but the Unitary Patent (UP) was established by EU regulations. Despite the referendum result, the UK ratified the UPC Agreement on 26 April 2018 and the government has stated that it intends to explore options for remaining in both the UPC and UP systems after Brexit. The UPC start date is dependent upon ratification by Germany but this is currently held up by a constitutional challenge in the German courts.

SPCs and Paediatric Extensions Supplementary protection certificates (SPCs) granted in the UK by exit day (or before the end of any transition period) will not be affected. SPCs are national rights and will continue to exist as such after EU exit. For SPC applications pending in the UK at, or filed after exit day – if a deal is agreed with the EU, the current EU Regulation would continue to apply during the transitional period (article 56 of the Withdrawal Agreement). This is also the case for paediatric extensions. If there is no deal (or at the end of any transitional period) pending and future SPC applications in the UK will be dealt Volume 48, number 11

with under equivalent UK domestic law. The current EU regulation will be retained in domestic law, although certain references to EU directives and EU agencies will be replaced by UK equivalents. These changes will be implemented via the Patents (Amendment) (EU Exit) Regulations 2018. Examples of such changes include replacing references to the EU medicines authorisation under Directive 2001/83/ EC with the relevant UK authorisation and to the EU paediatric regulation with the corresponding UK Human medicines regulation. After exit day paediatric extensions will continue to be available based on equivalent provisions in the UK Human Medicines Regulations. However, under the UK provisions it will not be necessary to provide evidence of corresponding authorisations in the EEA. Practice Point: There will be no need to refile SPC applications. Because SPC applications are examined by the UKIPO and because the law and regulations governing them will not change (at least in the short-medium term) there will be essentially no change to the way we obtain SPCs. Practice Point: Members should be aware that some references to the European Economic Area (EEA) will be retained according to the SI. Under the current EU Regulation, when applying for an SPC, the details of the first marketing authorisation for the product in the relevant country must be provided along with the first marketing authorisation in the EU/EEA. In practice these are generally one and the same thing – a centralised EU marketing authorisation covering all member states. Following exit day, it will be necessary to obtain a separate UK marketing authorisation. Under the UK SPC rules it will be necessary to provide details of the relevant UK marketing authorisation as well as the earliest EEA marketing NOVEMBER 2019

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authorisation, which predates the UK authorisation (article 8). Under the new UK domestic SPC regulation the duration of the SPC will be based either on the first authorisation in the UK or the earlier authorisation in the EEA. EU marketing authorisations, which have been granted before exit day, will be converted to equivalent UK marketing authorisations. The UKIPO may request information regarding the converted marketing authorisations. Pending applications for EU marketing authorisation will need to be refiled at the UK MHRA.

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It is good practice when dealing with SPCs for members to ensure that they or their clients maintain good communication with those colleagues responsible for obtaining marketing authorisations, and this will be especially important as the above changes are implemented. SPC Manufacturing Waiver: The SPC regulation was amended with effect from 1 July 2019, by virtue of the new Regulation (EC) 2019/933. This permits generic and biosimilar manufacturers in Europe to manufacture medicines protected by an SPC for export to countries where parallel

protection does not exist. The waiver also permits stockpiling during six months prior to SPC expiry, to enable launch in Europe immediately on SPC expiry. The waiver will not apply to SPCs in force on 1 July 2019, but will apply to SPCs applied for after that date. For SPCs pending on 1 July 2019 the waiver will apply as from 2 July 2022. At Brexit. this new Regulation will be retained in UK domestic law, and as with other EU regulations it will be amended by means of an SI, to ensure it will function correctly. The UKIPO has recently consulted on the SI, but the final version is not available at the time of writing.

European patent work unaffected by Brexit

T

he effects of the UK’s decision to leave the EU are already being felt across the UK’s service industries. But when it comes to patents in Europe, it is business as usual. The European Patent Office – via which patent rights across Europe can be obtained – is not an EU institution. The UK’s 2,400 European qualified patent attorneys will be able to continue to represent their domestic and overseas clients there after Brexit. In fact, since

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the result of the UK’s referendum on EU membership, there has been no let-up in the large number of European patent applications filed by British attorneys. The resistance of the European patent system to the effects of Brexit is good news for both the UK, and for those around the world who want to use British legal expertise to protect their intellectual property in Europe. It is positive for the UK because along with trade mark attorneys, the UK’s patent attorneys

contribute more than £1bn to the British economy. The majority of this comes from foreign companies choosing to use British representation. In fact, of the 40,000 European patent applications filed each year by the UK’s European patent attorneys, nearly 90% are for clients from overseas. This shows the high regard the rest of the world has for the UK legal sector. It also means that, while UK chartered patent attorneys form a fifth of all European patent attorneys practising today, they file a third of all European patent applications. While many aspects of UK and European law will be affected by the UK’s withdrawal from the EU, patent work will continue unchanged. And UK patent attorneys will continue to represent domestic and overseas clients before the European Patent Office in exactly the same way as they do now. Good news for Britain. Good news for businesses worldwide. Patents Unaffected by Brexit: script from CIPA’s animation, available online. www.cipa.org.uk


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EU Registered Trade Marks – EUTMs Assuming there is no deal and no transitional period at 11pm on exit day, the UKIPO will create a “comparable trade mark (EU)” on the UK trade mark register, which will be derived from the corresponding EUTM. The comparable trade mark (EU) will have the same number as the corresponding EUTM, but will be given a different prefix. The number allocated to the comparable mark (EU) will be the last eight digits of the corresponding EUTM prefixed with UK009. Practice Point: Check with the supplier of your records software as to whether or not there is an automated process that they have/are developing that will be able to locate registered EUTMs on your records, and create a new record for the comparable trade mark (EU). You might want to run this in a test environment to look for any unexpected wrinkles ahead of time. The comparable trade mark (EU) will have the same details as the corresponding EUTM, including the same expiry and renewal date. Practice Point: Check your records for any trade marks due for renewal in the six months post exit day. It will not be possible to renew the trade marks early before exit day to avoid having to pay two lots of renewal fees post exit day. Therefore, there may be renewal fees due on the comparable trade mark (EU) immediately after the exit day, which you will not have been notified about in advance. However, there will be no late fees for the first six months. It may be that there is no intention to renew certain comparable trade mark (EU) for example where there is already an “equivalent” earlier filed UK trade mark. The comparable trade mark (EU) will be treated as if it had been a national application and there will be no distinction at the UKIPO. This means Volume 48, number 11

that if the comparable trade mark (EU) is cited in searches carried out by the UKIPO the rights holder (or their address for service) will be notified whereas currently the equivalent EUTM rights holder would not. Practice Point: Many more rights holders will be made aware of UK filings who would not have been made aware previously so there will be an increase in notifications being issued by the UKIPO and there could be an increase in opposition filings at the UKIPO. The comparable trade mark (EU) will have the particulars of the goods/services taken from the English language version of the corresponding EUTM. Practice Point: If you spot any comparable trade mark (EU) that has an error in the English language version, then any person having a sufficient interest may apply to have the register rectified. This can be done at any stage, but probably best to do as soon as you spot anything. This is only relevant for cases not filed in English or where the second language was not English. The UKIPO has indicated that it will notify rights holders that a comparable trade mark (EU) has been granted by publishing a notification and guidance on its website. Practice Point: This notification will simply be a general notification on the website of the UKIPO and individual notifications will not be sent to the representatives on file at the EUIPO or the proprietor of the corresponding EUTM. However, the same representative on file at the EUIPO will be recorded as the UK address for service on the comparable trade mark (EU) initially. This means that you will not receive a bundle of notifications and you will need to find another way to check all of the rights that you are expecting to be created for your clients are correct and that the correct NOVEMBER 2019

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representative has been recorded on the comparable trade mark (EU) as address for service. Given that it is possible to “opt-out” of the comparable trade mark (EU) under certain circumstances, you will need to report to the relevant persons the creation of the comparable trade mark (EU), and the possibility of opting out. It might be that an optout is required so as not to contravene agreements, for example where one has agreed not to file in the UK. The UKIPO has created a template notice, which will be available after exit day, to use when requesting an opt-out, which will need to be sent to a dedicated email address. If an opt-out is required the request will have to be made after exit day, it cannot be made before. Practice Point: If you have switched over representation on your cases at the EUIPO to an EU entity in preparation for exit day, bear in mind that the address for service of the comparable trade mark (EU) will also be the switched over address and you will need to make preparations to switch these back if desired to your UK entity. CIPA is currently investigating with the UKIPO ways in which this might be efficiently achieved. As well as creating comparable trade marks (EU) for direct national registrations before the EUIPO, this mechanism will also be used for EU designations on International Registrations where a Statement of Grant of Protection has been issued in relation to the EU designation. Practice Point: Depending on the source of data for the EU designations (WIPO or EUIPO), it might be that the correct representative information might not have been transferred onto the EUIPO register and there may be no representative details. Check the EUIPO register for your international cases and add yourself as a representative where applicable, as the EUIPO does not automatically take this information from WIPO. 20 CIPA JOURNAL

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In the case of collective and certification marks, the UKIPO will also be creating comparable trade marks (EU). However, the regulations filed at the EUIPO governing the use will not automatically be ported over from the corresponding EUTM onto the comparable trade mark (EU). If at some point in the future after the creation of the comparable trade mark (EU) the UKIPO needs to inspect the regulations at that point they will issue a notice requesting the filing of the same regulations, which had effect immediately before exit day in relation to the corresponding EUTM, along with an English translation where applicable.

your care that have licences that have been recorded against them. This looks like it will be quite a manual exercise as the EUIPO does not appear to let you search for marks that have a licence recorded against them. However, you can carry out an advanced search for marks which are registered, and for which you are representative and then plod through the list checking the “recordal” section for licences. If anyone has found a better way, please do let us know. Then notify the relevant people that they have 12 months to re-record these licences at the UKIPO against the applicable comparable trade marks (EU).

Practice Point: Review your records to determine if there are any collective or certification trade marks in your portfolios, and obtain a copy of the applicable regulations (and translation) ready for filing at the UKIPO in relation to the comparable trade mark (EU), assuming that the comparable trade mark (EU) is to continue to have effect in the UK. If the regulations are not filed in time when requested, the comparable trade mark (EU) will be removed from the register.

The same is true for security interests, so you would want to check these as well.

Where an existing EUTM is the subject of a licence immediately before the exit day and the licence does not expire on exit day then, unless there is an agreement to the contrary, the licence will continue to apply to the comparable trade mark (EU), which derives from the existing EUTM. In addition, for any licence that has been recorded on the EUIPO register there will be an additional 12 months to record the same licence at the UKIPO against the comparable trade mark (EU). This means that sections of the act relating to licences being ineffective and licencees not having rights of remedy does not apply until 12 months after exit day, and costs awards will be allowed, provided that the licence is recorded within 18 months (rather than six months) of the date of the licence. Practice Point: Check your records/the records at the EUIPO for any cases in

Practice Point: As above for licences, check your records/the records at the EUIPO for any cases in your care that have security interests recorded against them. Then notify the relevant people that they have 12 months to re-record these security interests at the UKIPO against the applicable comparable trade marks (EU). The general principle for any documents dated before exit day referencing an existing EUTM will be read after exit day as also referencing the comparable trade mark (EU), which is derived from the existing EUTM. Practice Point: Check with relevant person if you have any agreements that refer to EUTMs that you do not want to refer to the comparable trade mark (EU) after exit day, and if there are any then take appropriate steps to make it clear that these documents should not also include the comparable trade mark (EU) unless that is not already clear from the document i.e. if, for example the document specifically excludes the UK. In pending proceedings before the UK courts, which involve an existing EUTM, then the court may injunct/ revoke as applicable the comparable www.cipa.org.uk


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trade mark (EU). This gives discretion to the court not to do this where it would not make sense to, i.e., where the earlier right was not a UK trade mark for an EU trade mark, for example, in the case of revocation proceedings. Practice Point: If you have any pending actions before the UKIPO/UK courts, you might want to check what basis these have been made on and prepare in readiness if it is possible that the UKIPO/ courts could exercise discretion in this area. In the case of actions pending before the EUIPO, General Court, ECJ or other EUTM courts in the EU but outside the UK, that are solely based on earlier UK trade marks, these also want to be highlighted and if possible, in an ideal world, concluded before exit day. See if there are any cases close to completion that might be in a position to be expedited. Immediately following exit day, any use made of the trade mark in the EU before exit day, will count as use for the comparable trade mark (EU), and use made in the UK would count under normal rules for use of the existing EUTM. Practice Point: If one is only using a mark in the UK and not in the rest of the EU, then in five years’ time the existing EUTM would become vulnerable to cancellation for non-use and vice versa for the comparable trade mark (EU), if use is only made in the remaining 27 EU countries. Thought should therefore be given if operations need to be extended to preserve any rights. In the case of an expired existing EUTM, where the renewal fee was not paid but there is still some or all of the six-month grace period in which to pay the renewal fee late, a comparable trade mark (EU) will be created with the status of expired. If the late renewal fee is then paid on the existing EUTM, the UKIPO will change the status of the comparable trade mark Volume 48, number 11

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(EU) accordingly. If the late renewal fee is not paid the comparable trade mark (EU) will be removed from the register. Practice Point: If any existing EUTMs are renewed late the applicant is not required to notify the UKIPO, however, we would suggest that a note is made to check that the status of the comparable trade mark (EU) is updated accordingly. In the case of an existing EUTM undergoing restoration a comparable trade mark (EU) will not automatedly be created on exit day. However, once the existing EUTM is restored the UKIPO will create a comparable trade mark (EU) if the UKIPO is informed within six months of such restoration by emailing information@ipo.gov.uk. Practice Point: If any existing EUTMs are restored and a comparable trade mark (EU) is required then make a diary note to contact the UKIPO in relation to the same within six months of the restoration taking place.

EU Designations of International Trade Marks As indicated above assuming there is no deal and no transitional period at 11.00pm on exit day, the UKIPO will create a “comparable trade mark (IR)” on the UK trade mark register, which will be derived from the corresponding EUTM designation where a statement of grant of protection has been granted. The comparable trade mark (IR) will have the same number as the corresponding EU designation, but will be given a different prefix (The number allocated to the comparable trade mark (IR) will be the last eight characters of the corresponding International Trade Mark (EU) prefixed with UK008). Practice Point: Check with the supplier of your records software as to whether or not there is an automated process that they have/are developing that will be able to locate Registered EU designations of International Trade Marks on your

records, and create a new record for the comparable trade mark (IR). You might want to run this in a test environment to look for any unexpected wrinkles ahead of time. The comparable trade mark (IR) will have the same details as the corresponding EU designation, including the same expiry and renewal date, as such all the information provided above in relation to the EUTMs is equally applicable to EU Designations of International Trade Marks. If there is more than one EU designation then a separate comparable trade mark (IR) will be created for each EU designation. If an opt-out is required, all EU designations will be opted out in relation to the International Trade Mark. Practice Point: The comparable trade mark (IR) created will be independent of the remainder of the International Trade Mark and once created will need to be actioned, for example renewed separately and directly at the UKIPO. In the case where an EU designation is a subsequent designation the ten-year term of protection on the comparable trade mark (IR) will run from the date of filing of the subsequent designation, rather than the date of the original International Registration. Therefore, care will need to be taken over the renewal dates as they may be different to that of the International Registration. Practice Point: Unlike with EUTMs, if an International Trade Mark is laterenewed the comparable trade mark (IR) will not automatically have its status updated. Holders must inform the UKIPO that their corresponding International Registration has been laterenewed at WIPO by sending an email to WIPOrenewaltrademarks@ipo.gov.uk. The email must be submitted within nine months of exit day. WIPO has also indicated that if the advantages of having a UK designation within the Madrid Protocol System NOVEMBER 2019

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are desired over the standalone UK Registration then it is possible to file a subsequent designation of the International Trade Mark and “replace” the standalone UK Registration with a subsequent designation of the UK under article 4bis(2).

Pending EU Registered Trade Mark (EUTM) applications Any pending EUTM applications on exit day will not automatically have a comparable trade mark (EU) created. It will be necessary to re-file the application at the UKIPO within a nine-month window following exit day, to claim the same filing, priority, seniority, etc, dates as the pending EUTM application (including pending EUTM applications restored after exit day, and pending transformations of EU designations of International Trade Marks, but not refused EUTM applications). Practice Point: Check any pending EUTM applications that are “neither granted nor refused”, that you have on exit day and make a nine-month diary note to re-file these cases in the UK, if UK protection is required, and notify the relevant people of this. It is likely that if we have a no-deal Brexit that any applications you file now at the EUIPO will necessitate a re-filing. However, unless you need to expedite the protection in the UK, dual filing at this stage might be an unnecessary duplicate cost in the event that there is a deal or further extension. We would therefore suggest, given that the nine-month re-filing will have the same date as the EUTM application and cost the same, it would be more cost effective to make use of this provision, unless immediate action is required to be taken in the UK or one expects to have filings to be made by third parties that one would need to oppose. In the event that the EU Trade Mark is a first filing, consider filing an ordinary priority-claiming application in the UK within six months (at the same time as any foreign applications). The UKIPO has indicated that it is revising 22 CIPA JOURNAL

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the forms for filing both on paper and digitally in preparation to take the details for these types of filings.

Pending EU Designations of International Trade Marks Any pending EU designations of International Trade Marks, i.e. where a statement of grant of protection has not yet issued on exit day, will not automatically have a comparable trade mark (IR) created. It will be necessary to re-file the application at the UKIPO within a nine-month window following exit day, to claim the same filing, priority, seniority, etc, dates as the pending EU designation of the International Trade Mark.

are desired over the standalone UK Registration then it is possible to file a subsequent designation of the International Trade Mark and “replace” the UK mark with a subsequent designation of the UK under article 4bis(2).

Practice Point: Check any pending EU designations of International Trade Marks where the statement of grant of protection has not yet issued, that you have on exit day and make a nine-month diary note to re-file these cases in the UK, if UK protection is required, and notify the relevant people of this. It is likely that if we have a no-deal Brexit, any applications you file now at WIPO designating the EU will necessitate a re-filing. However, unless you need to expedite the protection in the UK, dual filing at this stage might be an unnecessary duplicate cost in the event that there is a deal or further extension. We would therefore suggest, given the nine-month re-filing will have the same dates as the EU designation of the International Trade Mark and cost the same, it would be more cost effective to make use of this provision, unless immediate action is required to be taken in the UK or one expects to have filings to be made by third parties that one would need to oppose. The UKIPO has indicated that it is revising the forms for filing both on paper and digitally in preparation to take the details for these types of filings. WIPO has also indicated that if the advantages of having a UK designation within the Madrid Protocol System www.cipa.org.uk


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Registered Community Designs – RDCs Assuming there is no deal and no transitional period at 11.00pm exit day, the UKIPO will create a “re-registered design” on the UK design register, which will be derived from the corresponding RCD. The re-registered design will have the same number as the corresponding RCD, but will be given a different prefix. The number allocated to the re-registered design will consist of the full 13-digit RCD number (without the – ) prefixed with the digit 9. Practice Point: Check with the supplier of your records software as to whether or not there is an automated process that they have/are developing that will be able to locate RCDs on your records, and create a new record for the re-registered design. You might want to run this in a test environment to look for any unexpected wrinkles ahead of time. The re-registered design will have the same details as the corresponding RCD, including the same expiry and renewal date. Practice Point: Check your records for any RCDs due for renewal in the six months post exit day. It will not be possible to renew the RCDs before exit day early to avoid having to pay two lots of renewal fees post exit day. Therefore, there may be renewal fees due on the re-registered design immediately after the exit day, which you will not have been notified about in advance. However, there will be no late fees for the first six months. It may be that there is no intention to renew certain re-registered designs where there is already an “equivalent” earlier filed UK registered design. The UKIPO has indicated that they will notify rights holders that a re-registered design has been granted by publishing a notification and guidance on their website. Practice Point: This notification will simply be a general notification on the Volume 48, number 11

website of the UKIPO and individual notifications will not be sent to the representatives on file at the EUIPO or the proprietor of the corresponding RCD. However, the same representative on file at the EUIPO will be recorded as the UK address for service on the re-registered design initially. This means that you will not receive a bundle of notifications and you will need to find another way to check all of the rights that you are expecting to be created for your clients are correct and that the correct representative has been recorded on the re-registered design as address for service. Given that it is possible to “opt-out” of the re-registered design under certain circumstances, you will need to report to the relevant persons the creation of the re-registered design, and the possibility of opting out. It might be that an opt-out is required so as not to contravene agreements for example where one has agreed not to file in the UK. If an opt-out is required the request will have to be made after exit day, it cannot be made before. Practice Point: If you have switched over representation on your cases at the EUIPO to an EU entity in preparation for exit day bear in mind that the address for service of the registered design will also be the switched over address and you will need to make preparations to switch these back if desired to your UK entity. CIPA is currently investigating with the UKIPO ways in which this might be efficiently achieved. As well as creating re-registered design for direct national registrations before the EUIPO, this mechanism will also be used for EU designations on International Registrations where a Statement of Grant of Protection has been issued in relation to the EU designation. Practice Point: Depending on the source of data for the EU designations (WIPO or EUIPO), it might be that the correct representative information might not be NOVEMBER 2019

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transferred onto the EUIPO register and there may be no representative details. Check the EUIPO register for your international cases and add yourself as representative where applicable, as the EUIPO does not automatically take this information from WIPO. Where an existing RCD is the subject of a licence immediately before exit day and the licence does not expire on exit day then unless there is an agreement to the contrary, the licence will continue to apply to the re-registered design which derives from the existing RCD. In addition, for any licence that has been recorded on the EUIPO register there will be an additional 12 months to record the same licence at the UKIPO against the re-registered design. This means that sections of the act relating to licences being ineffective and licencees not having rights of remedy will not apply until 12 months after exit day, and costs awards will be allowed, provided that the licence is been recorded within 18 months (rather than six months) of the date of the licence. Practice Point: Check your records/ the records at the EUIPO for any cases in your care that have licences that have been recorded against them. This looks like it will be quite a manual exercise as the EUIPO does not appear to let you search for designs that have a licence recorded against them. However, you can carry out an advance search for designs which are registered, and for which you are the representative and then plod through the list checking the “recordal” section for licences. If anyone has found a better way, please do let us know. Then notify the relevant people that they have 12 months to re-record these licences at the UKIPO against the applicable reregistered designs.

