CIPA Journal, January-February 2021

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

January-February 2021 / Volume 50 / Number 1-2

A global centre for artificial intelligence

2020: Presidential review of an extraordinary year Richard Mair

CIPA elects its youngest ever President

Report on the Life Sciences conference Jenny Vaughan

US update: the Canada: Insight latest on Arthrex into becoming a patent agent and updates on Tomas Karger joinder rules

UP FRONT

CIPA JOURNAL Editor Alasdair Poore Deputy Editors Jeremy Holmes Production Iain Ross, 020 3289 6445, and advertising sales@cipa.org.uk Design Neil Lampert Cover design Jonathan Briggs Contact 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.

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CIPA CONTACTS

Alicia Instone President

Alasdair Poore Vice-President

Richard Mair Immediate Past-President

Gwilym Roberts Honorary Secretary

Committee Chairs Business Practice Matt Dixon; Computer Technology Simon Davies; Congress Steering Julia Florence; Constitutional Alasdair Poore; Designs & Copyright Alasdair Poore; Education Vicki Salmon; IP Commercialisation Catriona Hammer; IP Pro Bono Stephen Jones; Informals Joel Briscoe; Internal Governance Catriona Hammer; International Liaison Tony Rollins; 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 Alasdair Poore.

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 HR Officer Lea Weir-Samuels Communications Officer Amy Williams External Affairs Officer Lucy Wharton Admin Generalist Kereiss Isles General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

Contents 22 20

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UP FRONT

ARTICLES

PERSONAL

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Presidential review of 2020

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3

New President for 2021

42 Obituary: Bob Farwell Bob Weston, Jim Boff and Tibor Gold 43 Announcements 43 Two IPs in a Pod

Join the show 44 IP Inclusive update

Andrea Brewster 51 IP clinics

Volunteers needed 52 Yellow Sheet

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Richard Mair

Alicia Instone elected President

Council Minutes – November

Lee Davies

NEWS 3 IPO bulk change of address 3 Manual of Patent Practice

IPO update 8 Videoconferencing at the EPO 9 UK qualifying exams 2020

PEB update 9 UK qualifying exams 2020

PEB update 10 Artificial intelligence

Consultation response 19 How do you want to receive your Journal?

22

Faith at work Culture and belief in the workplace

Colin Bailey

US Update The latest on Arthrex and updates on joinder rules before the PTAB

Finnegan

DECISIONS 29 P atent decisions

Beck Greener 33 E PO decisions Bristows 35 I PO decisions David Pearce & Callum Docherty 36 Trade marks

Bird & Bird

THE PINKS 59

ourses; International; C Recruitment

EDUCATION 41 CPD webinars 46

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and other events Life Sciences

Report on 2020 webinars Jenny Vaughan JANUARY-FEBRUARY 2021

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Presidential review of 2020 Richard Mair, President of CIPA for 2020, looks back at an extraordinary year.

Richard Mair, CIPA’s President in 2020

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hat an extraordinary year this has been! The advent of Covid-19 has completely revolutionised the way CIPA operates. I am full of admiration for the way this has been managed by Lee Davies, Neil Lampert and the whole CIPA staff.

Pandemics are, of course, nothing new; nor is the resistance of the young to lockdown. Samuel Pepys’ wrote in his Diary in 1664 about the Plague in London: ‘On hearing ill rumour that Londoners may soon be urged into their lodgings

by Her Majesty's men, I looked upon the street to see a gaggle of striplings making fair merry, and no doubt spreading the plague well about. Not a care had these rogues for the health of their elders!’

Those of you who heard or read my inaugural address in January will recall that the issue of Address for Service was

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at the top of my agenda. So, I am pleased that, following a Call for Views to which we contributed [see the September 2020 issue], the government has put in place a Statutory Instrument which in principle ‘levels the playing field’, requiring an Address for Service in the UK, Gibraltar or the Channel Islands. The IPO has yet to be convinced that a mere P.O. Box is not sufficient to constitute an ‘address’.

That will be a task for us early in the New Year.

Another of my priorities was the redesign of CIPA’s website, and I am glad that a team led by Neil Lampert and Dwaine Hamilton has made good progress with this. I am confident that you will like the result.

2020 saw the resurgence, following the shocking death of George Floyd in the US, of the Black Lives Matter movement.

CIPA was quick to express solidarity.

CIPA officers and staff have taken part in various events organised by IP Inclusive.

Council has now considered the outcomes and I am glad that it has decided to establish a Diversity and Inclusion Committee to take matters forward.

The Patent Examination Board – the PEB – commendably rearranged the qualifying examinations to be online, and I rather doubt that we shall ever return to the physical examination hall setting for the exams.

We have a welcome new edition of the ‘Black Book’ – The CIPA Guide to the Patents Acts. I congratulate Council Member Paul Cole, and barrister and former Council Member Richard Davis, and indeed all those who have contributed to it. It is a tremendously valuable resource.

A minor matter, but important for the environment – compostable wrappings will in future be used for distribution of the CIPA Journal. Of course, we can do better than that and have our journals delivered electronically to our inbox. If you do not already receive them in that way, please consider whether you would be willing to make that change [see page 19].

The year finished with the Presidential Appeal, in aid of Movember – concerned in particular with prostate cancer, testicular cancer, and male mental health and suicide prevention – and Target Ovarian Cancer.

I am pleased to say that the targets I set in both cases have been well exceeded, with a further £500 (divided between the two) having been pledged by Abel & Imray. Are there any other firms out there who will match or even exceed that?

I finish by wishing Alicia Instone all the best for her Presidential Year. Now that we have some effective vaccines, 2021 will definitely be better than 2020!

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Richard Mair www.cipa.org.uk

NEWS

CIPA • IPO

New President for 2021 Alicia Instone elected President of CIPA

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he Chartered Institute of Patent Attorneys has elected Alicia Instone, a dual-qualified patent and trade mark attorney and patent litigator, as its youngest ever President.

Alicia, who is also treasurer of the UK association of the International Federation of Intellectual Property Attorneys (FICPIUK), started her one-year term of office on 1 January 2021 – her 41st birthday.

Alicia started her career in 2005 having won a national award for scoring the highest mark in the UK for one of her final trade mark examination papers. She is now a partner at intellectual property law firm Cleveland Scott York where she works in the fields of chemistry, dyes and pigments, photochromic materials, medical devices, laboratory consumables, traffic control, oil and gas and natural sciences in general.

She is a member of CIPA Council, is Chair of the institute’s Design & Copyright Committee and is also an active member of its Trade Marks Committee and Business Practice Committee. She has represented both CIPA and FICPI-UK at international level and is a regular UK delegate at meetings of the European Association of National Intellectual Property Associations.

Alicia was elected at the Institute’s 137th Annual General Meeting on 2 October 2019, serving as Vice-President during 2020 to Richard Mair. Alicia said: ‘CIPA will play an important role in dealing with the aftermath of Brexit as the transition period comes to an end.

New rules for businesses begin from today and CIPA will work alongside the government and international decision-makers to represent the best

interests of its members and their clients.

Many people spent the majority of 2020 working from home and this has had a huge impact on our mental health. During this time, there have been some great resources created to help with mental health and well-being from charities such as Jonathan’s Voice, LawCare and IP Inclusive. I am looking forward to working alongside them all this year to continue to raise awareness of the importance of mental health.’

IPO bulk change of address From 13 January until 31 March 2021, the IPO will provide a temporary service to process high volume requests from customers with 50 or more newly created, comparable trade marks and re-registered designs to update their representative addresses (following the end of the Brexit transition period).

This service is only to be used for comparable trade marks and designs and is not currently available for patents.

The IPO has had feedback from customers about the need for a similar system for patents and is looking into options.

For full details, see https://www.gov.uk/guidance/bulk-change-of-address-service-available

IPO Manual of Patent Practice updates In January 2021, a single change was incorporated into the latest version of the Manual of Patent Practice.

The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp Paragraphs

Update

7.11.1, 13.10.1

Updated in light of Thaler v Comptroller-General of Patents [2020] EWHC 2412 (Pat)

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COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 4 November 2020, at 14:30, by videoconference.

Item 1: Welcome and apologies

Present: Richard Mair (President), Alicia Instone (Vice-President), Julia Florence (Immediate Past President), Gwilym Roberts (Honorary Secretary), Joel Briscoe (coopted), John Brown, Roger Burt, Daniel Chew, Paul Cole, Matt Dixon, Stuart Forrest, Catriona Hammer, Greg Iceton, Tim Jackson, Parminder Lally, Keith Loven, Chris Mercer, Emily Nytko-Lutz, Bev Ouzman, Alasdair Poore, Andrew Sunderland, and Sheila Wallace.

Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance.

Apologies: Andrea Brewster, Anna Denholm, Rob Jackson, Tony Rollins, Vicki Salmon, Julia Tribe (co-opted) and Simon Wright.

Item 2: Conflicts of interest

275/20: In relation to discussions about the UK qualifying examinations, Joel Briscoe declared that he had sat the examinations. Roger Burt and Chris Mercer declared that they were invigilators for the examinations.

Item 3: Minutes

276/20: The minutes of the Council meeting held on 7 October 2020 were approved.

277/20: From minute 242/20, UK qualifying examinations. Lee Davies informed Council that the Patent Examination Board (PEB) would be doing a review of the 2020 qualifying examinations. Lee suggested that it would be helpful for Council to discuss the examinations to inform CIPA’s contribution to the review.

Joel Briscoe said that the initial information provided by the PEB was clear and that the webinar with a live 4

Q&A session had increased candidates’ confidence about the proctoring system.

Joel added that the information from the PEB then seemed to change on a weekly basis, in particular when the PEB decided to use online invigilation instead of the proctoring system. Joel said that this became quite confusing for candidates and employers. Joel said that this should not detract from the overall success of the examinations and the work undertaken by the PEB to ensure the examinations could go ahead.

Joel added that the PEB’s trial of the examination system, two weeks before the examinations, had been an important initiative and helped candidates to understand the technology being used for the examinations.

Chris Mercer and Roger Burt congratulated the candidates on how they approached the transition to online examinations. Chris and Roger said that the candidates conducted themselves in a polite, well-behaved manner, which was impressive given the increased stress they were under. Council agreed that there should be some public acknowledgment of how well the candidates conducted themselves and that it might be appropriate for this to come from the PEB. Council recorded a vote of thanks to the PEB, the examiners and the invigilators for setting up and delivering the examinations online at such short notice.

Council recorded a special vote of thanks to Angelina Smith, CIPA’s Head of Qualifications. Council acknowledged that that Angelina had been under extraordinary pressure to ensure that the examinations could take place and that she had succeeded in this whilst contending with a number of personal issues, including a family bereavement.

Lee Davies said that Angelina had gone above and beyond what CIPA could have

expected and that he was in no doubt that Angelina had played a lead role in making the examinations possible.

Council agreed that it was important to recognise achievements such as this and asked Lee Davies to discuss appropriate recognition with the Internal Governance Committee.

Action: Lee Davies to express Council’s thanks to the PEB and to suggest that the PEB might like to join CIPA in congratulating all involved in staging the 2020 examinations online, including the candidates. Lee Davies to discuss recognition for the work of Angelina Smith with the Internal Governance Committee.

278/20: From minute 243/20, AGM and elections. Lee Davies advised Council that it had not been possible for the auditors to deliver the accounts in time for the AGM. The auditors have indicated that they should complete the audit work by the middle of November and that there should be a draft set of audited accounts available for the Internal Governance Committee’s meeting in December. Lee said that there would be a resolution going to the AGM to hold a General Meeting early in 2021, possibly after the Council meeting on 3 February.

279/20: From minute 244/20, Lord Frost letter. Neil Lampert informed Council that he had sent an update to all members reminding them of the work that CIPA had been doing to ensure the government understood the importance of the UK’s existing international IP obligations, particularly membership of the EPC. Neil added that the communication included a link to the economic impact assessment and referenced Oliva Wessendorf ’s address to CIPA congress, stating that government intended that the UK’s membership of the EPC would not be put

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at risk through trade negotiations. Neil assured Council that this had enabled him to update members on the current situation whilst respecting the steer from government that Lord Frost’s letter remained confidential to Council.

280/20: From minute 245/20, visas postBrexit. Lee Davies introduced his report, outlining the various discussions that had taken place with the UK IPO on the subject of the requirement for visas at the end of the Brexit Transition Period on 31 December 2020.

Lee advised Council that there had also been discussions with the UK IPO and the Department for Business, Energy and Industrial Strategy (BEIS) on advice to firms about corporate business structures. Lee said that it was clear that it would not be possible to obtain general advice on business structures as this would vary according to the individual trading circumstances of firms. Council took the view that, in the absence of a steer from government, it would be difficult for CIPA to provide general advice and expressed concerns about potential liability should firms act on advice provided by CIPA. Council agreed that firms would need to take expert advice based on individual trading circumstances and business structures.

Council approved the publication of advice on visas, based on the information provided by the UK IPO. Council recognised that this advice would be subject to change should the UK agree a deal with the EU, which includes provision for business travel. Council approved a proposal to write to President Campinos, asking for an update on the EPO’s position on the requirement for visas at the end of the Transition Period.

Action: Lee Davies and Neil Lampert to liaise with Richard Mair on the final text of a statement to members on visas as the Transition Period comes to an end on 31 December 2020, and on a letter to President Campinos asking for an update on the EPO’s understanding of the requirements for visas in its host countries.

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281/20: From minute 257/20, use of videoconferencing for hearings at the EPO. Chris Mercer advised Council that the epi had received a paper by DG1 confirming the EPO’s intention to move to videoconferencing for oral proceedings for all opposition matters, as well for all examining division matters during the Covid pandemic. Chris added that, whilst these measures were for a period through to September 2021, President Campinos has made clear his desire to see videoconferencing become the default position for all proceedings for DG1. Chris said that he had arranged a meeting with Carl Josefsson, President of the Boards of Appeal, on the 5 November and that he would update Council after that meeting.

Chris Mercer informed Council that Zoom was now being used by the EPO for oral proceedings instead of Skype for Business. Chris opined that, if DG1 make videoconferencing work for opposition hearings, the Boards of Appeal will follow suit. Chris said that, whilst the technology is improving all the time, there is still the problem that some companies will not permit the use of Zoom on business devices, with others taking a similar line with Skype for Business. Chris added that the EPO had some concerns about the use of videoconferencing in hearings that are open to the public.

Tim Jackson said CIPA’s starting position was to support the use of videoconferencing but that there should be the element of choice. Tim added that this proviso was to address the concern that the videoconferencing technology would not be fully effective for oral proceedings. Tim said that, as improvements in the technology continue to be made, confidence in the use of videoconferencing will increase as it becomes a part of normal procedures.

Tim said that he had heard reports of mixed oral proceedings, with one party attending via videoconference and the other party attending in person. Council agreed that this was not desirable, and Chris Mercer said that he would raise this

at his meeting with President Josefsson.

Gwilym Roberts said that it was his opinion that the use of videoconferencing was inevitable, and that the EPO would press ahead with the pilot period. Gwilym proposed that Council should express support for the pilot and for the Boards of Appeal to adopt the same rules, to allow access to justice. Gwilym added that Council should qualify its support, stating that the pilot period should be used to fine tune the technology and that use of videoconferencing beyond the pilot period must be subject the systems being fit for purpose. Council supported this position.

Action: Council granted the Patents Committee the power to act on its behalf and asked Tim Jackson, Gwilym Roberts, Chris Mercer and Richard Mair to liaise on preparing and filing a response on the use of videoconferencing for all oral proceedings at the EPO. 282/20: From minute 260/20, master’s degree as minimum entry requirement for the EQE. Chris Mercer said that he could not give much by way of an update as the EPO was waiting for the epi to come to a conclusion. Gwilym Roberts suggested briefing the UK IPO and making it clear that CIPA did not support this move for a number of reasons, including the potential impact on social mobility and limiting the recruitment opportunities open to firms. Richard Mair said that he would raise this with Tim Moss at the next four Presidents meeting. Chris said that he would be happy to brief colleagues at the UK IPO, if needed.

Action: Gwilym Roberts to provide Richard Mair with a briefing note in advance of the next four Presidents meeting.

Item 4: Brexit

283/20: Lee Davies informed Council that Baroness Sharon Bowles had made CIPA aware that the government had

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tabled an amendment to the UK Internal Market Bill that would exclude patent and trade mark attorneys from automatic UK-wide professional recognition under Clauses 22 and 25 of the UK Internal Market Bill.

Lee said that he had been researching the Bill and was thankful to Baroness Bowles and the Chair of IPReg, Lord Smith, for their support in unravelling the potential consequences of the government’s amendment. Lee added that he, Fran Gillon, the Chief Executive of IPReg, and Keven Bader, the Chief Executive of CITMA, had discussed the Bill with officials in the Ministry of Justice (MoJ), who apologised that there had not been time to consult on the amendment.

Lee advised Council that it was his understanding that Clause 22 of the Bill provided for UK-wide recognition of professional qualifications and rights. Lee said that this is the current position for patent attorneys under the combination of the Legal Services Act (LSA) and the Copyright, Designs and Patents Act (CDPA). For example, a patent attorney qualified in Scotland is no different to a patent attorney qualified in England and can carry out reserved legal activities, such as the right to represent in the court system, if qualified to do so.

Clause 25 of the Bill excludes barristers, solicitors, notaries, chartered legal executives, costs lawyers and licensed conveyancers from Clause 22, meaning there is no automatic recognition for, for example, an English solicitor to be automatically recognised as such in the Scottish legal system, and vice versa. Lee said that, whilst difficult to discern in the drafting of the Bill, this makes sense as it mirrors the existing legislative framework, where solicitors, barristers, etc, are regulated under the LSA only for reserved legal activities in England and Wales.

Lee said that the MoJ confirmed that the exclusion clause was added to the Bill to maintain the status quo for the legal professions and that, initially, patent and trade mark attorneys had not 6

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been included in the clause, as UK-wide recognition was afforded through the CDPA and the Trade Marks Act. The MoJ advised that the amendment had been proposed by the government when the regulation of patent and trade mark attorneys for reserved legal activities had been realised by those drafting the Bill.

Council noted that Baroness Bowles had tabled an amendment in the Lords to examine the effects of the exclusion of patent and trade mark attorneys from Clause 22 of the Bill in respect of authorised reserved legal activities.

Baroness Bowles made the point that patent and trade mark attorneys may be in the unique situation in the legal system of being regulated and qualified on a UK-wide basis, while, through the LSA, also engaging in specific reserved legal activities, no matter where in the four nations of the UK they qualified, reside or practise. Baroness Bowles made the case that the Bill had been badly drafted, making the point that the sponsoring Minister and MoJ officials had misinterpreted the Bill when explaining it to her.

Baroness Neville-Rolfe supported Baroness Bowles, saying that she was confused by the drafting of the Bill.

Baroness Neville-Rolfe argued that, UK internal market, the rights of patent and trade mark attorneys should be fully reciprocal and asked the Minister to confirm that this was the intention.

Baroness Neville-Rolfe suggested that the Minister might also want to reflect on the drafting of the Bill to test that it achieves this, if it is the intention.

Lord Smith spoke in support of Baroness Bowles, observing that there was considerable concern in the patent and trade mark attorney professions as to what exactly the impact would be of including IP attorneys in the list of excluded professions in Clause 25.

Lord Smith criticised the government’s failure to consult with CIPA, CITMA and IPReg. Lord Smith said that, since the publication of the government’s amendment, there had been assurances that there was no intention to change the

status quo. Lord Smith urged the Minister to confirm that the current position for UK-wide regulation and applicability, for both reserved and unreserved activities, was endorsed by the proposed wording of the Bill and not in any way endangered, and to place that assurance on the parliamentary record.

In reply to Baroness Bowles, Baroness Neville-Rolfe and Lord Smith, the Minister, Lord Callanan, accepted that, while the recognition of professional qualifications between the four nations can and does occur, it was the government’s intention to use the Bill to create an overarching framework to guarantee that recognition of qualifications between the four nations will be possible and barriers will be minimised. The Minister gave his assurance that nothing in the recognition provisions of the Bill, including the exclusion of patent and trade mark attorneys, affects the current situation.

Lord Callanan confirmed that IPReg, in discharging the regulatory activities delegated to it by CIPA and CITMA, will continue to be able to decide whether and how patent and trade mark attorneys should be allowed to carry out reserved legal activities in every part of the UK. Lord Callanan said that the government’s amendment aims to bring patent and trade mark attorneys in line with other legal professions and to place them outside the scope of the recognition provisions of Clause 22 of the Bill. Lord Callanan explained that legal professionals had been excluded from the scope of the provisions on the recognition of professional qualifications in acknowledgment of the different legal systems that exist in the UK, ensuring that the regulation of, and access to, the legal professions are not affected in any way by the mutual recognition provisions of the Bill.

The government’s amendment to exclude patent and trade mark attorneys from Clause 22 of the Bill was agreed in the House of Lords, with the further amendment by Baroness Bowles not being moved following the clarification

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and assurance given by the Minister.

Council expressed its thanks to Baroness Bowles for bringing the matter to its attention and for making the intervention in the passage of the Bill through the House of Lords on behalf of patent and trade mark attorneys.

Council thanked Baroness Neville-Rolfe and Lord Smith for the support given to Baroness Bowles and for pressing the Minister to provide assurance on the parliamentary record.

287/20: Council noted the response to HM Treasury’s consultation on the introduction of an Economic Crime Levy and thanked Matt Dixon for leading on this.

284/20: Council noted the response to the BEIS (Department for Business, Energy & Industrial Strategy) consultation on the recognition of professional qualifications and regulation of professions, filed on behalf of Council by the Education Committee.

[See December [2020] CIPA 7.]

Item 7: Equality, Diversity and Inclusion

Item 5: Covid-19

285/20: Lee Davies informed Council that the CIPA office remains closed for members and other visitors until at least January 2021. Staff are permitted to use the office should they wish to do so, providing that they can maintain social distancing and other safety measures introduced to comply with government guidance. Lee said that CIPA was maintaining the policy that staff should work from home unless it was necessary to be in the office. Lee added that it might be advisable for committees planning events in 2021 to plan on the basis that a return to physical events might be difficult until towards the end of the year.

Julia Florence said that the booking of the QEII Conference Centre for CIPA Congress 2020 had been deferred to 2021, due to the pandemic. Julia added that the Congress Committee was keen to return to a physical event but, with an uncertain time ahead, would be looking into the options for cancelling or deferring the booking further if necessary.

Item 6: Regulatory issues

286/20: Council noted the response to IPReg’s budget and business plan consultation.

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288/20: Council noted IPReg’s call for evidence on the review of its regulatory arrangements and granted the Regulatory Affairs Committee the power to act on its behalf in filing a response to IPReg.

289/20: Richard Mair reminded Council that week commencing 16 November 2020 would be Careers in Ideas Week and urged Council members to take part in the activities.

290/20: Lee Davies informed Council that Jonathan’s Voice, a charity set up shortly after the death of CIPA Fellow Jonathan McCartney to reduce the stigma associated with mental health issues and to educate organisations to support employees and develop better mental health practices in the workplace, had invited CIPA to nominate a representative to sit on its Advisory Board. Alicia Instone volunteered to represent CIPA, saying that she wanted to make mental health one of the features of her presidency in 2021.

291/20: Joel Briscoe informed Council that a new role has been established within the Informals Committee for a Welfare Officer. Joel said that CIPA and Jonathan’s Voice each paid for one place on the Mental Health First Aid training programme. Joel added that there was now a welfare email address for students to contact and that the Informals Committee was developing a welfare section on its website, with information and resources on mental health and wellbeing.

Item 8: IPO and EPO matters 292/20: Gwilym Roberts referred Council to the issue of the excessive

amendment of the text of patent specifications to match the claims pregrant. Gwilym added that an article had been written by a patent attorney at CMS, which expressed concerns about the new guidelines. Gwilym said that this has been a consideration for some time, but that the EPO appeared to be upgrading its insistence on amendment. Gwilym said that he would examine this further and bring any major implications, such as in the life sciences area, back to Council.

New guidelines are anticipated in March, at which time there will be an opportunity to contribute to the consultation. Gwilym said that this would be Council’s opportunity to make representations if there are any major issues.

Item 9: Committees and committee reports

293/20: Congress Committee Council noted the report from the Congress Committee. Julia Florence informed Council that the Committee had started thinking about topics for Congress 2021 and was monitoring the Covid-19 situation. Julia said that she expected the organisation of Congress to be challenging once more, given the degree of uncertainty. The Committee would keep all options open for a physical event, virtual event or a blend of both.

294/20: Trade Mark Committee Council noted the report from the Trade Mark Committee.

295/20: Designs and Copyright Committee Council noted the report from the Designs and Copyright Committee.

296/20: IP Commercialisation Committee Council noted the report from the IP Commercialisation Committee and approved the appointment of Roya Ghafele (OxFirst) and Nikki Evans (IPO) to the Committee.

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297/20: Professional Development Working Group Council noted the report from the Professional Development Working Group.

298/20: Media and PR Committee Council noted the report from the Media and PR Committee. Neil Lampert provided Council with a preview of the new CIPA website and updated corporate branding. Council approved the updates to CIPA’s corporate branding.

299/20: International Liaison Committee Council noted the report from the International Liaison Committee.

Item 10: Officers’ reports

300/20: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 301/20: Council noted the Chief Executive’s report.