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any cases that have security interests recorded against them. Then notify the relevant people that they have 12 months to re-record these security interests at the UKIPO against the re-registered designs. The general principle for any documents dated before exit day referencing an existing RCD will be read after exit day as also referencing the re-registered design, which is derived from the existing RCD. Practice Point: Check with the relevant person if you have any agreements that refer to RCDs that you do not want to refer to the re-registered design after exit day. If there are any, take appropriate steps to make it clear that these documents should not also include the re-registered design unless it is not already clear from the document – i.e. if, for example the document specifically excludes the UK. In pending proceedings before the UK courts which involve an existing RCD, then the court may injunct/revoke as applicable the re-registered design. This gives discretion to the court not to do this where it would not make sense to. Practice Point: If you have any pending actions before the UKIPO/UK courts, you might want to check what basis these have been made on and prepare in readiness if it is possible that the UKIPO/ UK courts could exercise discretion in this area.

suggest that a note is made to check that the status of the re-registered design is updated accordingly. In the case of an existing RCD undergoing restoration a re-registered design will not automatedly be created on exit day. However, once the existing RCD is restored the UKIPO will create a re-registered design if the UKIPO is informed within six months of such restoration by emailing information@ipo.gov.uk. Practice Point: If any existing RCDs are restored and a re-registered design is required then make a diary note to contact the UKIPO in relation to the same within six months of the restoration taking place.

EU Designations of International Designs As indicated above assuming there is no deal and no transitional period at 11.00pm on exit day, the UKIPO will create a “re-registered international design” on the UK register which will be derived from the corresponding EU designation where a statement of grant of protection has been granted. The reregistered international design will have the same number as the corresponding EU designation, but will be given a different prefix (The number allocated to the re-registered international design will consist of the full IR (EU) number (without the D ) prefixed with the digit 8).

The same is true for security interests, so you would want to check these as well.

In the case of an expired existing RCD, where the renewal fee was not paid but there is still some or all of the six-month grace period in which to pay the renewal fee late, a re-registered design will be created with the status of expired. If the late renewal fee is then paid on the existing RCD, the UKIPO will change the status of the re-registered design accordingly. If the late renewal fee is not paid the re-registered design will be removed from the register.

Practice Point: Check with the supplier of your records software as to whether or not there is an automated process that they have/are developing that will be able to locate Registered EU designations of International Designs on your records, and create a new record for the re-registered international design. You might want to run this in a test environment to look for any unexpected wrinkles ahead of time.

Practice Point: As above for licences, check your records/the records at the EUIPO for any cases in your care for

Practice Point: If any existing RCDs are renewed late the applicant is not required to notify the UKIPO, however, we would

The re-registered international design will have the same details as the corresponding EU designation,

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including the same expiry and renewal date, as such all the information provided above in relation to the EU Designs is equally applicable to EU Designations of International Designs. Practice Point: The re-registered international design created will be independent of the remainder of the International Design and once created will need to be actioned, for example renewed, separately and directly at the UKIPO. Practice Point: Unlike with RCDs if an International Design is late renewed the re-registered international design will not automatically have its status updated and holders must inform the UKIPO that their corresponding International Registration has been laterenewed at WIPO by sending an email to WIPOrenewaltrademarks@ipo.gov.uk. The email must be submitted within nine months of exit day.

Pending Registered Community Design (RCD) Applications Any pending RCD applications on exit day will not automatically have a comparable re-registered design created, and it will be necessary to re-file the application at the UKIPO within a nine-month window following exit day, to claim the same filing, priority, etc, dates as the pending RCD application. This includes RCDs that have been accepted and where publication has been deferred and pending RCD applications restored after exit day, but not refused RCD applications. It will be possible to claim deferred publication of the new UK filing for the term remaining on the corresponding RCD (where deferred publication was requested on the corresponding RCD) up to a maximum of 12 months. Practice Point: Check any pending RCD applications that have not been “entered into the register and published”. Consider requesting publication now if it need not be deferred – publication normally takes place within a couple of weeks, so there may just be time. Also check any Volume 48, number 11

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pending RCD applications that you have on exit day and make a nine-month diary note to re-file these cases in the UK, if UK protection is required, and notify the relevant people of this. It is likely that, if we have a no-deal Brexit, any applications you file close to exit day at the EUIPO will necessitate a re-filing. However, unless you need to expedite the protection in the UK, dual filing at this stage might be an unnecessary duplicate cost in the event that there is a deal or further extension. We would therefore suggest, given the nine-month re-filing would have the same date as the RCD application, and cost the same regardless of when it is filed, it would be more cost effective, unless immediate action is required to be taken in the UK, to make use of this provision, or, in the event that the EU design is a first filing, to consider filing an ordinary priorityclaiming application in the UK within six months (at the same time as any foreign applications). The UKIPO has indicated that it is revising the forms for filing both on paper and digitally in preparation to take the details for these types of filings.

Pending EU Designations of International Designs Any pending EU designations of International Designs i.e. where a statement of grant of protection has not yet issued on exit day, will not automatically have a re-registered international design created, and it will be necessary to re-file the application at the UKIPO within a nine-month window following exit day, to claim the same filing, priority, etc, dates as the pending EU designation of the International Design. Practice Point: Check any pending EU designations of International Designs, where the statement of grant of protection has not yet been issued, that you have on exit day and make a nine-month diary note to re-file these cases in the UK, if UK protection is required. Notify the relevant people of this. It is likely that if we have a no deal BREXIT that any applications you file now at WIPO designating the EU will

necessitate a re-filing. However, unless you need to expedite the protection in the UK, dual filing at this stage might be an unnecessary duplicate cost in the event that there is a deal or further extension. We would therefore suggest, given the nine-month re-filing would have the same date as the EU designation of the International Design, and cost the same, it would be more cost effective, unless immediate action is required to be taken in the UK, to make use of this provision, or, in the event that the International Design is a first filing, to consider filing an ordinary priority-claiming application in the UK within six months (at the same time as any foreign applications). The UKIPO has indicated that it is revising the forms for filing both on paper and digitally in preparation to take the details for these types of filings.

Unregistered Community Designs (existing before exit) Assuming there is no deal and no transitional period at 11.00pm on exit day, the UKIPO will create a “continuing Community unregistered design” which will be derived from the corresponding unregistered Community design. The continuing Community unregistered design will have the same details as the corresponding unregistered Community design including the same scope of protection and expiry date.

Unregistered Community Designs (after exit) After exit day designs first disclosed in the UK will be subject to a supplementary unregistered design, which as the same term and scope of protection as previous unregistered Community designs, but only in the UK. Designs first disclosed in the EU will be subject to Community unregistered design, but only in the EU and not in the UK. Practice Point: Carefully consider as to where to first disclose designs, where unregistered designs are desired, to ensure that protection is obtained in the preferred jurisdiction. NOVEMBER 2019

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PRACTICE GUIDANCE

Community Plant Variety Rights

respect of which a right is recognised or established by national and/or EU law and where the registered domain name Registration and Renewal was the subject of speculative and abusive of Domain Names Given that the only people who are eligible registration as described in that Article. to register .eu domain names are: Applicable law in agreements • EU citizens (independent of their place between accredited .EU registrars and .EU registrants of residence); It will no longer be possible for the • Natural persons who are not EU registrant of a .eu domain name to citizens but are a resident of a EU designate, as applicable law, UK law, nor Member State designate a dispute-resolution body or • Undertakings established in the EU arbitration court or a court located in the • Organisations established in the EU UK. This means that undertakings and organisations established in the UK and Practice Point: In order to avoid the not in the EU and non-EU nationals who possible automatic revocation of .eu domains there are a couple of options reside in the UK will no longer be able to register or renewal .eu domain names that can be taken. The first is to transfer your .eu domain to an EU subsidiary after exit day. outside the UK before exit day. If you do not have an EU subsidiary outside Revocation of registered the UK then consider setting up an domain names EU subsidiary. If this is not possible It will be possible for the Registry to then you could also set up an alternate revoke .eu domain names held by domain now with a redirection of traffic persons no longer meeting the eligibility requirements of its own initiative after exit from your .eu domain to your alternate domain. Whilst this will not work post day. exit day it will hopefully get visitors Rights that can be invoked in procedures used to your alternate domain. Also do bear in mind that proxy services are for the revocation of speculative and not allowed under the current EURid abusive registrations Domain Name Registration policy so It will no longer be possible to use UK only recognised rights which are identical exercise caution if you are planning to use an EU-based proxy service. or confusingly similar to a name in

.EU domain names

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Community Plant Variety Rights granted two months before the UK leaves the EU without a deal, will be protected under UK law becoming UK Plant Variety Rights. If you have already applied for Community Plant Variety Rights and either the application is still pending or the rights have been granted less than two months before the UK leaves the EU with no deal, you will need to apply to the Animal and Plant Health Agency (APHA) for rights to protect the variety in the UK. This is due to the EU having a two-month appeal period and APHA cannot protect varieties in the UK which might be subject to an appeal. In either case if you apply for rights within six months of the UK leaving the EU, you can use the same distinctiveness, uniformity and stability (DUS) test. The EU will continue to recognise EU plant variety rights granted to all breeders before the UK leaves the EU with no deal. Practice Point: if you currently look after any granted Community Plant Variety Rights make a note to check that they have brought over onto the UK register. Practice Point: if you currently look after any Community Plant Variety Rights that have only been granted in the last two months before exit day or are still pending on exit day, diarise a six-month deadline from exit day for applying to the UK scheme should protection in the UK be desired. You will be able to use the same distinctiveness, uniformity and stability (DUS) test. If the variety is not distinct from an independently bred variety, priority will be decided using the date of the application for EU rights.

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Marketing Plant Reproductive Material in the EU The UK will not have third-country equivalence from exit day. The UK will reapply to the EU for “third party equivalence” on plant reproductive material certification and DUS testing if the UK leaves the EU. If third party country equivalence is not granted by the EU: •

The EU will not accept UK certified plant material, even if the variety is on the EU’s common catalogue, if the UK is not granted equivalence. The EU will not accept UK DUS test results.

Geographical Indications The UK has confirmed that it will be setting up its own Geographical Indication (GI) schemes. The schemes will mirror the existing EU schemes and will fulfil the UK’s WTO Obligations. Department for Environmental, Food & Rural Affairs (DEFRA) will: • • •

Varieties (except potatoes) listed on the EU common catalogue for a twoyear period after leaving the EU. Varieties of potatoes for a one-year period after leaving the EU.

manage the new schemes; maintain the registers of protected product names; and process new applications.

The UK schemes will protect: •

DEFRA is responsible for negotiating agreements with the EU for seed potatoes and fruit propagating material. Regardless: You can market:

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• • •

food, drink and agricultural products (including beer, cider, perry); spirit drinks; wine; and aromatized wine.

There will also be a scheme to protect the uses of traditional terms for wine names. The new UK schemes will use the same classes as the current GI EU schemes: • • •

Protect designation of origin (PDO) Protected geographical indication (PGI) Traditional Specialities Guaranteed (TSG).

All (88) existing UK products registered under EU GI Scheme will automatically get UK GI status and remain protected in the UK as will any third countries set out in schedule A of the relevant Trade

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Agreement (such as Switzerland and South Korea, who have both signed the agreements). Existing products (other than the UK) registered under the EU GI scheme will need to re-apply to UK scheme, which will be open to UK, EU and non-EU country producers. DEFRA will publish guidance on how to apply. Provided that the application is made within nine months of exit day the application will retain the same dates that protected under the EU scheme. Should the UK leave the EU without a deal, the Government’s position regarding protection of UK GIs in the EU is that the protection should continue after exit. However, it is possible that the EU may change its rules and decide to remove this protection for UK GIs. If UK GIs are removed from the EU registers, the government will support UK GI holders in reapplying for EU GI recognition. Practice Point: if you currently look after any UK originating GIs make a note to check that they have been set up correctly under the new UK scheme once it has been launched. Practice Point: if you currently look after any non-UK originating GIs, make a note to check to see if they are included in Schedule A of the relevant Trade Agreement and if so that they have been set up correctly under the new UK scheme once it has been launched or, if this is not the case, diarise a nine-month deadline from exit day for applying to the UK scheme should protection in the UK be desired.

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SEPS

EU standard-setting post-Brexit The UK currently plays a major role in European standard-setting. How will Brexit affect this? By Andy Spurr (Fellow)

U

K business’ access to standardsetting organisations such as ETSI, IEEE, ITU will not be affected by Brexit as companies can directly contribute to the technical and policy aspects of these standards bodies; the same applies for implementer access to standards produced by such bodies. However, there are a number of EUbased organisations in which the UK currently participates via the British Standards Institution (BSI) to shape European standards policy, which may no longer be possible following Brexit. The most prominent of these organisations being the European Committee for Standardisation (CEN)1 and the European Committee for Electrotechnical Standardization (CENELEC)2. The UK currently has voting rights regarding decisions made by these bodies and as such can influence the direction of standards to the benefit of UK businesses and consumers. In terms of SEP policy, CEN and CENELC have been active in engaging with stakeholders to determine ‘core principles’ for SEP licencing3,4. Again, the UK’s seat at the table currently enables some influence to be had in these policy decisions. The BSI published a report5

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in February 2018 advocating for maintenance of the UK’s membership in both CEN and CENELEC following Brexit. In this report they point out that CEN and CENELEC are not EU organisations, with the Republic of North Macedonia, Serbia and Turkey being members without being EU or EFTA members. However, this seems by virtue of them being ‘accession countries’, so it is not clear on what basis the UK could maintain its membership (particularly in the event of no-deal). It should be noted that the initiation and development of many standards (and in particular SEP-heavy standards such as 5G) are directed via industry groups independent of organisations such as CEN and CENELC, and Brexit

will have no direct impact on such industry-led groups

SEP litigation Given the global nature of standardised products and services, SEP holders have great degree of freedom in the selection of forum for conducting litigation. In recent years, the UK has been a popular forum. However, the Unified Patent Court (UPC) may prove to be a more attractive forum as it would provide the potential for a broader injunction, assessment of damages, and setting FRAND licence rates. SEP holders may prefer to request unitary effect of their granted EP patents as a UP would provide cheaper territorial

Notes and references 1. www.cen.eu 2. www.cenelec.eu 3. www.cen.eu/news/workshops/Pages/WS-2018-04.aspx 4. www.cencenelec.eu/news/workshops/Pages/WS-2019-014.aspx 5. www.bsigroup.com/globalassets/localfiles/en-gb/about-bsi/nsb/brexit/ bsi-brexit-position-report-february-2018.pdf 6. UKSC 2018/0214, UKSC 2019/0041 and UKSC 2019/0042 – this ruling is likely to be very influential on the UK’s global position with regard to litigating SEPs. 7. C-170/13 Huawei Technologies

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coverage (and hence increased net licensing revenue) – and due to the sheer number of SEPs relevant to any particular standard – the possibility of central revocation may be less of a detractor. If Brexit means that the UK cannot take part in the UPC (but it goes ahead nonetheless), it is conceivable that the UK would no longer be as attractive a forum to resolve SEP disputes. However, any impact of Brexit may be outweighed by the upcoming decision of the UK Supreme Court6 scheduled for late 2020 which (amongst other issues) will decide whether the UK courts can set global FRAND rates – which would be a very attractive

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position for SEP holders. [See more on the UPC on page 34.]

Interaction with competition law The EU’s precedent for fair negotiation of FRAND terms is currently set out by the CJEU in Huawei v ZTE7 – the UK application of which forming another aspect of the above UK Supreme Court decision. This UK ruling should provide some clarity on what conduct is required during FRAND negotiations in the UK. Following Brexit, only the parts of Huawei v ZTE ruled on by the Supreme Court may be binding on the UK courts, and further divergence may occur following future CJEU decisions.

As EU competition law has a ‘long arm’, it is likely that parties conducting SEP licence negotiations with a European component will choose to follow CJEU guidance during FRAND negotiations, and as such they may prefer to conduct litigation in states bound by such CJEU decisions. This may be via the UPC, or other national courts such as Germany or the Netherlands (which both have significant experience in SEP litigation). Andy Spurr (Fellow); the views and opinions expressed in this article are those of the writer and do not reflect the policy of any other organisation.

Exhaustion of IP rights if there is a no-deal Brexit The government's Brexit guidelines have sought to retain the present system of EEA-wide exhaustion of IP rights, but a no-deal Brexit would not allow this. By Katharine Stephens (Associate)

P

reparing for Brexit presents an opportunity to consider what principle of exhaustion of IP rights should apply to goods sold in the UK – should there be national, international or regional exhaustion? The Government is consulting on this question, but as a temporary measure to come into force on the day the UK exits the EU, the present system of EEA-wide exhaustion will be retained to the extent possible. Post-Brexit, IP rights in goods put on the market in the EEA will be exhausted in the UK but, absent any agreement with the EU, there will be no

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reciprocity for goods put on the market in the UK and the IP rights in the EEA will not be exhausted. The Government’s Brexit guidelines1 stress the need for parallel importers to review their supply chains and, if necessary, contact the relevant IP rights holders for permission to import goods into the EEA. The advice is necessary. Parallel trade from the UK to the EEA does take place, encouraged recently by the significant fall in sterling. A pertinent example is that of the decision of the European Court of Justice relating to the importation into Spain of Schweppes NOVEMBER 2019

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tonic water originally sold in the UK2. In this case, the Court held that the parallel imports could not be stopped despite the division in ownership of the Schweppes marks. The decision would, post a hard Brexit, go the other way.