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Item 12: Any other business

302/20: In response to a question from Joel Briscoe about the funding of the PEB, Lee Davies explained that the accreditation of the PEB by IPReg requires the PEB to have separate governance and financial operations from CIPA. In relation to any reduction in expenditure arising out of moving to an online examination system, Lee said that he understood that the cost of the online examination system had been of a similar order to the hiring of venues and that the Internal Governance Committee had raised this in its scrutiny of the PEB’s budget. Lee added that the PEB does not make a surplus, when the cost of staffing and other overheads are factored into the budget.

303/20: Joel Briscoe said that the annual Informals visit to the UK IPO took place virtually this year, thanks to the work of Suzanne Gregson, a former senior examiner who is now a trainee at Wynne Jones. Joel said that a number of CIPA Fellows had asked to join the online sessions with the IPO and this led him to wonder if there could be some kind

of reciprocal arrangement, with IPO staff accessing the webinar programme. Lee Davies suggested that he and Joel meet soon to discuss this.: 304/20: Alasdair Poore referred to the proposal from the Scottish legal profession to set up a specialist IP court in Scotland, based on the Intellectual Property Enterprise Court. Bev Ouzman said that she had previously brought this matter to the attention of Council and that she understood it had been referred to the Litigation Committee. Alasdair asked if CIPA should publicly support the establishment of such a court. Alasdair said that he had a paper from Colin Hume (Burness Paull), which he would send to the Litigation Committee and ask the Committee to give the matter further consideration.

Item 13: Date of next meeting

305/20: Wednesday 2 December 2020 (by videoconference).

The President closed the meeting at 17:06.

Lee Davies, Chief Executive

Videoconferencing at the EPO

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ver the last year, videoconferencing (vicon) has dominated hearings at the EPO, and this trend is set to continue. Much has been learnt already from the many examination and opposition oral proceedings that have taken place in 2020.

CIPA is teaming up with viconexperienced members in the profession and contacts at the EPO to present a series of webinars, articles and resources to help members be best prepared for their vicon hearings – covering the basics, to top tips for the more seasoned.

There will be a series of monthly CIPA webinars (free to members) following

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on from the panel discussion webinar of 22 January 2021 with EPO’s Dr. Nataša Doslik. Starting in February with a basics and set-up guide, there will be monthly webinars covering vicon in examination, opposition, appeal, and a look to the future of vicon. Complementing this, later in the year, CIPA will be offering webinars focusing on improving advocacy skills over vicon.

The CIPA Journal will feature a report of each webinar, along with articles on different aspects of vicon at the EPO. Look too for updates to the CIPA website to include helpful resource materials, including how to get started with vicon / the technical basics.

THE BASICS AND BEYOND! Webinar – Tuesday 23 February

Videoconferencing at the EPO. The basics: what you really need to know! First vicon hearing coming up? Not sure what you need to have set up, and what to expect?

Join us as we cover the very latest on what you need to know to be best prepared.

The basis, and beyond!

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NEWS

EXAMINATIONS

UK qualifying exams 2020 Chief Examiner of the PEB qualifying exams apologises to candidates.

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he Chief Examiner of the Patent Examination Board Exams has publicly apologised for the anxiety she caused by posting inaccurate information about October’s UK qualifying exams on IPKat. On Wednesday 16 December, the PEB published a statement [see below] from Sarah Boxall, in which she apologised for comments about the potential disqualification of candidates for the way they may have used time allowed for screen breaks and the uploading and downloading of documents.

Her apology came after the PEB published a statement reaffirming that there was never any intention to penalise candidates for the way they had used their additional allowed time – see December [2020] CIPA 11.

The Board pointed to its published guidance which stated that ‘Within the total examination times, you can manage how you use your time as you wish’.

Sarah Boxall said: ‘I sincerely apologise for the anxiety I have caused by my comments on IPKat regarding this year’s PEB exams… it is abundantly clear that candidates were allowed to use the additional 45 mins how they wished. I am not a member of the PEB Governance Board or the PEB per se. Therefore, any criticism should be levelled at me rather than either of these organisations. I take full responsibility for my error and the distress that I have caused.’

CIPA Council wishes to place on record its appreciation for the way

Statement from the Chief Examiner of the PEB Qualifying Examinations

candidates conducted themselves during the examinations and for the support offered by employers to enable the examinations to take place.

Moving to an online examination series was a huge undertaking by the PEB and full credit must go the PEB, and the examiners and invigilators, for successfully delivering the 2020 examinations under the most difficult circumstances.

None of this would have been possible without the expertise and effort of Angelina Smith, CIPA’s Head of Qualifications.

Council looks forward to working with the PEB and the profession to use the learning from this year to ensure that the 2021 examinations can go ahead in what will undoubtedly be another challenging period.

First published in CIPA’s e-newsletter, December 2020

Examination results Result issued to candidates by email, Monday 22 March 2021 Results published on the PEB website, Wednesday 24 March 2021

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I sincerely apologise for the anxiety I have caused by my comments on IPKat regarding this year’s PEB exams.

I erroneously thought it was clear to candidates that the writing time for each exam was 3, 4 or 5 hours, with the additional 45 minutes to be used for (optional) screen breaks and up/ downloading. However, it is abundantly clear that candidates were allowed to use the additional 45 mins how they wished. As a result, candidates have been entirely justified in writing beyond the 3, 4 or 5 hours usually allocated.

My comments were made as a Marking Examiner and as part of the marking team which I oversee as Chief Examiner. I am not a member of the PEB Governance Board or the PEB per se. Therefore, any criticism should be levelled at me rather than either of these organisations. I take full responsibility for my error and the distress that I have caused.

As a Marking Examiner I have a view on the impact that the additional time may have on results and will be making these known to the Governance Board.

I will also be providing my thoughts to the Governance Board on matters that I would like to see altered and improved as a result of this year’s exams. I applaud and thank the PEB for its herculean efforts to ensure exams were available for candidates to sit in 2020 and look forward to working with the PEB and the Governance Board to iron out wrinkles and improve the exam system as a whole.

Dr Sarah Boxall (Fellow), 16 December 2020

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ARTIFICIAL INTELLIGENCE

Artificial intelligence CIPA’s response to the IPO’s consultation on artificial intelligence (AI) and intellectual property, 11 December 2020. See the full response online: www.cipa.org.uk/policy-and-news/consultation-responses Lead contributors: Simon Davies (Altair IP), Rachel Free (CMS), Mike Jennings (AA Thornton), Scott Roberts (BT), Matt Hervey (Gowling WLG).

OVERVIEW

We refer to these different types of AI invention in our response below as Type 1, Type 2, and Type 3 respectively.

CIPA notes the following statement from the Consultation: ‘The government also wants to make the UK a global centre for AI and data-driven innovation. Its mission is to increase uptake of AI for the benefit of everyone in the UK. This includes ensuring AI technology works for the people and making sure the UK has the best environment for developing and using AI.’ In our response, we include two particular suggestions to support the above mission and demonstrate UK leadership in this field: 1. A statutory modification of the definition of ‘inventor’ to better accommodate the increasing use of AI technology (see our answer to Patents, Question 3).

2. A change in practice regarding the patentability of core AI technology to incentivise the UK development of such technology (see our answer to Patents, Question 7).

PATENTS

For ease of discussion, we identify three types of invention relating to AI systems: 1. an invention relating to how an AI system works, for example concerning the internal structure/operation of the AI system; 2. an invention involving the application of an existing AI system as a tool, for example when used for a particular application; and 3. an invention to which the output from an AI system makes a significant contribution.

Note on definition of artificial intelligence (AI) The consultation notes there is no single agreed definition of artificial intelligence and quotes a government definition: ‘technologies with the ability to perform tasks that would otherwise require human intelligence, such as visual perception, speech recognition, and language translation.’ Some of our comments herein may only be relevant to a subset of systems falling within this definition.

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Question 1: What role can/does the patent system play in encouraging the development and use of AI technologies?

The role of the patent system in relation to AI technologies is generally the same as for other areas of technology: primarily encouraging investment in technological research and development resulting in the public benefit of new or improved products. That investment can be by innovative businesses themselves, or patents can support third-party investment in those businesses. In exchange, the publication of patent applications helps to disseminate technical information to support further innovation by others.

Question 2: Can current AI systems devise inventions?

The output from an AI system may make a significant contribution to an invention.

(We avoid the direct question of whether an AI system can ‘invent’ or ‘devise an invention’, which is still a matter of real debate, because such terminology might be taken to imply some level of consciousness of the AI system that goes beyond the present capabilities of AI systems).

Particularly: a. To what extent is AI a tool for human inventors to use?

Any AI system is an agent of its human operator and can therefore be reasonably regarded as a tool for a human inventor.

For example, in the drug discovery field, AI analysis of published material may

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be used to identify potentially useful candidate drugs or further indications for existing drugs. b. Could the AI developer, the user of the AI, or the person who constructs the datasets on which AI is trained, claim inventorship?

Any human can make a claim for inventorship of a given invention; however such a claim is only valid if the legal requirements for inventorship are satisfied.

An AI developer may be an inventor, e.g. for a Type 1 invention that improves the operation of the AI system itself (see our definitions above).

It also seems possible for a person who constructs data sets for training an AI system (such as to identify candidate drugs or for mass throughput chemistry) to be an inventor, e.g. if they perform the selection and curation of a training dataset in a non-obvious way which enhances the ability of the AI system to perform the desired task. As a specific example, such an invention might involve a non-obvious choice of features to extract from the raw training data for input into the AI system.

It is hard to see how the mere use by a human of an AI system, without anything further, would support a claim to inventorship by that human, but a new use of an existing AI system which gives a surprising technical effect might be a potential invention. c. Are there situations when a human inventor cannot be identified?

Yes – for Type 3 inventions, the contribution of an AI system to an invention may be such that human involvement, for example in setting up, operating and processing the output of the AI system, falls short of being ‘the actual deviser of the invention’ according to the prevailing interpretation of section 7(3) of Patents Act (PA) 1977.

At present it is not possible to obtain a UK patent in the absence of a human being who is the ‘actual deviser of the invention’.

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Question 3: Should patent law allow AI to be identified as the sole or joint inventor?

We see no need to identify an AI system as an inventor. Rather, we suggest patent law should allow patenting of an invention in the situation contemplated in our answer to Question 2(c), in particular in a case where human involvement in the invention falls short of being the ‘actual deviser of the invention’ due to a significant contribution from an AI system. To address this situation, section 7(3) PA 1977 could be amended to specify that the person responsible for the output from the AI system which provides this contribution should be regarded as an inventor.

Note that once a human has been identified as an inventor in this manner, other issues such as ownership can then be determined in accordance with existing law and practice. (This approach is somewhat analogous to the provision of section 9(3) of CDPA 1988 regarding the authorship of machine-generated works).

It is important that UK law remains consistent with international obligations and practice. We believe that the above suggestion satisfies this requirement, since the determination of inventorship is a matter of national law. In addition, many other jurisdictions do not have the ‘actual deviser’ definition of section 7(3), hence their starting position is different from the UK. To date, approaches in different countries have generally resulted in consistent practice, but this may be challenged as Type 3 AI inventions become more common. It is important for applicants to maintain as much consistency as possible.

Please note the above suggestion for a change to section 7(3) PA 1977 is by way of principle and is not intended to be a proposal for specific statutory language.

The exact wording would require further consideration and review to ensure that the consequences are fully understood, including confirmation there is no inconsistency with UK international commitments.

A variation on the above suggestion

would be for the person responsible for the output from the AI system to be denoted as the first owner (rather than as inventor). However, this approach may lead to a situation where no inventor is defined, which is more likely to cause a problem with international law and practice.

An alternative view has been expressed in CIPA that we should defer any legislative change because at present there is always a human inventor (or it can be accepted that without a human inventor no patent can be obtained), and/ or it would be better to wait for a more harmonised approach to be adopted. As noted above, CIPA strongly supports harmonisation in general, and the proposed change to section 7(3) could in fact provide closer alignment with other jurisdictions which do not have the same ‘actual deviser’ definition of an inventor.

In addition, if an agreed international approach is subsequently forthcoming (which does not seem to be imminent), further change is not precluded to align with this international approach.

An advantage of the proposed change to section 7(3) is to provide greater legal certainty now in respect of the ownership and validity of a patent for an invention having a significant contribution from an AI system (see our answer to Question 4 below).

Question 4: If AI cannot be credited as inventor, will this discourage future inventions being protected by patents?

As in our answer to Question 3, we do not propose that AI is ‘credited’ as an inventor. Rather we suggest that a person is regarded as an inventor if they are responsible for the output from an AI system which provides a significant contribution to an invention.

We see three problems under the current situation if an AI system makes a significant contribution to an invention.

1. If there is no human who can be regarded as the ‘deviser of an invention’ (because of the contribution of the AI system), then a patent cannot be

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granted since no human inventor is identified. This may, in turn, discourage further research and development using an AI system because the results are not protectable by patenting.

2. Some parties may identify a person as inventor to provide a basis for a patenting even though there may be some uncertainty whether the contribution of this person satisfies the current legal requirements for inventorship of section 7(3). This could potentially cause a problem downstream, for example in relation to doubt over the ownership and validity of the patent.

3. A proprietor may downplay in a patent the contribution of an AI system to an invention (to avoid suggestion that a human is not the actual deviser); however, this may then reduce the accuracy and value of information provided to the public by publication of the patent application.

Would this impact on innovation developed using AI? Yes – a company might be concerned that using an AI system for research and development might prevent a patent being obtained for the results, as per problem (1) above, or that the validity of such a patent might be placed in doubt, as per problem (2) above. In these circumstances, the company might choose not to use the AI system for the research and development (or they might choose not to perform the research and development at all). For example, a pharmaceutical company may be reluctant to use an AI system for the development of a new drug if this might compromise the patent protection available for the new drug, and this reluctance may slow the pace and increase the cost of development.

Would there be an impact if inventions were kept confidential rather than made public through the patent system?

Yes – there will be a reduction in knowledge sharing. In addition, the use of 12

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confidentiality by itself may be impossible in some situations, e.g. if the resulting invention is inherently disclosed when a product is placed on the market, such that there would be no effective IP protection for the invention. Even where the use of confidentiality is feasible, it may still be less effective than using a patent, e.g. for a start-up seeking investment based on its IP. Question 5: Is there a moral case for recognising AI as an inventor in a patent?

No – we do not see a moral case for recognising an AI system as an inventor in a patent (and this would not occur under our suggested approach in response to Question 3).

Question 6: If AI was named as sole or joint inventor of a patented invention, who or what should be entitled to own the patent?

We do not recommend identifying an AI system as an inventor. Instead, we refer to our answers to Questions 2 and 3 above. Once an identification of a human inventor has been performed, ownership would follow in accordance with existing legal frameworks.

(We note that an AI system has no legal personality and so cannot be the legal owner of an invention. Crediting an AI as an ‘inventor’ would therefore not solve the problem of identifying first and subsequent ownership of the invention).

Question 7: Does current law or practice cause problems for the grant of patents for AI inventions in the UK? Yes – we see problems in particular in relation to Type 1 and Type 3 inventions (see our definitions above).

Type 1: current UK practice often leads to this type of invention being rejected as excluded subject matter, namely as a computer program as such. We think this approach is inconsistent with how AI is seen in the wider world outside patents – AI is regarded as an integral part of modern technology and is developed by people with high levels of technical

training and expertise in order to solve complex technical problems. We think Type 1 inventions generally make a technical contribution and hence should be patentable based on current law and decisions. This situation might be addressed, for example, by providing updated guidelines.

(For completeness, we note that the EPO sometimes rejects Type 1 inventions as a different form of excluded subject matter, namely as a mathematical method as such. Again, we think Type 1 inventions generally make a technical contribution and hence should be patentable).

Type 3: see our answers to Questions 2-4 above.

Question 8: Could there be patentability issues in the future as AI technology develops?

We think any discussion of the future development of AI technology is necessarily somewhat speculative and we make no further comment.

Question 9: How difficult is it to secure patent protection for AI inventions because of the list of excluded categories in UK law?

It can be difficult to obtain patent protection for Type 1 AI inventions – see our answer to Question 7 above.

It is also difficult to obtain patent protection for Type 2 AI inventions that use AI as a tool for a purpose deemed to be non-technical (such as predicting share prices). However, we do not see this as an AI-specific issue or as a cause for concern. There is increasing international acceptance that a technical purpose or contribution is key to patentability for subject matter that would otherwise be excluded from patent protection and we support the status quo in this respect.

Where should the line be drawn here to best stimulate AI innovation?

We recommend a change in approach to the treatment of Type 1 AI inventions, since these relate directly to

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core AI technology as per our answer to Question 7 above. Furthermore, we think this change does not have to involve amendment of the law itself. Thus at present, the IPO tends to reject Type 1 AI inventions for being a computer program as such. It has already been noted in the Gower Review that the IPO applies the computer program exclusion more broadly than the EPO (although the law is the same). A narrower interpretation of this exclusion, more aligned with the EPO approach, would facilitate the patentability of Type 1 inventions.

As noted in our response to Question 7, the EPO has developed a relatively recent practice of rejecting some Type 1 AI inventions for being a mathematical method as such. See our answer to Question 7 for our view on this practice.

More generally, we emphasise that AI systems are part of technology, and hence enhancements of such systems, even if implemented using a computer program and/or mathematical algorithm, should be patentable under existing legal provisions as representing the development of technology (article 27 WTO TRIPS).

We recommend maintaining the existing treatment of Type 2 AI inventions regarding technical and non-technical subject matter, thereby retaining alignment with the broader treatment of computer-implemented inventions. However, we emphasise that this existing approach should not prevent the patenting of inventions directed to a specific improvement of an AI system or the use of such an AI system, even if the ultimate objective of such improvement is to support an application having a nontechnical purpose.

We also note that there is some uncertainty at present regarding the treatment of simulations and other inventions with a ‘virtual’ technical effect, pending the outcome of G1/19 from the EPO Enlarged Board of Appeal.

This uncertainty extends to various potential uses of AI systems. We believe that patentability should be maintained for inventions having such a ‘virtual’ Volume 50, number 1-2

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technical effect providing they are performed for a technical purpose.

Question 10: Do restrictions on the availability of patent rights cause problems for ethical oversight of AI inventions?

We think such ethical oversight is more properly the responsibility of regulators and they should have the relevant power necessary to provide such oversight (this would be separate from the patent system – for example analogous to the regulatory regime for medical devices).

We also note that ethical problems are often viewed as non-technical, for example in relation to the right to be forgotten, improving fairness, etc.

This may reduce the incentive for the development of AI solutions in this area, although we emphasise that any underlying technological innovation should be patentable. For further discussion, see https://information.patentepi. org/issue-4-2018/technical-problems-in-aiinventions-in-the-light-of- the-guidelines-forexamination-in-the-epo.html Question 11: Does the requirement for a patent to provide enough detail to allow a skilled person to perform an invention pose problems for AI inventions?

It is generally feasible for a patent application for an invention involving AI (e.g. a Type 2 invention) to include enough detail to allow a skilled person to perform the invention. The specific information to be included depends on the particular nature and use of the AI system for the invention. In some cases, it may be more difficult for a patent application involving AI to include appropriate detail for a skilled person to perform the claimed invention, but this is also the situation for patents relating to other complex technologies and is not specific to AI. One aspect of inventions involving AI which may be different compared with other fields of computing is the potential desire of an applicant to submit a significant amount of data, for example, a large training set and/or a specification

of machine connection weightings. We think there are various ways to address this issue, such as by the introduction of a deposit system (see our answer below).

Is it clear how much information would be sufficient for a skilled person to be able to work the invention?

Yes – for example, at a practical level, there is extensive academic literature relating to AI technology and this represents one benchmark for the level of information to allow a skilled person to understand of developments in this field. In addition, there is already substantial UK and European case law relating to sufficiency, and this case law is generally applicable to AI inventions for determining how much information should be included in a patent application to meet the requirement of sufficiency.

There may be challenges for patent offices and courts when considering evidence of the capabilities of AI systems that were available to a skilled person at a specific point in time, but the legal framework for this is in place.

Could there be uncertainty knowing when an AI could be obtained by a skilled person to achieve the specific purpose of a patent claim and when an AI would need to be specified in a patent application?

If an AI invention utilises a standard off-the-shelf AI system (e.g. TensorFlow) that is readily available to a skilled person, a patent application might only need to reference this AI system. In contrast, if an AI invention utilises a bespoke or customised AI system, then more details about the AI system might need to be specified in a patent application. We think this is generally in line with how other computer-implemented inventions are handled, and we do not see any major uncertainty in this regard.

What are the consequences if the details of AI algorithms need to be disclosed?

The consequences are that the applicant has the ability to obtain a patent and the public receives information about

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COPYRIGHT Question 1: Do you agree with the above description of how AI may use copyright works and databases, when infringement takes place and which exceptions apply? Are there other technical and legal aspects that need to be considered?

We broadly agree with the description in the consultation document, however, we think the use by an AI system of third-party copyright materials is more complex than indicated in the consultation.

As an example, we consider an AI system which is being trained to produce an image in the style of a given artist. The AI system may first download from the web other images made by that artist and extract features from these images, e.g. (convolutional) filtered versions of the images, histograms of colour palettes, and so on. The extracted features are then used to train the AI system, whereby the internal weights/connections of the AI system are updated to learn and represent the style of the given artist.

If we consider that making an image available over the web implicitly authorises downloading and viewing of the image, then (depending upon implementation) training the AI system may not involve making any further copy of the downloaded image (beyond the original download).

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It is unclear whether feature extraction would represent copying of a substantial portion of the image (this may depend on the particular selection of features). It seems less likely that updating the internal weights/connections of the AI system would represent a substantial portion of the downloaded image.

In summary, this seems to be a complex situation and greater clarity would be helpful – e.g. in relation to what represents a substantial portion of a copyright work in the context of feature extraction.

Question 2: Is there a need for greater clarity about who is liable when an AI infringes copyright?

We think in the case where an AI infringes copyright, it would typically be the operator who is liable. We recommend that such infringement be considered under the general law of tort, rather than creating some new provision specific to IP. Question 3: Is there a need to clarify existing exceptions, to create new ones, or to promote licensing, in order to support the use of copyright works

by AI systems? Please provide any evidence to justify this.

We think consideration should be given to providing greater certainty, e.g. in relation to the situation discussed in our answer to Question 1. This may result in a clarification of existing legislation or the creation of new exceptions.

Question 4: Is there a need to provide additional protection for copyright or database owners whose works are used

by AI systems? Please provide any evidence to justify this.

As discussed above in our answer to Question 1, there is a need to provide additional clarity on how the existing legislation is applied in the context of

AI systems. The answer to whether additional protection is needed may depend on the result of such clarification.

Question 5: Should content generated by artificial intelligence be eligible for protection by copyright or related rights?

We think the existing provision for computer-generated works according to section 9(3) CDPA 1988 should (and indeed does) apply to content generated by an AI system.

Question 6: If so, what form should this protection take, who should benefit from it, and how long should it last?

This protection would be in line with current legislation in view of our answer to Question 5.

Question 7: Do other issues need to be considered in relation to content produced by AI systems?

We do not have any other specific issues to raise.

Question 8: Does copyright provide adequate protection for software which implements artificial intelligence?

We think the existing copyright system, in conjunction with other IP rights such as patents and trade secrets, provides suitable protection for software which implements AI. Question 9: Does copyright or copyright licensing create any unreasonable obstacles to the use of AI software?

We are not aware of any such obstacles.

We note that various AI software is readily available under an open source licence – e.g. TensorFlow is available under the Apache licence, which is generally considered to be a permissive licence with relatively few restrictions.

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the relevant AI algorithms. Of course, inventors have a choice as to whether their commercial interest is be best served by using the patent system or by maintaining confidentially (e.g. as a trade secret) and can then act accordingly. Again, we think this is generally in line with how other computer-implemented inventions are handled, and we do not see any particular issue in this regard.

Could there be a need to disclose more than a basic trained AI model, for example training data or the coefficient or weight of the model?

Yes – such a need might exist in some cases, for example if an invention directly relates to the selection, curation or configuration of the training data.

Likewise, model weights of an AI model might be used to clearly disclose how to achieve the desired functionality of the AI model. Again, we think this is generally in line with how other computerimplemented inventions are handled, and we do not see any particular issue in this regard.

If yes, is it clear how much information would be sufficient for a skilled person to be able to work the invention? Are special provisions needed for this information to be filed and stored?

Yes, it is clear – see our answers above to the first two parts of Question 11.

In practical terms, there might be some benefit in having a deposit system available for training data and suchlike. We emphasise that this would be to facilitate voluntary submission of such training data, where the applicant believes such data to be helpful for the obtaining a patent.

As an alternative to a formal deposit system, the IPO could facilitate the inclusion of relevant data in an application, for example by specifying an appropriate format. In addition, the IPO could make such data readily available to third parties in a usable format (rather than just say PDF). An appropriate provision should be made regarding filing additional data in the specified format Volume 50, number 1-2

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vis-à-vis page fees; in particular, if the training data submission is very large, this should not lead to very high page fees being required. Harmonisation of any such practise and capabilities across different patent offices would be very desirable.

What would be the effect if competitors could use data to quickly train a different AI model?