Present rules on exhaustion Free movement of goods within the EU is guaranteed by articles 34 and 36 of the Treaty on the Functioning of the European Union (‘TFEU’) and in the EEA by articles 11 and 13 of the Agreement on the European Economic Area (‘EEA Agreement’). These provisions have given rise to a very significant body of case law from the European Court of Justice, particularly concerning the parallel imports of pharmaceutical products. In addition to these rules on free movement of goods, exhaustion of rights has been written into a number of the UK’s IP statutes following the implementation of the relevant harmonising Directive, for example, section 12 of the Trade Marks Act 1994 implemented article 7 of the Trade Marks Directive 89/104/EC3. Soon after the coming into force of the Trade Marks Directive 89/104/ EC, the European Court of Justice was asked to consider whether the Directive left it open to Member States to provide for international exhaustion in the case of Silhouette v Hartlauer4. The Court said ‘no’. In so doing, the Court held that this was the only way in which to safeguard the functioning of the internal market; it could not function if some Member States provided for Community exhaustion whilst others provided for international exhaustion. This has given rise to what is termed ‘Fortress Europe’ i.e. a Europe where the borders are closed to parallel imports absent express consent on the part of the rights owner to such importation. Some years later, the European Court of Justice held that article 4 of the Copyright Directive 2001/29/EC (the distribution right) also precluded Member States from retaining international exhaustion in Laserdisken 30 CIPA JOURNAL

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Silhouette: a recap from 1998 Silhouette was a producer of fashion spectacles. They sold some old models to a purchaser in Bulgaria (before Bulgaria joined the EU). Although it was unclear whether a contractual condition attached to the goods, the Court accepted that Silhouette had not consented to the resale in the EEA. Hartlauer subsequently acquired the goods and offered them for sale in Austria. Silhouette started an infringement action arguing that the adoption of article 7 of the Trade Mark Directive into Austrian law had the effect of excluding the previous law of international exhaustion. The ECJ held that articles 5 to 7 of the Directive were to be construed as embodying a complete harmonisation of the rules relating to the rights conferred by a trade mark and that national rules providing for exhaustion of trade mark rights for products put on the market outside the EEA were contrary to article 7.

v Kulturministeriet5. As the Advocate General noted in that case, there was no reason not to interpret the Copyright Directive in line with Silhouette given the similarity in the wording between it and the Trade Marks Directive. From this, it is safe to assume that the same principle would also apply to designs given the similarity in approach and wording of article 15 of the Designs Directive 98/71/ EC. Patents, however, are different. Although within the EU and the EEA parallel imports are governed by the TFEU and EEA Agreement, the UK national principle of implied licence governs patented goods put on the market in third countries6. Thus, the owner of patented goods has an implied licence to use, sell and import those goods but the licence may be excluded by express contrary agreement or made subject to conditions. In this way, the law differs from the principle of exhaustion which leaves no patent rights to be enforced.

Exhaustion of ‘harmonised’ rights post-Brexit The reason for labouring the history is that it informs the construction and effect of The Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 20197 (the ‘SI’).

Part 3 onwards of the SI amends the statutory provisions on exhaustion in relation to UK IP rights which have been harmonised by an EU Directive, such as trade marks8, designs9 and the distribution right relating to copyright works10. Post-Brexit, such IP UK rights will be subject to: • •

national exhaustion; and regional exhaustion for goods first put on the market in the EEA

However, post-Brexit, the UK will not be a member of the EEA or the EU, and therefore it will be in the same position as third countries; putting goods on the market in the UK will not exhaust IP rights in the EEA and owners of IP rights in the EEA will be able to stop parallel imports from the UK into the EEA. The SI is silent on the issue of imports of goods from third countries into the UK. However, in relation to such rights, Silhouette and Laserdisken will be ‘retained EU case law’11 and will apply to any ‘retained EU law’12 which includes such provisions as section 12 of the Trade Marks Act 1994. As a consequence, the principles laid down in these cases will continue to apply after exit day i.e. international exhaustion will not apply unless and until the Supreme Court or Parliament decides otherwise. www.cipa.org.uk


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Exhaustion of patent rights post-Brexit The position post-Brexit in relation to exhaustion of patent rights is dealt with by part 2 of the SI. It provides that: ‘Anything which (a) was, before exit day, an enforceable EU right relating to the exhaustion of rights of the owner of an intellectual property right under articles 34 to 36 [TFEU] or articles 11 to 13 [EEA Agreement]; and (b) is retained EU law by virtue of section 4 of the European Union (Withdrawal) Act 201813 has the same effect on or after exit day, despite the United Kingdom not being a Member State, as it had immediately before exit.’ Thus, the principles of free movement of goods and exhaustion of IP rights under the TFEU and the EEA Agreement will be retained in UK domestic law post-Brexit and the European Court of Justice’s case law to date14 will continue to apply. This will govern the parallel importing of goods, post-Brexit, into the UK (and effectively provides a backup

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to the provisions of the SI relating to harmonised IP rights). Thus, patented goods put on the market in the EEA postBrexit will be exhausted in the UK but, as before, parallel imports going in the other direction (UK to EEA) may be stopped as coming from a non-EEA country. In relation to patented goods being imported from third countries into the UK the SI is, again, silent. However, in contrast to the position on harmonised IP rights, the current national law will apply; in other words the national principle of implied licence will continue to govern imports into the UK of patented goods.

To assist in deciding the way forward, the Intellectual Property Office commissioned Ernst & Young to study the extent of parallel trade in the UK. Their report published earlier this year concluded that it is a fundamentally difficult area to quantify as there is a paucity of data except in the pharmaceutical sector where the data indicates that parallel trade is significant, being between 5 to 10% of total pharmaceutical imports by volume. This is estimated to save the NHS almost £100m per annum, a figure which was used in the debate in the House of Commons Delegated Legislation Committee in support of adopting the SI15.

Temporary nature of arrangements in the SI

Conclusion

The Government has made it clear that the provisions in the SI are temporary. This has stirred up the old arguments about what sort of exhaustion regime the UK should adopt. In doing so, IP owners wanting national exhaustion in order to protect national markets are pitted against those who advocate for international exhaustion on the basis that parallel trade is good for consumers because it creates competition and reduces prices.

We will have to see what the Government proposes to do in relation to exhaustion of IP rights in a post-Brexit world. The clear preference of industry, as recorded in Ernst & Young’s report, is that there should be no change to the current regime of EEA-wide exhaustion. Within the constraints of a no-deal Brexit, this cannot be delivered, however, through SI, the Government has tried to do the next best thing, imposing an asymmetric, regional exhaustion regime.

Katharine Stephens is co-head of Bird & Bird’s IP department in London and a member of the International IP Steering Group. Katharine has a broad IP practice, mostly focused on litigation of patents, trade marks and designs. Katharine’s background is in engineering.

Notes and references

7. SI 2019 No. 265. 8. Section 12 of the Trade Marks Act 1994.

1. ‘Exhaustion of IP rights and parallel trade after Brexit’ published on www.gov.uk on 14 October 2019 and accessed on 15 October 2019.

9. Section 7A of the Registered Designs Act 1949.

2. Schweppes SA v Red Paralela SL, Case C-291/16, 20.12.17.

11. Section 6(7) of the European Union (Withdrawal) Act 2018.

3. Now article 15 of Directive (EU) 2015/2436.

12. Section 6(3) of the EU (Withdrawal) Act 2018. If it is argued that, because of the amendment made by the SI to the exhaustion regime to include national exhaustion, the relevant retained EU law has been modified, section 6(6) of the

4. Case C-355/96, 16 July 1998. 5. Case C-479/04, 12 September 2006. 6. Betts v Willmott [1871] 6 Ch App 239 and subsequent cases.

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10. Section 18 of the Copyright Designs and Patents Act 1988.

EU (Withdrawal) Act 2018 provides that section 6(3) is not prevented from applying ‘if doing so is consistent with the intention of the modifications’. 13. Section 4 of the EU (Withdrawal) Act 2018 provides for any rights under, for example, the TEU, the TFEU and the EEA Agreement to continue after exit day and to be recognised and available in domestic law. 14. But the UK courts are not bound by any decisions made by the European Court of Justice on or after Brexit – section 6(1) of the EU (Withdrawal) Act 2018. 15. See Hansard’s report dated 21 January 2019.

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CUSTOMS

Into the unknown – Customs enforcement after Brexit Rights owners should consider their position on Customs enforcement so they are ready to take action as further guidance on Brexit is issued. By Emma Green

entirety from the date of Brexit in the event of a no-deal. Rights owners breathed a sigh of relief when the draft UK Customs Regulations confirmed that EU AFAs filed via HMRC will remain valid and enforceable in the UK until their natural expiry date, albeit that protection cannot subsequently be renewed. Protection will cease in EU27 as anticipated. Rights owners will therefore need to file: 1.

2.

I

t is fair to say the nerves of rights owners have been tested over the Brexit journey to date. Growing pressure to prepare ahead of hard-stop deadlines, which are ultimately deferred, extended and flexed, has created significant concern and uncertainty for those who want to ensure their brand remains adequately protected after Brexit. IPO guidance has clarified the intention to create equivalent UK protection for the existing pan-European IP rights but there has been significantly less discussion around the mechanisms to establish a national UK Customs Enforcement system.

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The draft Customs (Enforcement of Intellectual Property Rights) (Amendment)(EU Exit) Regulations 2019 issued on 1 March 2019 reassured brand owners and practitioners that the new UK Customs Enforcement system would largely adopt the existing EU AFA framework of Regulation (EU) No 608/2013. The complexity comes in managing the transition between the two systems.

Planning for a no-deal Brexit EUIPO guidance issued in June 2018 indicated that any EU AFA filed via HMRC would cease to have effect in its

a new EU AFA via a EU27 Customs office before the exit date under a no-deal Brexit; and a new UK AFA prior to the natural expiry date of the original AFA.

EU AFA's filed via an EU27 Customs office will remain valid and enforceable in EU27 after a no-deal Brexit but, logically, will cease to have effect in the UK. The HMRC Customs policy team has indicated that HMRC may continue to recognise existing EU AFAs in the UK for a short transitional period after a no-deal Brexit, to allow rights owner's time to obtain protection under new national UK AFAs. The duration of this period is, as yet, unconfirmed. HMRC is yet to issue the new national UK AFA forms outlined under the UK Customs Regulation and has not indicated when these will be available. A short transitional period would therefore no doubt be welcomed by rights owners, acting as an essential safety net until the UK framework is fully established. www.cipa.org.uk


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CUSTOMS

Transitioning in the event of a deal

supplemented by a new UK AFA once the framework is established.

During any agreed transitional period, EUTMs and RCDs will remain valid in the UK, HMRC will remain a competent EU customs authority and the EU Customs Regulation will continue to apply. The existing AFAs will remain in force until their natural expiry date. Rights owners should confirm the remaining term of any existing AFA and identify where it was filed: these factors will fundamentally determine the necessary action.

If changes are required and the EU AFA was filed via HMRC, renewal is not an option, so a new EU AFA should be filed via an EU27 Customs Authority before expiry of the term. This can still designate the UK (to avoid interim gaps in protection) but as UK protection will fall away from the EU AFA on exit, a national UK AFA should also be filed once available.

If no changes are required to an EU AFA filed via HMRC, rights owners who wish to defer costs can simply renew via HMRC up to 30 days before expiry. A new EU AFA will still need to be filed before the withdrawal date to maintain protection in EU27. Alternatively, an EU AFA can be filed via an EU27 Customs office, and this will need to be

The easiest position is for existing EU AFAs filed via an EU27 Customs Authority: that can be renewed or updated as normal. A new UK AFA will be required before the withdrawal date to ensure continuous protection.

Other relevant factors The content of new UK AFA forms will mirror the existing EU framework. All

information will need to be provided afresh, as HMRC will no longer have access to the pan-European COPIS database. There will be no filing fee. Rights owners will need to list existing national UK registrations and the new equivalent registrations created from EUTMs and RCDs – guidance on the numbering of those rights has been issued by the UKIPO. [See pages 16-27.] Practitioners will likely need to acquire new letters of authorisation to confirm that they are authorised to file the applications under the new domestic legislative framework (assuming existing authorisations were granted by reference to the EC Regulation). As we face a brief reprieve from Brexit discussions in the wake of the UK General Election on 12 December, rights owners are advised to use this time to review their existing AFA protection and refine their enforcement strategy.

Emma Green is an Associate in Bird & Bird's Brand Management and Intellectual Property teams. Emma support clients in contentious matters, representing them in UK and EUTM oppositions, revocation and invalidity proceedings as well as negotiating amicable settlements and co-existence agreements. Emma works with clients to devise their international brand enforcement strategy, tackling infringements across online platforms and have extensive experience in establishing EU-wide anti-counterfeiting programmes. See www.twobirds.com/en/our-lawyers/e/emma-green

IP Outside Your Comfort Zone: IP Agreements CIPA webinar report, 24 September. One-hour CPD.

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his webinar was one in a series titled “IP Outside Your Comfort Zone”. The speaker was Lucy Harrold, Consultant Solicitor at Keystone Law. The webinar provided a fairly detailed overview of IP agreements. It could help an IP practitioner to recognise the types of IP agreements that may be appropriate for a client after a client has raised a set of circumstances. The webinar also provided examples of important clauses in IP agreements. It is recommended for any IP practitioner who has not had involvement in IP agreements, or an IP practitioner who has

Volume 48, number 11

dealt with IP agreements occasionally and would welcome up-to-date guidance. The webinar helps a practitioner to understand when an IP agreement is needed, and what type of IP agreement is needed. It also addressed some of the specific considerations for different types of contracts. Lucy also covered some of the key pitfalls in IP agreements. The webinar slides and recording can be purchased from CIPA. Contact cpd@cipa.org.uk Matthew Allen (Fellow)

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UPC

The Unified Patent Court and the UK after Brexit Can the UK still play a role in the UPC after Brexit and can the CJEU accept references from the UK? Alan Johnson (Associate) looks at the possible answers to these and other UPC-related issues

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s readers will be well aware, the UK ratified the UPC Agreement (‘UPCA’) on World IP day 2018, leaving only Germany as a mandatory ratifying country holding the key to the start of the UPC. Equally well known is that the challenge before the German Constitutional Court (the BVerfG) continues to stall Germany’s ability to ratify. Whilst little hard information is available from the Court, based on the progress of cases in the list, a decision in 2019 now seems unlikely, but it is nonetheless reasonable to expect a decision within a relatively few months. Further, most commentators expect the Court to dismiss the complaint. Hence, the German Government may well, within perhaps six months, be in a position to give the green light to the commencement of the UPC by depositing its instrument of ratification of the Protocol on Provisional Application and some months thereafter deposit its instrument of ratification of the UPCA itself. This leads to a consideration of the impact of Brexit on the decision to be taken by Germany (presumably in conjunction with the other Contracting States) because although the UK has ratified the agreement, and although it is an international treaty technically unconnected with the EU, the UK’s changed status is far from irrelevant for a variety of reasons.

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The most recently stated position of the German Federal Government on the effects of Brexit on the future of the UPC (as stated on 31 July 2019 in response to questions from the Free Democratic Party) was as follows: “The question of the exit of the United Kingdom from the European Union (so-called Brexit) and its effects on the European patent reform play an important part in the subsequent implementation process of the Treaty on a Unified Patent Court. The actual and legal effects of an exit must be reviewed in relation to the Treaty and coordinated at European level. Currently, this opinion forming process is not yet complete, not least because significant factors of the likely exit are currently not yet known.” Whilst non-committal, one thing this statement tells us is that the type of Brexit is regarded as relevant to what happens next. So what will be the position if the UK leaves the EU without a deal? Various commentators, notably Ullrich and Lamping (Max Planck Research Paper No. 18-20) have argued that there are all manner of legal question marks over the commencement of the UPC. Of these, those which deserve some analysis are (in summary):  Can the UK, as a non-EU state participate in the UPC? This raises several interlinked issues: ■ Are the references in the UPCA to EU member states an issue? ■ Can the Court of Justice of the European Union (‘CJEU’) accept references from the UPC with the UK participating? ■ What of the fact that the UK will not be subject to the Brussels Regulation? ■ Are there any issues concerning the governance of the UPC if there is a need to modify the UPCA to align it with developing EU law? Volume 48, number 11

UPC

Can the UK, as a non-EU state participate in the unitary patent?

Can the UK, as a non-EU state, participate in the UPC? Are the references in the UPCA to EU member states an issue? The UPCA was drafted as an agreement between EU member states. The UK’s new status outside the EU is a potential issue, therefore, but hardly one of substance. A Protocol could be adopted by the Contracting States saying that references to an EU member state should be construed as references to a state as of the date of execution of the agreement (in 2014). That should be an end to the issue.

Can the CJEU accept references from the UPC with the UK participating? This is a matter of some controversy. Under article 267 TFEU, the CJEU may accept references from the UPC (under article 21 UPCA) if it is a national court of a member state. Despite being an international court in the sense that multiple nations have agreed (in the field of patents) to delegate their national jurisdiction to the UPC, it can properly be regarded as a national court. However, one view is that the CJEU can accept references only from a national court of member states exclusively. The other view is that provided it is a national court of some member states, that is sufficient when the uniformity and autonomy of EU law is safeguarded – in this case by the provisions of the UPCA (to which the UK has signed up) – which include accepting the primacy of EU law. Ultimately this is a matter, however, which only the CJEU itself can determine. No mechanism exists to ask the CJEU for a preliminary ruling before UPC commencement. However, what is certain is that any issue could be dealt with by an agreement on the UPC between the UK and the EU. Hence, even if there is a no-deal Brexit,

a subsequent agreement could fix the problem. Therefore, if Germany would wish to be risk averse and would not want the UPC to start with the UK as a participant in case the system was later declared illegal, it could promote the idea of an agreement on this issue (be it a standalone agreement or a part of a larger post-Brexit agreement).

What of the fact that the UK will not be subject to the Brussels Regulation? The international jurisdiction of the UPC is founded on article 31 UPCA. This references both the Brussels Regulation and the Lugano Convention. Hence, exclusion for the Brussels Regulation regime is not obviously a bar to the UK’s participation in the UPC. However, it would appear necessary that instead the UK should join (re-join) the Lugano Convention. It is understood that this is in any event UK government policy. One slight “wrinkle” in this is that because Lugano has not been updated in the same way as Brussels Regulation, there is a mis-match between the two regimes. Most notable among these is the absence in Lugano of articles 71a-d of the recast Brussels Regulation, which make specific references to the UPC. Ideally, Lugano should be updated.

Are there any issues concerning the governance of the UPC if there is a need to modify the UPCA to align it with developing EU law? Ullrich and Lamping have argued that governance of the UPC to align it with future developments in EU law might be blocked by the UK. Whilst in any event only a theoretical issue, in fact amendments to the UPCA can only – under Article 87(3) – be delayed by an individual country. In the event of a country objecting to a decision of the Administrative Council to revise the UPCA, a Review Conference (a diplomatic conference) must be convened, and at such a conference no one country may apply a veto NOVEMBER 2019

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regulations – see articles 20 and 24(1) (a) UPCA). Such an extension would require an agreement between the UK and the EU. Accordingly, once again, the issue can be addressed if that is wanted by contracting member states.

Conclusion

The challenge before the German Constitutional Court continues to stall Germany’s ability to ratify the UPC Agreement.

under international law (the Vienna Convention 1968). Hence this point would appear to lack any real substance

Can the UK, as a non-EU state, participate in the unitary patent? This raises a rather different issue in that the UPC could go ahead and yet the UK might still not be a part of the unitary patent part of the system – the situation Italy was in at one stage – because the Regulations are EU instruments 36 CIPA JOURNAL

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separate from the UPCA. The unitary patent and translation Regulations will not apply to the UK under a nodeal Brexit. However, in principle EU instruments including Regulations can be extended to non-EU statews. The European Common Aviation Area is an example and includes acceptance of CJEU jurisdiction to interpret EU law (though in any event, the UK has already accepted the primacy of EU law and that the UPC shall base its decision on EU law including the unitary patent

In summary, any problems there may be with UK participation have a workaround. As Margot Fröhlinger has often said “where there’s a will, there’s a way”. If Germany and the other contracting states want the UPC to go ahead with the UK, this will be possible – and at present there appears to remain a political will to include the UK. Further, this could include being a part of the unitary part of the package too. But alternatives are possible. In the immediate aftermath of the Brexit referendum and before the UK had re-pledged its support for the UPC, it had already indicated informally that it would not stand in the way of the UPC going ahead without it. That was at a time before it had ratified, but nonetheless one would imagine that (with regret) the UK would take the same line again if other states made it known that they wanted the UPC to go ahead, but considered it too risky to launch a system at risk of being struck down by the CJEU. And finally, of course, there is always the possibility that the UPC project could be abandoned as too risky to include the UK, but not sufficiently worthwhile to proceed without it. Your author has very mixed feelings about these alternatives. Having followed the UPC for 20 years, it would be a great shame to see it go ahead without the UK, and equally regrettable if it did not happen at all. Having recently retired from private practice, he no longer has any “skin in the game”, but overwhelmingly he hopes it will go ahead with the UK fully involved. There really is no good reason why not. Alan Johnson – former Partner, Bristows LLP – retired 31 October 2019. 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.

RAND | Licences | Injunctive relief TQ Delta, LLC v (1) ZyXEL Communications UK Limited (2) ZyXEL Communications A/S [2019] EWCA Civ 1277; [2019] EWHC 1089 (Pat); [2019] EWHC 745 (Pat); [2019] EWHC 562 (Pat 18 July 2019 • Floyd, Lewison LLJ This family of cases related to infringement of TQ Delta’s patents declared essential to the ITU-T standards for telecommunication equipment and systems. As such, these patents were subject to a RAND undertaking.

First instance decision [2019] EWHC 562 The first case, [2019] EWHC 562, related to infringement and validity proceedings regarding two of TQ Delta’s patents, European (UK) patent No. 1453268 “Multicarrier communication with variable overhead rate” (‘the 268 Patent’); and European (UK) patent No. 1792430 “CRC counter normalisation” (‘the 430 Patent’). Both patents related to digital subscriber line (‘DSL’) technology used to provide land-based fixed line broadband services. At first instance, Mr Justice Carr found the 268 Patent valid and infringed and the 430 Patent infringed but invalid in view of the prior art, with the judge noting: “The case in respect of the 268 Patent involves the application of settled principles of law to complex facts. The case in respect of the 430 Patent is more unusual, in that TQ Delta accepted that once the problem addressed by the patent is known, the claimed solution is obvious. However, it contends that invention lay in perceiving the problem at the priority date.”

Injunctive relief [2019] EWHC 745 (Pat) The 268 patent, held to be essential, was invalid and infringed. However, the 268 patent was only three months from expiry. This placed ZyXEL in a very different position from what was anticipated at the start of the technical trial. ZyXEL’s position was therefore to make clear that it did not Volume 48, number 11

seek a licence, before any RAND licence was settled by the Court. It further argued that an injunction would be disproportionate in circumstances where the 268 Patent expired in less than two months. TQ Delta argued that this was a very serious case of “hold out”, i.e. where an implementer postpones for as long as possible any payment whilst infringing standards essential patents, because it wants to keep its money and exhaust the resources and will of the opposite party, and that this should be factored into the decision as to whether to grant an injunction. The judge agreed with TQ Delta: “On the evidence before me, I accept that this is a case of ‘hold-out’ by ZyXEL. They have not paid any royalties to TQ Delta (or any other patent holder) in respect of any standards essential patent. Of the two patents from TQ Delta’s portfolio which have now been litigated in this jurisdiction, infringement of the 268 Patent has been established, and has been continuing for many years. ZyXEL have blown hot and cold as to whether they will accept whatever licence is considered by the Court to be RAND. They have refused to ‘agree to submit to the outcome of an appropriate [RAND] determination’ and yet have claimed the benefit of the RAND undertaking; c.f. Unwired Planet at [54] (supra).” The judge concluded that not granting an injunction would be unjust: “It would enable ZyXEL to benefit from their strategy of hold-out, including their refusal to submit to the outcome of an appropriate RAND determination, whilst still seeking to benefit from the RAND undertaking. ZyXEL would avoid an injunction, and if the terms of a RAND licence are not as they wish, could refuse to enter into a licence on the terms deemed appropriate by the Court. It seems to me that to deprive the patentee of injunctive relief in these circumstances would be unjust. It would, in effect, amount to a compulsory licence by the court in circumstances where the Defendants have elected not to enforce the RAND undertaking in respect of the ‘268 patent. This, in my judgment, would be wrong in principle.” NOVEMBER 2019

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The judge also refused permission to appeal the technical trial and the grant of injunctive relief: “I consider that it would be wrong to grant permission, the Court of Appeal already having indicated at [53]-[54] of Unwired Planet v Huawei the correct general principles. I also bear in mind that were I to refuse injunctive relief it would amount to a compulsory licence of the patentee’s exclusive rights and deprive it of meaningful protection in circumstances where the Defendants have elected not to enforce the RAND undertaking. Whether to grant an injunction in these circumstances is an exercise of discretion, from which it is difficult to appeal. For those reasons I do not consider that an appeal would have any real prospect of success and I refuse permission to appeal.” The judge therefore granted an injunction to restrain infringement of the 268 patent during the remaining three months of its life, and ordered an enquiry as to damages for infringement, with the enquiry scheduled to take place alongside the RAND trial in September 2019. The judge also declined a request by ZyXEL immediately to vacate the RAND trial on the grounds that it had been rendered redundant by the abandonment of reliance on the undertaking. Instead, he adjourned the question of whether the RAND trial should proceed.

Further developments – [2019] EWHC 1089 (Pat) ZyXEL then sought permission to appeal against the grant of the injunction. On 8 April 2019, permission was refused on the grounds that ZyXEL had elected not to seek to enforce the RAND undertaking and was no longer seeking a determination of the terms of such a licence at the RAND trial. There was therefore no reason to say that the injunction should not have been granted before the RAND trial, or for treating ZyXEL differently from any other defendant who was found to infringe a valid patent. ZyXEL then purported to waive its rights to a RAND licence for the UK as a whole under any TQD UK-designated patent for DSL. Shortly after the proffering of this waiver, a further hearing ordered by Carr J came before Birss J on 17 April 2019 as [2019] EWHC 1089 (Pat). At that hearing, ZyXEL applied to strike out the claim form and the amended particulars of claim to the extent that these related to entitlement to declaratory relief in respect of the terms of a RAND licence. TQ Delta also applied to amend its pleadings relating to RAND declaratory relief. One such amendment was to seek a declaration: “that [ZyXEL] are not willing licensees to [TQD’s] portfolio of patents essential to the Recommendations and/or that [TQD] is not obliged to offer a licence to such patents on RAND and/or any other terms to them”.

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In his decision, Birss J refused ZyXEL’s strike out application and allowed the majority of TQ Delta’s amendments. On this basis, he allowed the RAND trial fixed for September 2019 to proceed.

Appeal – [2019] EWCA Civ 1277 Considering the authority in Unwired Planet, Floyd LJ presented seven guiding principles: 1. A UK-designated SEP has limited claims and limited territorial scope, so that the relief granted for infringement will be limited to an injunction to restrain infringement of the patent in question only in this jurisdiction, and to corresponding damages for infringement. There is no such thing as an international portfolio right. 2. The FRAND undertaking was designed to allow implementers access to the standards without being held up by dominant patents, by injunctions and excessive licensing fees. To be of use the licence must be wide enough to allow the implementer to market its products which meet the standard. 3. On the other hand, SEP owners were entitled to appropriate reward for the use of their invention. So implementers must engage constructively with patent owners, and, where necessary, agree to submit to the outcome of an appropriate FRAND determination and thus limit hold-out. 4. Depending on the facts, a global licence may be FRAND, and a purely national licence may not be FRAND, because it may be wholly impractical to negotiate licences on a country-by-country basis. What is FRAND in any individual case depends on what a willing licensor and willing licensee would agree in those circumstances. 5. In the case where a purely national licence is FRAND, the SEP owner who wins on validity and infringement may be granted an injunction if the implementer refuses to take a licence on those national terms. 6. The same regime applies in the case where a global licence is FRAND. In that case the SEP owner may be granted an injunction if the implementer does not agree to take a licence on those, global terms. 7. The court explained the rationale in the following way: “Were the position otherwise then the SEP owner seeking to recover the FRAND licence monies for all of the SEPs in the same family from an uncooperative implementer who is acting unreasonably would be required to bring proceedings in every jurisdiction in which those rights subsist, which might be prohibitively expensive for it to do. This result would not involve any alteration of the territorially limited characteristics of any SEP; nor would it involve any jurisdictional expansionism. To the contrary, it would amount to a recognition by the court (i) that the SEP owner has complied with its undertaking to ETSI to offer a licence on FRAND terms; (ii) that the implementer www.cipa.org.uk


DECISIONS

has refused or declined to accept that offer without any reasonable ground for so doing; and (iii) that in these circumstances the SEP owner is entitled to the usual relief available for patent infringement including an injunction to restrain further infringement of the particular SEPs in issue in the proceedings.” There were four grounds of appeal to consider: 1. The judge’s conclusion that there was “a real and lively dispute” between TQD and members of the ZyXEL group was not available to him on the evidence. 2. The judge was wrong in law to hold that there was sufficient uncertainty about the scope and effect of the waiver given by ZyXEL to make it arguable that the court might, at the trial, find that there was a real commercial dispute between the parties which might justify the grant of declaratory relief. The concerns which he expressed about the scope and effect of the waiver were wrong in principle, irrelevant and / or illusory. 3. The judge should have held that the scope and effect of the waiver were clear, and that the waiver rendered the dispute between the parties about RAND licences redundant and/or non-justiciable by the court.

PATENTS: UK

statement, the court’s declaratory jurisdiction was entirely properly invoked as part of resolving ZyXEL’s answer to the grant of the usual relief for patent infringement. The position in the light of the waiver is, however, very different. Insofar as the declaration seeks simply to determine the scope and terms of the licence which TQD is bound to offer to the two ZyXEL parties, it would no longer serve a useful purpose, because those parties have said that they have no interest in deploying such a licence, whatever its terms would ultimately prove to be, to prevent the grant of that relief. For the same reason, they have no interest in a determination by the court as to whether TQD are obliged to grant them a licence for the purposes of resisting that relief. As a consequence, relief has been granted in respect of the 268 patent, and ZyXEL have offered to pay the full amount of the damages claimed (if the RAND trial does not go ahead).” On the final point, Floyd LJ considered whether the RAND trial might, nevertheless, hold a useful purpose and be justified, but the likely future costs, combined with the limited current resources of the court, meant that a ten-day trial was not justified when the utility of trial had fallen away. On these grounds, Floyd LJ (with agreement by Lewison LJ) allowed the appeal and cancelled the RAND trial.

Request for transfer from IPEC to Patents Court 4. The judge acted irrationally by failing to give the parties an opportunity to address the court further on the concerns which he had identified, for example by adjourning the hearing or asking for written submissions. These could have resolved the issues at far less expense than committing the parties to a costly hearing at which there was a very real prospect that it would be rendered entirely irrelevant by the undertaking. The Court decided that Birss J’s conclusion that there remained a real and lively dispute was not supported by the evidence. The only litigation of which there was evidence was that in the United States, where the evidence was that there would be no assessment of a global portfolio rate, and only quantification of per-patent damages. Even if future litigation brought by TQD were to be brought elsewhere, if RAND issues arose there, they would not arise in relation to the United Kingdom. It would not be appropriate for the English court, in the absence of an extant domestic dispute, to make prospective declarations about issues in foreign litigation and concerning foreign patent rights. On the waiver, the judge noted: “Before the change of tack which was initiated at the hearing before Henry Carr J by ZyXEL’s indication that they no longer wished to take a RAND licence, and completed by the irrevocable waiver tendered in Mr Haargaard’s witness Volume 48, number 11

Kwikbolt Limited v Airbus Operations Limited [2019] EWHC 2450 (IPEC) • 31 July 2019 • HHJ Hacon Kwikbolt, a small company, brought an infringement action in the IPEC under United Kingdom Patent No. 2455635 against Airbus, a much larger company. Airbus applied to have the case transferred to the Patents Court. In refusing Airbus’s request, HHJ Hacon referred to the principles he had set out in 77M Limited v Ordnance Survey Limited [2017] EWHC 1501 (IPEC) and also made the following observations: “I will make some general observations before considering the facts of the case. First, I must take into account the complexity of the issues and the estimated length of trial. As these two issues are related, it will usually be the case that if a trial can be heard in two or at the most three days it will be of a complexity that makes it suitable for hearing in IPEC. There are some proceedings which have far too many issues and would plainly take too much time at trial to be heard in IPEC. Where that is the case, even important matters such as access to justice cannot assist a party who wants the case heard in IPEC. Unsurprisingly, applications to transfer into or out of IPEC rarely concern such cases. More characteristically, one side insists that the case will take four, five or six days, whereas the other side has no doubt that the NOVEMBER 2019

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trial can easily be completed within two. In assessing the time that the trial is likely to take, the court must take into account the extent to which the proceedings can fairly be case-managed to focus the issues between the parties, which will include preventing a proliferation of issues which are marginal at best and may even have been raised to improve the chances of having the case transferred out of IPEC or to resist it being transferred into IPEC. Secondly, if the proceedings are of a nature such that they can be heard fairly within two or three days, possibly following some focussing of the issues, by far the most important factor is to ensure that parties with limited financial means are afforded access to justice… Where access to justice is likely to be possible only if the proceedings are in IPEC, that is a very powerful factor in favour of having the case heard in IPEC. Thirdly, the value of the claim should not be confused with the cap on damages which applies in the IPEC. To take an example, it is possible that an injunction would cut the defendant’s market share and increase the claimant’s share such that the value of the injunction is well in excess of

£500,000. However, it does not follow that the high value of a claim by itself means that it cannot be heard in IPEC. It would make no sense at all if an impecunious claimant could never seek to enforce his right in IPEC solely because the claimant can show that the injunction could have a large financial impact. Access to justice always remains important. That said, the value of the claim, including the likely financial impact of the injunction, is of course relevant, and sometimes will be a matter of significance. Generally, that will be the case because a defendant who is facing the possibility of an injunction which could have high financial consequences will have a proportionately greater entitlement to ensure that all these reasonable arguments in their defence are taken. I emphasise that the arguments must still be reasonable in the circumstances. Fourthly, the approach to the litigation taken by the parties seeking to have the case heard in IPEC is relevant. As Judge Birss said in Comic Enterprises, the claimant that pleads and otherwise approaches a case in a manner more appropriate for a case in a list outside IPEC: that case is liable to be transferred out of IPEC.”

Shanks v Unilever – employee inventor’s entitlement to compensation Supreme Court orders Unilever to pay £2 million to a former employee as his fair share of the income created by a patented invention he made while with the company.

O

n 23 October 2019, the Supreme Court handed down its decision in Shanks v Unilever1 in which it decided that Unilever’s former employee, Professor Ian Shanks, had made an invention while employed within the Unilever Group, which had created a benefit (£24 million in royalty income) that should be regarded as “outstanding” for the purposes of section 40(1) of the Patents Act 1977. The compensation the employee inventor was entitled to, as a “fair share” of that benefit under section 41(1) of the Patents Act, was 5% of the £24 million. The resulting figure of approximately £1.2 million was then increased to £2million by applying an uplift to reflect the impact of time on the value of money since the median date when the various royalty payments had been received by Unilever. This is the first time that the employee inventor provisions of the Patents Act have been considered by the UK’s ultimate appeal tribunal. The decision provides valuable guidance for courts and tribunals on: 1.

1.

The principles governing the assessment of outstanding benefit to an employer. In particular: a. the identification of who the employer is within a group structure; and b. the assessment of benefit, in cases where the employee has financial substance, against the requirement that the benefit must be outstanding “having regard among other things to the size and nature of the employer’s undertaking”. 2. How a fair share of the benefit enjoyed by the employer should be assessed. A detailed review of Shanks v Unilever will be published in the December issue of the CIPA Journal. Chris Ryan (Associate)

Shanks v Unilever Plc and others [2019] UKSC 45, see https://www.supremecourt.uk/decided-cases/

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PATENTS: UK IPO

IPO decisions By David Pearce (Barker Brettell) and Callum Docherty (Withers & Rogers) 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.

Adobe Systems Incorporated

Adobe Systems Incorporated

BL O/530/19 9 September 2019

BL O/549/19 19 September 2019

The application related to a computerised method for more effectively loading content from a web page by indexing links in a current page, creating a trigger area around each link and preloading and caching content associated with a link if a cursor entered a trigger area, the content being loaded from cached content if the link was activated. The examiner objected that the invention was excluded from patentability for being a computer program as such, and considered that a search would serve no useful purpose. The applicant argued that the contribution was a new method of reducing web page loading times when a link was selected, in a bandwidth efficient manner. The examiner and applicant agreed on the effects and advantages of the invention, but disagreed on the alleged effect the invention had on network bandwidth usage, the examiner indicating that the invention would be likely to lead to increased bandwidth usage, while the applicant focused on the effect of speeding up the user’s experience. The hearing officer considered the contribution to be a method for reducing web page loading times from the perspective of the user, when a link was selected, in a bandwidth efficient manner, by detecting user interactions within trigger areas, the detections being used to download predetermined content associated with a link and store the content in a cache in advance of selection of the link. Although the hearing officer accepted that the invention operated in a bandwidth efficient manner, it did not amount to a technical effect on the network itself because there was no change to the technical characteristic of the network or the communication process outside of the computer on which the program was run. The problem the invention aimed to address related to long loading times of web pages, which was done by preemptively downloading and caching content. The problem of long loading times was not overcome but instead circumvented. None of the AT&T/CVON signposts were found to indicate a technical contribution. The claimed invention was therefore found to be excluded from patentability for being a program for a computer, and the application was refused.

The application related to a method for recommending software actions to create an image and recommending images to demonstrate the effects of software actions, which could be used for showing a designer new or unexpected features of an image processing application. The examiner objected that the claimed invention was excluded from patentability for being a program for a computer as such. The applicant argued that the contribution provided was a means for autonomously determining a recommended set of actions for an asset representation based on analysis of the asset representation and pre-processing the asset representation with said set of actions while recommending the actions to a user. The hearing officer considered that it was clear the arrangement of hardware used to implement the invention was immaterial to how the invention worked, so the contribution must be viewed as being embodied purely as a computer program. The applicant and examiner disagreed on whether the EPO decision in Vicom (T 208/84) applied, with the examiner regarding pre-processing as not relating to a technical process, while the applicant argued that the reasoning in Vicom applied because the invention resulted in a change to a physical entity and a technical improvement was made to the underlying asset reproduction. The hearing officer considered that the contribution in Vicom was an improved image processing method, and this was very different to the contribution of the invention in question because the contribution was not in image processing but in determining a recommended set of actions. The contribution did not have an effect outside the computer and was not analogous to that in Vicom. The contribution was found to be a program for a computer and a mathematical method, and was therefore excluded. The application was refused.

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EPO

EPO decisions This month’s contributors from Bristows are Gemma Barrett, Thomas Hendicott and Rachel Mumby 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.

Intervention of the assumed infringer – article 105 EPC T 1665/16: Fire retardant elastic foam material / Armacell Enterprise GmbH & Co. KG TBA decision of 25 June 2019 Chair: D. Semino Members: D. Marquis and C. Brandt This was an appeal to the TBA against the decision of the opposition division (“OD”) to maintain the patent and reject the opposition. The opponent lodged an appeal relying on D1 but also further prior art documents, D2-D4. During the appeal proceedings two interventions were filed on the basis of article 105 EPC. The interveners raised lack of novelty and lack of inventive step in relation to new documents, E1E20, not considered during the opposition, but withdrew the interventions before the oral proceedings. During the oral hearing, the appellant (opponent) argued that, despite the withdrawal of the interventions, E1-E20 had been validly introduced into the proceedings and that there was a legitimate interest for the board to come to a decision on the case as opposed to remitting it. The respondent (patentee) argued that E1E20 were filed late and should not be admitted to the proceedings but, if they were, the matter should be remitted so it has the benefit of review by two instances as would have been the case had these documents been introduced in opposition proceedings. The Board held that article 105 is not subject to any time limit and that documents E1-E20 had been filed as early as possible with no objection from the proprietor. On this basis, the documents were as a matter of fact part of the appeal proceedings without there being any need for discretion on the part of the board as a valid intervener acquired the status of an opponent (G3/04). The withdrawal of the intervention did not change the status of these documents and, in particular, did not render the intervention (nor the documents associated with the intervention) as retroactively inadmissible and the request not to admit documents E1-E20 was refused. 42 CIPA JOURNAL

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Upon the finding that documents E1-E20 had been validly introduced into the proceedings, the Board was of the view that the documents introduced related to aspects of claim 1 which had never been considered by the parties prior to the intervention. The Board considered that the documents “alter the factual framework of the case to such an extent that they constitute a fresh case in appeal” and did not consider the validity of patent in light of such documents and remitted the case to the OD.