If a patent application discloses training data used for a first AI model, and this training data could also be used to train a second AI model and thereby produce the same effect and benefits as obtained with the first AI model, it appears reasonable for the inventor to be allowed claims that are broad enough to cover both the first and second AI models. This determination of appropriate claim scope follows existing principles of the patent system and these can also be applied to AI systems.

How would the skilled person know whether the invention could be repeated across the breadth of the patent claims or whether a claimed result could be achieved?

The content of a patent application should provide support for the breadth of claims.

For example, a patent application might show that a given result can be achieved across multiple sets of standard test data.

Another possibility would be to show that a given result can be achieved with a range of different designs for the AI model and/or for different training sets.

In addition, a skilled person is able to test an AI invention across the breadth of the claims to see whether or not the claimed result is reliably achieved. Again, this determination of appropriate claim scope follows existing principles of the patent system and these can also be applied to AI inventions.

Additional Comments We do recognise that there are some practical challenges in handling AI inventions within the patent system. By way of example, some AI systems may

be trained using a stochastic (random) process which may produce a variety of results, and only a small proportion of AI systems trained in this manner might provide a desired (positive) outcome.

We think such issues can generally be addressed using standard criteria to assess appropriate claim scope based on support, sufficiency, and range of inventive effect. In some cases, it may not be straightforward to perform such an assessment, but this is again true in some other fields of technology.

Question 12: In the future could there be reasons for the law to provide sufficient detail of an AI invention for societal reasons that go beyond the current purposes of patent law?

Yes – there could be such reasons outside patent law, for example in a regulatory context. However, akin to our answer to Question 10, we see such reasons as forming part of a regulatory environment separate from the IP system and they should not lead to placing any additional requirement on the content of a patent application itself.

Question 13: Does or will AI challenge the level of inventive step required to obtain a patent? If yes, can this challenge be accommodated by current patent law?

Inventive step is determined with reference to a person skilled in the art. In line with existing practice, a person skilled in the art would be expected to use readily available tools and an AI system would be such a tool. The capabilities of this AI system and the nature of its use (and hence the outcomes that might be expected) should be assessed by looking at standard practice in the relevant field. Accordingly, we think AI can be accommodated within the current approach to (and level of) inventive step.

See also our answer to Question 11 in relation to claim scope.

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DESIGNS Question 1: Do you agree with the analysis above which concludes that it is not possible for AI to be the author or owner of a UK or Community design?

Yes Question 2: Are there, or could there be, any tensions with the current legislation when seeking to register a design or be recognised as the owner of an AI-created design? Who would be the legal entity applying for the rights?

We think an AI-created design should clearly be treated as generated by a computer and hence the author would be determined in accordance with section 2(4) RDA and section 214(2) CDPA. Question 3: Who should be recognised as the author of a design created by AI where the system has been bought from a supplier, and the buyer has provided input or data to the system? Does the wording of legislation need to be changed?

We think the identification of the author according to the current legislation is appropriate and at present we are not aware of any reason to make a change.

We also note that contractual provisions between parties are already widely used to control ownership of designs (and IP in general), for example when commissioning a design, and such contractual provisions can also be used in relation to designs created by AI systems where so desired.

Question 4: Do you consider that legislation should be changed to allow AI systems to be recognised as the author of a registered design or designer of an unregistered design?

No – we see no benefit in this.

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Question 5: If so, how should we assess when AI stops being a tool programmed by a human and becomes an intelligent entity capable of producing its own IP? What proof or evidence would be required?

N/A given our answer to Question 4.

Question 6: Unlike UK domestic legislation, the CDR has no provisions relating specifically to computergenerated designs. Does this result in legal uncertainty in relation to authorship and ownership of computer-generated designs? Would the same apply to AI-generated designs?

We think this could lead to uncertainty regarding the registerability and then subsequent validity of a design where this is no human authorship and also regarding the ownership of such a design. This uncertainty would apply to both computer-generated designs and also to AI-generated designs (which we see as a subset of the former).

Question 7: Are there any other issues in relation to the CDR which we should consider in relation to AI? We are not aware of any other issues.

Question 8: Can the actions of AI infringe a registered or unregistered design? Can AI do the acts set out in law?

By way of example, an online ordering system might use an AI system to develop and control a user interface (UI) provided to users. For example, the AI system may generates slight modifications of the UI and adopt those modifications for which customers are found to place orders more quickly.

Such an online ordering system might also use the AI system to create a design for a particular product (e.g. a teapot) and then to advertise and sell online the product according to this design.

In the above example, the modified UI or product design generated by the AI system could potentially alter fall within the scope of a registered design. If the actions of the AI system had been performed by a person, that person would infringe the registered design. However, since the AI system is not itself a legal entity, we do not think the AI system per se could infringe the registered design – rather the infringer might typically be the operator of the AI system. We think such infringement should be considered under the general law of tort, rather than creating some new provision specific to IP. Question 9: When considering infringement are there, or could there be, any difficulties applying existing legal concepts in the registered designs framework to AI technology?

Does AI affect the use of the ‘informed user’ in measuring overall impression?

As long as a significant proportion of purchasers are still human for a particular product or design (which we think is likely for the foreseeable future), it seems appropriate to retain the existing human-based standard for the ‘informed user’.

Question 10: If AI can infringe a registered design, who should be liable for the infringement? Should it be the owner, the programmer, the coder, the trainer, the operator, the provider of training data, or some other party?

As per our answer to question 8, we think this would typically be the operator, depending on the particular circumstances. We recommend that such infringement be considered under the general law of tort, rather than creating some new provision specific to IP.

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ARTIFICIAL INTELLIGENCE

Question 14: Should we extend the concept of ‘the person skilled in the art’ to ‘the machine trained in the art’?

We think the person skilled in the art should remain a human. As noted in our answer to Question 13, such a person would be expected to use relevant tools, an AI system being an example of such a tool. The capabilities of this AI system and the nature of its use (and hence the outcomes that might be expected) would be assessed by looking at standard practice in the relevant field.

Question 15: Who is liable when AI infringes a patent, particularly when this action could not have been predicted by a human?

We think this issue is part of a broader question regarding AI and the general law of tort and should be handled at this more general level (rather than at the specific level of the IP-rights system).

Question 16: Could there be problems proving patent infringement by AI? If yes, can you estimate the size and the impacts of the problem?

There is a wide range of inventions involving AI. It may be difficult in practice to show patent infringement in respect of some AI inventions, depending upon the precise nature and use of any given AI invention.

This same issue exists in many other fields of computing (e.g. remote server operation; low-level code processing), as well as in other areas of technology (e.g. manufacturing processes). Industry has already developed approaches to mitigate this problem, such as drafting claims with specific regard to the ability to show infringement and the use of legal procedures such as disclosure.

We don’t have an estimate of the size of the problem, but it will not be relevant for all inventions involving AI. For those where it may be relevant, we regard the impact as manageable (in the same way it is for other areas of computing).

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TRADE SECRETS Question 1: Is trade secret protection important for the AI sector? Does the nature of AI technologies and business influence your answer?

Yes. The importance depends on various factors, such as:

• No patent protection is available for legal reasons – e.g. non-technical/ excluded subject matter.

• It is difficult to detect infringement or otherwise enforce the patent – e.g. a potentially infringing system is likely to be inaccessible behind a cloud server or sited offshore in a remote jurisdiction.

• A lot of effort for developing the AI system relates to aspects which might not be inventive per se, e.g. transforming a training data set previously used with an older AI system from an old format to an updated format for input to a new AI system.

The presence of the factors in the above following examples would tend to increase the importance of trade secrets.

Conversely, trade secrets might have little or no role if the AI system is used

to create a product which is marketed to consumers and so accessible for public inspection.

In addition, AI systems are often considered to have a ‘black box’ nature, i.e. it can be difficult to understand how or why a specific input produces a specific output. Trade secrets in the form of user experience and know-how may be important in obtaining the best performance from such systems.

Question 2: Does AI impact UK trade secret law? Does UK trade secret law give adequate protection to aspects of AI technology where no other intellectual property rights are available?

We are not aware of any direct impact of AI on UK trade secret law (rather than vice versa). Possibly the nature and form of AI systems may make it harder to identify specific information which is protected as a trade secret, but in general, we think UK trade secret law does give adequate protection to AI technology.

We see different forms of IP protection as complementary rather than necessarily as alternatives. Thus trade secrets might be used in conjunction with copyright and/or patents to protect an AI system – this is already common practice in the computing sector.

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CONSULTATION

ARTIFICIAL INTELLIGENCE

Question 2: Are there or could there be any difficulties with applying the existing legal concepts in trade mark law to AI technology?

Yes, there might potentially be some difficulties – see our answers to the questions below.

TRADE MARKS Question 1: If AI technology becomes a primary purchaser of products, what impact could this have on trade mark law?

By way of example, an AI system might be used to select and buy gifts for a particular recipient by searching the web to locate product reviews, pricing, functionality, and some form of matching between the ‘personality’ of the product brand and the intended recipient.

A competent AI system should be less likely to be confused than a human – e.g. there is no imperfect recollection, an AI system can be sensitive to small changes at the end of a word, unlike a human, and so on.

It is not impossible that a less competent AI system might be more easily confused in some respects than a human. For example, a wellknown brand might be represented by a particular image of a dog. A third party might deliberately market itself using another image of a dog which to a human is quite different from the brand image, however, the AI system might just treat them both as dogs and so confuse the two brands. This might be better regarded as a shortcoming of the AI system rather than an issue under trade mark law.

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Question 3: Does AI affect the concept of the ‘average consumer’ in measuring likelihood of confusion?

As per question 1, it is expected that an AI system will have a different (hopefully reduced) likelihood of confusion compared to an average human consumer. In theory this might support the co-existence of marks that currently would be regarded as confusingly similar.

However, as long as a significant proportion of purchasers are still human for a particular product or brand (which we think is likely for the foreseeable future), it seems appropriate to retain the existing human standard for the ‘average consumer’.

Question 4: What is the impact of AI on the drafting of section 10? Can AI ‘use in the course of business’ a sign which may be confusingly similar or identical to a trade mark?

Yes – see our answer to Question 5 below for an example of an AI system using a sign which might be confusingly similar to a trade mark.

Whether this is ‘in the course of business’ would generally have to be determined with reference to a legal person (human or company) responsible for operating the AI system.

Question 5: Can the actions of AI infringe a trade mark?

The actions of an AI system could potentially lead to infringement of a trade mark. For example, an AI system may generate different versions of

a slogan to advertise a product, the AI system being trained to enhance the slogan based on those versions which produce the best response. This training may lead the AI system to create and use (e.g. by placing adverts on the Internet) a slogan which ends up being confusing similar to an existing third-party trade mark.

Since the AI system is not a legal entity, it cannot be liable itself for the trade mark infringement, rather this liability would fall on some legal person (human or company) responsible for operating the AI system. We think this should be considered under the general law of tort rather than specific provisions for IP. Question 6: If AI can cause trade mark infringement, does this shift who could be liable? Should it be the owner, the operator, the programmer, the trainer, the provider of training data, or some other party?

As per our answer to question 5, an AI system is not a legal entity, so cannot be liable itself for trade mark infringement. Rather, liability would fall on some legal person (human or company) responsible for operating the AI system. We think this should be considered under the general law of tort rather than specific provisions for IP and may be dependent on particular details of a given AI system (including how it was developed and trained).

It is also possible that contractual provisions between the different parties such as the supplier and the operator may be relevant.

It seems conceivable that ‘in the course of business’ might be determined with respect to one party while the ultimate liability for any trade mark infringement might fall (at least in part) on a different party.

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Question 3: What are the advantages and disadvantages of using trade secrets in the AI sector? Could information that is not shared inhibit AI development?

The advantages of using trade secrets include:

• no cost; • immediately and automatically acquired; • available for items that are not suited to patent protection, e.g. non-technical material such as a collection of training data relating to stock market prices; • good for protecting a collection of details which individually are not worthy of patent protection, but collectively can bestow competitive advantage; and • no public disclosure to competitors (as would happen with an 18-month patent publication).

Disadvantages of using trade secrets include:

• not suitable if commercialisation necessarily involves disclosure to the public (such as by marketing a product); • licensing and supporting investment may be harder than for registered

ARTIFICIAL INTELLIGENCE

rights (since the scope of the trade secrets is less certain and potentially more fragile); • not effective against third-party creation; • limited effectiveness in relation to employees leaving with knowledge; and • may be harder to obtain public recognition of technological expertise.

Note that the above advantages/ disadvantages apply to computing technologies in general and also across other industry sectors. Thus the situation with AI is not very different from existing computer technologies.

Many AI systems (and also many computing systems in general) are likely to rely on at least some trade secrets protection, and this may be supplemented as appropriate by the use of patent and/or design protection according to the particular circumstances.

In terms of not sharing information, this could potentially hinder AI development because third parties are excluded from knowledge that could help them develop their own AI system. On the other hand, not sharing information (e.g. with potential

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competitors) could help to protect investment in the development of AI systems, and therefore encourage greater investment and development.

We think the existing IP system provides a reasonable balance between the above considerations for the computing industry in general, and this balance should apply also to AI development.

Question 4: Do trade secrets cause problems for the ethical oversight of AI inventions?

Potentially yes. For example, if an AI system is used to screen people, e.g. as part of a credit check or a job selection process, there is a concern the AI system might incorporate a subtle bias, e.g. relating to gender, ethnicity, and so on. If the details of the AI system are subject to trade secret protection, it may be more difficult for users and other interested parties to determine whether or not the system is free from bias. Another example might be in trying to assess the safety of an AI system used to control a driverless car – if the details of the AI system are subject to trade secret protection, it may be more difficult to make a reliable assessment.

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

December 2020 / Volume 49 / Number 12

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Diversity Practical steps to improve BAME representation in the IP sector

CRISPR priority – legal certainty at the EPO George Schlich

Changes to UK SPC law in 2021 Life Sciences Committee

Keeping your social life alive in lockdown Lindsay Pike

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Oral proceedings via video at the EPO Consultation

Recent decisions Yellow Sheet Case reports Meet the team 17/12/2020 11:04:10

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ARTICLE

Faith at work Colin Bailey challenges us all to engage with the subject of culture and belief in the workplace.

FAITH AT WORK

B

ecause I have a habit of saying ‘Yes!’ to every opportunity, I recently agreed to speak at an event organised by IP Inclusive centred around culture and belief in the workplace (and then to contribute this article on the event). The workshop was an eye-opener for a number of reasons.

First of all, I was surprised to find so many people in attendance. I genuinely didn’t think that so many people were interested in the topic.

Second, I was cheered by the number and nature of the questions being asked. Many of these seemed to have a common theme: ‘What more can we do in our workplaces to accommodate people’s various different faiths?’

My own experience

Around 15 years ago, I converted to Islam while at university.

Since then, I have gone on to study the Arabic language (becoming fluent) in various countries across the Middle East and Africa. I have also spent some time learning the traditions of Islam. In my early years as a Muslim, I was under the impression that the beliefs, rituals, rules and prohibitions were well defined and had finite and clear boundaries, but during my travels my outlook changed completely. This has led to me adopting a tolerant stance on Islam (not to be confused with a lax approach).

The most important thing I learned was that the more you learn, the more you realise how little you know. Each country (or even each city) has its own take on things, and everyone’s opinion and viewpoint is valid.

As a senior member of the Marks & Clerk LLP IT team, my role sits between the technical side of the IT department and the business side of operations, so I interact with attorneys, formalities staff and the various IT teams. The opportunity to meet and get to know all sorts of people is something I particularly enjoy. I am a Muslim, and if asked I will state that as my religion and my belief. If there is something organised in the workplace that is focused on Islam, I will get involved with it. However, there can still be a bit of awkwardness around my faith.

For example, a colleague who only knows my name would not have the slightest clue that I’m a Muslim on that basis. This can lead to confusion if, for example, I tell them, ‘I can’t do lunch on Fridays because I go to pray’. Or, when invited to a pub-based social event, I reply that I don’t generally go to places with alcohol if I can avoid it, so I’ll give it a miss. This regularly prompts the question, ‘Why?’ Even for those who do know that I’m a Muslim, there seems to be some sort of unwritten rule that ‘We don’t talk about religion in the workplace’. Perhaps there is an actual rule out there that discourages religious discussion, but I’m more than happy to chat to anyone about anything! Even though colleagues might be concerned that they are crossing a line by discussing religion with me, I am more than open to doing so.

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Workplace worship

FAITH AT WORK

• fasting in Ramadan (which means no food or drink from sunrise to sunset for a month); • wearing the hijab (which should be accepted as part of a professional wardrobe); and • dietary restrictions (which can require specific catering at office events and may result in an inability to participate in social events organised around alcohol).

accommodations for people from a variety of backgrounds and with different beliefs and faiths. On a personal level, I have no expectation that my employer would cater especially for me, but I do feel positive and optimistic when an employer demonstrates a desire to engage. However, many Muslims simply won’t engage in a discussion about religion with their employer if they have to initiate that discussion.

Including a section on your internal intranet which addresses faith/religion in the workplace and which talks about any provisions that are in place would be a good starting point for countering this. Information on this subject could also be included in a handbook for new starters. In the IP Inclusive workshop, I suggested having a designated representative within every organisation who is the go-to person for a particular faith, and with whom other members of that faith could discuss how they deal with implementing their faith in their daily working life. For example, I’d be more than happy to be approached by other Muslims within Marks & Clerk to discuss topics such as where I go to pray, whether I attend certain social events and how I manage Ramadan fasting at the office.

This is, necessarily, just a small selection of my experiences and opinions, and the topic of the impact of faith, religion and beliefs on working life is a complex discussion. Yet hopefully this article will encourage everyone who reads it to extend their knowledge, express their own opinions and create more inclusive organisations that are better equipped to support those of any faith. Be the next to say yes!

Accommodating some of these needs can be tricky, and I fully appreciate the difficulties that organisations face in making

Colin Bailey is a senior analyst / developer at Marks & Clerk.

This article was first published in the CITMA Review.

Islam can also impose a number of outward practicalities that come along with its inward beliefs. These may be rituals that are required or prohibitions related to things that we are encouraged to avoid. For example, as well as being strongly encouraged to attend prayers at lunchtimes on Fridays, my particular faith also requires me to pray five times at various points throughout the day (others may have different requirements). In the summer, this means just one prayer during normal work hours, but in winter this increases to three as the hours of daylight draw in. For those who are fortunate enough to have an allocated area for prayer, following this practice would mean three visits in an afternoon (at a stretch, you can do two during normal lunch hours), each of which typically lasts between five and ten minutes. With many employers, this may be something that requires a bit of negotiation, but my experience has been that most organisations are accommodating and appreciate openness on the subject.

A few more examples of aspects of Islam that can have an impact on working life are:

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US UPDATE

ARTHREX

Update on Arthrex

The US Supreme Court will decide if Patent Trial and Appeal Board judges are constitutional. By Emily Gabranski and Tim McAnulty.

W

e recently discussed the Federal Circuit’s decision in Arthrex, Inc. v Smith & Nephew, Inc.,1 and the constitutional question concerning the appointment of the administrative patent judges (APJs) who hear all Patent Trial and Appeal Board (PTAB) trials.2 The original panel decided Arthrex in November 2019 and found the judges to be improperly appointed, struck a portion of the America Invents Act (AIA) statutory framework to correct the issue, and remanded the case to the PTAB for rehearing (with a now properly appointed panel of APJs).3 During the appeal, the US Patent and Trademark Office (USPTO) intervened in support of the propriety of the APJs both before the remedy prescribed in Arthex and afterward.4 All parties sought en banc review.5 And in March 2020, the Federal Circuit denied those requests.6 Arthrex created a flurry of activity. The panel’s remedy7 was automatic, applied to all future PTAB decisions, and was considered to provide competent authority to the APJs to render final written decisions. The panel’s remedy was structured to correct a defect in the AIA statutory scheme and effectively change APJs from ‘principle officers,’ who must be appointed by the President with advice and consent of the Senate, to ‘inferior officers’, who can be appointed by a department head.8 Thus, any PTAB decision that came after the original panel’s decision (and remedy) would be constitutional and proper.9 Because constitutional challenges can be forfeited, PTAB decisions that issued before Arthrex, where neither party raised the propriety of the APJs on appeal, i.e., did not raise an Appointments Clause challenge, were generally unaffected.10 This left a discrete set of cases – PTAB decisions where the constitutional question was raised (or could be raised) on appeal.

And these cases generally fit into three categories: 1. cases that raised the issue in opening briefing on appeal or before briefing began;

2. cases that raised the issue soon after Arthrex was decided; and 3. cases that never raised the issue during briefing.

The Federal Circuit generally vacated and remanded appeals when a party (typically the patent owner) raised an Appointments Clause challenge in an opening brief or by motion before any briefs were filed.11 However, the Court often denied Arthrex relief (vacate and remand for new hearing) if a party did not raise an appointments challenge in its principle briefing. These decisions generally followed the Court’s procedural rule holding arguments that a party does not raise in its principle brief to be waived.12 Shortly after Arthrex, another Federal Circuit panel limited the availability of Appointments Clause challenges to just patent owners, finding the challenge to be forfeited by petitioners who afforded themselves to the forum and only took issue with the propriety of it after receiving an adverse decision.13 While that decision was originally designated non-precedential, the USPTO petitioned the Federal Circuit to redesignate it as precedential, which the Court did.14 Thus, while the Federal Circuit limited the applicability of Arthrex through various decisions, a substantial number of cases were nonetheless affected. For each of these cases, the Federal Circuit vacated the PTAB’s original decision and remanded the case for a new hearing and decision (by a properly appointed panel of APJs). To date the PTAB has not acted on any Arthrex-remanded case. And in May 2020, it issued a General Order holding each Arthrex-remanded cases in abeyance until the Supreme Court weighed in on the issue.15 All parties in Arthrex filed petitions for certiorari, and on 13 October 2020, the Supreme Court granted certiorari for all three petitions, consolidated them, and specified the questions it would review.

The US government filed its petition first. It asked the Supreme Court to consider whether APJs are principle or

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inferior officers and whether Arthrex forfeited its Appointments Clause challenge because the issue was not raised before the PTAB,16 such that the Federal Circuit erred in reaching the Appointments Clause challenge on appeal.17 Smith & Nephew filed its petition second. Like the government, it asked the Supreme Court to decide if APJs are principle or inferior officers but did not raise the question about forfeiture.18 Arthrex filed its petition third. It agreed with the Federal Circuit’s determination that APJs are principle officers but asked the Supreme Court to consider whether the Federal Circuit’s remedy (striking the statutory provision of the AIA limiting the ability of the Director to remove AJPs) was consistent with Congressional intent, the AIA, and if it was sufficient to make the APJs inferior officers.19 The Supreme Court granted the three petitions, consolidated them, and limited the issues on appeal to two specific questions: 1. Whether, for purposes of the Appointments Clause, US Const. Art. II, §2, Cl. 2, administrative patent judges of the US Patent and Trademark Office are principle

Notes and references 1. 941 F.3d 1320 (Fed. Cir. 2019).

2. For a detailed review of Arthrex and its progeny, see Emily Gabranski and Tim McAnulty, US Update: Patents and debating their place in the US constitution, June [2020] CIPA 19.

3. Arthrex, 941 F.3d at 1338.

4. See id.

5. 953 F.3d 760 (Fed. Cir. 2020).

6. Id. 7. The panel’s remedy was striking a provision from the AIA that limited the ability to remove APJs. Arthrex, 941 F.3d at 1338.

With that correction, the APJs were considered properly appointed. Id. 8. The panel’s remedy struck 5 U.S.C. § 7513(a), which states that an APJ could only be removed ‘for such cause as will promote the efficiency of the service’, which requires a nexus between the misconduct of the work of the agency. The statute also provides procedural requirements, including 30 days’ advanced written notice of removal, an opportunity to respond to that notice, and representation by an attorney. The panel found these limits on removal to be inconsistent with a status of ‘inferior officers’. See Arthrex, 941 F.3d at 1338.

9. Id. 10. See id. at 1340.

11. See, e.g., Bedgear v Fredman Bros. Furniture, 783 Fed. Appx. 1029 (Fed. Cir. Nov. 7,

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officers who must be appointed by the President with the Senate’s advice and consent, or ‘inferior officers’ whose appointment Congress has permissibly vested in a department head.

2. Whether, if administrative patent judges are principle officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. 7513(a) to those judges.

The government raised these two questions in a memorandum submitted in response to Arthrex and Smith & Nephew filing separate petitions for certiorari.20 The government included a third question relating to whether the Federal Circuit properly reached the Appointments Clause issue in Arthrex when neither party raised it before the USPTO (i.e., its forfeiture question).21 But the Supreme Court did not grant review of that question.

There have been other petitions for certiorari in addition to Arthrex, including several petitions by the USPTO.22 On 9

2019) (vacated and remanded sua sponte after oral argument because patent owner raised the appointments clause challenge in its opening brief); see also, e.g., Concert Pharm., Inc. v Incyte Corp., No. 19-2011, ECF No. 39 (Fed. Cir. Jan. 24, 2020) (vacated and remanded on motion raising an appointments clause challenge before filing opening brief).

12. Customedia Techs. v Dish Network, 941 F.3d 1174 (Fed. Cir. Nov. 1, 2019) (denying a motion to vacate and remand in view of Arthrex when no appointments clause challenge was raised in principle brief).