Correction of text of granted patent – rules 71(3) and 140 EPC T 1003/19: Co-current and counter current resin-in-leach in gold leaching processes / Barrick Gold Corporation TBA decision of 30 August 2019 Chair: E. Bendl Members: P. Guntz and A. Haderlein This was an appeal against the decision of the Examining Division to grant the patent in issue without six out of seven of the drawing sheets. The appellant asked to correct the decision under appeal to include the complete set of drawings and requested a reimbursement of the appeal fee. The original application contained the description, claims and drawing sheets 1/7 to 7/7. At no point during the proceedings before the examination division had an amendment of the drawing sheets been suggested by the examination division, or requested by the appellant. However, the rule 71(3) EPC communication listed the description, claims and “drawings, sheets 1/1 as published” and neither the members of the examining division nor the appellant realised the discrepancy. The appellant subsequently filed the necessary translations and paid the fee for grant and publishing. The board held the appeal to be admissible, as the granted patent did not correspond to the text submitted by the appellant, to a text agreed by it or a text deemed to have been approved by it (the “text” refers to the description, claims and drawings). The www.cipa.org.uk


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applicant was not deemed to have approved the list of documents under rule 71(5) EPC as the text did not correspond to the text submitted by the applicant and, although the EPO can suggest minor amendments, deleting all the drawings bar one would not fall into this category. In any event, then it is good practise to set out the amendments in the communication. Further, there was no drawing sheet marked 1/1 only one marked 1/7. Given that the appellant had not submitted or agreed the text of the patent, the appeal was allowed and the decision to grant set aside.

EPO

This decision was held to be in line with G1/10, that the text of a granted patent cannot be corrected under rule 140 EPC. The board distinguished G1/10 on the basis that the text intended for grant in the present case had not been communicated to the appellant for approval. The appeal fees were not reimbursed as the reference to “sheets 1/1 as published” had been introduced by the examining division in earlier communications and should have been spotted by the appellant earlier, or at least when comparing the text of the rule 71(3) EPC communication and the Druckexemplar.

IP Pro Bono update We are receiving new cases every week and need more firms to be involved with taking these on. Cases involve all kinds of IP, with an emphasis on copyright and trade marks as well as some patent and design matters. The scheme’s case officers act as gatekeepers, assessing each request against a set of strict criteria before deciding whether to pass them on to participating firms. IP Pro Bono also offers an opportunity for you and colleagues to gain advocacy experience and create goodwill in the wider community. The scheme is actively promoted by IPEC. We believe that it is important to support those who might have no opportunity for representation – helping them to present their case in the right way, finding the right evidence and advising on the best approach. From speaking to colleagues who have been involved with the scheme, we know that the scheme offers:

    

Opportunities to gain advocacy experience (subject to appropriate supervision) Experience of cases outside your day-to-day client base The possibility of future business with successful cases The chance to contribute to an ethical and socially responsible environment The opportunity to identify your firm as a member of the scheme.

There are many time pressures on practitioners today and we therefore ensure that we do not ask firms and individuals to take on any more than they have capacity for. We encourage the work in each case to be clearly identified and delineated in an engagement letter or contract at the start of the relationship. Please contact office@ipprobono.org.uk if you would like to find out more about the scheme and how you can be involved. We would be very pleased to hear from you. Stephen Jones, Chairman, IP Pro Bono Committee, Past President, CIPA Kate O’Rourke, IP Pro Bono Committee, Past President, CITMA

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TRADE MARKS

Trade mark decisions This month’s editors are Katharine Stephens and Thomas Pugh at Bird & Bird LLP. 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

Decisions of the GC and CJ

Ref no. CJ T-469/18 Battelle Memorial Institute v EUIPO

Application (and where applicable, earlier mark)

Comment

HEATCOAT – carbon–based, electrically conductive, de-icing material layers and preparations for aircraft surfaces (1)

The GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to article 7(1)(c). The BoA was correct to find that the terms HEAT and COAT were both individually descriptive with regard to the goods applied for. The combination HEATCOAT was not a neologism, but rather the simple juxtaposition of two terms. The fact that the combination had a grammatically incorrect structure was insufficient for it to be found not descriptive. The GC found that there was a link between the mark applied for and the goods concerned that was sufficiently direct and specific to enable the relevant public (professionals in the industrial sector) to immediately perceive the intended purpose of the goods i.e. that of deicing by means of heating.

9 May 2019 Reg 2017/1001 Reported by: Elizabeth Greene

GC T-340/18 Gibson Brands, Inc. v EUIPO; Hans-Peter Wilfer 28 June 2019 Reg 207/2009 Reported by: Adeena Wells

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– apparatus for recording, transmission or reproduction of sound or images (9) – musical instruments (15) – clothing, footwear, headgear for promoting or displaying musical instruments (25)

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In an application for a declaration of invalidity under article 52(1)(a), the GC upheld the BoA’s decision that the mark was invalid for musical instruments on the basis that it was devoid of distinctive character and acquired distinctiveness had not been proven under article 52(2). There were several variants of shapes of the mark in the electronic guitar market at the time of the application and the mark’s shape did not depart significantly from the norms and customs of the sector and was devoid of distinctive character. The GC confirmed that the electronic guitar market, although limited and specialised, was international and therefore evidence relating to the American and Canadian market was relevant and had enabled the BoA to determine the characteristics of the EU market. The proprietor’s survey evidence (covering eight member states) filed in support of the claim for acquired distinctiveness was held to be insufficient as the surveys did not cover a sufficient number of member states and they did not show that the relevant public attributed a particular commercial origin to a V-shaped guitar.

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Ref no.

Application (and where applicable, earlier mark)

GC T-680/18 SLL Service GmbH v EUIPO; Elfa International AB 9 September 2019 Reg 2017/1001 Reported by: Daniel Anti

GC C-541/18 AS v Deutsches Patent- und Markenamt 12 September 2019 Directive 2008/95/ EC Reported by: Aaron Hetherington

– building and construction materials and elements of metal (6) – non-metallic building and constructing materials and elements (19) – various furniture goods (20) LUMI – metal building materials; small items of metal hardware; fittings of metal for building and furniture (6) – non-metallic building materials, doors and cornices; wood panelling; cask wood (19) – various furniture goods (20)

#darferdas? – clothing, in particular tee-shirts; footwear; headgear (25)

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The BoA was correct in finding that the overall impression created by the marks was dominated by the fact they share the same sequence of letters, ‘l’, ‘u’, ‘m’ and ‘i’. The GC went on to state the presence of the letter ‘n’, the number 8 and the minimalistic figurative elements of the mark applied for were unlikely to influence the consumer’s perception. As a result, the marks were held to be similar visually, phonetically and conceptually and there would be a likelihood of confusion among the relevant public.

The CJ gave a preliminary ruling regarding the interpretation of article 3(1)(b), following a reference made by the German national court. The CJ held that, in principle, a sign comprising a hashtag was capable of fulfilling the essential function of a trade mark for the purposes of article 2. In relation to article 3(1)(b), the CJ reiterated the standard test for determining whether a mark has distinctive character. In particular, it emphasised that all of the relevant facts and circumstances should be considered by the relevant authority to determine whether the average consumer perceived the mark as an indication of commercial origin in light of the use made of it. The CJ observed that the national court had identified two practically significant uses of a mark in the clothing sector – first, the placement of the mark on the exterior of the goods, and secondly its placement on the interior labels of the goods. Therefore both uses were relevant in determining whether the average consumer would perceive the mark as a badge of origin.

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

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Application (and where applicable, earlier mark)

Ref no. GC T-502/18

– bleaching preparations (3) – pharmaceuticals (5) – surgical aparatus (1) – retailing and wholesaling (35)

Pharmadom v EUIPO; IRF s.r.o. 17 September 2019 Reg 207/2009 Reported by: Rebecca Slater

– bleaching preparations (3) – pharmaceuticals (5) – surgical aparatus (1) – retailing and wholesaling (35) – medical services (44)

GC T-378/18 NHS, Inc. v EUIPO; HLC SB Distribution, SL

CRUZADE – rucksacks, gym bags, baggage, valises, waist bags (18) – clothing, footwear and headgear (25) – sporting goods; skateboards and their parts (28)

19 September 2019 Reg 207/2009 Reported by: Katie Rimmer

– skateboards, truck sets for skateboards, skateboard parts and accessories; winter skates; surfboards, snow boards; knee pads, elbow pads, cover cuffs; gloves for sporting purposes and games (28)

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TRADE MARKS

Comment The GC upheld the BoA’s decision that there was no likelihood of confusion under article 8(1)(b). The GC held that the BoA was correct to find a low degree of visual similarity between the marks. The marks differed due to the presence and dominance of the word ‘medi’ at the beginning of the later mark, the repetition of the word ‘well,’ and the presence of the element ‘&’ in the earlier mark and the differences in colour and stylisation. The phonetic similarities were held to be low as although the pronunciation of the common element ‘well’ was identical for both marks, the repetition of ‘well’ and presence of the element ‘&’ in the earlier mark gave it a distinctive rhythm and sound. Finally, the marks were held to have some degree of conceptual similarity for the part of the relevant public who spoke English and understood the terms ‘medi’ and ‘well’ but no similarity for the remaining part of the relevant public. The GC upheld the BoA’s decision that the earlier mark did not have enhanced distinctive character under article 8(1)(b) and did not enjoy a reputation under article 8(5). There was therefore no likelihood of confusion between the marks under article 8(1)(b). The GC held that the BoA was correct in assessing that NHS had not provided sufficient and appropriate evidence to demonstrate the mark’s enhanced distinctive character under article 8(5). Not only was the evidence submitted of low probative value (owing to those submitting it having a close connection to NHS) but that evidence was also incapable of demonstrating the mark’s reputation in the absence of other key evidence. As regards likelihood of confusion, the GC held that the earlier mark consisted of both figurative and verbal elements, whereas the mark in dispute was a word mark. Contrary to NHS’ submission, the BoA correctly found the comparison of marks should be of the overall impression created and not solely based upon the ‘CRUZ’ element. The GC further held that the BoA was correct in finding that even though some of the goods covered by the marks in issue were identical, this partial identity was offset and neutralised by the low level of similarity between the signs. Accordingly, there was no likelihood of confusion and the appeal was dismissed.

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Ref no.

Application (and where applicable, earlier mark)

GC T-176/17 WhiteWave Services Inc. (authorised to replace Sequel Naturals ULC) v EUIPO; Carlos Fernandes 19 September 2019 Reg 207/2009 Reported by: Dean Rae

– foodstuffs, food supplements and energy drinks targeting consumer health (5, 29, 30 and 32) VEGAS – foodstuffs, food supplements and non-alcoholic drinks (5, 29, 30 and 32) – wholesale and retail services for the aforementioned goods (35) – medical services (44)

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion under article 8(1)(b) in respect of some of the goods covered by the application. The GC agreed with the BoA that the marks had a strong phonetic similarity and were visually similar. The GC disagreed with the BoA’s conclusion that the marks were conceptually neutral. The GC held that the BoA had erred in law by failing to explain why the term ‘vegas’ had no meaning for the relevant EU public. Accordingly, the marks were not conceptually neutral. Notwithstanding this, as the goods covered by the marks were generally purchased orally, the GC concluded that the conceptual differences advanced by the applicant were not capable of counteracting the visual and phonetic similarities.

(EUTM and German marks)

GC T-287/18; and T288/18

NATURE’S VARIETY INSTINCTS – animal foodstuffs; pet foods; pet treats (31)

M.I. Industries Inc. v EUIPO; Natural Instinct Ltd. 20 September 2019 Reg 2017/1001

– animal foodstuffs; pet foods; pet treats (31)

Reported by: Robert Rose

– foodstuffs for dogs and cats; bones and chewing bones for dogs; litter for dogs and cats (31) (EUTM and UK marks)

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The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC held that the BoA had erred in finding that the marks coincided in the pronunciation of the element ‘natur-’ since the sequence of letters ‘n’, ‘a’, ‘t’, ‘u’ and ‘r’ is pronounced differently in each of the signs at issue. However, the slight differences in the pronunciation of these elements did not have the effect of making the marks totally different. The presence of ‘natur-’ and ‘instinct’, both dominant and distinctive elements of the marks, as well as the identity of the goods and in light of the attention of the relevant public meant there was a likelihood of confusion. The GC held that M.I. Industries’ submission that pet owners are loyal to a brand, with the result being that their level of attention is higher, should be rejected. M.I Industries had not provided any evidence to substantiate this claim and as the BoA can only examine facts via evidence provided by the parties. The GC agreed that the BoA was right in rejecting M.I. Industries’ submission.

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Application (and where applicable, earlier mark)

Ref no. GC

DOKKIO – computer operating programs (9) – online software as a service (42)

T-67/19 Sixsigma Networks Mexico, SA de CV v EUIPO; Dokkio, Inc. 20 September 2019 Reg 207/2009 Reported by: Nicholas Puschman

– online computer software (9) – telecommunications (38) – education; providing of training; entertainment; sporting and cultural activities (41) – computer hardware and software (42)

GC

UKIO – advertising (35) – education; providing of training; entertainment; sporting and cultural activities (41) – scientific and technological services (42)

T-367/18 Sixsigma Networks Mexico, SA de CV v EUIPO; Marijn van Oosten Holding BV 20 September 2019 Reg. 207/2009 Reported by: Nicholas Puschman

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks pursuant to article 8(1)(b). The BoA was correct to find that the signs were visually dissimilar. The GC added that the relevant public would perceive the visual differences more clearly because both signs were short. In addition to the visual dissimilarities, the GC also upheld the BoA’s findings that the marks at issue were phonetically different. The BoA was also correct in holding that the conceptual aspects of the signs had no influence on the comparison exercise because neither sign had any meaning in any part of the EU. The fact that the signs were dissimilar overall meant there was no likelihood of confusion. The GC confirmed that the BoA had been correct in concluding that due to the dissimilarity of the marks it was not necessary to examine the extent to which the goods and services were similar. The GC upheld the BoA’s decision that there was no likelihood of confusion with the relevant public between the marks pursuant to article 8(1)(b). The GC upheld the BoA’s finding that, contrary to the opponent’s submission, the marks were not extremely similar phonetically. Equally, the BoA was correct in holding that the marks were not conceptually similar. The BoA was also correct in finding that the marks were not extremely similar visually. The GC held that the BoA had, in its global assessment, correctly determined that the low degree of visual and phonetic similarity between the marks did not offset the differences between the marks and that, consequently, there was no likelihood of confusion.

– online computer software (9) – telecommunications (38) – education; providing of training; entertainment; sporting and cultural activities (41) – rental of computer hardware and peripheral devices (42)

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Ref no.

Application (and where applicable, earlier mark)

GC T 356/18 Volvo Trademark Holding AB. v EUIPO; Paalupaikka Oy 24 September 2019 Reg 207/2009 Reported by: Olivia Bowden

– wheel rims; casters for vehicles; vehicle parts; wheels, tyres and continuous tracks (12)

TRADE MARKS

Comment The GC annulled the BoA’s decision that there could be no likelihood of confusion between the marks under article 8(1)(b) and that article 8(5) was not applicable. The GC agreed with the BoA’s assessment that the marks were not phonetically similar. However, the GC held that the BoA had failed to consider that the word elements in both marks were highlighted by their positioning on a blue background in the centre of a circular figurative element. The BoA had further erred in finding that the earlier mark did not contain a circle. The GC held that the marks at issue used a highly similar combination of colours which achieved an overall similar aesthetic effect. As such the BoA had erred in finding the marks were dissimilar visually. In light of this finding on visual similarity, the BoA had failed to carry out an examination of the other conditions for article 8(5) to apply. Accordingly, the GC annulled the BoA’s decision.

– various goods in class (12) (EUTM, Swedish and Finnish marks)

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A finding of bad faith requires consideration of all the relevant factors. Koton Mağazacilik Tekstil Sanayi ve Ticaret AȘ v EUIPO; Joaquín Nadal Esteban CJ; C-104/18 P; 12 September 2019

The CJ held that the GC had erred in deciding that a finding of bad faith presupposes that the contested mark was registered for goods and services identical with, or similar to, those in respect of which an earlier mark was registered. This is only one of the relevant factors which should be considered in an overall assessment. 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), this was followed by an unsuccessful appeal to the BoA and an unsuccessful appeal to the GC. Mark Applied for

Earlier mark

TRADE MARKS

An error in law The CJ held that the GC had misinterpreted previous case law – Chocoladefabriken Lindt & Sprüngli C-529/07. In that case, the Court was specifically asked about the situation where, at the time of the application for the contested mark, several producers were using identical or similar signs for identical or similar products which was capable of giving rise to confusion. It did not follow, the CJ said, that bad faith was limited to the situation in Chocoladefabriken Lindt & Sprüngli C-529/07. There may be situations where the applicant for registration of a trade mark could be regarded as having filed the registration in bad faith where there was no similarity of goods or services. In determining whether an applicant had made an application in bad faith, a court should take into account “all the relevant factual circumstances as they appeared at the time the application was filed”. The GC should therefore have taken into account the fact that, at the time of the application, Mr Esteban had applied for a mark covering classes 25, 35 and 39, albeit that the registered mark was only protected in class 39. Additionally, whilst the GC had referred in passing to other relevant considerations such as the commercial logic underlying the filing of the application for registration and the chronology of events leading to that filing, it had not fully examined them. The CJ found that a mere reference to these factual considerations was insufficient to engage the rule restricting the CJ from setting aside a GC judgment where that judgment was shown to contain a ground which was found to be an infringement of EU law but nevertheless the operative part of the judgment was shown to be well founded on legal grounds. The CJ set aside the GC’s judgment. It also found that it was entitled to give final judgment in the matter (as the appeal was well founded) and annulled the decision of the Board of Appeal. It did not, however, invalidate the mark; this being a decision for the relevant competent body of EUIPO.

Infringement under section 10(3) Claridge’s Hotel Ltd (“CHL”) v Claridge Candles Ltd (“CCL”) & Denise Shepherd*

Previous decisions/opinions 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 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. 50 CIPA JOURNAL

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Mr Recorder Douglas Campbell QC; [2019] EWHC 2003 (IPEC); 29 July 2019

CLARIDGE infringed CHL’s UK trade mark registrations for CLARIDGE’S pursuant to section 10(3). Passing off was also found. Robert Milligan reports.

Facts CHL had operated a well-known London hotel under the name CLARIDGE’S since its incorporation in 1889. It owned two UK trade mark registrations for CLARIDGE’S. CHL alleged www.cipa.org.uk


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trade mark infringement and passing off in respect of CCL’s use of the mark CLARIDGE in relation to candles and reed diffusers. CCL counterclaimed for revocation of CHL’s trade mark registrations for non-use. As a result, CHL voluntarily surrendered one of its registrations and partially surrendered the other. The effect of the partial surrender was that CHL’s trade mark registrations covered neither “reed diffusers” nor “candles”.

TRADE MARKS

Passing off Unusually, CHL claimed that its case on passing off stood or fell with its section 10(3) case. Given the similarity of the marks, the fact that both CHL’s services and CCL’s goods were premium offerings, the inherent distinctiveness of the mark and CHL’s very substantial reputation in CLARIDGE’S, Mr Campbell found passing off.

Was Ms Shepherd a primary tortfeasor? Had CHL put their marks to genuine use? CHL argued that CLARIDGE’S had been put to genuine use for toiletries in classes 3 and 5 on the basis that consumers took toiletries into account when selecting hotel rooms and some members of the public sold their CLARIDGE’S branded toiletries on eBay; as such, consumers saw real value in the toiletries. However, Mr Campbell disagreed with CHL as their use of CLARIDGE’S for toiletries was not done to create or preserve a market for toiletries. Instead, such use would only create or preserve a market for CHL’s hotel services. Mr Campbell, therefore, found that CLARIDGE’S had not been put to genuine use for toiletries. Consequently, he partially revoked CHL’s marks in classes 3 and 5 for toiletries. Mr Campbell did, however, find that CHL had put CLARIDGE’S to genuine use for, amongst other goods and services, “retail services connected with the sale of food and foodstuffs…drink” in class 35, “hotel, restaurant, café and bar services” in class 43, and “provision of beauty treatments and therapies; health spa services; massage services” in class 44.

Did CCL infringe under section 10(3)? Mr Campbell was of the view that not only did the mark CLARIDGE’S have a very substantial reputation in the UK when used in relation to hotel services but it had an image of luxury, glamour, elegance, and exclusivity as a result of the nature and extent of CHL’s use. Mr Campbell further assumed, without deciding, that CHL had reputation in relation to its classes 35 and 44 services. Mr Campbell found that while CCL’s goods and CHL’s services were different, they were both premium offerings that would appeal to a similar public. Although not an essential element of a section 10(3) claim, with reference to Comic Enterprises v 20th Century Fox [2016] FSR 30, Mr Campbell considered whether there existed a likelihood of confusion on the part of the public. Given the similarity of the marks, the fact that both were premium offerings, the inherent distinctiveness of the mark and CHL’s very substantial reputation in CLARIDGE’S, Mr Campbell found a likelihood of confusion and, therefore, that a link in the mind of the average consumer had been established. Mr Campbell was of the view that CCL’s use of CLARIDGE enabled them to charge higher prices for, and sell more of, their products. As a result, Mr Campbell found that CCL’s use of CLARIDGE took unfair advantage of CHL’s trade mark. Volume 48, number 11

CHL did not allege that Ms Shepherd, as director, acted in common design with CCL but instead claimed that she personally carried out the tortious acts. In any case, Mr Campbell found that Ms Shepherd was personally liable for infringement.

Website targeting and jurisdiction AMS Neve Ltd & Ots v Heritage Audio SL & Anr CJ; C-172/18; 5 September 2019

In response to a preliminary ruling from the Court of Appeal of England & Wales, the CJ found that article 97(5) of Council Regulation (EC) No 207/2009 must be interpreted as meaning that the proprietor of an EU trade mark, who considers that a third party has infringed his rights by using an identical sign in advertising and offers for sale displayed electronically in relation to identical or similar products, may bring an infringement action in the Member State where the consumers or traders to whom that advertising and offers for sale are directed are located. This is notwithstanding that that third party took decisions and steps in another Member State to bring about that electronic display. Hilary Atherton reports.

Background AMS Neve Ltd was a company established in the UK which manufactured and sold audio equipment. The second claimant was the proprietor of an EU trade mark and two national marks registered in the UK, of which AMS Neve was the exclusive licensee. Heritage Audio SL was a company established in Spain which also sold audio equipment. AMS Neve and the trade mark proprietor brought trade mark infringement proceedings in the IPEC, claiming that Heritage Audio had offered for sale to consumers in the UK via its website imitations of AMS Neve products bearing, or referring to, signs which were identical or similar to the trade marks in question. The IPEC held that it did not have jurisdiction to hear the infringement proceedings in respect of the EU trade mark because only the Member State in which Heritage Audio had taken steps to put the signs in question on the website had jurisdiction under article 97(5). AMS Neve appealed to the Court of Appeal, which referred three questions to the CJEU, as follows: NOVEMBER 2019

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“In circumstances where an undertaking is established and domiciled in Member State A and has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in Member State B: 1. Does an EU trade mark court in Member State B have jurisdiction to hear a claim for infringement of the EU trade mark in respect of the advertisement and offer for sale of the goods in that territory? 2. If not, which other criteria are to be taken into account by that EU trade mark court in determining whether it has jurisdiction to hear that claim? 3. In so far as the answer to (ii) requires that EU trade mark court to identify whether the undertaking has taken active steps in Member State B, which criteria are to be taken into account in determining whether the undertaking has taken such active steps?”

TRADE MARKS

Counterfeit goods and parallel imports NXP BV v ID Management Systems* (“IDMS”) Mr Recorder Douglas Campbell QC; [2019] EWHC 1902 (IPEC); 31 July 2019

Mr Recorder Douglas Campbell QC held that there was no unequivocal consent expressed in respect of counterfeit goods and parallel imports. Aaron Hetherington reports.

Facts The claimant, NXP, was a manufacturer and supplier of radiofrequency identification (RFID) smart cards, which are most often used to control access to buildings or public transport facilities. It owned a number of EU trade mark registrations for the word MIFARE, and various permutations thereof, including a logo variation. IDMS had allegedly sold counterfeit MIFARE branded smart cards on two occasions as follows:

Findings In line with A-G Szpunar’s Opinion, the CJ held that article 97(5) must be interpreted as meaning that the proprietor of an EU trade mark, who considers that a third party has infringed his rights by using an identical sign in advertising and offers for sale displayed electronically in relation to identical or similar products, may bring an infringement action in the Member State where the consumers or traders to whom that advertising and offers for sale are directed are located. Therefore, if the English court were to find that it was apparent from the content of Heritage Audio’s website and the platforms at issue that the advertising and offers for sale which they contained were targeted at consumers or traders situated in the UK and were entirely accessible by them, AMS Neve would have the right to bring, on the basis of article 97(5), their infringement action before a court of the UK, seeking a declaration of an infringement of the EU trade mark in the UK. The CJ said that if the wording “Member State in which the act of infringement has been committed “ in article 97(5) were to be interpreted as meaning the Member State where the party carrying out those commercial acts set up its website and activated the display of its advertising and offers for sale, it would have to do nothing more than ensure that the territory where the advertising and offers for sale were placed online was the same territory as that where it was established. If that were the case, article 97(5) would provide no alternative to article 97(1). Further, it would often be difficult or even impossible for a potential claimant to identify that place. In any event, the CJ was of the view that the courts of the Member State where the targeted consumers or traders are resident are particularly suited to assess whether the alleged infringement exists. 52 CIPA JOURNAL

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1. The first occasion was on or around 4 August 2015, when REACT, an anti-counterfeiting agency engaged by NXP, bought 100 cards from IDMS. These were referred to as the “REACT cards”. IDMS obtained these cards from Universal Smart Cards which was listed as a registered partner of NXP on NXP’s website. 2. The second occasion was in or about May 2016, when Pembrokeshire College contacted NXP about some cards they bought from two suppliers, one batch being printed and the other being blank. The printed cards had been purchased from IDMS. These were referred to as the “Pembrokeshire cards”. IDMS obtained these cards from Smart Technology Cards, which had in turn acquired them from Edom Technology Limited which has its address in Taiwan.

The decision On the evidence, it was held that the REACT cards were in fact counterfeit cards, whilst the evidence did not allow the Court to conclude that the Pembrokeshire cards were counterfeit on the balance of probabilities. Mr Campbell then addressed the issue of whether NXP had given unequivocal consent to both sets of cards being put on the market under the MIFARE trade marks in the EEA. In respect of the REACT cards, IDMS referred to a security white paper produced by NXP, which warned customers against using unauthorised or counterfeit MIFARE products for legal and performance reasons, and thus advised customers to purchase the cards from its recommended partners only. The judge found nothing in this evidence that amounted to unequivocal consent by NXP for the sale of counterfeit or parallel imported goods. www.cipa.org.uk


DECISIONS

TRADE MARKS

On this basis, because the REACT cards had been found to be counterfeit, and NXP had not unequivocally consented to such sales of counterfeit goods, NXP’s claim succeeded. However, the Pembrokeshire cards had not been held to be counterfeit, meaning that the court still had to consider whether NXP had unequivocally consented to those particular cards being put on the market as parallel imports under the MIFARE trade marks in the EEA. The court held that, since the cards were acquired from a third party that was not an authorised distributor of NXP; there was also no consent in relation to the Pembrokeshire cards being put on the market in the EEA.

Asian Business Publications Ltd v British Asian Achievers Awards Ltd & Manor Kumar*

Passing off

Facts

Planet Art & Anr v Photobox Ltd & Anr* Deputy Judge Treacy; [2019] EWHC 1688 (Ch); 2 July 2019

In an action for passing off, the High Court refused an application for an interim injunction whilst allowing the narrowing of undertakings given in lieu. Mar Day reports.

Both parties are active in the field of online printing services, particularly for photographs, with both using dedicated apps to sell their respective services. Planet Art launched in the UK in January 2014, offering their services exclusively via apps for iPhone and Android, with their main app called FREEPRINTS (the ‘FREEPRINTS App’). With online free prints offerings undermining its paid-for prints business (including its own introductory offer of free prints), Photobox launched a dedicated free prints app on 14 March 2019. Initially named PRINTLY, the app was renamed PHOTOBOX FREE PRINTS and made available on the Apple App Store on 1 April 2019 (the ‘PhotoBox App’). Planet Art issued proceedings alleging passing off by Photobox, and sought an interim injunction. The initial hearing was adjourned by Birss J to enable Photobox to prepare and serve evidence. Photobox gave undertakings in the interim which, inter alia, involved making changes to the way in which they used the words FREE PRINTS. After some confusion about the form of undertakings Photobox offeried to trial, Deputy Judge Treacy held: (i) Photobox was able to narrow the scope of two undertakings previously given to the Court as they did not affect the appearance (and therefore the likelihood of deception) of the app in question; and (ii) the balance of convenience lay in favour of Photobox as, inter alia, Planet Art’s case suffered from “material weaknesses”. As a consequence, the application for an interim injunction was refused.

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Miss Records Amanda Michaels; [2019] EWHC 1094 (IPEC); 2 May 2019

When a descriptive name is the basis of an action for a passing off, there can still be a finding of a misrepresentation without much evidence of actual confusion if the context of the case points towards such likelihood of confusion. Justin Bukspan reports.

The claimant, a newspaper publisher, set up the “Asian Achievers Awards” to celebrate the successes of the British Asian community in 2000. The Asian Achievers Awards grew to an event with more than 1,000 attendees and sponsors with heavy media support, broadcast on a satellite and cable channel and substantial amounts of its profits are donated to charity. The second defendant, had been publishing a Hindi language newspaper in the UK called “Jagatwani”, and organised the Jagatwani Achievers Awards in 2014, in competition with the Asian Achievers Awards. The event was not repeated. In 2016, the second defendant set up the first defendant for the purpose of running a similar event, the “British Asian Achievers Awards”, that same year. This was drawn to the claimant’s attention whose solicitors wrote to the first defendant multiple times, with no response. Soon before the first defendant ran its second British Asian Achievers Awards, the claimant successfully applied for an interim injunction. No awards were held in 2018, but this matter continued in the IPEC, where the second defendant was joined in the proceeding, as the sole director and shareholder of the first defendant. The claimant’s goodwill in Asian Achievers Awards and damage or likelihood of damage as a result of a misrepresentation by the defendants (if found to have taken place) were admitted. Miss Recorder Amanda Michaels was asked to assess whether there had been misrepresentation on the part of the defendants.

The law As held in Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39, where a sign forming the basis of a passing off action is essentially descriptive, small differences may be sufficient to prevent a finding of misrepresentation. Miss Michaels was also referred to the judgment in Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2004] RPC 40 in which Jacob LJ held that where a “badge” of a claimant is descriptive, cases of “mere confusion” caused by the use of a very similar description will not count as misrepresentation.

Assessment of descriptiveness and similarities While “Asian Achievers Awards” was essentially descriptive, Miss Michaels still found that it had more distinctive character NOVEMBER 2019

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than phrases like “office cleaning” due to the alliteration and the relatively unusual employment of “achievers”. As in Phones4u, it was “the sort of name that tells you what the event is”, whilst also being “obviously intended to be an invented name to denote a particular business”. The parties’ respective award names had been featured in very different respective logos. Nevertheless, the claimant’s goodwill was not limited to a logo: those devices were irrelevant when the names were used orally, or as plain sets of words as shown in e-mails and other documents showed.

The context of use and evidence of confusion Invitations sent out by the defendants clearly referenced Jagatwani. However, it was held that this did not preclude confusion as members of the relevant public could have believed that Jagatwani had taken over the running of the original Asian Achievers’ Awards. Media packs produced by the defendants had copied verbatim substantial parts of the claimant’s own materials and while that did not prove an increased likelihood of confusion, it demonstrated that the defendants had made no effort to reduce that possibility. The claimant advanced relatively little evidence of actual confusion, their strongest evidence was that of Mr Iyer, a senior marketing executive, who had been aware of the Asian Achievers Awards for more than 15 years. He received an e-mail invitation

TRADE MARKS

from the defendants but he did not have the chance to read the e-mail in detail and contacted the claimant directly about it, thinking it had originated from them. Notwithstanding this lack of substantial of confusion evidence, Miss Michaels applied Harrods v Harrodian School [1996] RPC 697 and held that the absence of evidence of actual confusion was not necessarily fatal to the claim. Miss Michaels further held that the defendants’ addition of “British” to “Asian Achievers Awards” only confirmed who the existing audience of the awards was or who the awards were about. This addition would not have had any material impact in the eyes of the public familiar with the Asian Achievers Awards. Indeed, the defendants admitted that the word “British” was used instead of “Jagatwani” in order to “have a more descriptive name for awards that would be better understood by the public/ sponsors than using the name of the Jagatwani newspaper.” Miss Michaels ultimately held that the defendants’ use of the name amounted to a misrepresentation. This was supported by the evidence of confusion advanced by the claimant. Miss Michaels held that Mr Iyer’s email was a significant single instance of confusion, which was particularly relevant as Mr Iyer had in-depth knowledge of the claimant’s event and its proper name. Accordingly, it suggested that less well-informed people were even more likely to be confused by the name of the defendants’ event.

Non-Institute events EQE Training, London Provider: Delta Patents Date: 18-20 November 2019 EQE main examination 2020 – Papers A+B and C, Strasbourg Provider: CEIPI Date: 18-22 November 2019 Web: www.ceipi.edu Revision Courses EQE 2020: Papers C & A&B, Milton Keynes Provider: JDD Consultants Date: 19-20 November (see page 60) Revision Courses EQE 2020: A&B, C and D, Milton Keynes Provider: JDD Consultants Date: 19-29 November (see page 60) Revision Courses EQE 2020: Papers C & A&B, Milton Keynes Provider: JDD Consultants Date: 21-22 November (see page 60) EQE main examination 2020 – Pass paper C, Strasbourg Provider: CEIPI Date: 29-30 November 2019 Web: www.ceipi.edu EQE 2020: Pre-Exam course, Milton Keynes Provider: JDD Consultants Date: 2-3 December (see page 60) EQE Training, London Provider: Delta Patents Date: 2-4 December 2019

Incorporated Benevolent Association of The Chartered Institute of Patent Attorneys, 74th annual general meeting, Date: Friday 6 December 2019 (see page 55) Training for the EQE, London Provider: QM-UL Date: 6-8 January 2020 (see page 61) EQE main examination 2020 – Paper D, Strasbourg Provider: CEIPI Date: 6-10 January 2020 Web: www.ceipi.edu EQE Training, London Provider: Delta Patents Date: 16-17 January 2020 EQE main examination 2020 – Mock examinations, Munich Provider: CEIPI Date: 20-24 January 2020 Web: www.ceipi.edu EQE pre-examination 2020 – Mock examination, Munich Provider: CEIPI Date: 23-24 January 2020 Web: www.ceipi.edu EQE Training, London Provider: Delta Patents Date: 3-4 February 2020

See full details at www.cipa.org.uk/whats-on/non-institute-events. To list an event please email sales@cipa.org.uk

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PERSONAL

ANNOUNCEMENTS

Announcements Sagittarius IP is pleased to announce that Peter Ruscoe (Fellow) has been promoted to the partnership. See more at www.sagittariusip.com. Michael Fischer, a German patent attorney and AI specialist, has joined Venner Shipley’s as Of Counsel. He will be based in the firm's Munich office. See more at www.vennershipley.co.uk

Do you have an interesting story for the media? Do you have a client with a great invention or know of an interesting IP court case? CIPA’s Media and PR Committee is always on the lookout for interesting stories to publish in the mainstream media. If you have any stories of interest, please email Amy Williams (amy@cipa.org.uk) with the full story.

CIPA fees increase for 2020 Over the last five years CIPA has managed to freeze all fees whilst continuing to deliver benefits and services in line with our strategic plan, however, the CPI forecast for 2020 has been reported at 2.1% and it has been agreed by CIPA’s Council that there will be a fee increase of 2.1% commencing 1 January 2020. This helps to ensure that CIPA has a sustainable plan to continue to carry out its goals in the growing economy. The fee increase will affect all membership subscriptions and events organised by CIPA. You should have already received your renewal notification for 2020, which will include the agreed 2.1% increase. If you have any questions regarding the fee increase, please email membership@cipa.org.uk

Letters Patent document for sale Letters Patent document with seal for patent no 2205 of 1867 to Charles Mayo of New College Oxford titled ‘Improvements in Propelling and Steering Vessels’. The case is rather scruffy but sound, the seal tin is fine as is the Great Seal apart from a little damage near the braid. Please contact petenhil@btinternet.com for more details.

New social media to keep you up to date CIPA has launched two new social media accounts on Twitter and Instagram. If you have not already you can follow us on our new members only Twitter page twitter.com/TheCIPAMembers, and our new Instagram page www.instagram.com/thecipa_

Annual General Meeting 2019 Following October’s Annual General Meeting, Richard Mair has been installed as CIPA’s President for 2020 and Alicia Instone installed as Vice-President for 2020. CIPA wishes a warm welcome to two new members of Council, Parminder Lally and Sheila Wallace. Re-joining Council are John Brown, Roger Burt, Rob Jackson, Tim Jackson, Alasdair Poore and Simon Wright. Saying goodbye to Council are Bobby Mukherjee and Stephen Jones. CIPA would like to thank them both for their tremendous contribution over the years. Please send Letters for the Editor and Announcements to: editor@cipa.org.uk

Incorporated Benevolent Association's AGM Friday 6 December 2019, CIPA, London Notice is hereby given that the 74th annual general meeting of the Incorporated Benevolent Association of the Chartered Institute of Patent Attorneys will be held at CIPA, 2nd Floor, 20-23 Holborn, on Friday 6 December 2019 at 2.00 pm. The Trustees’ Report and Financial Statements for the Year Ended 5 April 2018 are publicly available on both the Companies House and the Charity Commission websites at: • •

https://apps.charitycommission.gov.uk/Accounts/Ends66/0000219666_AC_20180405_E_C.pdf https://beta.companieshouse.gov.uk/company/00319970/filing-history

Attorneys interested in becoming trustees are asked to contact the secretary via secretary@cipabenevolent.org.uk

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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.