13. Ciena Corp. v Oyster Optics, LLC, 814 Fed.Appx. 602 (Fed. Cir. 2019) (non-precedential).

14. Ciena Corp. v Oyster Optics, LLC, 958 F.3d 1157 (Fed. Cir. 2020).

15. See General Order in Cases Remanded Under Arthrex, Inc. v Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) (P.T.A.B., 1 May 2020) (holding over 100 cases in abeyance).

16. The Patent Office raised this issue before the Federal Circuit, but the panel found that Appointments Clause objections ‘could be considered on appeal even if not raised’ before the PTAB. Arthrex, 941 F.3d at 1326 (citing Supreme Court precedent).

17. Cert. Pet. No. 19-1434 (29 June 2020) (US Government Petition).

18. Cert. Pet. No. 19-1452 (29 June 2020) (Smith & Nephew Petition).

19. Cert. Pet. No. 19-1458 (30 June 2020) (Arthrex Petition).

20. See Memorandum for the United States, Pet. Nos. 19-1452, 1458, 1459 (22 July 2020).

21. See id.

22. See, e.g., Cert. Pet. Nos. 20-271, 20-273, 20-414, 20-92.

23. Cert. Pet. No. 19-1475 (8 July 2020).

24. See Cert. Pet. No. 20-314 (10 Sept. 2020).

25. Cert. Pet. No. 19-1459 (30 June 2020).

26. Polaris’s petition was distributed for Conference of 29 September 2020, and again distributed for Conference of 9 October 2020.

27. It is also worth noting that the US government’s memorandum also addressed Polaris’s petition 28. See Memorandum for the United States, Pet. Nos. 19-1452, 1458, 1459 (22 July 2020).

29. See id.

30. See Supreme Court Docket No. 19-1434 available at: https://www.supremecourt.gov/ docket/docketfiles/html/public/19-1434.html 31. See id.

32. See US Patent and Trademark Office PTAB statistics, available at www.uspto.gov/sites/default/files/documents/ trial_statistics_20200930.pdf (almost 1400 IPR petitions were filed between 1 September 2019 and 30 September 2020, with no apparent indication of a drop-off in filings).

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US UPDATE

November 2020, the Supreme Court denied Duke University’s petition, which argued that the Federal Circuit’s remedy in Arthrex was insufficient, and APJs are still improperly appointed.23 Duke University's procedural posture is somewhat different from the parties in Arthrex because Duke did not raise an Appointments Clause challenge in its opening brief before the Federal Circuit. This denial follows the Supreme Court’s denial of petitions from similarly situated parties. In a slight twist, the Supreme Court requested a responsive brief to RPM International’s petition.24 RPM successfully challenged a patent before the PTAB, but that decision was vacated and remanded in view of Arthrex on appeal before the Federal Circuit. While a responsive brief sometimes indicates the Supreme Court will grant certiorari, it is not a guarantee.

And there is another pending petition regarding the same general questions being addressed in the petitions from Arthrex. Around the same time the Arthrex petitions were filed, Polaris filed a separate petition stemming from its own appeal. Similar to Arthrex, Polaris asked the Supreme Court to consider whether the Federal Circuit’s remedy was available in view of Congressional intent and whether that remedy was enough to make the APJs inferior officers.25 Polaris’s petition was not consolidated with the petitions from Arthrex and remains pending.26 For now, it is unclear how the Supreme Court will handle this petition. Though, the questions Polaris raised do overlap with the questions raised by Arthrex, and the government discussed the Polaris petition in its memorandum.27 One difference to note between Polaris and Arthrex is that the Appointments Clause challenge was raised before the PTAB in

ARTHREX

Polaris when it was not in Arthrex.28 While the government did raise this specific question in its memorandum,29 the Supreme Court did not grant review of it.

The case is captioned United States v Arthrex, and the briefing schedule is staggered between the co-petitioners.

Primary briefing is complete with oral argument scheduled for 1 March 2021.30 As with most Supreme Court cases, amicus briefs in support of the various positions were also filed and included individuals, intellectual property organisations, industry groups, and a few corporations.31 While the questions presented are specific to patent law and the appointment of administrative patent judges, the questions have the potential to go beyond just the propriety of the AIA and the PTAB. Stay tuned as we continue to follow Arthrex and yet another challenge to the PTAB and its overall statutory scheme. For now, general practice before the PTAB will likely continue under the status quo of the Federal Circuit’s remedy – PTAB decisions before Arthrex with an Appointments Clause challenge forfeited or waived considered proper, PTAB decisions after Arthrex considered proper, and cases remanded to the USPTO in view of Arthrex held in abeyance. And while there may be uncertainty as to how the Supreme Court will resolve the Appointments Clause questions, and strategic considerations for petitioners and patent owners alike, there seems to be no slowdown in filings at the PTAB.32 Timothy P. McAnulty (Washington, DC) is a partner and Emily Gabranski (Boston) an associate at Finnegan.

See www.finnegan.com

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US UPDATE

JOINDER RULES

To Join or Not to Join?

Updates on joinder rules before the US Patent Trial and Appeal Board.

By Courtney Bolin and Tim McAnulty.

Joinder under section 315

Before the Patent Trial and Appeal Board (‘PTAB’ or ‘Board’), joinder is a procedure that permits a party to join an earlierfiled inter partes review (‘IPR’) proceeding.1 Under 35 U.S.C. §315(c), the Director of the United States Patent and Trademark Office (‘USPTO’) may join, to an instituted IPR, any person who properly files a petition that meets the requirements set out under 35 U.S.C. §311. Importantly, the one-year time bar for filing petitions after a party is sued for infringement (separately set by statute) does not apply to a request for joinder.2 Over the past few years, the scope of IPR joinder has been the subject of several (sometimes inconsistent) decisions from the PTAB. For example, in some cases, petitioners were successful in joining a previously-filed petition, and in some instances, petitioners were not.3 In 2018, the Precedential Opinion Panel (‘POP’) issued the Proppant opinion (which is binding on the PTAB) to address the inconsistent PTAB precedent.4 In Proppant, the POP held that a petitioner may be joined to a proceeding to which is it already a party, and that the PTAB has discretion to allow joinder of new issues to a proceeding.5 Recently, however, the Federal Circuit issued two opinions addressing joinder. In the first, the court directly discussed the POP decision in Proppant and limited the applicability of joinder. In the second, the court clarified the scope of estoppel that applies to a joined party. Both decisions affect strategies for petitioners and patent owners, especially when IPRs are filed in conjunction with parallel litigation and when patent owners bring infringement suits against multiple defendants – scenarios that are not uncommon in US practise.

Facebook v Windy City: Same-party and new issue joinder are not permitted under section 315(c) The scope of joinder was directly addressed in Facebook v Windy City, when the Federal Circuit held that the statute does not authorize same-party joinder or new issue joinder.6 Instead, the Federal Circuit explained that the statute is limited to joining a new party to an instituted (and pending) IPR proceeding. Thus, a petitioner that filed a first petition cannot file a second petition Volume 50, number 1-2

and ‘join’ the second petition to the first petition (i.e., no ‘sameparty’ joinder); nor can a new petitioner join a proceeding and introduce issues that were not raised in the original petition (i.e., no ‘new issue’ joinder). The Court also addressed the deference (if any) due to POP decisions (because of the Proppant opinion).7 While these decisions are precedential to the PTAB, the Court found that they do not carry deference beyond the USPTO.8 The situation that led to Windy City (and Facebook’s request to add new challenges to an existing petition) is not necessarily uncommon and highlights several considerations for both petitioners and patent owners. Windy City filed a district court complaint accusing Facebook of infringing four patents (which collectively contained 830 claims). By statute, this complaint started the one-year time bar for Facebook to timely petition for IPR. At the end of that one-year period, Facebook filed several petitions challenging certain claims of each of the asserted patents.

More than four months later (and after expiration of the oneyear bar), Windy City identified the claims it was asserting in the district court. Facebook had challenged some of those claims in the IPR petitions it filed, which the Board eventually instituted, but it did not challenge all of them.9 Because Facebook was time barred, it filed two new IPR petitions, challenging new claims, with motions to join them to two of its already-instituted petitions.10 Windy City opposed Facebook’s motions for joinder.

The Board instituted Facebook’s new petitions and joined them to its existing IPR proceedings.11 Ultimately, the Board found a number of Windy City’s patent claims unpatentable, including many claims, which were challenged only in Facebook’s new, joined IPR petitions.12 Both parties appealed – Windy City appealed the Board’s decision on joinder and findings of unpatentability, Facebook appealed the Board’s findings of patentability of some of the challenged claims.

This appeal has a somewhat unusual history while it was before the Federal Circuit. The panel originally issued a decision on 18 March 2020 (‘Facebook I’) and then reissued that decision on 4 September 2020 (‘Facebook II’) after a combined petition for panel rehearing and en banc rehearing.13 In the JANUARY-FEBRUARY 2021

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interim, the Supreme Court decided Thryv, Inc v Click-To-Call Technologies, LP, where it reaffirmed the general prohibition on appealing PTAB institution decisions, and held that general prohibition specifically applies to PTAB decisions regarding a petitioner’s one-year time bar.14 In Facebook I, the panel concluded that it had jurisdiction to hear the appeal.15 Facebook and the USPTO (which intervened at the request of the panel) argued otherwise and the panel addressed those arguments in the reissued opinion.16 The panel concluded that it still had jurisdiction because Windy City’s appeal ‘does not challenge the Board’s decision to institute Facebook’s follow-on petitions, but challenges whether the Board’s joinder decisions exceeded statutory authority.’17 Thus, the PTAB’s joinder decision is a reviewable challenge because it ‘concern[s] whether the USPTO ha[s] exceeded its statutory authority as to the manner in which [an] already-instituted IPR proceed[s].’18 After determining that it had jurisdiction to hear the case, the court turned to the merits of Windy City’s argument.

First, the Federal Circuit addressed whether section 315(c) authorizes same-party joinder. The court started with the plain language of the statute, which it explained ‘allows the Director “to join as a party [to an already-instituted IPR] any person” who meets certain requirements.’19 From there, the Federal Circuit reasoned that, by joining Facebook’s new IPRs with its alreadyinstituted IPRs, the Board joined proceedings not parties.

‘In other words, an essential premise of the Board’s decision was that [section] 315(c) authorizes two proceedings to be joined, rather than joining a person as a party to an existing proceeding.’20 The court found the Board’s interpretation of the statute ‘contrary to the plain meaning of the [joinder] provision’, which addresses parties, not petitions.21 The court contrasted section 315(c) (IPR joinder) with section 315(d) (IPR consolidation), explaining that the latter provides the Director’s statutory authority to put two proceedings together, not the former.22 Thus, the Federal Circuit held that under ‘the clear and unambiguous meaning of [section] 315(c)’ the Director is not allowed to join two proceedings or join a party to a proceeding in which it is already a party.23 In reaching this conclusion, the court recognized that ‘the Board may have been intending to convey that it was joining Facebook as a party to its previously instituted IPRs, and not joining the newly instituted IPR proceedings themselves.’24 However, the Federal Circuit explained that such an interpretation would also go against the plain meaning of the statute.25

JOINDER RULES

Second, the court turned to the parties’ arguments regarding new issue joinder. Similar to its rationale regarding same-party joinder, the Federal Circuit determined the language of section 315(c) likewise ‘does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding.’26 Facebook argued that the statute did not expressly prohibit introducing new issues in joined proceedings; however, the court explained that ‘[t]he lack of express prohibition… does not’ create ambiguity.27 The court reasoned that section 315(c) is limited to joining parties and ‘simply permits the Director… to join any person as a party to an already-instituted IPR.’28 That is, section 315(c) does not authorize the Director to ‘join’ issues.29 Thus, the court concluded that a party joined under section 315(c), i.e., a new petitioner, is not permitted to introduce new issues into the existing proceeding.30 In other words, a party can be joined to an existing proceeding but must adopt the challenges already raised.

The Federal Circuit addressed several of Facebook’s other arguments but ultimately was not dissuaded from the plain language of the statute. In particular, the court seemed sympathetic to Facebook’s policy argument that finding section 315(c) to not allow same-party or new-issue joinder would be ‘in tension’ with the objectives of IPRs.31 Facebook argued that, because Windy City had not identified which of the 830 claims it was asserting against Facebook before the one-year time bar expired, Facebook was left with a difficult choice as to which claims to challenge in IPRs – it had to decide whether to challenge hundreds of claims, including claims that may never be asserted or to challenge a fraction of the claims and risk missing claims the patent owner later asserts. Facebook also argued that if joinder was not permissive, patent owners would be incentivized to delay litigation to run the clock on the one-year time bar under section 315(b), which would prejudice accused infringers.

In response, the Federal Circuit concluded that petitioners are not without options when faced with such situations. ‘As a protective measure, filing petitions challenging hundreds of claims remains an available option,’ and the validity can be challenged in the district court (as patent owners identify claims) instead of through IPR.32 Finally, the court reasoned that ‘no matter how valid, ‘policy considerations cannot create an ambiguity when the words on the page are clear’.”33 In these situations, the court explained that Congress is responsible for a change (in view of policy considerations) where the statute is clear and unambiguous.34 Network-1 Technologies v Hewlett-Packard: A joined party is not estopped from raising arguments in the district court that it could not have added to an IPR proceeding under section 315(e) A few weeks after Facebook v Windy City was reissued, the Federal Circuit issued another opinion regarding joinder and limited the scope of estoppel applicable to joined parties. In

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Network-1 v HP, patent owner Network-1 appealed the district court’s final judgment, where a jury found that accused infringer HP did not infringe Network-1’s asserted patent and that the patent was invalid.35 HP cross-appealed, arguing amongst other things, that the district court improperly found HP was estopped from raising certain validity challenges under section 315(e)(2) based on HP’s joinder to an IPR proceeding before the Board.

This case has a long and complicated history. However, the posture relevant to joinder and the question of estoppel is relatively straightforward. Network-1 asserted its patent against several parties including Avaya, which filed an IPR petition challenging the asserted claims. After Avaya’s IPR petition was instituted, HP (with others) filed a petition and moved to join the Avaya IPR. The Board denied HP’s (first) petition and request to join because HP raised new grounds, i.e., issues that were not raised and already instituted in Avaya’s IPR. HP (again with others) then filed a second IPR petition, which included only the grounds already instituted, and again moved to join.

HP’s one-year time bar had already passed when it filed its second IPR petition; however, the Board instituted and joined HP to Avaya’s IPR proceeding under the joinder exception to the one-year time bar. Ultimately, the Board upheld the claims over the instituted grounds and the Federal Circuit affirmed this holding on appeal.

After trial in the district court, a jury found that HP did not infringe Network-1’s patent and that the asserted claims were invalid. Network-1 then moved for a new trial related to infringement and for judgment as a matter of law related to validity. In particular, Network-1 argued that HP should have been estopped from raising prior art validity challenges in the district court because it joined the Avaya IPR proceeding.36 The district court denied Network-1’s request for a new trial but found estoppel did apply and granted judgment for Network-1 on the question of validity.

According to the district court, HP could have raised its obviousness arguments during the IPR – stating that ‘the fact that HP sought joinder with Avaya’s IPR does not mean that HP could not have reasonably raised different grounds from those raised by Avaya.’37 The district court further reasoned that allowing HP to raise arguments ‘that it elected not to raise during IPR would give it a second bite at the apple and allow it to reap the benefits of the IPR without the downside of meaningful estoppel.’38 Thus, the district court granted judgment as a matter of law on validity without considering the merit’s of HP’s invalidity arguments. Both parties appealed.

Before the Federal Circuit, HP argued that the district court misapplied the estoppel provision of section 315(e)(2). HP argued that it could not raise any of the validity grounds it raised at trial before the PTAB when it joined the Avaya IPR.39 And the Federal Circuit agreed. It explained that under section 315(c), HP was permitted to join the Avaya IPR as a party even though HP was time barred under section 315(b) from bringing its own petition.40 Relying on the rationale and holding in Facebook Volume 50, number 1-2

JOINDER RULES

v Windy City, the court explained that the joinder provision does not permit a joining a party to bring new grounds into the proceeding that were not already instituted, i.e., raised by Avaya.41 Instead, it may only join as a party to the proceeding with the grounds already instituted.

Focusing on the statutory language, the Federal Circuit explained, a party is estopped in the district court only from raising grounds that it ‘reasonably could have raised’ during the IPR.42 The court reasoned that because a joining party cannot raise grounds other than those already instituted, it is not statutorily estopped from raising other (non-instituted) invalidity grounds in the district court.43 Thus, while a joined party is a petitioner and estoppel comes into effect when the Board issues a final written decision, that estoppel is limited with respect to the joined party.44

Conclusion

From these cases, section 315(c) joinder cannot be used to carry out same-party or new issue joinder. And a joined party is not estopped from raising arguments that it could not have added under section 315(e). What remains to be seen is how these findings will affect parties’ strategies. One possible outcome is that parties may elect to join a petition, even where they are not time-barred from filing their own petitions, to benefit from the grounds raised by a first party without estoppel concerns.

However, it is not clear how a district court would react if such practice became common. Stay tuned as we continue to follow developments on joinder, estoppel, and the ever-evolving practice before the PTAB. Courtney Bolin is an associate and Tim McAnulty a partner at Finnegan’s Washington, DC office. See www.finnegan.com

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Notes and references 1. Joinder is also applicable in Post-Grant Reviews (PGRs) but is somewhat different than joinder in IPRs. Compare 35 U.S.C. §315(c) with 35 U.S.C. §325(c). PGRs must be filed in the first nine months after a patent issues and the Director has discretion to consolidate multiple PGRs into a single review if more than one petition is properly filed against the same patent and more than one of the petitions warrant institution.

2. See 35 U.S.C. §315(b).

3. Compare SkyHawke Techs., LLC v L&H Concepts, LLC, IPR 2014-01485, Paper 13 (PTAB Mar. 20, 2015) (same petitioner joined) with Zhongshan Broad Ocean Motor Co. Ltd. v Nidec Motor Corp., IPR2015-00762, Paper 16 (PTAB Oct. 5, 2015) (same petitioner denied). And, while the existence of a time bar is a factor PTAB panels have considered when deciding joinder motions, it is not, by itself, necessarily determinative.

4. Proppant Express Invs., LLC et al. v Oren Techs., LLC, IPR2018-00914, Paper 38 (PTAB, Mar. 13, 2018) (precedential).

5. For more information, see our previous CIPA article. See Kyu Yun Kim & Timothy McAnulty, US Update: Precedential Opinion Panel, June [2019] CIPA 35).

6. Facebook, Inc. v Windy City Innovations, LLC, 953 F.3d 1313 (Fed. Cir. 2020) (Facebook I), modified and reissued, 973 F.3d 1321 (Fed. Cir. 2020) (addressing jurisdiction after the Supreme Court’s holding in Thryv) (Facebook II).

7. Facebook II at 1328, 1338-44 (full majority concurring opinion expressing additional views regarding deference afforded POP decisions).

8. Id. 9. The one-year time is triggered when a party is served with a ‘complaint alleging infringement of the patent.’ 35 U.S.C. §315(b) (emphasis added). By its express terms, the statutory time bar is triggered on a patent-by-patent basis and not on a claim-by-claim basis. This requires defendants to think strategically about which claims to challenge, which grounds to raise, and how many petitions to file.

10. By statute, the one-year time bar does not apply to request for joinder. 35 U.S.C. §315(b). Thus, under the rationale the USPTO subsequently adopted in Proppant, Facebook wanted to challenge claims that it did not challenge originally and add those challenges to its existing IPR proceedings. See Proppant Express Invs., LLC et al., Case IPR2018-00914, Paper 38.

11. By statute, a second petition cannot be joined to another proceeding unless the second petition itself warrants institution.

35 U.S.C. §315(c).

12. Two of the Administrative Patent Judges raised concerns with permitting a party to join itself but concurred in joining Facebook here because the Director of the USPTO had repeatedly taken the position that same-party joinder was permitted under section 315(c). Id. at 1329 (internal citations omitted).

13. Facebook II, 973 F.3d 1321.

14. 140 S.Ct. 1367 (2020); see also Facebook II at 1334.

15. Facebook I, 953 F.3d 1313, 1321; see also Wi-Fi One, LLC v Broadcom Corp., 878 F.3d 1374 (Fed. Cir. 2018) abrogated by Thryv, Inc v Click-To-Call Technologies, LP, 140 S.Ct. 1367.

16. Facebook II, 973 F.3d at 1330-32.

17. Id. 18. Id. 19. Facebook II at 1332 (quoting 35 U.S.C. §315(c)) (emphasis in opinion).

20. Id. at 1333 (emphasis in original) 21. See id. at 1334.

22. Notably, section 315(d) (consolidation) is not exempt from the one-year time bar on filing IPR petitions. See 35 U.S.C. 315(b) (limiting the time-bar exception to ‘request[s] for joinder under subsection (c).’).

23. Facebook II at 1334 24. Id. 25. The court also explained that the POP analyzed this issue in Proppant and came to an opposite conclusion. Id. at 1335 (internal citations omitted). The court explained that the POP’s conclusion incorrectly interpreted the meaning of

the statute, because the phrase ‘join as a party to a proceeding’ on its face limits the range of ‘person[s]’ covered to those who, in normal legal discourse, are capable of being joined as a party to a proceeding (a group further limited by the own-petition requirements), and an existing party to the proceeding is not so capable. Id. 26. Id. at 1335.

27. Id. 28. Id. at 1335-36 (internal citation omitted).

29. Id. 30. Id. 31. See id. at 1337-38.

32. Id. 33. Id. at 1338.

34. Id. 35. Network-1 Techs., Inc. v Hewlett-Packard Co., 976 F.3d 1301 (Fed. Cir. 2020).

36. Id. at 1307.

37. Id. at 1313.

38. Id. 39. Id. at 1312.

40. Id. at 1313.

41. Id. 42. Id. 1312-13.

43. Notably, the court did not reference its earlier decision addressing estoppel in Shaw Industries Group Inc. v Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016), which held, pre-SAS, that petitioner is not estopped from reraising, in district court, grounds that were not instituted before the PTAB).

44. This leads to an interesting situation where some defendants may be estopped while others are not. Arguably, Avaya (as the first petitioner) would have been estopped from raising any validity challenges it could have reasonably raised in its IPR petition in district court. But HP (as a joined party) was estopped from raising only those grounds Avaya actually did raise and was free to raise other validity challenges in the district court.

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PATENTS: UK

Patent decisions The UK patent court case reports are prepared by John Hull, Anna Hatt, Nick Bebbington, 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.

Standard essential patents | Confidentiality clubs (1) Mitsubishi Electric Corporation, (2) Sisvel International SA v (1) Archos SA, (2) Sun Cupid Technology HK Ltd, (3) NUU Mobile UK Ltd, (4) OnePlus Technology (Shenzen) Co Ltd, (5) OPlus Mobiletech UK Ltd, (6) Reflection Investment BV, (7) Guandong Oppo Mobile Telecommunications Corp Ltd, (8) Oppo Mobile UK Ltd, (9) Xiaomi Communications Ltd, (10) Xiaomi Inc, (11) Xiaomi Technology France SAS, (12) Xiaomi Technology UK Limited [2020] EWHC 2641 (Pat) • 9 October 2020 Sir Alastair Norris This case concerns standard essential patents (‘SEPs’) in the mobile telecommunications field. The first claimant (‘Mitsubishi’) was the proprietor of two of the three SEPs with which the case is concerned; the second claimant (‘Sisvel’) was the proprietor of the third and it administered all three. The SEPs related to the 3G and 4G standards in mobile telecommunications. They were not the only SEPs that an implementer would need to make a 3G or 4G compliant mobile device. The three particular SEPs with which this litigation was concerned (‘the Relevant SEPs’) form of part of a portfolio containing other such SEPs in different ultimate ownerships (‘the MCP Pool’).

The defendants were implementers who did not have licences to use the Relevant SEPs. The fifth, sixth and eighth defendants were one such related group of implementers (‘the Oppo defendants’). The ninth to twelfth defendants were another such group (‘the Xiaomi defendants’). As well as being implementers they were themselves the owners of SEPs (some of which they had purchased by assignment) and potential licensors of those SEPs. The claimants claimed that the defendants were infringers against whom they were entitled to injunctive relief to prevent infringement of the Relevant SEPs but to whom they were willing to grant FRAND licences to the MCP Pool. The defendants challenged a number of points in return.

At a case management hearing before Mann J on 22 July 2020, the claimants were ordered to provide disclosure and inspection of copies of relevant licences and agreements entered into by the claimants or their affiliates relating to patents or patent applications comprised in the MCP Pool. The claimants Volume 50, number 1-2

were permitted to apply to such disclosure a confidentiality designation and the defendants could challenge that at a hearing.

A Confidentiality Order was made by Mann J on 22 July 2020, which recognised that ‘not all parties to the proceedings will be permitted to have access to all of the materials’ and established various ‘clubs’ of people who would be permitted to see particular sets of documents.

The Oppo defendants sought the redesignation of six AEO documents (with four different counterparties) as HCM and the inclusion within the HCM confidentiality clubs of three individuals to whom the claimants objected. The Xiaomi defendants sought the wholesale redesignation of all AEO documents as HCM. A fourth application (by the claimants for disclosure of the defendants’ licences) had been disposed of by agreement.

Norris J noted that: ‘The role of the Court in implementing the essentially consensual arrangements of the parties was to decide how that objective was best achieved. The authorities relevant to such arrangements were the subject of detailed consideration

by Roth J in The Infederation Case [2020] EWHC 657 (Ch) and I am entirely content to adopt his summary at [42]: “In my view, the important points to emerge from the authorities are that: (i) such arrangements are exceptional; (ii) they must be limited to the narrowest extent possible; and (iii) they require careful scrutiny by the court to ensure that there is no resulting unfairness. Any dispute over admission of an individual to the ring must be determined on the particular circumstances of the case.”‘ Guided by these principles, Norris J found that the requested redesignation by Oppo should be made, but declined to make the redesignation requested by Xiaomi.

Norris J also judged that it was not unreasonable for the claimant to object to the admission of the three individuals to the HCM confidentiality club, stating: ‘I am not persuaded that it is necessary (because of the absence of other suitable personnel) to convey a broad range and significant volume of confidential information to key commercial personnel directly involved in negotiating SEP JANUARY-FEBRUARY 2021

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licences, when the information cannot be unlearned and when such personnel will not in reality be able to avoid it influencing the course of other negotiations (particularly with counterparties to disclosed agreements). To do so would create an unnecessary risk to (particularly) the counterparties to such agreements.’

(1) OnePlus Technology (Shenzhen) Co., Ltd, (2) Oplus MobileTech UK Limited, (3) Reflection Investment B.V., (4) Guangdong Oppo Mobile Telecommunications Corp, Ltd, (5) Oppo Mobile UK Ltd, (6) Xiaomi Communications Co Ltd, (7) Xiaomi Inc, (8) Xiaomi Technology France SAS, (9) Xiaomi Technology UK Limited v (1) Mitsubishi Electric Corporation, (2) Sisvel International SA [2020] EWCA Civ 1562 • 19 November 2020 Floyd, Males, and Lewis LLJ This decision relates to two appeals to the decision of Sir Alastair Norris in [2020] EWHC 2641 (Pat) above. The lead judgment was given by Floyd LJ. The appeals were concerned with the treatment of confidential material in the context of litigation about standard essential patents.

The three patents involved in this dispute form part of a wider portfolio called the MCP Pool, which contains about 1000 patents with ten different owners. The appellants were from two groups, ‘Oppo’, consisting of the first to fifth appellants and ‘Xiaomi’, consisting of the sixth to ninth appellants.

The technical trial is scheduled for March 2021, and if the patents are valid and infringed, the FRAND issues are scheduled for October 2021.

At first instance, the judge held that the request for redesignation by Oppo ought to be made, but dismissed Xiaomi’s application. The judge also dismissed Oppo’s membership application. Both Oppo and Xiaomi appealed.

In relation to the Oppo appeal, Floyd LJ noted that it was apparent that Oppo’s membership application would allow the members to see a large number of documents in the HCM club, but its criticism of the first instance decision was based on the six documents which were re-designated and one HCM document.

Therefore, he considered that Oppo’s arguments fell away. Whilst noting that Oppo and the respondents were attempting to reach a regime for this narrow set of documents, he concluded that there was not an application on that basis before the judge and therefore he could not be criticised for his decision. Therefore, Oppo’s appeal was dismissed.

In relation to Xiaomi’s appeal, Floyd LJ rejected Xiaomi’s request for re-designation of all AEO documents. He did not accept that the judge had adopted an inappropriate test for establishing the AEO designation. He noted that the remaining documents in the AEO category were ones which Oppo had discarded as not assisting its case. Many related to agreements with small undertakings, which necessarily makes them less relevant to Xiaomi’s case which was based on the premise that

PATENTS: UK

the agreements with smaller counterparties were not good comparables. The judge additionally noted that many of the documents were assignments, which were also less likely to be relevant.

Floyd LJ did note that some points that Xiaomi had raised were relevant, but these had been accepted by the respondents in proposed amended terms. He allowed the appeal to the limited extent of substituting part of the judge’s order with the terms offered by the respondent, with a minor clarification. Otherwise, he also rejected Xiaomi’s appeal.

Standard essential patents Koninklijke Philips NV – and – (1) Tinno Mobile Technology Corporation, (2) Wiko SAS, (3) TCL Corporation, (4) TCL Communication Technology Holdings Limited, (5) TCL Communication Limited, (6) TCL Mobile Europe SAS, (7) TCL Mobile Uk Limited 25 September 2020 • Mr Justice Mann This was a patent infringement case in which the claimant’s (‘Philips’) patents were standard essential patents (‘SEPs’) for the purposes of operating mobile phone handsets in the 3G and 4G standards.

Philips alleged infringement against the third to seventh defendants (together ‘TCL’), and claimed various remedies for the infringement but declared itself willing to grant a licence on FRAND (fair, reasonable and non-discriminatory) terms in order to enable the allegedly infringing defendants to avoid those consequences of infringement. This was pursuant to worldwide procedures coordinated by ETSI, a French organisation, in relation to SEPs. In these English proceedings Philips sought inter alia, a declaration that the terms it had offered were FRAND, or alternatively that FRAND terms be determined. Its injunction claim accepted that the injunction would only come into force if a worldwide FRAND licence was not accepted by TCL. TCL sought to take the benefit of the FRAND regime and, subsequently to the commencement of this action, it had commenced proceedings in France which, inter alia, appeared to seek to have FRAND terms determined. Philips attempted to have those proceedings stayed on the footing that they were secondstarted proceedings dealing with the same point, pursuant to article 29 of the Brussels I Regulation ((EU) 1215/2012 – ‘the Brussels Regulation’). That attempt failed, as did an application for a stay under article 30.

In the present case, TCL sought a stay of the proceedings in favour of its French proceedings pursuant to articles 29 and/or 30 of the Brussels Regulation.

TCL argued that the French judge had tacitly accepted TCL’s contention that the French court had been first seised of the FRAND issues in dispute and therefore the English proceedings should be stayed under article 29. However, Mr Justice Mann

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rejected that argument stating the French court decided that article 29 was not engaged and the two sets of proceedings involved different matters (and parties). In England and Wales, the proceedings were tort proceedings – infringement of patents seeking consequential relief. That relief involved a FRAND determination if TCL wished to avoid the injunction, and it involved a damages claim in which a FRAND licence fee was said to form the basis of the damages calculation, but that is as far as FRAND went. In France, the proceedings were contractual – TCL was seeking to enforce a contract requiring the grant of a FRAND licence. The French court therefore did not decide that there were two relevantly similar sets of proceedings of which it was first seised, either expressly or by implication.

Mr Justice Mann also considered the question of when the English court was first seised of a FRAND issue in the proceedings. TLC argued that the English court was not seised of the FRAND issues in the originally constituted proceedings, and they were not properly or effectively introduced until the FRAND statement of case by Philips, and that came after the French proceedings had been commenced. The claimants argued that their FRAND case had been properly encompassed within the proceedings from the outset. Mr Justice Mann determined that the FRAND statement of case was an amplification of the existing case and not an articulation of a new case, and so the English courts were first seised.

Mr Justice Mann went on to consider whether the English court should stay proceedings under article 30. He decided, under the clear authority of FKI Engineering v Stribog Ltd [2011] 1 WLR 3264), that even if the actions only became related for the purposes of article 30 on the service of the FRAND statement of case, the English court was first seised for the purposes of article 30 because the English action was started first, and so article 29 did not apply. He declined to refer the question to the CJEU. TCL’s application for a stay was dismissed.

Strike out | Damages IPCom GmbH & Co KG v (1) HTC Europe Co Ltd, (2) Ingram Micro (UK) Ltd, (3) HTC Corporation [2020] EWHC 2941 (Pat) • 4 November 2020 Birss J This decision relates to an application to strike out part of a claim for damages that was brought by IPCom. The proceedings concerned European (UK) patent EP(UK)1841268, which was part of a portfolio that had been declared essential to 3G mobile phone standards. The patent itself had been litigated extensively and in 2011 (and in subsequent appeal) it was found to be valid and essential in amended form. Unusually, however, it was possible to produce phones (‘workaround phones’) that conform to the relevant standards without infringing the patent.

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HTC was found to have infringed the patent in previous proceedings and gave undertaking to sell only workaround phones whilst an inquiry into damages and FRAND licence terms was pending. However, it was found to have continued to sell infringing phones. This led IPCom to seek a final injunction, which was granted. Then, with agreement between the parties, the FRAND inquiry was dismissed and the inquiry into damages was scheduled for May 2021.

As part of the scheduled inquiry into damages, IPCom sought a very substantial sum based on a large number of phones HTC had sold worldwide. In particular, IPCom’s calculations included not only infringing phones sold in the UK, but also workaround phones, 2G phones that did not necessarily infringe, and phones not sold in the UK. HTC naturally protested against this approach, arguing that damages simply should only be based on infringing acts in the UK, i.e. sales of infringing phones in the UK, and the claim in relation to the other categories of phones should be struck out. IPCom, citing Gerber Garment Technology Inc v Lectra Systems Ltd [1997] RPC 443 (CA), argued that the other categories of phones should be included because it suffered loss of royalties in those categories caused by sales of HTC’s infringing phones in the UK. More specifically, IPCom argued that it had suffered loss and damage in the form of loss of revenues under a notional FRAND licence that a willing licensor and a willing licensee would have agreed, which would have been worldwide in scope.

The judge noted that sales of phones outside the UK are not in any sense ‘convoyed goods’ and the principles of Gerber v Lectra therefore did not apply. The judge also disagreed more generally with IPCom’s arguments on inclusion of phones sold outside of the UK: ‘… the central problem with IPCom’s case based on its notional licence is that such a claim is based on claiming for sums due under that licence (one way or another) in respect of phones sold abroad, and the only way in which those sales could justify a payment to IPCom in a claim for damages for infringement of a UK patent is if those acts (i.e. the sales) were in some sense caused by the acts of infringement in the UK. But they were not, and IPCom does not attempt to suggest that they were. Therefore the claim should be struck out.’

The judge, however, allowed the part of the claim in relation to non-infringing UK phones to proceed to trial: ‘The reason why I will not strike out the claim for the UK is because it seems that, in Unwired Planet, I did approach the damages for UK patent infringement on a portfolio basis (a UK portfolio) rather than on the basis only of the individual patents found valid and infringed. That may have been on the basis of a concession but it does not seem to emerge from the case that that is so. My view at present is that absent a concession or agreement the court could only award damages for infringement of the individual UK patents found valid JANUARY-FEBRUARY 2021

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and infringed, but in the circumstances, given what seems to have happened in Unwired Planet in this respect, the fair thing to do is allow that aspect of this case to go to trial. I can see that if a UK portfolio approach is legitimate, it might (but might very well not, and depending on the facts) justify a claim for damages based on the workaround phones.’

Validity | Construction | Obviousness | Excluded subject matter | Infringement | Doctrine of equivalents Communisis PLC v (1) The Tall Group Of Companies Limited (2) Checkprint Limited (3) DLRT Limited [2020] EWHC 3089 (IPEC) • 17 November 2020 Melissa Clarke HHJ The parties were competing manufacturers of cheques and cheque fraud prevention systems. Communisis alleged that the defendants had infringed its United Kingdom Patent No. GB2512450 relating to a printed code as a security feature on a cheque. The defendants counterclaimed for invalidity on the basis of obviousness and excluded subject matter.

Construction

The judge construed the term ‘code’ to cover both reversible (decryptable) and irreversible (one-way) codes, as argued by the claimant. This was in accordance with the everyday meaning of ‘code’ and took into account the fact that the invention could be worked with both types of code. The defendant had argued that only reversible codes were covered, as in the example of the patent.

The claimant argued that the requirement for the code to be generated ‘by conversion to a higher base’ should cover generation of all codes in a higher numerical base than the input data, however generated. The judge rejected this, as it required the words ‘by conversion to’ to be ignored.

There was a dispute as to whether the claim wording ‘applying the generated code’ required the whole code to be applied to the cheque or also covered application of a part of the code. The judge held that applying part of the code was covered, as this was not excluded by the claim wording, would allow checking for fraud, and could help in reducing the space needed for printing.

There was also a dispute as to whether ‘during generation of a cheque’ covered only the initial printing of a cheque or also completion of the cheque by the drawer. The judge held that that generation was only complete when all the information was present for the cheque to be presented to a bank.

Obviousness

The defendants alleged that the claims were obvious over each of three prior art documents Martens, Ehrat and Martin.

Martens disclosed the claim features except for generation

PATENTS: UK

of the code by conversion to a higher base. The judge held that this would be obvious, even though the skilled person would be unlikely to use this approach because it would not be very secure.

The claims were obvious over Ehrat and Martin for the same reason. The code in Ehrat used drawer data as an input but under the judge’s construction of ‘during generation of a cheque’ this was not a distinguishing feature.

Excluded subject matter

The judge considered whether the invention was excluded from patentability under section 1(2) Patents Act 1977 as a mathematical method – section 1(2)(a) – or the presentation of information – section 1(2)(d). She applied the test in Aerotel Ltd v Telco Holdings Ltd [2007] RPC 7. She found that the contribution of the invention was encryption by the mathematical method of converting to a higher base, which was not contended by either party to be inventive at the priority date. Therefore, she considered that she could not identify an actual contribution to human knowledge, as required by the second step of the Aerotel test. For the third/fourth step, she was satisfied that the alleged contribution was excluded as a mathematical method and the patent was held invalid for excluded subject matter.

Infringement

The defendants’ code was generated using a hash function and then displayed in hexadecimal format, rather than by simple conversion to a higher base. Thus, it was not generated by conversion to a higher base on the judge’s construction, so the patent was not infringed on normal interpretation.

The judge also held that the patent was not infringed under the doctrine of equivalents, as based on her findings on validity there was no contribution to the prior art. In summary, the patent was held invalid on both grounds and not infringed.

Infringement | Passing off Freddy Spa v (1) Hugz Clothing Limited (2) CC Liverpool Limited and (3) Christopher Kavanagh [2020] EWHC 3032 (IPEC) • 19 November 2020 Mr David Stone (sitting as Deputy Judge of the Chancery Division) Freddy SpA produces and sells ‘body-enhancing’ jeans as WR.UP branded jeans. The defendant had previously admitted marketing a copy a under their own brand HUGZ jeans, reaching a settlement in 2019. The defendant then launched a second version of the HUGZ jeans, and were accused of (i) breaching the settlement agreement; (ii) infringing European Patent (UK) No. GB2666377; (iii) infringing various unregistered design rights and (iv) engaging in unlawful passing off.

The defendants were not represented or present at the trial.

They had admitted that the first version of the HUGZ jeans fell within the scope of the patent claims and come to a settlement

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agreement. A second version of the HUGZ jeans were thought by the defendants to be a design around created by a single change.

The patent defined three elements of the trousers – one part to cover at least a lower terminal portion and lateral portion of the buttocks; a second part to cover the central portion of the buttocks; and a third part adapted to cover the upper portion of the buttocks. In the second version of the HUGZ jeans, the single change was that the second part and first part were formed from a single piece of material rather than two pieces which were sewn together. The issue of infringement therefore fell on whether the claims required the different elements to be individual parts, which were sewn together, or whether two parts could be formed from a single piece of material. There was no guidance either way in the patent. The expert witness described how the second HUGZ jeans were constructed in a way to bring about the same purpose as the claimed jeans. Therefore, the judge considered that the ‘elements’ should not be construed as having to be entirely separate parts. As such, the second HUGZ jeans were found to infringe the patent.

The judge also concluded that had the second HUGZ jeans not fallen within the normal interpretation of the claims, they would have infringed under the doctrine of equivalents.

PATENTS: UK • EPO

Passing off

The judge also concluded that passing off had occurred due to the similarity of the products when viewed from behind due to the shaping and placement of the pockets and seams, the crossed belt loops and the placement of the badge. The defendants also referred to the jeans as the ‘HUGZ Get-Up’ which was similar to the ‘Freddy Get-Up’ name used by the claimant.

Design rights

Infringement of a number of unregistered designs was also considered. The ‘When Worn’ design i.e. the shape of the jeans when worn, was not considered to be a protectable design as the ultimate shape would depend on the person wearing the garment and not the garment itself. However, the design of the jeans on their own, i.e. when not worn, was considered to be a protectable design, as were the inner part design of the rubberised portions, and the design of the rubberised support panel. These designs were found to be infringed by the second HUGZ jeans.

In light of the infringement of the patent and the unregistered designs, the defendants were found to be in breach of the settlement agreement.

EPO decisions This month’s contributor from Bristows is Nick Michelmore.

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.

Priority right – article 87(1) EPC T 0844/18: CRISPR-Cas/Broad Institute and ors.

TBA decision of 16 January 2020 Chair: B. Stolz Members: D. Rogers, R. Winkelhofer, P. Julià and M. Montrone Also see the article by George Schlich, December [2020] CIPA 20 This TBA decision concerned the entitlement to priority under article 87(1) EPC. The appeal was brought by the patent proprietors against the Opposition Division’s decision to revoke their patent relating to CRISPR gene editing technology. The patent had been Volume 50, number 1-2

held invalid for lack of novelty over two pieces of prior art. This resulted from the finding that the patent was unable to make a valid claim to priority from certain US provisional applications.

The Opposition Division had applied the established case law of the EPO in relation to the assessment of priority claims, namely the so-called ‘all applicants’ approach: all persons listed as applicants in a priority application must be listed as applicants for the subsequent application (allowance being made for successors in title). The patent in this case had one applicant missing from the EP and PCT applications. The Opposition Division had thus held that the patent was not entitled to priority.

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1. Should entitlement to priority be assessed by the EPO? 2. How is the expression ‘any person’ in article 87(1) EPC to be interpreted?

3. Does national law (in this case US law) govern the determination of ‘any person’ who has ‘duly filed’ in article 87(1) EPC? In its decision, the Board addressed each of these issues separately.

In relation to question 1, the appellants argued that the EPO should not assess priority entitlement as a matter of principle because the ‘all applicants’ approach results in issues of title raised by non-owners being used to destroy the underlying property right, which was not the intention of the Paris Convention. Priority right should only be challenged by someone claiming to be the rightful owner.

The Board disagreed. Article 87(1) EPC clearly sets out requirements for priority and the EPO is empowered and obliged to assess the validity of a priority right claim. The EPC sets many formal requirements for obtaining a patent, and the loss of a patent due to failure to fulfil such formalities is a feature of the EPC system. In the present case, the appellants did not comply with the well-established practice of the EPO. It is not for the Board to repair such errors.

In relation to question 2, the appellants argued that ‘any person’ in article 87(1) EPC (and article 4 Paris Convention) must be interpreted to mean that anyone who duly filed the priority application (or his/her successor in title) can validly claim priority, i.e., if there are multiple applicants for the priority application, one, a plurality, or all, can validly claim priority. The ‘all applicants’ approach merely created additional obstacles for applications. For the protection of third parties, the most important consideration for priority claims was not ‘identical applicants’ but that the same invention was being claimed. The appellants cited UK and Swiss case law, which they argued supported their interpretation.

The Board did not find the language of the Paris Convention determinative and therefore turned to the object and purpose of the Convention, as well as to public policy considerations. A feature of the priority right is that it comes into existence with the filing of one patent application but is exercised by the filing of another patent application, often in another country. The ‘all applicants’ approach prevented one applicant trying to deprive another of their right in another country. If a group of persons decides together to carry out an act of filing, then they must act in unison for this purpose.

The legal concept of priority in the Paris Convention allows applicants to be treated as if they had simultaneously filed the same patent application in a multiplicity of member states. It is this legal fiction of simultaneous filing that establishes the ‘all applicants’ requirement. Furthermore, the bar for overturning long-established case law and practice should be a high one and the appellants were faced with

EPO

over 100 years of consistent case law. The cases cited by the appellants did not convince the Board. In light of the above considerations, the Board found that the words ‘any person’ in article 87(1) EPC required that all the applicants for a priority application, or their successors in title, must be applicants for the subsequent application.

Finally, for question 3, the appellants had argued that the national law where the priority application was filed should be used to determine the meaning of ‘any person’. This is because the right arises at the time (and therefore in the country in which) the priority application was filed. In this case, the national law would be US law (under which the applicant’s status is tied with the degree of inventorship). In addition, the appellants noted that US provisional applications are not required to name inventors or applicants which, they argued, should require the EPO to look at national law to see who qualifies.

Addressing this final point, the Board noted that the US is a signatory to the Paris Convention and, therefore, in accordance with the US Constitution, the Paris Convention forms part of the ‘supreme Law of the Land’ in the US, and hence it is the Paris Convention that determines the meaning of ‘any person’. The determination is purely a formal one.

Applicants wishing to use US provisional applications with unnamed applicants should be aware of the difficulties they may face if they use these applications to claim priority for a European patent application.

The Board therefore disagreed with all three arguments put forward by the appellants and the appeal was dismissed.

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PATENTS: UK IPO

IPO decisions

By David Pearce (Barker Brettell) and Callum Docherty (J A Kemp) 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.

Entitlement – sections 8 and 12 Kwix UK Ltd v Matthew Murphy and Joint Trustees of the Bankruptcy Estate of Matthew Murphy BL O/563/20 • 11 November 2020 A GB patent application was filed in the name of the defendant (Mr Murphy). Subsequently, the defendant formed a partnership (Kwix, the claimant) with a view to capitalising on the idea in the application and a PCT patent application was filed. The defendant later went bankrupt. The claimant alleged that although the application was filed in the defendant’s name, the intention was that it should be held in trust for the partnership, and that the partnership was therefore entitled to the application. The application subsequently entered the European regional phase, where it was held before grant pending outcome of the entitlement proceedings.

Both sides raised preliminary issues. The defendant asked for the claimant’s statement of case to be struck out on account, while the claimant requested a summary judgement on the basis that the defendant had no reasonable prospect of defending the case.

The hearing officer’s intention was to deal with the preliminary issues during the main hearing, but the coronavirus pandemic meant an in-person meeting was not possible. A video conference hearing would prevent adequate supervision of witnesses for the main hearing, and so only the preliminary issues were dealt with.

On the question of striking out, the defendant argued that the partner (Mr Allen) acting for the claimant did not have due authorisation to act for the partnership. The defendant argued that, as a partner in Kwix, he should have had the opportunity to oppose the decision to proceed under the terms of the partnership agreement. The hearing officer noted that the defendant’s position as director was not clear. The defendant could not have been a director during a period of bankruptcy, and there was no record of him being formally reinstated by Kwix. On the other hand, the

defendant was still named on the register at Companies House and had been invited to participate in director’s meetings. In response, the claimant said that Mr Allen held all shares in the partnership, and therefore could act in accordance with the Duomatic principle, following Re Duomatic Ltd [1969] 2 Ch 365, in which strict compliance with formal procedures in a company is not needed if all shareholders approve of, or fail to deny, a course of action. It was unclear why the defendant’s original shares, held in trust by Mr Allen during the defendant’s bankruptcy, were not returned to him. The hearing officer considered there to be confusion about the application of the Duomatic principle because of this uncertainty, but ultimately decided the only possible reason for a strikeout of a case was abuse of process under rule 83(2)(b), in this case some breach of company law.

The hearing officer considered there was not enough evidence to support this, and so decided not to strike out the claimant’s case.

On the issue of summary judgement against the defendant, the claimant noted that the defendant had initially argued the applications belonged to him. However, because of his bankruptcy, anything owned by him would have transferred to a bankruptcy estate. The defendant’s argument then changed to say he had been holding the applications in trust for his mother, so ownership would not have transferred. The claimant argued that the defendant should not be allowed to change arguments. As the defendant’s mother had not filed a counter statement despite being invited to do so, the claimant argued she must be taken as supporting the claimant’s case. The hearing officer agreed on both points. The defendant could not plead that his mother owned the patents but if he reverted to the original argument that he owned them personally they would have been transferred to the bankruptcy estate. The defendant’s case was therefore hopeless.

The hearing officer issued a summary judgement removing Mr Murphy as a defendant. The bankruptcy estate, listed as a codefendant but which had stayed neutral, was given six weeks to decide whether to proceed with the case

IP Pro Bono on the lookout for new practitioners and member firms IP Pro Bono is continuing to provide assistance to applicants during the coronavirus crisis, and we are grateful to our case officers and member firms for their support but we are always looking for more practitioners and firms to get involved.

If you want to know more about how you can contribute and help people with IP issues who cannot afford to pay for advice and representation in the usual way, please get in touch. To find out more about the IP Pro Bono initiative and what they are looking for, see the CIPA website or email office@ipprobono.org.uk

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TRADE MARKS

Trade mark decisions This month’s editors are Katharine Stephens, Thomas Pugh, Ciara Hughes and Aaron Hetherington at Bird & Bird LLP. The CJ and GC decisions can be found at https://curia.europa.eu/jcms/jcms/j_6/en/ Cases marked * can be found at www.bailii.org

Decisions of the General Court ('GC')

Ref no.

Application (and where applicable, earlier mark)

GC T-76/19 Pontinova AG v EUIPO; Ponti & Partners, SLP 13 May 2020 Reg 2017/1001 Reported by: Emma Ikpe

GC T-564/19 Lozano Arana (“LA”) & Ors v EUIPO; Coltejer SA 28 May 2020 Reg 2017/1001 Reported by: Charlotte Addley

– legal services (45) PONTI – industrial and intellectual property consultancy services (42) (Spanish registration)

LIBERTADOR – bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, essential oils, cosmetics (3) – jewellery, precious stones; horological and chronometric instruments (14) – leather and imitations of leather; trunks and travelling bags; umbrellas, parasols and walking sticks; wallets; handbags (18) – building materials (non-metallic) (19) – clothing; shoes; headgear (25)

Comment

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b).