Monday 18 November 2019 Webinar

INTRODUCTION TO COPYRIGHT Time: 12.30–13.30 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 Tuesday 19 November 2019 Webinar

OUTSIDE 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, web-based patent search tools. The search engines and interfaces are adequate and very userfriendly 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 56 CIPA JOURNAL

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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.

paralegals, looking at the support that’s available and practical tips for safeguarding your mental wellbeing in an often stressful, deadline-driven job. In the chair: Andrea Brewster, Lead Executive Officer of IP Inclusive, which works alongside Jonathan’s Voice to improve mental health and wellbeing in the IP professions. Speaker: Graham McCartney (Jonathan’s Voice); Prices: £0

Speakers: Susan Bates (Shell); Grayce Shomade (Patent Analyst) CPD: 1; Prices: £72 | £48 CIPA members Wednesday 20 November 2019 Seminar

PATENT CASE LAW MANCHESTER Time: 12.30–17.30 Location: Hotel Football, 99 Sir Matt Busby Way, Manchester M16 0SZ 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. Speakers: Dr Jonathan Markham, Beck Greener; Dominic Adair, Bristows LLP; Gemma Barrett, Bristows LLP; Anthony Tridico, Finnegan LLP; James Porter, UK IPO CPD: 3.5 Prices: £234 | £156 members Friday 22 November 2019 Webinar

MENTAL HEALTH AND WELLBEING FOR IP PARALEGALS Time: 12.30–13.30 Graham McCartney from the charity Jonathan’s Voice will be speaking about mental health and wellbeing for IP

Tuesday 26 November 2019 Social

CHRISTMAS HAPPY HOUR Time: 18.00–19.00 Location: Savage Garden, Doubletree by Hilton, 7 Pepys Street, London, EC3N 4AF It’s that time of the year again, so come and join us and other members of CIPA for the Christmas Happy Hour 2019!. Please note this is a members only event – book online. Tuesday 26 November 2019 Seminar

NEW STUDENT INDUCTION DAY Time: 09.30–17.00 Location: DoubleTree By Hilton, 7 Pepys Street, London, EC3N 4AF Target Audience: Student Members Are you a new student member of CIPA? Then this event is for you! The New Student Induction Day will be a chance to learn more about CIPA, PEB, IPReg and more! Other topics include:

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CPD & EDUCATION

• • • •

• •

The basics of client care The commercial context of IP Dealing with complaints and mistakes Financial and business basics: the IP attorney as a cost centre and income generator; the attorney as part of a corporate team) Stress, and other problems encountered during your training CIPA systems for training and qualification

Please book in advance to book disappointment. See full details online. CPD: 7.0 Prices: £78 Thursday 28 November 2019 Seminar

PATENT CASE LAW BRISTOL Time: 12.30–17.30 Location: Bristol Harbour Hotel & Spa, 53-55 Corn Street, Bristol BS1 1HT Join CIPA for the final 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. CPD: 3.5 Prices: £234 | £156 members Tuesday 3 December 2019 Webinar

THE TRADE SECRETS DIRECTIVE AND ITS IMPACT ON UK LAW Time: 12.30–13.30 The importance of trade secrets to businesses is widely recognised. The Directive, implemented in the UK in 2018, is designed to improve remedies and procedures in this area. This webinar introduces the Directive and how it has been introduced into UK law. Speaker: John Hull (consultant IP lawyer), CPD: 1; Prices: £72 | £48 CIPA members

INSTITUTE EVENTS

Thursday 5 December 2019 Seminar

WIPO ePCT WORKSHOP Time: from 08.30-16.30 Location: CIPA, London, EC1N 2JD WIPO and CIPA are offering training on WIPO’s online portal ePCT that provides PCT services for both applicants and offices. It allows secure and direct interaction with PCT applications maintained by the International Bureau. It is possible to conduct most PCT transactions via this web-based service, such as filing PCT applications with RO/ IB, EP, IE (as of 9 September 2019) and with over 50 other offices, performing online actions, uploading correspondence, downloading documents, and monitoring PCT applications CPD: 7 Prices: £234 | £156 members) Friday 6 December 2019 Webinar

SECOND MEDICAL USE PATENTS IS THERE A CURE FOR THEIR ILLS? Time: 12.30–13.30

ARTIFICIAL INTELLIGENCE AND PATENTABILITY AT THE UK-IPO Time: 12.30–13.30 Join Russell Maurice and Stephen Richardson as they walk through the UK-IPO’s approach to assessing the patentability of Artificial Intelligence under the exclusions of section 1(2) of the Patents Act 1977. They will set out the principles and guidance that examiners at the UKIPO must follow, and they will use this to indicate what is likely to be allowable and what is not, before summarising the latest information on AI and ownership. Speakers: Russell Maurice and Stephen Richardson (UK-IPO) CPD: 1; Prices: £73.20 | £49.20 members

A look at some recent UK and EPO case law in the pharmaceutical field, in particular in relation to new medical uses and dosage regimens, and consider whether these will make it more difficult to obtain and enforce such patents in the future. Speaker: Julia Florence (CIPA President) CPD: 1; Prices: £72 | £48 CIPA members

Thursday 23 January 2020 Regional Meeting

MERSEYSIDE MEETING Thursday 12 December 2019 Regional Meeting

WALES MEETING Time: from 12.30 Location: Clayton Hotel, Cardiff CF10 1GD Join CIPA for the annual Wales Meeting. Don’t miss your chance to gain 3.5 hours of CPD. plus excellent networking opportunities – including a drinks reception. See the full programme online. CPD: 3.5 Prices: £234 | £156 members

Volume 48, number 11

Thursday 9 January 2020 Webinar

Time: from 12.30 Location: Hard Days Night Hotel, 41 North John Street, Liverpool, L2 6RR Come and join CIPA at the Merseyside 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. See the full programme online. CPD: 3.5 Prices: £238.80 | £159.60 members

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IP INCLUSIVE

PERSONAL

IP Inclusive update By Andrea Brewster OBE

IP Inclusive Week We’ve had some fabulous events in the last few weeks – on social mobility, bisexuality, inclusive leadership, flexible working and mental health, not to mention a packed drinks reception after CIPA Congress and hopefully, by the time you’re reading this, a celebration of Diwali and Hanukkah by our BAME community IP & ME. Now it’s time to start work in earnest on our plans for #ipinclusiveweek. What will you be doing, between 11 and 17 November, to promote diversity and inclusion in the IP professions? We’ve posted some ideas on our dedicated web page (www.ipinclusive.org.uk/ip-inclusiveweek) and we’d love to share yours there too. We also have a few things of our own planned, including a fascinating Women in IP discussion on “Navigating a nonlinear career” (London, 11 November; all genders welcome); a first event for our new Midlands network, with a social mobility theme (Birmingham, 13 November); and the launch of our fifth networking and support community IP Ability, for disabled people, their carers and their allies.

topics including personal resilience, workplace banter, coaching and inclusive leadership. We hope that for people who were planning to come into London specially for the annual meeting, the additional CPD content will make the trip more worthwhile, as well as providing inspiration for our 2020 plans. The date is Tuesday 21 January 2020; again you can register via our Events page.

IP Inclusive resources Recently added to our website Resources page is a link to our very first podcast, “Demystifying coaching”. Development coach and former patent attorney Karen Crawley gives us an inspiring insight into the what, how, who and why of coaching and its potential value to IP professionals. Recordings of our 1 October webinar on

inclusive leadership and our 8 October panel discussion on flexible working are also available from the Resources page.

Not just for London… As requested at our annual meeting last January, we’ve organised plenty of webinars this year, and also tried to establish regional networks and run more non-London events. We’re hugely grateful to CIPA for hosting the webinars, and to the CPD team for helping to organise them. We’re on the lookout now for firms who can help share that burden by allowing us access to their webinar broadcasting platforms: please let us know if you can help. We’d also love to hear from you if you’re interested in setting up a new regional network where you’re based.

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, @bameipinclusive, @ip_out, @WomeninIPI, @CareersInIdeas) or join one of our LinkedIn® groups. And if you’re interested in getting involved, please contact contactipinclusive@gmail.com

Other events Following IP Inclusive Week, we’ve a seminar/workshop on the benefits and challenges of diversity data gathering (Gloucester, 5 December). We’ll also be contributing to a webinar on mental wellbeing, for CIPA paralegals, on 22 November. There are more details and registration links on our website Events page. Excitingly, our annual meeting next year will form part of a full-day conference, with workshops on a range of diversity- and inclusion-related 58 CIPA JOURNAL

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To keep abreast of everything we’re doing, join our mailing list: there’s a “Stay in touch” form on the website.

Books for review We have some books for reviewing in the CIPA Journal. If you are interested in writing a review please contact editor@cipa.org.uk. The titles we have include: • •

Technology Transfer, (Bloomsbury Professional) 4th edition. IP, Climate Change and Technology (Edward Elgar)

www.cipa.org.uk


OU T S O ON

CIPA Guide to the Patent Acts 9th edition Editors: Paul Cole, Patent Attorney, Lucas & Co.; Richard Davis, Barrister, Hogarth Chambers

Hardback ISBN: 9780414073920 December 2019 ÂŁ295

The CIPA Guide to the Patents Acts, 9th edition, by The Chartered Institute of Patent Attorneys brings together the expertise of over 30 highly respected professionals including patent attorneys, solicitors and members of the Bar, all individually selected for their expert knowledge.

ORDER TODAY sweetandmaxwell.co.uk +44 (0)345 600 9355

The new edition offers coverage of legislative and jurisprudence developments to end of July 2019 and notable cases including Actavis v ICOS, Warner-Lambert v Generics, Garmin (Europe) v Koninklijke Philips, Regen Lab v Estar Medical and more. It features analysis of the latest cases applying the doctrine of equivalents since the landmark decision in Actavis v Eli Lilly and of SPC developments including the new SPC regulation and relevant UK and CJEU decisions. The impact of Brexit is discussed as also are US patent eligibility decisions insofar as they affect European applicants.

Also available on Westlaw UK and as an e-book on Thomson Reuters Proview™

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THE PINKS

COURSES • SUPPORT

JDD CONSULTANTS EQE 2020 REVISION COURSES 19 NOVEMBER – 3 DECEMBER 2019 We have a full set of residential revision courses for the spring 2020 European Qualifying Examinations (EQE). Our Pre-Exam course is on 2-3 December 2019. Our courses for Papers A&B, C and D are on 19-29 November 2019. We have added extra Paper C and Papers A&B courses on 19-20 and 21-22 November. You can book a course for one paper, several papers or all – as desired. The courses are in Milton Keynes and are supported by our online Moodle resources forum. The course fee includes accommodation and meals, but there are discounts if accommodation is not needed and for bookings of a suite of courses and/or 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 / 07791 959630 • We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk • Fax: +44(0)800 0664016

PATENT TRANSLATING Since 1997 we have specialised in providing translations for patent and trademark attorneys, with meticulous attention to detail and ensuring the correct terminology, in the right format for filing anywhere in the world. To achieve this, our specialist translators include former patent agents who only translate into their mother-tongue, with all assignments being proofread before delivery. Areas of expertise: Aeronautical • Automotive • Bio-chemical • Chemical Computing • Electrical • Electronic • Mechanical Pharmaceutical • Telecommunications

T: 01903 763336 60 CIPA JOURNAL

NOVEMBER 2019

info@abc-translations.co.uk

Contact us for a quotation or short sample translation free of charge.

www.abc-translations.co.uk www.cipa.org.uk


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 Areyou youpreparing preparingto totake take the the EQE EQE Attorney? 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 areboth nowPart accepted. programme. Registration2for 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 runningsupervision. this programme and provides close academic 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 Londonoftrained excess 95%. candidates are generally in 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


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INTERNATIONAL

  

             

62 CIPA JOURNAL

NOVEMBER 2019

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THE PINKS

RECRUITMENT

Helping you find your happy place

Biotech Attorney : Cambridge CEF58933 A brilliant opportunity for a recently qualified Biotech Attorney to take on a fee earning role. Working on a varied caseload of work, this position offers an exciting chance to hone your Biotech skills and offer effective expertise in the protection of IP. Engineering Patent Attorney : Scotland CEF128384 Sought is a dynamic qualified Chartered and/or EPA (or Finalist level) who possesses an astute knowledge of Mechanical Engineering to join this well established, much respected, international IP Firm to take up an integral role in their continuing development. First In-house Patent Attorney : Oxfordshire LKA128525 Ground breaking, world renowned business has a newly created and rare opportunity for a first In-house Patent Attorney. An exciting time to join this sector leading organisation, define an IP function and make a marked contribution to the success of the business. Chemistry Attorney : Cambridge LKA127606 Skilled Chemist sought to join a practice where you will find no compromise in the quality of work available. The team is growing and on offer is scope for significant future career progression, combined with enjoying an immediate, industry leading remuneration. Elec / Eng Attorney : Cambridge CEH59991 International, collegiate and flexible Law firm seek a skilled Attorney with a background in software, computer science and/or AI. Circa, 2 years PQE required. On offer is a varied role which includes business development, portfolio management and commercial strategy.

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: catherine.french@saccomann.com • lisa.kelly@saccomann.com tim.brown@saccomann.com • rachel.molloy@saccomann.com or clare.humphris@saccomann.com

‘Tweet’ us at www.twitter.com/saccomannip

Biotech Attorney : Cambridge/London CEH60795 Leading IP practice with an impressive client portfolio which includes antibody engineering, medical devices, gene work and more, seek Biotech Attorneys from finalist level upwards. Excellent training and clear cut progression is on offer. Life Sciences Attorney : Dublin RRM128040 Leading IP firm requires a Life Sciences Attorney to join them in Ireland’s vibrant capital city. This busy team can accommodate Attorneys from a range of levels including PQ, to assist their impressive client base with the protection of IP portfolios on a global scale. Electronics Attorney : London RRM128380 IP firm with a fantastic reputation and enviable client list have an opening for an Electronics Attorney to join the team. Varied workload, clear progression paths, significant client contact and a collegiate environment as well as generous remuneration available. IP Administrator : South West TJB128358 Top tier IP firm with a super reputation within the market is seeking an experienced Patent Administrator. A fantastic opportunity awaits you along with a leading salary and highly competitive bonus and benefits package. Patent Secretary : London TJB128028 A prestigious IP firm is looking for a skilled Patent Secretary. Working within a busy Engineering and IT team, responsibilities include drafting, filing, billing, diary management, client correspondence, and audio typing. This IP firm needs no introduction.

Scan the QR Code for our website

www.saccomann.com

www.linkedin.com at the ‘Sacco Mann Intellectual Property Group’

Mann is Recruitment. VolumeSacco 45, number 10an equal opportunity employer and offers the services of an Employment Agency for Permanent OCTOBER 2016 CIPA JOURNAL PQE Levels are purely for guidance. We are happy to consider all applicants with the necessary skills.

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SENIOR PATENT ATTORNEY

TRAINEE / PART QUALIFIED PATENT ATTORNEY

TIJ Njūƭ îƑĚ /ƭƑūƎĚîŠ ƐƭîŕĿǶĚēɈ DžĿƥĺ î ŞĿŠĿŞƭŞ ūIJ Ȅ NjĚîƑƙ Ǝūƙƥ ƐƭîŕĿǶČîƥĿūŠ ĚNJƎĚƑĿĚŠČĚ Njūƭ îƑĚ ēĚǶŠĿƥĚŕNj ƥĺĚ ƑĿijĺƥ Ƕƥ IJūƑ ƭƙɍ Þūƭ DžĿŕŕDžūƑŒDžĿƥĺîDžĿēĚƑîŠijĚūIJĿŠƥĚƑĚƙƥĿŠijʨîēDŽîŠČĚēƥĚČĺŠūŕūijĿĚƙ ĿŠČŕƭēĿŠijČūŞƎƭƥĿŠijɈŞūċĿŕĚƥĚČĺŠūŕūijNjɈĿŞîijĿŠijɈTîƎƎŕĿČîƥĿūŠƙîŠē ƙūIJƥDžîƑĚɍ ¹ĺĚ DžūƑŒ ƎƑĿŞîƑĿŕNj ĿŠDŽūŕDŽĚƙ ēƑîIJƥĿŠij îŠē ƎƑūƙĚČƭƥĿūŠ ūIJ ƎîƥĚŠƥîƎƎŕĿČîƥĿūŠƙɈîŕūŠijDžĿƥĺĿŠIJƑĿŠijĚŞĚŠƥîŠîŕNjƙĿƙɓūƎĿŠĿūŠDžūƑŒɍ

TIJNjūƭĺîDŽĚċîČŒijƑūƭŠēĿŠ/ŠijĿŠĚĚƑĿŠijɓ¡ĺNjƙĿČƙîŠēîƑĚî¹ƑîĿŠĚĚ ɓ ¡îƑƥ £ƭîŕĿǶĚē ¡îƥĚŠƥ ƥƥūƑŠĚNj DžĚ Džūƭŕē ŕūDŽĚ ƥū ĺĚîƑ IJƑūŞ Njūƭɍ TŠƥĚŠƙĿDŽĚ ĺîŠēƙ ūŠ ƥƑîĿŠĿŠij DžĿŕŕ ċĚ ƎƑūDŽĿēĚē îƙ Njūƭ DžūƑŒ ČŕūƙĚŕNj DžĿƥĺĚNJƎĚƑĿĚŠČĚēƎîƥĚŠƥîƥƥūƑŠĚNjƙɍGƭŕŕƙƭƎƎūƑƥDžĿŕŕċĚƎƑūDŽĿēĚēƥū ĺĚŕƎNjūƭƐƭîŕĿIJNjîƙî/ƭƑūƎĚîŠɈTƑĿƙĺîŠēÀeƎîƥĚŠƥîƥƥūƑŠĚNjɍ

¹ĺĿƙ Ŀƙ îŠ ĚNJČĿƥĿŠij ūƎƎūƑƥƭŠĿƥNj ƥĺîƥ ūIJIJĚƑƙ ǷĚNJĿċĿŕĿƥNj ĿŠ ƥĚƑŞƙ ūIJ ŕūČîƥĿūŠ IJūƑ îŠ ĚŠƥĺƭƙĿîƙƥĿČ îŠē ēƑĿDŽĚŠ ĿŠēĿDŽĿēƭîŕ Džĺū Džūƭŕē ŕĿŒĚ ƥū IJƭƑƥĺĚƑ ƥĺĚĿƑ ČîƑĚĚƑɈ ČūŠƥĿŠƭĚ ƥĺĚĿƑ ŕĚîƑŠĿŠij îŠē ƑĚŕĿƙĺĚƙ ŠĚDž ČĺîŕŕĚŠijĚƙɍ

¹ĺĿƙ Ŀƙ îŠ ĚNJČĿƥĿŠij ūƎƎūƑƥƭŠĿƥNj DžĿƥĺ ƥĺĚ ƎƑūƙƎĚČƥ ūIJ ĺūŠĿŠij NjūƭƑ ČƑîIJƥ DžūƑŒĿŠij IJūƑ ¡ƭƑēNjgƭČĚNj DžĺĿŕƙƥ ČūŠƥĿŠƭĿŠij NjūƭƑ ŕĚîƑŠĿŠij îŠē ƑĚŕĿƙĺĿŠijŠĚDžČĺîŕŕĚŠijĚƙɍ

ØĚ îƑĚ DŽĚƑNj ƎƑūƭē ūIJ ūƭƑ ƥĚîŞ îŠē ƭŠēĚƑƙƥîŠē ƥĺîƥ ƥĺĚNj ŞîŒĚ ƥĺĚ ČūŞƎîŠNj Džĺîƥ Ŀƥ Ŀƙ ƥūēîNjɈ ƥĺĚNj ĺîDŽĚ ƎŕîNjĚē îŠ îČƥĿDŽĚ ƎîƑƥ ĿŠ ūƭƑ ƙƭČČĚƙƙūIJƥĺĚŕîƙƥȂȁNjĚîƑƙîŠēūƭƑƎŕîŠƙIJūƑƥĺĚIJƭƥƭƑĚɍTIJNjūƭDžūƭŕēŕĿŒĚƥūċĚƎîƑƥūIJƥĺîƥɈƎŕĚîƙĚƙĚŠēĿŠNjūƭƑ ×DžĿƥĺîČūDŽĚƑŕĚƥƥĚƑ ƥūɇmichael@purdylucey.com

www.purdylucey.com

SENIOR IP COUNSEL | AMSTERDAM

Specialism: Electronics / Telecommunications If you are a hi-tech European Patent Attorney of at least 3 years post qualification experience, this is the opportunity of a step-up within a leading telematics solution provider. You will work closely with the legal and IP team, the global R&D department, and support the growth strategy with patent support, strategy, tools and processes. This role calls for a balanced and effective approach to complex legal challenges and requires someone experienced in process, organisational and change management.

IP Recruitment Specialists 35 years experience +44 (0)20 3443 7090 stephen@caseltonclark.co.uk

www.caseltonclark.co.uk

These are a small selection of our live roles. Please visit our website or get in touch to discuss your requirements In partnership with

64 CIPA JOURNAL

NOVEMBER 2019

PATENT COUNSEL | LONDON Specialism: Hi-tech

This is a global leader in the research & development of cryptocurrency technology and a rare chance to build one of the leading patent positions in the blockchain space. Suitable for a recently qualified European Patent Attorney but would also consider those part-qualified or finalists. A background in computer science, electronics, physics, or mathematics is needed. This is a great opportunity to mould the position into a long-term structured career path.

SENIOR PATENT ATTORNEY | MILAN Specialism: Electronics / Engineering

One of Italy (and Europe’s) most prestigious IP firms are seeking a candidate who is ready or could be ready within a couple of years to fulfil the position as Milan patent department coordinator. They have offices across Italy and are internationally recognised for their IP protection work and diverse workforce in the legal fields. Must be a European Patent Attorney ideally with 10-15 years of experience in the IP field and ideally can handle some business development.