The GC confirmed that the services were identical as ‘industrial and intellectual property consultancy services’ were encompassed by ‘legal services’ insofar as the former necessarily included the provision of advice on intellectual property rights.

Finding that the marks were visually and aurally similar to an average degree, the GC emphasised the importance of the common element ‘ponti’ as it was the only element of the earlier mark and the initial part of the mark applied for. As neither mark had a meaning, the conceptual comparison was neutral.

The GC upheld the BoA’s decision and dismissed the appeal against the Cancellation Division’s order for revocation of the registration.

LA claimed that he had not been informed of the application for revocation by his former legal representative, so was not in a position to lodge evidence of genuine use of the mark within the time limit prescribed.

However, the GC held that LA’s right to be heard had not been infringed: the Cancellation Division had duly notified LA’s former representative of the application for revocation and could not be held responsible for the former representative’s lack of diligence. Further, the GC noted that when LA became aware of the application for revocation it was still possible to lodge an application for restitutio in integrum, but LA failed to do so.

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Ref no.

GC T-601/19 Osório & Gonçalves, SA (O&G) v EUIPO; Miguel Torres, SA 23 September 2020 Reg 2017/1001

Application (and where applicable, earlier mark)

– beer and brewery products (32) – cider; preparations for making alcoholic beverages; wine; and other alocholic goods and beverages (33) INFINITE – wines (33) (Spanish registration)

Reported by: Stephen Allen

GC T788/19 T-851/19 Body Attack Sports Nutrition GmbH & Co. KG v EUIPO; Maria Sakkari 15 October 2020 Reg 2017/1001 Reported by: Katie Tyndall

– woven fabrics, textile goods, substitutes for textile goods, towels of textile, bath towels, knitted elastic fabrics for sportswear (24) ATTACK – clothing, footwear, headgear, aforementioned goods also for use in sports (25) – articles for gymnastics and sports (28) Body Attack – garment covers [storage] (20) – towels (24) – t-shirts, jackets, fitnesswear, sportswear of any kind (25)

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Comment

The GC upheld the BoA’s decision that there was a likelihood of confusion under article 8(1)(b) between the marks.

In accordance with article 47(2) and (3), the evidence as a whole was brief but sufficient to show genuine use of the earlier mark in relation to wines. The evidence that demonstrated the mark had been affixed to wines in Spain solely for their export to third countries was acceptable.

Despite being split into groups of letters, the mark applied for strongly resembled the Spanish word ‘infinitud’, meaning ‘infinitude’. As a result, the marks were conceptually similar to a high degree, and phonetically similar to a higher than average degree. They were visually similar to a low degree.

The BoA had erred in having found an average, rather than low degree, of similarity between beer and wines, since they differed significantly in their composition and method of production. Notwithstanding this, the GC held there was a likelihood of confusion for all goods. It was noted that the higher than average phonetic similarity was of particular importance in the assessment because consumers often purchased alcoholic goods orally.

The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b).

The GC upheld the BoA’s finding that the goods applied for in class 24 were dissimilar to those covered by the earlier marks in class 25, on account of their different natures, methods of use and purposes, even if, in some cases, they had a degree of complementarity due to the fact that fabrics might be used for the production of clothing. The BoA was therefore correct to find that there was no likelihood of confusion in relation to the earlier mark ATTACK. Noting that the ‘SAKK’ element was more dominant for the part of the relevant public which understood the word ‘attack’ and that the figurative elements of the marks applied for had an average degree of distinctiveness, the GC found that the signs were visually and aurally similar to a low degree to the Body Attack mark. The degree of conceptual similarity was low at most for the English-speaking public.

As a result, the GC upheld the BoA’s finding that there was no likelihood of confusion in relation to the earlier Body Attack mark, despite some of the goods being identical.

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Ref no.

GC T-677/19 Polfarmex S.A. v EUIPO; Arkadiusz Kaminski 23 September 2020 Reg 207/2009 Reported by: Laura Goold

Application (and where applicable, earlier mark) SYRENA – computer and video game programs and software, none of the aforesaid goods relating to the aeronautical field, and in particular helicopters and rotorcrafts (9) – motor vehicles for locomotion by land and parts therefor (12) – games and playthings, model vehicles; scale model vehicles made of all materials, in particular paper model vehicles and die-cast model vehicles or plastic model vehicles (28)

Rewording specification following change in Nice Classification Edison SpA (‘Edison’) v EUIPO CJ (Ninth Chamber) • C-121/19P • 16 September 2020 The CJEU upheld the GC’s decision to reject the rewording of a trade mark’s list of goods following a change in the Nice Classification between application and registration of the mark. Theo Cooper reports.

Background

Edison filed an EUTM application for the figurative mark shown below in August 2003, for all of the goods falling within class 4 of the Nice Classification. At the time of the application, the eighth edition of the Nice Classification was in force, which made no reference to electrical energy within class 4.

TRADE MARKS

Comment

In proceedings for revocation on the basis of non-use, the GC annulled the decision of the BoA to the extent that it upheld the registration of the mark in respect of ‘cars’ pursuant to article 58(1)(a).

The GC upheld the BoA’s finding that the intervener had demonstrated genuine use for ‘racing cars’. The GC noted that racing cars were a specialised market notable for the sale of limited numbers of vehicles. In light of the features of the specific market, sales figures were not necessary for establishing genuine use. The GC was satisfied that there had been an effort to secure a market share by way of the preparatory tasks and advertising efforts made, and the cars had been marketed and was available to order.

The GC held that racing cars were a subcategory of ‘cars’ generally, since their purposes were different. For example, racing cars were not driven on public roads.

Since the evidence submitted only demonstrated use for racing cars, the BoA had been wrong to find that genuine use in respect of cars generally. added ‘electrical energy’ to the alphabetical list of goods in class order under class 4 (‘the alphabetical list’). In June 2015, Edison entered a request for surrender and rewording of a portion of the goods registered in class 4, to expressly include electrical energy.

The examiner refused this rewording on the basis that it would extend the list of goods claimed at the time of registration. Edison appealed this decision before the BoA, which dismissed the appeal on the basis that the eighth edition of the Nice Classification did not refer to electrical energy in the general indications under class 4 or the alphabetical list, and therefore Edison could not have intended to claim protection for those goods at the time of filing. Edison sought annulment of the BoA’s decision before the GC, on the basis that the decision unlawfully excluded electrical energy under the terms ‘fuels (including motor spirit)’ and ‘illuminants’ in the heading of class 4, and ‘carburants’/’motor fuel’ in the alphabetical list of the eighth edition of the Nice Classification. This plea was rejected and the action dismissed. Edison appealed on the ground that the GC’s interpretation of ‘illuminants’, ‘fuels (including motor spirit)’ and ‘carburants’/’motor fuel’ was incorrect.

Decision Edison’s mark was registered in August 2013, by which time the ninth edition of the Nice Classification was in force, which

The CJEU held that Edison had failed to make out certain of its arguments with sufficient precision, for example by alleging that the GC had failed to adopt a ‘functional approach’ without specifying where in the judgment that

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was the case. The CJEU endorsed the GC’s finding that goods must be identified in the application with sufficient clarity and precision to enable the competent authorities and economic operators to determine the extent of protection on that basis alone.

The CJEU also held that the validity of the GC’s decision was unaffected by the fact that the EUIPO had drafted a list of goods (including electrical energy) for the ninth edition of the Nice Classification before the application was made. The GC had considered this evidence before reaching its decision, along with other evidence adduced such as the positions of environmental bodies and the fact that certain electric vehicles had already been put on the market. The GC made clear in its judgment that this evidence had been examined but was not considered sufficient to prove Edison’s argument.

The CJEU further held that complaints against incidental grounds expressed by the GC for completeness were ineffective, and that the main reason for the GC’s decision was its finding that electrical energy was not within the customary and ordinary meaning of the terms disputed. The CJEU also rejected Edison’s argument that the GC had failed to consider a statement on the WIPO website stating that electrical energy is considered analogous to tangible fuels within class 4, as the GC explicitly conceded this analogy in its judgment, but held that electrical energy is not covered by the literal meaning of the goods within that class.

Bait and switch selling Pliteq Inc & Anr v iKoustic Ltd & Anr* Miss Recorder Amanda Michaels [2020] EWHC 2564 (IPEC) • 2 October 2020 Save for a single webpage on iKoustic’s website, Pliteq’s claim against iKoustic for trade mark infringement and passing off failed. The recorder found that Pliteq’s rights in its marks had been exhausted and that they did not have legitimate reasons to oppose iKoustic’s use of them.

Hilary Atherton reports.

Pliteq designed, made and sold a range of acoustic damping and sound control products under the trade marks GENIECLIP and GENIEMAT. In 2011, iKoustic became a non-exclusive distributor of Genieclip and Geniemat products. There was no written agreement between the parties and no restriction on iKoustic from offering competing products. The commercial relationship between the two companies later broke down and in 2019 Ikoustic sourced and launched competing ‘MuteMat’ and ‘MuteClip’ products on its website.

For a period of some months, iKoustic sold both parties’ products without Pliteq’s consent. Pliteq claimed that iKoustic Volume 50, number 1-2

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used the GENIECLIP and GENIEMAT marks for the purpose of selling its own, rather than Pliteq’s, products. It claimed iKoustic had used those marks directly to customers as well as on its website and also in keyword and sponsored adverts on Google to attract custom, which was diverted to iKoustic’s own MuteMat and MuteClip products. It brought a claim against iKoustic for trade mark infringement and passing off.

Pliteq did not claim that the parties’ respective marks were confusing, but that iKoustic had used Pliteq’s marks to sell their own goods under their own distinct trade marks, and that this amounted to trade mark infringement by ‘bait and switch’ selling.

The recorder observed that the alleged infringements were not ‘classic’ bait and switch selling – they could be distinguished from the facts of cases such as Cosmetic Warriors Limited v Amazon.co.uk Ltd [2014] EWHC 1316 (Ch) where Amazon had no Lush goods at all to sell and had never stocked them.

Here, iKoustic did have a stock of genuine goods bearing Pliteq’s marks and relied on the exhaustion defence under section 12 (article 15). Further, the recorder was satisfied that the average consumer would have understood from the various communications from iKoustic that it was offering an alternative product to Pliteq’s goods.

The recorder found that the rights in all of Pliteq’s goods held by iKoustic had been exhausted. The only exception was use of GENIECLIP on a single webpage to announce that the product was out of stock and to advertise the availability of iKoustic’s alternative product. As this did not amount to use in relation to goods to which Pliteq’s rights had been exhausted, it did not amount to use of the mark by iKoustic in order to recommercialise Pliteq’s goods. As such, the exhaustion defence did not apply to that webpage. In relation to all other uses, the recorder found that there were no legitimate reasons to oppose the further commercialisation of Pliteq’s goods by iKoustic – there was no likelihood of damage to the marks’ reputation, no false implication of a trade connection or any evidence of confusion of as to origin, and merely selling competing goods did not amount to taking an unfair advantage of the marks’ reputation. Even when iKoustic had only limited stock of the marked goods, the exhaustion defence still applied. The recorder said that to find otherwise would be to add a significant limitation to the exhaustion defence which could not be found under the relevant provisions. The sole question was whether the use of the mark related to goods that had already been placed on the market by the proprietor or with his consent and would be seen by the average consumer as relating to the claimant’s goods. Otherwise, all resellers of marked goods would run the risk that at some indeterminate point the defence would become unavailable to them, simply because they had sold some but not all of their stock of the products.

Therefore, Pliteq’s trade mark infringement claim failed. Its claim for passing off was also rejected.

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DECISIONS

High Court guidance on geographical collective trade mark Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi (the ‘Foundation’) v Babel Sajt Kft. (‘Babel’) Smith J • [2020] EWHC 2858 (Ch) • 30 October 2020 The Judge held that the hearing officer failed to properly account for the collective nature of the opposing mark when determining whether the registration of a new mark would give rise to a likelihood of confusion. The Judge provided guidance as to how the particular nature of a collective mark should be taken into account in determining (i) the identity of the average consumer and (ii) the likelihood of confusion. Louise O’Hara reports.

Facts

A Hungary-based company, Babel filed a UKTM application to register a figurative mark containing the word element ‘Halloumi’ (as depicted below) for ‘milk and milk products; dairy and dairy products; cheese and cheese products’ in class 29.

The Foundation sought to oppose this application, but the procedure to obtain a Protected Designation of Origin for Cyprus’ ‘halloumi’ cheese had not been completed; and it presently remains unresolved. As a result, when the Foundation filed a notice of opposition against this application it had to rely on its EU collective mark registration for HALLOUMI for ‘cheese’ goods in class 29 instead.

The Foundation’s opposition was brought on the grounds of sections 5(2)(b) and 5(3). In respect of the first ground the hearing officer found that there was no likelihood of confusion because there was only a low degree of visual similarity between the marks and the distinctive character of the EUTM registration for HALLOUMI was low. The officer referred primarily to a previous opposition brought by the Foundation, concluding that she saw no reason to disagree with the CJEU’s analysis (Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, Case C-766/18P, reported January [2020] CIPA 24).

TRADE MARKS

The appeal

The Foundation appealed this decision on a number of grounds, including that the hearing officer had ‘failed to accord the Foundation’s mark an appropriate minimum degree of distinctiveness’. Smith J disputed the Foundation’s reference to the article 7’s requirements as ‘minimum distinctive requirements’, on the basis that the absolute grounds need not be expressed in terms of a minimum level of distinctive character; the nature of distinctive character incorporates its own threshold – a mark either has distinctive character or has no distinctive character.

Smith J considered that, whilst a collective mark should be considered like any other EUTM, the nature of a collective mark (as a mark of association rather than a single undertaking) requires particular consideration when determining how similar an EU collective mark is with another EUTM. The hearing officer failed to consider the significance that an average consumer would attach to the use of the Foundation’s mark within Babel’s trade mark.

The hearing officer also failed to take any account of the collective nature of the Foundation’s mark when determining the identity of the average consumer. A trade consumer would be aware of the difference between an EU collective mark and a EUTM designating a single undertaking as the origin of the product.

The hearing officer’s decision on the distinctiveness of the Foundation’s mark was also criticised on the basis that she relied entirely on the CJEU’s reasoning from a previous case. While the CJEU’s decisions on the application of law are binding, the question of similarity of the marks is a question of fact that needs to be considered in the context of each case.

The Judge set aside the hearing officer’s decision and opted to deal with the opposition rather than remitting it.

The opposition

The Judge endorsed the conclusion of the hearing officer that there was a high degree of similarity between the goods at issue. Contrary to the hearing officer, he held that the average consumer would comprise both ultimate consumers and trade purchasers. Ultimate consumers would not be alive to the significance of HALLOUMI as a collective mark and would not be confused into considering that Babel’s mark indicated that Babel was a member of the Foundation.

For the trade purchasers, however, they would appreciate that the use of the HALLOUMI mark indicated that the product stemmed from being a member of the Foundation.

The incorporation of the word HALLOUMI into to a larger mark featuring the word ‘HAJDU’ would indicate to trade purchasers that the cheese was produced by Hajdu, a member of the Foundation.

As a result, Smith J found a very strong likelihood of confusion and rejected Babel’s application to register the mark.

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EVENTS

CPD webinars and online events For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events.

Missed a webinar? Catch up at www.cipa.org.uk/whats-on/past-webinar-recordings.

Thursday 28 January 2021 Webinar

COMPARISON OF EPO OPPOSITIONS & USPTO PTAB PROCEEDINGS

Time: 12.30–13.30

CPD: 1

Proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB) are often likened to oppositions before the EPO. However, there are many differences between the two types of proceedings and practitioners must adopt different strategies in order to succeed. Maeve O’Flynn and Josh Goldberg, partners from Finnegan’s London and Washington DC offices, will compare the proceedings, and address potential synergies and conflicts when proceedings are pending or anticipated in both jurisdictions.

Speakers: Maeve O’Flynn and Josh Goldberg (Finnegan Europe LLP); Prices: £73.20 | Free for CIPA members

Thursday 11 February 2021 Webinar

GB & EUROPEAN PATENT RENEWALS

Time: 12.30–13.30

CPD: 1

Speaker: Charlotte Knight (Slingsby Partners) Prices: £73.20 | Free for CIPA members

Monday 15 February 2021 Webinar

PATENT DRAFTING FOR MACHINELEARNING INVENTIONS

Time: 12.30–13.30

CPD: 1

This webinar will focus on some of the practical considerations to bear in mind when drafting patent applications for inventions which relate to machine learning. I will discuss claim drafting strategy and also the issue of sufficiency of disclosure in light of T0161/18.

Speaker: Richard Kennedy (Venner Shipley); Prices: £73.20 | Free for CIPA members

Whether you pay renewal fees directly or use a third-party service, renewal fees are still a very relevant part of patent practice. Most paralegals will need to be able to advise clients of renewal deadlines, fee amounts and even potential extensions.

This webinar will cover the topic of UK and European renewal fees. In particular we will discuss the deadlines associated with renewals, including how to calculate those deadlines and whether extensions are available.

We will also discuss the impact of non-payment of these fees and Volume 50, number 1-2

how firms can mitigate risk when advising of or handling renewal fees.

Thursday 18 February 2021 Webinar

UNDERSTANDING AND COMBATING OBVIOUSNESS REJECTIONS UNDER 35 U.S.C. 103

Time: 12.30–13.30

CPD: 1

Obviousness rejections are ubiquitous when dealing with the USPTO. Although they are commonplace in examination, it can be difficult to clearly identify the examiner’s concerns reflected in the rejection and to plot a path to patentable claims. Our discussion will focus on these rejections with suggestions for overcoming them and working with your examiner to find a way forward.

Speaker: Loren Hulse (Holland & Hart); Prices: £73.20 | Free for CIPA members

Tuesday 23 February 2021 Webinar

VIDEOCONFERENCING AT THE EPO – THE BASICS AND BEYOND

Time: 12.30–13.30

CPD: 1

Videoconferencing (vicon) now dominates the oral proceeding landscape at the EPO. As part of CIPA’s monthly webinar series on vicon at the EPO, this webinar covers ‘the basics and beyond’ with everything you need to know from tech and Zoom set up, and the legal necessities, to tactical advice from the speakers’ experience.

Whether you are yet to take part in your first vicon, need reassurance and more practical information, or just have questions about vicon in practice, join this webinar to be best prepared for your next hearing. Listen and take part as the panel share their wealth of oral proceeding and vicon expertise to be our speakers for this webinar which promises to be both enjoyable and informative!

Speakers: Joeri Beetz (Keltie); Ilya Kazi (IK-IP); Gwilym Roberts (Kilburn & Strode); Prices: £73.20 | Free for CIPA members

Friday 26 February 2021 Webinar

PATENT WORKING STATEMENTS IN INDIA

Time: 12.30–13.30

CPD: 1

Amendments have been made to the patent working statement form as well as its corresponding rules in India, which are a must-know for all patentees and licensees filing these statements in 2021. See full details online.

Speaker: Tarun Gandhi (Chadha & Chadha); Prices: £73.20 | Free for CIPA members

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PERSONAL

OBITUARY

William Robert (Bob) Farwell 1938-2020

B

ob Farwell was a man who hid his drive, intellectual curiosity, and goodwill to all, behind a sometimes gruff exterior. Bob was educated at Ewell County Technical College (where he did five A-Levels, including Botany – a lifelong passion) choosing to go there rather than Kingston Grammar School because he could not do the combination of subjects that he wanted at the latter.

He went on to study biochemistry at University College Oxford. He was fond of saying that he was taught biochemistry before DNA was invented, this slight exaggeration illustrating his concern that education is often long behind innovation - a concern that he kept for his entire professional career.

After Oxford, Bob joined Unilever, and found his way into their patent department. The road to qualification then was much harder than today, and professional education was gained by reading around, and by osmosis in the work place, with only the Informals providing anything approaching formal teaching. Bob became heavily involved in the Informals, and liked the atmosphere of a group of like-minded trainees arranging lectures from the great and the good to provide some formal teaching outside their place of work.

As Honorary Secretary of the Informals, Bob met Wally Weston who was on CIPA Council and who was looking for someone to handle chemical work. So, Bob moved to Phillips & Leigh where, entering the partnership at the same time as Bob Weston, he stayed for the rest of his professional career. He was joined there by his trade mark attorney son Keith Farwell, who passed away at a tragically young age.

During Bob’s career his interest in education and CIPA grew, and he joined Council, becoming President in 1992-93 and serving for a long time on the Benevolent Association.

Bob was instrumental in updating the CIPA Bye-Laws, although not so much as he wished for: it was a long desire of his that the patent and trade mark professions should be closer and not drift apart.

Bob was a kind man and always willing to help those around him; but he could be roused to ire by those he thought thoughtless of others. A devout Christian, he was nevertheless tolerant of those in the firm of lesser faith. A tolerance those of lesser faith reciprocated with interest.

Bob was able to turn his hand to many technologies, not just professionally but also in his home life.

His tales of renovation of his house, and of vintage road vehicles most older than he was, and in considerably worse condition, were always strangely

interesting. We say strangely, because Bob had an ability to make the driest of subjects interesting – a good skill for a patent agent. This skill sometimes led to over-long lunches as Bob talked of the world and persuaded his colleagues that work could wait a little with the phrase “any one fancy another half ”.

In his professional role, Bob advised a range of clients in a diverse range of technologies, but towards the end of his career a large part of his attention was focussed on one pharmaceutical client. When that client had a product approval refused and went bankrupt, Bob decided it was time to retire.

In that retirement, Bob did not rest. A lifelong interest in church architecture led him to attend a masters’ course on Coptic iconography.

When he submitted his dissertation, he was told “that’s too long for an MA – why don’t you do a doctorate”- which he did.

During retirement, Bob’s first wife Jenny predeceased him, and he is survived by his son Neal, his daughter Eleanor, and his wife Margaret.

A good man, a good life, a good friend.

Bob Weston (Fellow) and Jim Boff (Fellow) Bob Farwell – an Appreciation It is with a heavy heart that I write these lines in profound appreciation of the friendship with and help from Bob Farwell. He and I shared our concern for the well-being of our profession, especially over the training and examination of students. Bob was devoted to the Institute and was an effective member of Council and its various committees. He always spoke refreshingly directly and pithily. We never disagreed about Institute politics

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– actual politics was a different matter!

He and I were on opposite ends of the party-political spectrum and our fierce arguments never impaired our friendship. Indeed, while Bob normally had an equable temper, we joked about the fact that I could provoke the Farwellian volcano’s outburst by uttering two simple words: Tony Benn.

Bob was a truly great patent

ANNOUNCEMENTS

attorney and unlike me no technical subject matter fazed him. His kindness helped me enormously in the 1970s and 1980s when in my fledgling practice I undeservedly acquired a significant amount of pharmaceutical work that was completely beyond me: Bob rescued me.

I enjoyed his company and his joie de vivre; my wife and I got to know his

wife Jennie and had many stimulating discussions about children in care: Jennie was a guardian-ad-litem and I found her a wise source of advice in my role as a family court magistrate.

I miss them (and their son Keith with whom I also worked a lot) tremendously.

Tibor Gold (Fellow)

Announcements On 12 January 2021, Kirsty Simpson (Fellow) joined Venner Shipley as a partner in the firm’s Chemical and Life Sciences team. See www.vennershipley.co.uk A.A.Thornton & Co changed its address with effect from 1 January 2021. The new address is: Octagon Point, 5 Cheapside, London EC2V 6AA Telephone and fax numbers are unchanged. See full details at https://www.aathornton.com/ Letters for the Editor and announcements should be sent to: editor@cipa.org.uk

Have you listened to Two IPs in a Pod yet?

What is Two IPs in a Pod? Two IPs (for short) is a podcast launched in 2020 by CIPA, hosted by Lee Davies and Gwilym Roberts, the ‘Two IPs’. It is available on all the major podcast platforms and is rapidly growing in popularity (or so Lee and Gwilym say).

It is a relaxed, informal conversation between Gwilym and Lee, where they invite CIPA members and others from across the world of IP including inventors, innovators and creative people to share their stories. The entire series is available on CIPA’s feed here: https://cipa.buzzsprout.com/ What is more exciting is that you can join the show.

Two IPs needs more stories from patent attorneys and their clients. Please get in touch if you have a great story to tell about an invention and you and the inventor would be prepared to come on the podcast and share it. It takes just 45 minutes to an hour to record and you then have an online resource that you can use to promote your firm and what you do. We want to demonstrate that the IP profession is diverse and that the creative world is an interesting and exciting place to be. So, what are you waiting for?

Contact Lucy Wharton (CIPA’s External Affairs Officer), Lucy@cipa.org.uk.

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IP INCLUSIVE

IP Inclusive update

By Andrea Brewster OBE

A

s 2021 makes its shaky start, our amazing supporters will continue to keep diversity, inclusion and wellbeing on the agenda despite – or perhaps because of – the challenges that Covid-19 has brought. It’s now more important than ever to look out for one another, to accommodate and support people’s individual needs and to learn from different approaches and perspectives.

I apologise for not providing an IP Inclusive update for a while. Suffice to say the last few months of 2020 were busy times for us; here’s what’s been happening.

Careers in Ideas Week

Careers in Ideas Week in mid-November was a big success, with several events (including some for potential recruits), new outreach resources and closer links with relevant charities: check out our

website Careers in Ideas Week and resources pages, or go direct to https://careersinideas.org.uk. Pretty much all IP professionals agree we should widen awareness of our sector and ensure that access to it is fair, so if you’re looking for ways to help with that, Careers in Ideas and its “featured charities” are great places to start.

Thank you to everyone who got involved with this campaign, including to CIPA’s Deputy Chief Executive Neil Lampert who produced our fabulous “The IP Crowd” collages to show the diversity of people who work in IP: you can see an example below.

Diversity benchmarking survey In November and December we re-ran our 2019 diversity benchmarking survey.

This year’s sadly didn’t yield such a good

response as last year’s, but it will still provide useful data. We’ll publish a report in the next couple of months and the results will help inform our 2021 plans.

IP Inclusive’s future

Those plans will include a good long look at IP Inclusive’s structure and funding. We want to make sure the initiative continues to deliver the things its supporters most value, whether individual IP professionals or the organisations they work in. I’ll be looking at the results of the survey we ran last autumn, and alongside IP Inclusive Management considering ways to ensure a sustainable development based on the resources we have available and our stakeholders’ preferences. Thank you if you or your organisation contributed to that consultation. There will be other opportunities to provide your input over the next few months.

Events

We enjoyed a flurry of pre-Christmas events in December, from IP Ability, IP Futures, IP Out and Women in IP, then kicked off January with a mental health webinar about Touch Network and a joint Women in IP/IP Out coffee date on “bringing your whole self to work”. I hope you were able to attend at least some of these. Our communities and regional networks are now busy planning more, so keep an eye on our events page.

In particular, from Women in IP: • Annual flagship event on Monday 22 February, 1 pm, looking at “quick wins” for organisations to improve their inclusivity levels.

• Coffee dates on Tuesday 9 March at 2 pm, to mark International Women’s Day on 8 March.

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Our 2021 annual meeting has been postponed but we hope to reschedule soon. Everyone will be welcome to come along, to hear updates on our 2020 achievements and help shape the next year’s plans, including for our structure and longer-term strategies.

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_Ability, @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 plans

We’ve plenty else to do in 2021 to build on the fantastic work done last year, including on allyship (see for example the excellent series of “Ask Me Anything” recordings by our North of England network), BAME representation levels, social mobility and our new seniorlevel “think tank” for the patent and

IP INCLUSIVE

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

trade mark professions. We will also, of course, continue to provide a supportive community through the latest Covid-19 restrictions, especially for people from

under-represented groups who need a louder voice.

Do get involved if you can! There are contact details above.

IP Inclusive resources There are loads of free D&I resources on the IP Inclusive website – see https://ipinclusive.org.uk/resources/ – for example: • Recordings of our webinars, and events follow-up such as speaker slides and notes • Presentations and toolkits, e.g. on unconscious bias and the business case for diversity • Guidance notes, for instance on recruiting for social mobility • Template documents such as EDI and mental health at work policies • The IP Inclusive logos (for Charter signatories to use in their communications) and poster • Information about the “Steps to Inclusion” D&I review, to help signatories fulfil their Charter commitments We also have dedicated website pages on: • Mental Health and Wellbeing (a collaboration with the charity Jonathan's Voice, packed with information, guidance and links to useful resources) • Diversity data for the IP sector, including the results of our 2019 benchmarking survey • Careers in Ideas, with links to a range of outreach materials including a work experience event pack

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CPD & EDUCATION

LIFE SCIENCES

CIPA Life Sciences Webinar Series 2020 Report of CIPA Life Sciences webinars, 16-20 November 2020

T

he annual Life Sciences Conference in 2020 was held as a series of five webinars. Individual webinars attracted between 180 and 200 delegates, with around 140 delegates registering for the full series. The results of surveys completed at the end of each webinar indicated that this year’s event was positively received! Looking forward to 2021, the provisional venue and dates for Conference are The Midland Hotel in Manchester on 11 and 12 November.

EP case law update

The webinar series was opened on Monday 16 November by Simon Wright (J A Kemp), who thanked the Life Sciences Committee and Sequence of Events for all the work put into this year’s event.

Impact of Covid-19 on EPO proceedings The first presentation of the webinar was by Gareth Probert (EIP HealthTech). Gareth noted the high level of uncertainty presented by the pandemic and its significant impact on the EPO and its users, as well as the measures taken by the EPO in respect of extensions of time and oral proceedings before the Examining and Opposition Divisions. Oral proceedings in examination are generally being held by videoconference (vicon). In opposition, in-person opposition hearings have been postponed until 15 September 2021 and the pilot project extended until that date. From 4 January 2021, consent of the parties for vicon proceedings will no longer be necessary. In-person hearings may be requested both in examination and opposition, with very serious reasons required. It was noted that while around 80 vicon hearings are being held by the Opposition Division every month, this figure needs to be around 360 per month if the Opposition Division is to catch up with its targets by the end of 2022. In terms of the practical impact of vicon on attorneys and clients, and looking forward to 2021 and beyond, Gareth noted that representing clients at the EPO would probably not go back to ‘pre-Covid normal’; electronic communication would be increased, along with an increase in working from home and remote collaboration; and that perhaps vicon hearings would become the default option. [CIPA is organising a series of webinars on videoconferencing at the EPO, see pages 8 and 41.]

The impact of Covid-19 on EPO Boards of Appeal proceedings The next presentation was by Graham Ashley (EPO Board of Appeal) and Christopher Rennie-Smith (European Patent Consultant). Graham began by stating the current situation with oral proceedings before the BoA, which are still taking place in-person. Hearings are being held both in Haar and in

the Isar building in Munich, and parties must themselves check which location is being used. There is a general limit of two people per party, more being considered on reasoned request.

While currently, all parties have to agree to vicon, this is likely to change following a consultation on changing the Rules of Procedure to give the Boards the power to hold oral proceedings by vicon, including the ability to allow any party to attend inperson oral proceedings by vicon. Mixed-mode hearings are being tested, with a small number of hearings having been held in this way. Public access is currently only available onscreen in Haar, but remote access is being considered. Live streaming of hearings has been excluded as a possibility on the grounds of cost. Christopher made a number of observations and suggestions. He questioned the legal basis for vicon, and whether there would be problems in the future if parties felt that their rights had been transgressed. In relation to hybrid (mixedmode) hearings, he questioned whether there would be a fair hearing for parties in different situations and expressed surprise that in the consultation, the proposed amendment to the Rules of Procedure would make this a possibility to be imposed by the Board, a little more thought being required. The potential for off-camera communication and the recording and disclosure of information was also discussed.

Discussion of G3/19 The final presentation of this webinar was by Mike Snodin (Park Grove IP). Before handing over to Mike, Simon Wright opened by setting the scene regarding G3/19, its wider impact on patent eligibility before the EPO and the highly political nature of the situation. Mike set out the background to G3/19, discussing G2/12 and G2/13, the subsequent Interpretative Notice from the European Commission in November 2016, the introduction of new rule 28(2) (in force 1 July 2017), and the decision in T1063/18 (5 December 2018). He then considered the legal rationale of the decision in G3/19 and the questions of who has the power to amend the EPC, when and how they can exercise that power, and who has interpretative supremacy with respect to the provisions of the EPC (for example the Board of Appeal, as indicated in G3/08, or the Administrative Council). He observed that the EU Commission Notice followed pressure from various interest groups and the Parliament. In relation to the referral to the EBA, he noted the Administrative Council’s responsibilities and powers in relation to the Boards of Appeal. In G3/19, the EBA upheld the interpretation of article 53(b) according to G2/12 but went on to say that the EBA could not ignore rule 28(2), which had demonstrated a clear legislative intent of the Contracting States, as represented in the Administrative

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Council. Mike noted that there is in fact a clear way in which the Administrative Council can crystallise legislative intent, which includes various requirements and safeguards. He further noted, in relation to the EBA’s conclusion that rule 28(2) calls for a dynamic interpretation of article 53(b) EPC, that the EBA is required only to take account of the Convention, and not the Implementing Rules. Apparent consequences of G3/19 include a significant increase in the powers of the Administrative Council, with the ability to amend the EPC by an informal route, i.e., by passing a new rule that can establish a new interpretation of the EPC. Many questions are raised, including whether the ability for informal amendment, sanctioned by G3/19, is permissible in view of article 39 of the Vienna Convention.

Following audience polls, Simon Wright commented that it seems that a large number of participants were worried about the continued independence of the EBA.

Hot topics in life sciences IP and SPCs update

Marion Rees (Adiga Life Sciences) chaired proceedings on Tuesday 17 November, which began with ‘SPC Case Law – up to date in 20 minutes’ by Rob Stephen and Gareth Morgan, both of CMS. Rob gave the key decisions in 2020 as Santen C-673/18 and Royalty Pharma C-650/17, and noted that, unusually, there are no pending referrals to the CJEU in relation to SPCs. Santen was considered first by Rob. The focus in Santen was on article 3(d) of the SPC Regulation, which provides that the requirement for a valid authorisation to place the product on the market as a medicinal product must be the first such authorisation. As background, in Neurim, the CJEU had decided that an earlier MA for melatonin, for use in sheep for regulating seasonal breeding activity, did not preclude the grant of an SPC in respect of a later MA for melatonin as a medicine for insomnia in humans.

In Santen, an SPC was refused in respect of an ophthalmic emulsion containing ciclosporin used to treat severe keratitis in adult patients with dry eye disease, because there was an earlier MA for a product having ciclosporin as its active ingredient in an oral solution, for different therapeutic indications; thus, in Santen, the CJEU overturned Neurim and the situation went back to as it was pre-Neurim. As a result, active substances that are repurposed for new uses will no longer be eligible for SPC protection in Neurim-type situations, and repurposed actives that are protected only by such SPCs are now vulnerable to immediate generic competition. Rob noted that claim format was not the issue, so provided there is no earlier MA, an SPC can still be obtained where a patent covers a new indication for a known active by way of a second medical use claim. In terms of the UK position post-Brexit, there is the possibility for the UK courts to diverge from the position taken in Santen.

Gareth then discussed Royalty Pharma, with a focus on article 3(a) of the SPC Regulation which requires that the product is protected by a basic patent in force at the date of the application for the SPC. Royalty Pharma (RP), had a patent that claimed inhibitors of a particular enzyme with use in the Volume 50, number 1-2

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treatment of diabetes; after the application for the RP patent, active substances were discovered and separately patented by a licensee of the patent. RP applied to the German Patent Office for an SPC on the basis of its patent and an MA for a specific product that had been developed by the licensee. The German Patent Office refused the SPC and referred the question of whether the specific active substances that were discovered and patented after the RP invention were specified within the meaning of article 3(a), such that they could be protected by RP’s patent. The CJEU adopted the two-stage Gilead test, confirming that it was technologically neutral, with the form of the claim not decisive. The skilled person has to be able to specifically identify the product using the Gilead test and the disclosure of the patent. Gareth commented that the CJEU had clarified Gilead: the ‘heart of the invention’ is not relevant for article 3(a); to work out whether a product is protected, the claims have to be construed pursuant to article 69 EPC and its Protocol on Interpretation; there is no problem with functional claiming provided the skilled person is able to identify the product, at the priority date, without inventive activity. It is left to the IP offices to decide whether the product can be directly and unequivocally identified by the skilled person; however, the need for postpriority inventive activity to arrive at the product was expressly set out as fatal to SPC eligibility.

Hot Topics in Life Sciences IP: there was then a panel discussion

by Susan Chiappinelli (GSK), Sally Curran (AstraZeneca) and Marion Rees (Adiga Life Sciences). Marion opened with the impact of Covid-19 on large and small pharmaceutical companies; an obvious consequence being working from home and the challenges that brings. Susan and Sally both highlighted the speed of advances because of the pandemic, noting deals

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between different companies, media releases, etc., and further, the overriding focus on getting products to patients. Sally noted that in relation to investigatory new drugs in Covid-specific therapies, projected approval dates for products are moving much further forward than previously expected, and that this has a significant impact on exclusivity periods. Government incentive schemes and collaborations were discussed, as well as public perception of IP and access to vaccines and therapies.

Susan noted that generic versions of Remdesivir are available in some less-developed countries, directly as a result of IP licences and tech transfer from Gilead, and that the Medicines Patents Pool has now extended its remit to therapies for Covid-19. In relation to compulsory licences, both Sally and Susan were hopeful that given the efforts in developing products, scaling up production and ensuring supply, there would be sufficient supply of effective products; in this case, compulsory licences wouldn’t come into play.

The final topic was Brexit and particularly its impact on SPCs. A major issue is the situation with Northern Ireland, discussed by Susan. A marketing authorisation (MA) granted by the EMA will cover Northern Ireland, while MAs granted by the the Medicines and Healthcare products Regulatory Agency (MHRA) will cover England, Scotland and Wales; however, the SPC right is UK-wide. This could lead to a situation in which the first MA is issued by the EMA, is effective in Northern Ireland, and triggers the deadline for applying for the UK SPC which when granted will have effect in Northern Ireland but not in the rest of the UK if there is no MA from the MHRA. An application to extend the SPC to the rest of the UK would then be necessary with the issuance of an MA by the MHRA. Marion raised the issue of the potential for the UK courts to deviate from EU case law in relation to SPCs and that there could be situations in which SPCs would differ in the UK and EU. On exhaustion of rights and parallel imports, Sally commented that there is no clear picture on this yet. The potential for divergence of the MHRA from the EMA was discussed, and the possibility that the MHRA may not require clinical trials in humans for biosimilar products where in-vitro efficacy had been shown. This could lead to a situation whereby biosimilar competition could be expected in the UK earlier than elsewhere. Finally, Marion noted that the complications of Brexit would have a significant impact on smaller companies.

Inventorship considerations – an international comparison

The third webinar of the series considered inventorship in the UK, Germany and the US. The webinar was chaired by Maria Nichol (Galapagos). David Hoffman (Bit.Bio – US) Bernd Hutter (Morphosys AG – DE) and Michael Roberts (Reddie & Grose LLP – UK) discussed questions posed by Maria.

Inventorship determination – best practices and tips Dave explained that under US law, an inventor is someone who has contributed to the conception of subject matter described

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in at least one claim in a patent application, with reduction to practice not normally relevant. The process of determination of inventorship generally starts once there is a set of claims for circulation. Berndt observed that the consequences of incorrect inventorship were most severe in the US and that the US standard for inventorship would generally be followed in Germany. The process of invention disclosure is formal in Germany. It is a legal obligation for employees to submit an invention disclosure, although there is no particular format for the disclosure. Determination of inventorship is very detailed, because of German inventor remuneration law. Michael discussed the definition of an invention as an inventive concept under UK law, and the obligation on patent attorneys in private practice in the UK to have information on who the inventors are, making sure that the applicant has the right to obtain the patent.

How to ensure a clean and secure chain of title?

Bernd explained that there is no automatic assignment of an invention from an employee inventor to an employer in Germany, although an invention notice to the employer is necessary. There is a presumption that the employer claims the invention within four months of the notice and the employer is obliged to file a patent application unless there is an agreement with the employee otherwise. The employee retains certain rights that in practice, the employer often buys out. University employees have a special status and do not have to notify their employer about inventions, while students and post-grads have independent status. Michael outlined the situation in the UK re employee inventions. He noted that the process in court when looking at entitlement is to identify the invention, work out who the inventor is, and assess whether the inventor is an employee.

Assignments between employees and employers for future inventions are possible, these being confirmed by confirmatory assignments. Finally, he noted the priority entitlement trap as addressed in T844/18, relating to CRISPR gene technology and an applicant of the US priority application being omitted from the PCT filing. Dave explained that in the US there is no federal law governing employee inventorship. In the absence of a contractual agreement, inventions are owned by the inventor, and most employers take this into account either in or alongside employment contracts. Best practice is to execute and record an assignment at or near the time of filing a priority application; failure to secure assignments can result in loss of entitlement to the priority date.

Inventor remuneration In Germany, employee inventor remuneration is triggered by anything that can be considered as a revenue for a company.

Assessment of remuneration involves a series of calculations, starting with deductions from the total revenue for high-income cases and taking into account factors such as the number and relative importance of the patents involved, the number and individual contributions of the inventors, the level of direction and support given to an inventor and his or her position in the

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between employees and employers go to a dedicated arbitration court. Ex-employees can use the arbitration court, or civil or labour courts where inventor remuneration can become more of a negotiation. Michael noted the importance in the UK of determining inventorship and referred to Yeda v Rhone-Poulenc Rorer [2007] UKHL 43 as the leading case in entitlement issues.

Impact of AI and advancing technology on inventorship Michael commented on Thaler v Comptroller General [2020] EWHC 2414 (Pat) in which the Patents Court ruled that a machine (‘DABUS’) could not be the inventor and that the chain of title failed because the machine was not able to assign rights.

Sufficiency in the English courts – the Regeneron story and practical implications

company. In the US, there is no federal law and few state laws in respect of compensation for employee inventions and generally, the employee’s general compensation would be considered sufficient. University policies do however often specify inventor compensation. In the UK, employers have to reward employee inventors only in cases of outstanding benefit, considering the specific circumstances of the company and the value of the patent. Michael referred to Kelly & Chui v GE Healthcare [2009] EWHC 181 (Pat) and Shanks v Unilever and others [2019] UKSC 45 and questioned whether UK employers have adequate inventor compensation schemes in place.

Inventorship issues Dave observed that disputes appear more frequently in academic institutions, with inventor omission being a more common problem than the erroneous inclusion of one. He advised the use of neutral third-party law firms to give an independent assessment in cases of dispute. Bernd noted that in Germany, issues related more to remuneration. Inventorship disputes

Thursday’s session was chaired by Nicola Jadeja (Pinsent Masons). Shohta Ueno (Regeneron), Katie Coltart (Kirkland & Ellis) and James Nicholls (J A Kemp) were all involved in the Regeneron litigation, on the Regeneron side, and gave their views on the process; Shota gave the scientific background, Katie recounted the court proceedings, and James gave his views on the practical implications for patent attorneys and applicants.

Fully human immunoglobulin transgenic mice had been failing to produce antibodies to targets known to induce antibody responses in wild type mice, resulting in the need to inoculate larger numbers of mice with the target of interest in order to identify an appropriate antibody. The invention of VelocImmune technology came about in early 2001, when Regeneron’s CSO, Dr. Yancopoulos, had the idea of ‘reverse chimeric’ technology, retaining mouse constant regions and creating a hybrid locus in mice, to optimise the mouse immune function and avoid breeding problems that had been observed in the fully human immunoglobulin transgenic mice. At that point, transgenic mice with the ability to produce reverse chimeric antibodies had not been produced and it was appreciated that this would require some time.

The court proceedings involved Regeneron’s European patents EP 1,360,287 and EP 2,264,163, relating to the VelocImmune

CIPA Life Sciences Conference 2021 Provisional venue and dates Thursday and Friday 11-12 November 2021 • The Midland Hotel, Manchester

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transgenic mice. Regeneron had contended that various strains of Kymab’s Kymouse platform infringed certain claims of the patents. Following proceedings in the High Court and Court of Appeal, the question of sufficiency in respect of Regeneron’s patents went to the UK Supreme Court (UKSC). The key product claims in ‘287 were ‘obtainable by’ claims and the process to which they referred involved the in-situ replacement of V, D, and J gene segments of an endogeneous locus immunoglobulin heavy chain variable region locus in an isolated mouse embryonic stem system with orthologous human V, D, and J gene segments.

The claims of the patents were broad enough to cover anything from the replacement of a few V, D, and J gene segments of the endogeneous locus, to all of them, that is, the replacement of the whole immunoglobulin variable region locus. At the priority date of the patent, not all mice falling within the scope of the claims could be made. While the High Court found infringement, Regeneron’s patents were found invalid for lack of sufficiency on the basis that the skilled person would not have been able to perform the invention over the whole area claimed without undue burden and without needing inventive skill; in particular, that the skilled person would not have been able to perform a genetic insertion or deletion of the sizes proposed in the patents. The Court of Appeal overturned this finding and found the patents valid, reasoning that the patents disclosed a ‘principle of general application’; the technical contribution being a reverse chimeric locus in mice and benefit of reduced immunological deficiency, and that all mice falling within the scope of the claims would possess this benefit.

The UKSC, in a majority decision, held that sufficiency is not merely about disclosure, but also about the ability to work an invention after the expiry of the patent monopoly by such disclosure; this meant that the principle of sufficiency required the whole range of products within the scope of a product claim to be enabled by means of the disclosure of a patent. The case in suit was one which fell within the Detergents and Exxon line of EPO authority, with the claim range before the court being the range from all the segments in the human variable region down to just one V, D and J segment in the heavy chain and one V and J segment in the light chain. As the skilled person was unable at the priority date to create a reverse chimeric locus involving the whole human variable region, the claims in suit were insufficient.

Reverse chimeric locus was not a principle that enabled products to be made, but the result of successfully making the product; there was no ‘principle of general application’. Thus, because the technical contribution had been determined to be about making products, it was necessary to be able to make substantially all products falling within the scope.

James considered parallel EPO proceedings and referred to T19/90 and T890/02, concluding that it may be easier to invalidate a patent for insufficiency in the UK, with a possibility of differing outcomes in the EPO and UK; the UKSC decision in Regeneron may shift the balance further to challengers in the UK. He noted that per the UKSC decision, sufficiency is required across any relevant range in a claim, a relevant

LIFE SCIENCES

range being one that is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made, and that that range does not need to be numeric. He suggested that questions for consideration going forward include whether a single integer in a claim that embraces many possibilities would be considered as a range, and whether ‘comprising’ language could open a claim up to a range-based attack.

Implications for drafting include the need for more fallback positions for product claims, particularly where an explicit range is present; a need to discuss potential sufficiency issues with inventors; basis to exclude elements that may present difficulties to reduce to practice, and for the limiting or closing off ranges; closed claim wordings; and basis for picture claims to specific types of product.

Implications for filing strategy include how to balance the decision on when to file with the requirement for full enablement; whether to delay filing if a potential sufficiency issue identified, noting the risk of third-party disclosure; and whether to file to a broad concept or to specific embodiments, with follow up filings for later-enabled embodiments. Regarding the Regeneration filing strategy, James commented that Regeneron had a technology that they felt was applicable on a large scale; an idea of a conceptual nature idea that could extend to the design of any desired locus. They set out exemplary target schemes in their patents; due to the inherent nature of the technology, creating the range of mice would take many years. While the strategy hasn’t worked out in the UK, it was reasonable considering the risk of the concept being disclosed and the fact that Regeneron was a start-up company in need of investment and with a need publicise their concept at the time the invention was made.

Update from the US

The final webinar of the series, on Friday 20 November, was chaired by Dev Crease (Keltie) who was joined by Seth Levy (Nixon Peabody) and Director Andrei Iancu (Undersecretary of Commerce for IP and Director of the USPTO).

Seth noted the special impact Covid-19 has had in the life sciences community and the amazing amount of innovation that had taken place to address public health needs, remarking on the unchanged rhythm of patent prosecution in the US, despite the challenges Covid-19 brought. Director Iancu discussed the measures that had been taken by the United States Patent and Trademark Office (‘USPTO’), including remote working, electronic examination; virtual hearings and examiner interviews; and the ability of the public to attend Patent Trial and Appeal Board (PTAB) hearings by video. An expedited process for Covid-19-related patent and trade mark applications had been created at the beginning of the pandemic, as well as a licensing platform for Covid-19 patents and applications and other resources. For the future, what has worked well could potentially be retained – for example, virtual hearings and the ability of virtual viewing for the public, an increased level of home working, and e-filing.

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Diversity in innovation is one of Director Iancu’s main areas of focus. Innovation in the US is highly concentrated demographically, geographically, and economically. Only 13% of inventors named on US patents are female, and the proportion of racial minorities is even lower; innovation is concentrated in certain areas, e.g., Silicon Valley, the Research Triangle in North Carolina, the Boston-Philadelphia corridor, the Seattle area and a few other areas; and people from economically challenged neighbourhoods do not participate to the same level, irrespective of demographics and geography. The USPTO has launched the National Council for Expanding American Innovation (NCEAI), including industry, academic and governments leaders as well as independent inventors, and with the goal of collecting public input and using its own expertise and best practices to help develop a national strategy for expanding innovation.

The conversation then moved on to patent-eligible subject matter in the US since Mayo v Prometheus (2012). The USPTO issued subject matter eligibility guidelines in 2019, giving structure to the law to enable examiners to follow the law in a predictable and consistent manner. Since the guidelines were first issued in January 2019, there has been a 44% decrease in uncertainty of examination when it comes to section 101.

However, the courts are not bound by, and are so far not taking account of, USPTO guidance. This could be addressed by legislation and there seems to be an appetite among lawmakers to look this.

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The next topic was artificial intelligence, with Director Iancu noting that the USPTO had issued two reports on this subject and that the number of AI patents has doubled since 2002 at the USPTO, the share of patents with AI having also doubled. Recipients were geographically dispersed throughout the country. Regarding the treatment of AI applications, the ‘DABUS’ application in the US was rejected on the grounds that an inventor must be a natural person. There are many policy considerations surrounding the issue of AI inventors, this being an area of international collaboration with WIPO playing a leading role The final topic was PTAB, which came into being in 2012.