EUROPEAN PATENT ATTORNEY (IN-HOUSE) | NORTHERN BELGIUM Specialism: Life Sciences / Pharmaceuticals

We are working exclusively with the pharmaceutical arm of one of the world's leading manufacturers of medical devices, pharmaceutical and consumer packaged goods. This is to operate in their Law Department and this position reports to a Senior Director Patent Law EMEA. We are looking for competency in commercialisation and excellent inter-personal and communication skills, particularly to those in the R&D functions.

www.cipa.org.uk


THE PINKS

RECRUITMENT

O U H S O U H SEE N IIN N C A I N C C A E I C E A S S A V V

FOR ENGINEERING & ELECTRONICS PATENT ATTORNEYS

1 2

3 4 5 6

JOIN A GLOBAL COMPANY: PHYSICS/ENGINEERING, LANCASHIRE ([SDQVLRQRIDQHVWDEOLVKHGLQKRXVHWHDPLPSUHVVLYHVDODU\DQGEHQHÀWVSDFNDJHRQRIIHU

START UP: ELECTRONICS/COMPUTING, LONDON -RLQDQH[FLWLQJVWDUWXSYHQWXUHKHOSLQJWRVKDSHWKHGLUHFWLRQRIWKHFRPSDQ\ V,3RXWSXW

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MULTINATIONAL TECH COMPANY: ENGINEERING/PHYSICS, LONDON -RLQDPRGHUQIRUZDUGWKLQNLQJFRPSDQ\ZRUNLQJDWWKHYHU\FXWWLQJHGJHRIWHFKQRORJ\

CONTRACT ROLE: ENGINEERING, NORTH WEST ENGLAND &RQWUDFWSRVLWLRQIRUDTXDOLÀHGSDWHQWDWWRUQH\ZLWKDEDFNJURXQGLQHQJLQHHULQJRUSK\VLFV

FANTASTISCHE GELEGENHEIT: PQ/FQ EPA, GERMANY :RUNRQDZLGHUDQJHRIKLWHFKVXEMHFWPDWWHUIRUDOHDGLQJQDPHLQWKHLUPDUNHW

Background not in engineering or electronics? Looking for private practice opportunities? Contact Luke or visit www.dawnellmore.co.uk to browse all our vacancies

@

luke.rehbein@dawnellmore.co.uk 020 7405 5039 www.dawnellmore.co.uk

Volume 45, number 10

Dawn Ellmore Employment

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Patent, Trade Mark & Legal Specialists OCTOBER 2016 CIPA JOURNAL 65


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RECRUITMENT

Patent AƩorney, South London part or fully qualified | electrical/electronic background We are a relaƟvely small but growing south London based firm of Chartered Patent and Trade Mark AƩorneys. We are seeking a qualified or part-qualified aƩorney with an electrical/electronic background to assist us with an ever-increasing workload mainly from UK-based companies operaƟng in a variety of technologies and disciplines, including liƟgaƟon and licensing. Real partnership prospects will be available to the right candidates. We are also seeking a qualified or part-qualified trade mark assistant, to oversee an ever increasing workload. Again, real partnership prospects will be available to the right candidate. For more details and to apply please contact Alan Fry at Agile IP LLP email: alan@agile-ip.co.uk Agile IP LLP European Patent & Trade Mark AƩorneys Airport House, Purley Way, Croydon, Surrey CR0 0XZ Phone: +44 (0)20 8915 1010 | www.agile-ip.co.uk

Patents, Trademarks & Designs

TRAINEE PATENT ATTORNEY – LIFE SCIENCES SOUTHAMPTON, UK This is an excellent opportunity to join a busy and friendly firm. Our modern approach and clear advice is appreciated by our clients and the recommendations that we receive has led to an expanding work load. Our second office was opened last year in Southampton. We are now seeking a trainee patent attorney to work within our Life Sciences team. The candidate will have an excellent background in Life Sciences and a sound technical understanding of molecular biology and immunology. An understanding of simple chemical subject matter would be an advantage. Ideally, the candidate will have a PhD in a relevant field, although candidates with an excellent first degree will be considered. Subsequent research or commercial experience would be preferred although the right person is more important than specific experience. A competitive salary is on offer and the successful candidate will be welcomed into a happy and progressive environment. Please forward your CV, together with supporting information to: info@script-ip.com

66 CIPA JOURNAL

NOVEMBER 2019

www.cipa.org.uk


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We’ll help you to

RECRUITMENT

stand out from the crowd

PATENT SECRETARY/PARALEGAL, LONDON We are looking for someone with a minimum of 1 year’s SDWHQWH[SHULHQFHWRMRLQDOHDGLQJȴUPLQ/RQGRQZKHUHWKH\FDQVKRZFDVHDQGEXLOGXSRQWKHSDWHQWNQRZOHGJH they have gained to date. PATENT PARALEGAL, GLASGOW 7KLVUROHZRXOGEHSHUIHFWIRUDQLQGLYLGXDOZLWK\HDUSDWHQW DGPLQLVWUDWLRQH[SHULHQFHLQWHUHVWHGLQWDNLQJWKHQH[WVWHSLQWKHLUΖ3FDUHHU2΍HULQJDIDQWDVWLFVDODU\DQGD ZDUPZHOFRPHRQDUULYDOWKLVXQLTXHRSSRUWXQLW\LVQRWWREHPLVVHG PATENT PARALEGAL TO PARTNER, LONDON $JRRGPDWFKIRUWKLVUROHZRXOGEHDQH[SHULHQFHG SDWHQWVHFUHWDU\RUSDUDOHJDOZKRLVDEOHWRGHOLYHUZRUNWRDKLJKVWDQGDUGWRMRLQDZHOOHVWDEOLVKHGȴUPDQG VXSSRUWRQHRIWKHEXVLHVW3DUWQHUVLQWKHȴUPȇV/LIH6FLHQFHVSUDFWLFH

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CLIENT SUPPORT PARALEGAL, LONDON $XQLTXHUROHR΍HULQJDQLPSUHVVLYHVDODU\WKLVSRVLWLRQ ZRXOGVXLWVRPHRQHZLWKSDWHQWSDUDOHJDOH[SHULHQFHZKRLVUHDG\WRWDNHDVWHSXSWRWKHQH[WOHYHODQGZRUN GLUHFWO\ZLWKVRPHRIWKHȴUPȇVODUJHVWDQGZHOONQRZQFOLHQWV PATENT SECRETARY, CAMBRIDGE 2XUFOLHQWLVORRNLQJIRUVRPHRQHZLWKVROLGH[SHULHQFHDVDSDWHQW VHFUHWDU\WRFRPSOHWHWKHLUWHDP7KLVZRXOGVXLWDGHSHQGDEOHDQGFDSDEOHVHFUHWDU\ZKRKDVDVFUXSXORXVVHQVH of attention to detail and strong communication skills. SENIOR PATENT PARALEGAL, LONDON $YHU\YDULHGUROHZLWKLQDWKULYLQJȴUPD&Ζ3$TXDOLȴHG LQGLYLGXDOZLWKDWOHDVW\HDUVȇH[SHULHQFHZRXOGEHZHOOVXLWHGΖQLWLDOO\VWDUWLQJRQDPRQWKFRQWUDFWWKHUHLVD VWURQJSRVVLELOLW\RIWKHUROHEHFRPLQJSHUPDQHQW

PATENT ADMINISTRATOR, HAMPSHIRE $IDQWDVWLFRSSRUWXQLW\WRMRLQDOHDGLQJΖ3ȴUPZRUNLQJZLWKLQ DQH[FLWLQJDQGEXV\WHDPΖI\RXKDYHSUHYLRXVSDWHQWDGPLQLVWUDWLRQH[SHULHQFHDQGDUHORRNLQJWRWDNHWKHQH[W VWHSLQ\RXUFDUHHUWKLVFRXOGEHWKHRQHIRU\RX

Visit www.dawnellmore.co.uk to browse all our current vacancies @

dawn.ellmore@dawnellmore.co.uk 020 7405 5039 www.dawnellmore.co.uk

Volume 45, number 10

Dawn Ellmore Employment

®

Patent, Trade Mark & Legal Specialists OCTOBER 2016 CIPA JOURNAL 67


THE PINKS

RECRUITMENT

We’re growing and developing our patent team and you can be a part of it

European Patent Attorney (all technical disciplines) Dublin | Belfast | Cork Join us in our Dublin, Belfast or Cork offices if you are a fully-qualified European Patent Attorney (or part-qualified/ final-year EQE candidate) looking for a more diverse and fulfilling role. About us: The technical competence of our patent team ranges from computing, through medtech and healthcare, to cleantech and we represent a range of inventors from SMEs, academic institutions, and international corporations – offering a varied and intensive work experience. We provide an open-door policy to give access to all professional levels, and we nurture a friendly atmosphere to contribute to a supportive working environment. As an inclusive workplace, we are invested in empowering, valuing, and celebrating the diversity of our highly-motivated European Patent Attorneys. About the role: The role complements the expansion and progression of our patent team to one of the most competent teams in Europe in all proceedings before the European Patent Office, with particular opportunity to directly manage higher level opposition and appeal proceedings. As part of our commitment to promoting a diverse and inclusive workspace, we offer a flexible working environment to provide you with clear and definitive opportunities to promote and progress your career. Regardless of your working arrangements, you will have freedom to work autonomously and function as part of a group, with direct access to clients and case work with a healthy combination of directly prosecuted and communicated matters – providing you with a varied and extensive caseload. About you: We are looking for you to provide practical strategic advice through an analytical and organisational perspective, and an active approach to business development. A highly motivated and self-starting attitude to working as an individual must also be combined with the ability to interact and develop strong working relationships with colleagues. We’re dedicated to creating an environment where everyone, from any background, can do their best work, and so you can be you. Application to the role: If you are a European Patent Attorney or part-qualified/final-year EQE candidate looking to be part of the development of our patent team, please contact Jane Rice, HR Officer, by email (hr@frkelly.com) no later than 5pm on 13 December 2019.

68 CIPA JOURNAL

NOVEMBER 2019

www.cipa.org.uk


For full details on the range of opportunities we’re recruiting for or just to have a general chat about your career, please call Pete Fellows on 020 7903 5019 or email: contact@fellowsandassociates.com. www.fellowsandassociates.com

@fellowsandassoc

www.linkedinfellows.com

youtube.com/fellowstv

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


CHARTERED/EUROPEAN PATENT ATTORNEY Stanley Black & Decker is a world-leading provider of tools, storage, commercial electronic security and engineered fastening systems, with unique growth platforms and a track record of sustained profitable growth in more than 100 countries. Our goal has always been simple and straight forward: provide tools and solutions that make life easier. Whether it’s a hammer that punches above its weight while going easy on your elbows, a door that unlocks for you at a glance or a toolbox smart enough to find a missing socket anywhere in an aeroplane hangar, our products have a way of making a big impact on your daily life. We are a sales and marketing driven organization and in Europe we have around 14000 employees. We have an opportunity for a Chartered and/or European Patent Attorney to join our IP team as there is a vast array of IP matters to be managed. Our IP team needs to be able to service our diverse and commercially demanding clients based across Europe, Asia Pacific, the Middle East and Africa. Our legal work covers the full breadth of IP matters from the conventional drafting and prosecution of patent, design and trade mark cases; through to the more commercial oppositions, licensing, litigation, clearance opinions, revocation actions, domain name disputes, agreements, mergers/acquisitions and more. We believe it is hard to find a more business-focused IP team. All our attorneys are integral members of the businesses they support. These businesses value the IP advice and guidance they receive and are in contact with their attorneys every day. This is not a role where you will receive remote filing instructions, but then take no part in product development – you will help design the products we make and sell. The technologies we work with are just as diverse. Amongst the businesses within the group are: security, asset tracking, healthcare, storage, oil and gas pipelines, tagging, access control, automotive and industrial fastening, hydraulic machinery, hand and power tools – they all need IP support. We are looking for a qualified attorney with up to five years post-qualification experience, who is seeking a demanding, highly commercial role with real opportunity to progress within a global organization. You will be comfortable handling electronic/mechanical matters and have had exposure to, or be willing to learn quickly about, infringement clearance and opinion work as well as contentious matters. Together with your professional experience you should be able to demonstrate solid business acumen, excellent oral and written communication skills, self-confidence and be proactive in your approach. Notice we use the term IP, not just patents. This is because we provide business-oriented guidance across all IP matters and why we are so valuable to the company. We can offer you real career development and an opportunity to work globally and we will reward you with a competitive remuneration and benefits package. The European IP team is based in Slough, in offices situated a short distance from the centre of Windsor. We will also be happy to consider applications from those based outside of the UK, with a view to you being based at one of our European offices. Travel is an element of the job, although we believe it is at a manageable level. We recommend you to take a look at our website: http://www.stanleyblackanddecker.com/. For an initial discussion, in the strictest confidence, please send your CV and covering letter to Pam Punia, Human Resources Manager EHQ, via email: pam.punia@sbdinc.com. STRICTLY NO AGENCIES SBD is committed to the principle of equal employment opportunity for all associates and to providing associates with a work environment free of discrimination. SBD provides equal opportunity to all associates with employment requirements and individual qualifications. Furthermore, SBD prohibits discrimination in all employment practices for reasons of race, colour, religion, sex, sexual orientation, national origin, age, physical or mental disability. By submitting your personal information, you acknowledge that you have read and understood our Candidate Privacy Notice (http://www.stanleyblackanddecker.com/careers/privacy) and you consent to the use of your information as set out in this Notice.


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

Electronics Patent Attorney

Patent Paralegal

In-House Electronics & Engineering

Munich

London

North West

Ref: 464543

Ref: 426046

Ref: 451037

The team in Munich is a small, but growing practice,

Due to the continued growth of the firm, my client

Time to make that move in-house? With cutting-

that benefits from being part of a world-renowned

is seeking an experienced Patent Paralegal to join its

edge technology to lay your hands on, this company

global IP practice. Associates are central to the

team. Situated in the heart of London, the firm offers

seeks a European Patent Attorney to join its growing

success of the firm and client delivery, and are not put

a modern forward-thinking environment. This role

IP function. This is still a relatively new company that

in the back office to churn out the work. You will be a

offers the chance to work with the firm’s prestigious

has impressive ambitions to keep growing. You will

fundamental part of the enhanced service offering and

client base, assisting fee earners with the day to

have overall responsibility for IP service delivery, and

will be working directly with their existing and future

day requirements. Previous experience and a CIPA

the role is suited to innovative, commercially astute

clients. You will be instrumental and encouraged to

qualification would be preferable and the role allows

and progressive individuals who enjoy working in a

also build and develop your own relationships.

the opportunity to develop your career.

fast-paced environment.

High-Tech Patent Attorney

Materials Science Patent Attorney

Biotech – Associate

Eindhoven

Cambridge

London

Ref: 464835

Ref: 140373

Ref: 129441

The firm is widely known as a market leader in the

Fantastic opportunity to join a well-established

This is an ideal role for a progressive and

Netherlands for patent prosecutions. Whilst you will

patent prosecution team in their Engineering,

commercially astute qualified Patent Attorney (CPA

have the benefit of a varied caseload of interesting

Manufacturing and Consumer Products Group. The

or EPA) with a proven life sciences/biotechnology

work, the firm also has a friendly culture and promotes

firm has a solid reputation for high quality work. The

background and drafting/prosecution experience.

a sensible work-home life balance. Your duties will

ideal candidate will be fully qualified with either dual

You must be comfortable in liaising directly with

include advising, drafting applications, prosecution,

or EPA/CPA credentials from a general engineering,

clients and feel confident in advising and defending

oppositions and (in collaboration with attorneys-at-

physics or materials science background. Significant

complex patent portfolios. First-hand experience

law) litigation. You will be a self-starter with a keen

client contact will be a given in this role, so strong

of handling and acting for blue-chip, SMEs and

interest in effectively meeting the client’s needs.

communication skills are essential.

University based clients is desirable.

Patent Secretary

Electronics

IT & Engineering - Part Qualified

Manchester

Remote working

Cambridge

Ref: 425536

Ref: 124536

Ref: 129947

We are looking for an experienced Patent Secretary

Exciting new instruction for G2 Legal to work

A leading UK and European firm is looking to

to join a leading firm in Manchester. The role will

remotely as a Patent Attorney anywhere in the world

appoint a part qualified Patent Attorney. Candidates

involve working for two Partners and offers a

for a well-respected Patent & Trade Mark Intellectual

must have at least completed the QM course, with

variety of work covering national and international

Property Firm. Maybe you have an ambition to

a mechanical engineering or physics academic

matters. The firm is well recognised for the work

relocate but securing employment within your

background, as well as an interest in, or experience

they do in the patent practice area. This position

chosen country is difficult. This top IP firm has Patent

of, handling subject matter in the mechanical

offers the chance to develop your career further.

Attorneys working remotely in multiple destinations.

sphere. The ideal applicant will have excellent

CIPA qualification would be an advantage but not

With offices throughout the UK, US and Germany you

communication

essential, but previous experience in a similar role

can equally work from an office location if you would

gained in a challenging role and be looking for the

is a requirement.

prefer that.

next step in their career.

skills

with

proven

experience

For further details regarding any of the roles please contact Lee Townsend, Principal Consultant. Absolute confidentiality is assured.

Email patents.trademarks@g2legal.com

Tel 020 7649 9298

G2 Legal 5 Chancery Lane, London EC4A 1BL

Mob 07426 043744

www.g2legal.com www.linkedin.com/company/g2-legal-limited


We’re expanding Chemical Attorney required in our Bath Office

www.abelimray.com/careers London | Bath | Cardiff

Generous welcome packages available for direct applicants.

We offer a different working environment to many other firms, with a young partnership, flexible working attitude and a good work-life balance.


HTTPS://WWW.QEDLEGAL.COM

LIFE SCIENCES / BIOTECHNOLOGY – QUALIFIED – CAMBRIDGE

ENGINEERING – PQ / QUALIFIED – BRISTOL

CHEMISTRY – PQ/QUALIFIED – SOMERSET

Growing firm in Cambridge looking to hire a PQ or qualified attorney within the Life Sciences field. Great opportunity to join a growing practice, working alongside a senior team of attorneys on a broad range of clients. Opportunity to work closely with the research teams

Market leading firm, due to growth in business looking to hire into their wellrespected Engineering Patent team. You will ideally be PQ or qualified. This role will work on a variety of clients, though a Mechanical background is highly desirable.

Prestigious South West firm looking to hire PQ/Qualified Chemistry Attorney as they expand their practice with new international client wins. You will ideally have completed your Foundation course and be at Finals standard.

PATENT ADMINISTRATION / PARALEGAL – LONDON

IN-HOUSE QUALIFIED PATENT ATTORNEY – ENGINEERING (PHYSICS/MECHANICS)

Due to business growth, an opening to join a London firm to provide full formalities support. You will ideally have 6 months minimum experience and be looking to join an organisation to Receive training and career progression.

Well-known UK company looking to hire a qualified attorney to join their established IP department. You will get the opportunity to work on a broad range of activities in a pure patent role.

SOFTWARE / AI – QUALIFIED – LONDON

ELECTRONICS X 2 – PQ / QUALIFIED – LONDON

This highly ranked firm is well known for its specialism in the Software / AI sector. Due to ongoing growth in the department, with new business wins, the firm is looking to hire into the team. If you have entered the IP industry, and at Finals standard or qualified, this opportunity will give you the scope to work alongside and with some of the brightest minds in the sector.

Well known specialist Patent firm looking to expand their Electronics Operation. They are looking for an Associate / Senior Associate level to join the business and play a lead role in progressing the team. They are also looking to hire a PQ/NQ to work alongside the existing team, working on a major client. Flexible work options available.

FOR MORE INFORMATION OR TO APPLY, CONTACT

EMAIL: PHONE: WEB:

MECHANICAL – PQ/QUALIFIED – MANCHESTER Fabulous opportunity for a finals standard / qualified attorney looking to join a prestigious North West based firm to work alongside and develop your experience in the patent sector. The client will fully support your development as you work on some innovative advances in industry.

LIFE SCIENCES – PQ/QUALIFIED – LONDON An established reputable IP firm who partner with a broad scope of clients in the Life Science sector, are looking to hire an Attorney. The role will offer the individual the opportunity to progress their knowledge of the Patent sector and their own personal development whilst working with leaders in industry.

GRAHAM.JONES@QEDLEGAL.COM 01903 333100 https://www.linkedin.com/in/graham-jones-qed/


THE PINKS

RECRUITMENT

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74

CIPA JOURNAL

NOVEMBER 2019

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www.cipa.org.uk


www.ip-support.co.uk 020 7776 8966 info@ip-support.co.uk

Senior Patent Paralegal - London A brand new opportunity to build a small team of Paralegals at a highly sought after practice. Patent Paralegal - London A new role supporting a number of incoming attorneys. A fantastic chance to assist the firm through their next stage of expansion. Senior Patent Secretary - London A leading role overseeing a small secretarial team. A rare opportunity to take a step up into a 75 role full of autonomy and responsibility.


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Profile for CIPA Journal

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CIPA Journal, November 2019  

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