Director Iancu noted that trials are getting more attention than appeals despite there being many more appeals than trials (9,000 vs 1,000 per year). In terms of appeals, pendency has gone down to about 13 months on average (from about 30 months in 2015) and a fast-track appeals pilot programme has been launched with the aim of concluding proceedings within six months.

On the trials side, inter partes reviews (IPRs) and post-grant reviews (PGRs) are available through the PTAB to anyone in the public who wants to challenge a patent; about 85% of cases arise when there is a district court litigation. Director Iancu noted that the PTAB route is a cheaper and faster alternative to court proceedings, but not an opportunity for multiple petitions and repetitive attacks.

Bringing proceedings to a close, Dev thanked all the speakers, the organising sub-committee, and Ivana and Sally of Sequence of Events.

Gin tasting The final event of the week was a gin-tasting webinar, hosted by Jenny and Bob Clark of OX Gins, with a supply of gins, mixers and garnishes having been sent to the participating gin-lovers in advance. We had the pleasure of learning about and tasting three different gins, with expert tips given by Jenny and Bob, and the bonus of being able to enjoy them without thought of a journey home!

Jenny Vaughan (Fellow)

IP clinics – volunteers needed CIPA IP clinics would like to thank you all the clinic volunteers for the success we had in 2020. As most organisations, we had to make changes from face-to-face sessions and move over to Zoom conference calls, however, this became quite successful and will be something, we continue to offer when we return to the office.

If you are interested in volunteering for clinics or would like more information, please email clinics@cipa.org.uk

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The Yellow Sheet

The Yellow Sheet January-February 2021

New Informals Honorary Secretary

Joel Briscoe Honorary Secretary Hi Everyone, it has been a busy December and January for me and for the informals as a whole. We are still working on collating feedback for the PEB exams and comments on social media thereafter, providing feedback to the Examination Secretariat for the e-EQEs, and now feedback on the Queen Mary examinations a few days ago (at the time of writing). That is without considering the feedback we have already provided on consultation of a ‘Sunset Clause’ by IPReg on acknowledging old JEB exams, and a consultation on changes to CPD. Not a quiet start to the year, but we like being busy – it normally means we are making a difference, so keep your comments coming in!

Turning to more enjoyable matters, I am really looking forward to seeing how the first social of the year, hosted by the Oxford Social Sec, goes and seeing more of the same thereafter! We have also had the addition of a new committee member, Tom Bridgwater, who attended the new student induction day and was so

enthralled by my talk signed up a few days later (that’s the way I see it anyhow…).

Tom will be the Sports Coordinator (when the post-lockdown time comes) and helping out with a bunch of other things in the meantime – so watch that space.

Good luck to those that are doing the e-EQEs, apparently over 60% of candidates still haven’t tried the WISEflow software out, so if you’re one of those, make sure to get stuck in soon. Mock 2 starts the week commencing 1 February with the pre-EQE and continues until 5 February with papers A-D, so make sure to put that in your diary!

In addition, we have a couple of excellent articles for you, discussing changing the focus of Blue Monday, and explaining the Yellow Sunflower (both by Jonathan Foster).

You may also recall that we are running the occasional article on the theme of Around the World in 80 OAs. The first stop on our tour saw us in Italy (see the November 2020 issue). In this issue, we travel across the pond, where we will hear from Tomas Karger on what it was like to be a trainee Canadian patent agent (what we would know as an attorney…). Finally, the Yellow Sheet will wrap up with a Whacky Patent!

Editorial

Introductions and updates

Tom Collier Yellow Sheet Editor Welcome back to another Yellow Sheet.

So, what do we have you this time?

We have some updates! As Laura will explain, the Foundation Lecture series are ready and rolling. Our new Sports Coordinator Tom Bridgwater, will also make an introduction.

You’ll further notice a few more petphotos – including a beautiful cat for those of a feline disposition!

Kathryn Taylor Blog, Website and Social Media Editor Check out the Yellow Sheet blog (https://yellowsheet.wordpress.com) for: • • • •

IP news and updates; events listings; information about the 2021 e-EQE; tutorials, foundation lectures, and buddy scheme; • wacky patents; and • information on welfare and wellbeing.

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The Yellow Sheet

Laura Cassels Foundation Lecture Organiser The Foundation Lectures are live for 2021 – see the timetable on page 54.

Jonathan Foster Welfare Officer Jonathan Foster, our very own Welfare Officer, featured in the December 2020 edition of the Leeds and Yorkshire Lawyer, the official journal of the Leeds Law Society. In the interview, Jonathan talks about awareness of mental health issues in the legal profession, how CIPA, IP Inclusive and Jonathan’s Voice are working to improve understanding, his role as the CIPA Informals Welfare Officer, mental health first aiders, and the impact of the pandemic on mental health and wellbeing.

Check it out! (https://leedslawsociety.org.uk/ wp-content/uploads/2020/12/LYL-167.pdf) Remember that we have lots of information and resources on the Welfare and Wellbeing section of this blog. In addition to this, our welfare email address (informalswelfare@gmail.com) is available for any trainee patent attorney who wants to talk to someone about their mental health.

Tom Bridgwater Sports Coordinator Hi everyone, I’m Tom, the new sports coordinator/ lay member. I’ll be organising sporting events (pandemic permitting) in the summer and, in the meantime, I’ll be helping out the committee as and where it’s needed.

While we can’t meet up and run any real world sporting events, I’m hoping to organise an e-sports tournament to get those competitive juices flowing and develop some healthy rivalry. If you have any ideas for games you’d like to play or questions please feel free to get in contact!

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Lindsay Pike Education Coordinator An update fitting into a different cat-egory…

Here are some cat photos. She’s named after Professor Cecilia Payne-Gaposchkin, mostly we call her Little Gaposchkin or Little Bean though. She’s 10 or 11 and we adopted her from the Blue Cross last year after her previous owner had to go into a care home. 10/10 would recommend Blue Cross for adoption if anyone is considering it!

Regional Secretaries

Meg Murphy and the returning IP-uppy Oxford Regional Sec More pup-dates… New puppy (Maxwell) is doing very well! He has been with us for a week now and settling in well.

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Foundation Lectures Dear Amazing Trainees, We have a packed timetable of foundation lectures running from January to July 2021.

The foundation lectures are a great opportunity to learn more about topics related to intellectual property and are particularly useful if you are new to the profession, or if you are taking the foundation exams.

The lectures will take place via Zoom on Mondays at 5.30pm (except the one on the 10 May which will be held at 12.30pm).

To join, just go to https://zoom.us/join and type in the webinar ID and passcode shown in the timetable below. A copy of this timetable can also be found on the Yellow Sheet blog, or on your CIPA membership dashboard under the Informals section.

Please note that the Webinar login details, times or dates may be subject to change. We will post any updates via the Yellow Sheet blog, so please check in regularly, or sign up to the mailing list. Looking forward to virtually meeting you!

Laura Cassels, Foundations Lecture Organiser Date

Topic

Webinar ID

Passcode

11 January 2021

Introductory Lecture

910 3152 6319

470011

18January 2021

Patent Searching

986 8117 4221

920244

25 January 2021

Patentability and Excluded Matter

989 3589 3702

768561

1 February 2021

Novelty and Inventive Step

980 7155 0537

131885

8 February 2021

Priority

996 8751 2706

497868

15 February 2021

Biotech Patents

935 2425 9302

612252

22 February 2021

Claim Construction and Scope of Protection

974 0800 3163

126298

1 March 2021

Amendments

955 3372 0049

705877

8 March 2021

EPC

988 4391 1678

095893

15 March 2021

Renewals, Reinstatements and Restitution

984 9533 5625

966555

22 March 2021

Infringement

956 4184 6654

100999

29 March 2021

Basic English Law

950 6609 8409

594505

12 April 2021

Ownership and Entitlement

TBC

TBC

19 April 2021

Security Provisions

955 3586 2061

025829

26 April 2021

Computer Patents

951 5157 8405

268710

10 May 2021

Attacking Patents

962 5382 1219

876647

17 May 2021

Introduction to Copyright

991 1222 6171

313866

24 May 2021

Chemistry Patents

960 8240 6575

786670

7 June 2021

Company and Contract Law

955 0886 7670

917579

14 June 2021

Agreements Relating to Patents

919 2170 0335

419848

21 June 2021

IP and Competition Law

972 4607 8488

828651

28 June 2021

Introduction to Trade Marks

968 2382 2973

124615

5 July 2021

PCT

975 0464 6372

087656

12 July 2021

US Patent Law

975 9704 3759

460126

19 July 2021

Introduction to Design Rights

982 9991 1131

018715

26 July 2021

IP, Policy and the Future of the Patent Profession

980 3125 3397

929988

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The Yellow Sheet

What is the yellow sunflower?

By Jonathan Foster, Informals’ Welfare Officer

H

ave you ever seen someone wearing a yellow sunflower lanyard, or a sunflower badge? Did you think anything other than ‘that’s a fun pattern!’?

Well, in fact, the yellow sunflower lanyard is a visual indicator of a hidden disability.

The Hidden Disabilities website says: ‘Not all disabilities are visible – some are hidden and not immediately obvious, such as learning difficulties, mental health as well as mobility, speech, visual or hearing impairments. Living with a hidden disability can make

daily life more demanding for many people, but it can be difficult for others to identify, acknowledge or understand the challenges you face.’

Hidden disabilities can make everyday life more difficult for the people experiencing them.

Situations that most people are able to deal with more easily may be much more challenging for those with hidden disabilities, such as being in busy or pressured environments.

The yellow sunflower was originally introduced to be used in airports, to help staff identify those who may need additional assistance. Since then, sunflower lanyards have become more

widely used, allowing those with non-visible disabilities to be given more time, consideration and assistance, if needed.

If you think you, or someone

you know, might benefit from knowing more about the Hidden Disabilities Sunflower, head to the Hidden Disabilities website.

Useful links RNIB website – https://www.rnib.org.uk/ Hidden Disabilities – https://hiddendisabilitiesstore.com

The Informals Committee for 2020–2021. If you have any questions and would like to get in contact with your local Informals secretary, then all the contact details are below: Honorary Secretary, Joel Briscoe, cipainformalshonsec@gmail.com

Inclusivity Officer, Rachel Bell, RBell@marks-clerk.com

Northern Ireland, Helen Lavery, Helen.Lavery@murgitroyd.com

Treasurer, Waseem Aldeek, W.Aldeek@csy-ip.com

Welfare Officer, Jonathan Foster, Jonathan.Foster@appleyardlees.com

North East, Elliot Stephens, estephens@hgf.com

Yellow Sheet Editor, Tom Collier, TCollier@dehns.com

Buddy Scheme Coordinator, Lewis Bell, lsb@sagittariusip.com

North West, Cassie Smith, csmith@hgf.com

Blog, Website & Social Media Editor, Kathryn Taylor, informalsyellowsheet@gmail.com

Immediate Past Hon. Sec, Carolyn Palmer, Oxford, Meg Murphy, MMurphy@jakemp.com cp@schlich.co.uk

Education Coordinator, Lindsay Pike, LXP@dyoung.com

Birmingham, Mark Kelly, mkelly@hgf.com

Foundation Lecture Organiser, Laura Cassels, Laura.Cassels@script-ip.com Tutorial and Mentoring Coordinator, Daniel Wood, dwood@kilburnstrode.com IPO Visit Coordinator, Suzanne Gregson, suzanne.gregson@wynne-jones.com

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REGIONAL SECRETARIES:

Cambridge, Lindsay Pike, lxp@dyoung.com East Midlands, Helen Bartlett, Helen.Bartlett@potterclarkson.com London, Gregory Aroutiunian, GAroutiunian@jakemp.com

South Coast, Sam Smith, SLS@dyoung.com South West & Wales, Ozgur Aydin, Ozgur.Aydin@wynne-jones.com Sheffield, Nick Jenkins, njenkins@hgf.com Yorkshire and Humber, Amelia Barton, amelia.barton@appleyardlees.com

JANUARY-FEBRUARY 2021

CIPA JOURNAL

55

The Yellow Sheet

Around the World in 80 OAs: Insight into becoming a Canadian patent agent In this edition of Around the World in 80 OAs, we jet off across the pond (and slightly northwards) to Canada. Towards the end of last year Tomas Karger, from Marks & Clerk in Aberdeen, kindly agreed to discuss what it was like being a trainee Canadian patent agent and some key differences from the typical UK trainee patent attorney experience.

T

omas started in the patent profession some ten years ago.

Prior to that, Tomas worked as an engineer, before deciding to change track and study for a Masters of Law in IP. While he is now studying to be UK/European qualified, Tomas is a qualified Canadian patent agent, and provided some insights into the life of a Canadian trainee.

Terminology

First off, what is known in the UK as a patent attorney is called a patent agent in Canada. The distinction arises in that a patent lawyer or attorney in Canada is someone who has qualified as a lawyer, and can represent a client in legal matters associated with their patent (what we might call a patent solicitor in the UK), as well as being a patent agent.

Although a Canadian patent agent is of the same profession as a UK patent attorney, the professions are not entirely analogous. As Tomas told me of his early days in the profession in Canada,

‘a lot of people I was meeting with were saying that I should probably also get a law degree.’ This may simply be a consequence of Canada having a smaller market, therefore the ability to offer the services of both a patent agent as well as those of a patent lawyer opens up more business opportunities. Moreover, Canada generally provides a lot more associate work compared to direct client work – i.e. there is a lot more work where other countries are the originating countries of the innovation. Therefore, a Canadian patent agent is likely to be acting as secondary counsel more often than acting as primary counsel. As a result, it is possible for a lawyer to try their hand at a bit of associate work, provided the substantial analysis (for example, defining the technological distinction between an application and the prior art) is done elsewhere.

That said, there are some Canadian firms which are an exception to the rule and seek people with a high level of expertise in patent prosecution and

related duties (for example Tomas’ old firm Sim & McBurney and SIM IP, which merged in 2018 with Marks & Clerk Canada).

The patent agent profile

Unsurprisingly, most Canadian patent agents were engineers or scientists before changing career into the world of patents.

Much the same as in the UK, on the engineering side of things one can get away with only having an undergraduate degree or a Masters, whereas patent agents in the life sciences tend to also have PhDs. However, as with the UK, more and more people are entering the profession with PhDs in engineering subjects.

Once in the profession, the Canadian trainee experience is much the same as the UK trainee experience. That is, you’re thrown in the hot water! From day one you: (i) get given an application and office action; (ii) draft a response; (iii) have your response mutilated via tracked-changes by your supervising signatory; and (iv) try and work out what went wrong,

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The Yellow Sheet

and ascertain the specific approach for any future cases with similar circumstances!

As many trainees are acutely aware in the run-up to the imminent EQEs in March, the goal for the UK trainee is to achieve dual qualification as a UK and European patent attorney. As such, the UK trainee will be regularly exposed to the European Patent Convention and EPO practice. Across the pond, as one can imagine, a trainee Canadian patent agent is also likely be exposed to US practice on a regular basis. However, the exposure can be more than acting as primary counsel instructing a US associate.

Canada and the US have a reciprocal agreement wherein a Canadian registered patent agent is allowed to become a US registered patent agent entitled to act on behalf of Canadians. As Tomas put it, ‘this means that not only can I file a patent application in Canada for someone else, I can also file a patent application in the US for someone else if that someone else is Canadian.’ As a consequence, somewhat analogously to UK-European dual qualification here, many Canadian patent agents have an in-depth knowledge of US practice, and can find themselves filing a patent in the US for a Canadian citizen.

Qualifying exams

Regarding qualification, there are some similarities and differences between the Canadian route to qualification and the route taken in the UK. Before sitting any qualifying exams, you have to work under a certified registered patent agent for two years (this has been increased from only a single year previously). However, unlike the UK exams or the EQEs, in Canada there are no pre-exams or foundations.

There is only one set of qualifying exams.

Four exams, set over four days, with four hours for each exam. The four exams are drafting, amendment, validity, and infringement. This would appear familiar to the UK trainee preparing for the UK finals, although validity and infringement are two separate exams and there is no stand-alone exam on advanced IP law.

Volume 50, number 1-2

Tomas did note another key difference.

‘Probably, overall, there is not the same type of focus in the Canadian exams on the client side of things as there is in the UK exams. For example, the Canadian amendment exam does not include a client memo portion, it is just the response and the amendment. There is no explanation to the client of what actions we could do or what we suggest. Now that I've sat the qualifying exams in the UK – finals only once, hopefully the first and last time! – I’ve had some experience through that process and, in my opinion, client care was a big part of the UK finals. Not only did you have to show that you know the law, you also had to show that you can take the relevant bits of the law and explain it to your client. It appears that a difference between the UK exams and the Canadian exams is, in the UK, the exams are really trying test that an agent [attorney] can service and advise a client in the best way.’

On the other hand, whereas all of the Canadian exams are open book (in the sense that you are provided with the patent act and the patent rules), there is more of an emphasis on knowing and citing the case law in Canada as compared with the UK exams.

As to similarities, the Canadian drafting exam is very similar to the UK drafting exam. In fact, when Tomas was preparing to sit the Canadian drafting exam, he used old UK exams to practice on! The benefit in doing this was that, for whatever reason, the UK drafting exams are shorter in length than the Canadian drafting exams. For example, the UK drafting exam will have the inventor explaining the prior art in only a few paragraphs, whereas the Canadian drafting exam also provides two earlier prior art documents to read and be aware of whilst drafting.

The other three Canadian papers (amendment, validity, and infringement) all include short-answer questions as part of each exam. Roughly between a quarter and a third of the marks are devoted to these short-answer questions, which relate to law aspects of each respective exam. Therefore, the equivalent of the UK

advanced law exam can be considered as being incorporated into each of the Canadian amendment, validity, and infringement exams.

How many pass?

Which brings us to the question at the forefront of our minds when considering qualifying exams – how hard are they to pass?! Although we cannot possibly comment on the relative difficulties of the UK and Canadian exams, Tomas did highlight some interesting procedures.

Naturally, in order to qualify, a candidate is required to pass all four exams.

However, whilst the minimum pass mark requires a score of 50 out of 100, a minimum aggregate mark of 240 is required over all four papers. Further, if you sit the exams over several years, then you will need a mark of over 60 in order to carry an exam forward and avoid having to sit it again. Indeed, it is very much expected to sit the exams over several years, as the first-time passing rate for all four exams is around 1% (and we thought we had it tough)! As a result, the typical trainee Canadian patent agent may take between five and six years to qualify.

Although there is no explicit equivalent to the CIPA Informals, the IPIC (the Intellectual Property Institute of Canada) runs training sessions in various locations across Canada in preparation for these exams, enabling trainees from different firms to meet up and providing avenues for trainees to keep in touch.

Many thanks

That brings us to the end of our tour of the Canadian trainee experience. I would like to thank Tomas for the time he took in answering my questions and for his detailed insights. For any Canadian trainees sitting their exams first-time, we whole-heartedly wish you the best of luck!

If you are a trainee patent attorney in another jurisdiction who could shed some light on what hoops you have to jump through, then please get in touch! I would love to hear your insights.

Tom Collier – Yellow Sheet Editor, Dehns

JANUARY-FEBRUARY 2021

CIPA JOURNAL

57

The Yellow Sheet

Changing the focus of ‘Blue Monday’

By Jonathan Foster, Informals’ Welfare Officer

B

lue Monday. A term many of you will have heard of. A term, that to be honest, a lot of people will try to avoid talking about.

For those that haven’t heard of Blue Monday, it is the name given, every year, to the third Monday of January. The reason?

This day has been claimed to be the ‘most depressing’ day of the year, and, in particular, claimed to be the day with the highest suicide rate.

So why? Typically, the weather is dreary, the days are short and dark, everyone is back at work, Christmas is over, and not only that, but spending from the previous year comes into light, and credit card bills arrive.

Add all this together and it’s not surprising that the third Monday in January is described as a ‘blue’ day.

Taking all of the above, and the fact that this year the majority of us will be

in lockdown, unable to see friends and family, makes it’s a particularly tough time.

But while another Monday in lockdown will be tough, the truth of Blue Monday is not well founded. In fact, it was a phrase coined by Sky Travel using their ‘special formula’. It turns out that the most ‘special’ thing about the formula was its ability to make no mathematical sense whatsoever.

The fact that Blue Monday is nothing more than a myth though, doesn’t mean that many people won’t be struggling over the coming weeks and months. To try and counter this, initiatives such as the Samaritans’ ‘Brew Monday’ are aimed at reaching out to colleagues, friends and family, for a virtual catch up.

The point is to make an effort to ask how people are doing, invite them for a virtual coffee, and nurture the connections that were previously much easier to

make and maintain, when you might, for example, bump into someone when out and about, or have regular cuppas in yours or their home.

‘Brew Monday’ to me is a much more positive approach, and one I hope people can get on board with.

So, is there someone you haven’t spoken to in a while that you normally would have?

Is there someone who has been quieter than normal? Have you found yourself talking to less people recently?

Let’s use the next few weeks to invite those we know for coffees, for catchups, and to make the most of the time we have stuck in our homes, to virtually reach out and maintain the connections that help us through the tougher times.

Useful links Brew Monday – www.samaritans.org/support-us/campaign/brew-monday/ Informals Welfare email – informalswelfare@gmail.com Yellow Sheet Welfare and Wellbeing Resources – https://yellowsheet.wordpress.com/welfare/

Whacky Patents!

I know Christmas is long-over, but we had to include this whacky patent… The Self-Extinguishing Christmas Tree! US7963343 – https://patents.google.com/patent/US7963343B1/en?oq=US7963343 Who knew self-combusting Christmas trees were such an issue?!

If you find any whacky patents in your day-to-day patenting, please send them in to tcollier@dehns.com or informalsyellowsheet@gmail.com.

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THE PINKS

COURSES

REVISION COURSES FOR THE PEB 2021 EXAMS May, June, July and August 2021 We will be holding residential revision courses in May, June, July and August for the 2021 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations.

We will announce course dates on our website towards the end of January 2021. For the FD papers, we are offering a range of options and an Introduction to FD4 course in May 2021.

The courses, Covid-19 permitting, will be held at a training centre in Milton Keynes and will include a residential element. If accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm.

For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630.

E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk

Volume 50, number 1-2

JANUARY-FEBRUARY 2021

CIPA JOURNAL

59

THE PINKS

RECRUITMENT

Part or fully qualified Patent Attorney roles Biotech and Chemistry Flexible locations Venner Shipley LLP is a leading firm of European and UK patent attorneys, with offices in London, Cambridge, Guildford, Manchester, Tunbridge Wells and Munich. Due to growing client demand, we are seeking part or fully qualified patent attorneys for our Chemical and Life Sciences team. The Biotech role will be part of our Guildford office working alongside one of the busy Partners on matters including antibodies/immunology, gene editing and gene therapy. The Chemistry role will be part of our London or Cambridge office and requires experience of small molecule pharmaceuticals.

There is some flexibility on location for either role. We are currently working remotely and plan to continue with this to some degree going forwards. The firm offers excellent development opportunities in a progressive and friendly working environment.

Further information for both roles is available on our website at; https://www.vennershipley.co.uk/careers/ current-vacancies/. To apply, please send a covering letter and CV to vacancies@vennershipley.co.uk.

Patents, Trademarks & Designs

PART-QUALIFIED OR QUALIFIED CPA/EPA – LIFE SCIENCES SOUTHAMPTON, UK OR REMOTE WORKING IF APPROPRIATE 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 have led to an expanding work load. Our second office was opened last year in Southampton.

Homeworking/flexible working arrangements are available to the right candidate.

We are now seeking a candidate who has obtained the Certificate in Intellectual Property Law or is a part -qualified or qualified CPA/EPA. The candidate will have an excellent background in Life Sciences to assist with a growing portfolio in molecular biology and immunology. The ability to occasionally handle simple chemical subject matter would be an advantage.

Ideally, the candidate will have a PhD in a relevant field. 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.

For further information please see: www.script-ip.com

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We’re here to help.

For all your attorney, solicitor and support staff requirements, contact us: ip@dawnellmore.co.uk +44 (0)20 7405 5039 www.dawnellmore.co.uk

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INTERNATIONAL

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RECRUITMENT

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• Specialising in biotechnology, life sciences, electrical engineering and physics • Work with a range of clients and technologies

For more information or an informal chat please call us on: +44 (0)1904 202 900 or email us: careers@secerna.co.uk

www.secerna.co.uk Volume 50, number 1

JANUARY 2021

CIPA JOURNAL

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THE PINKS

RECRUITMENT

Chemistry Patent Attorney We are looking for a fully qualified or part-qualified patent attorney with a strong academic background in chemistry.

Our attorneys take an intelligent, efficient and thorough approach to their work and pay excellent attention to detail. They aim to always provide clients with commercially meaningful, pragmatic advice, in understandable language, founded on an excellent command of written English and strong analytical and organisational skills.

They balance these skills with being personable and commercially astute.

The ideal candidate will share the same focus on quality, effectiveness and commercial awareness.

Our preferred location is Liverpool, though we shall also consider candidates wishing to be based in Edinburgh and possibly other, remote, locations.

We are very well set up for remote and flexible working, which we had embraced even before the current pandemic.

Whilst we have a specific vacancy for a chemist at present, we are always interested in hearing from high-calibre candidates in all technical areas as the firm continues to grow.

Please apply, in confidence, to Robert Gregory (robert.private@hindles.co.uk)

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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 or Phillipa Holland 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

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