CIPA Journal, January 2020 by CIPA Journal

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

January 2020 / Volume 49 / Number 1

Mercer Review Have your say on the education, training and assessment of CPAs

Address from CIPA's new President Richard Mair

IPReg’s proposals for introducing mandatory run-off cover

Report on the Life Sciences conference Isla Furlong

US update – uncertainty about patent eligibility

Tips from a former patent examiner Suzanne Gregson

UP FRONT

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

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

Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third-party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions. © The Chartered Institute of Patent Attorneys 2020 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314

CIPA CONTACTS

Richard Mair President

Alicia Instone Vice-President

Julia Florence Immediate Past-President

Gwilym Roberts Honorary Secretary

Committee Chairs Business Practice Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs & Copyright Alicia Instone; Education Vicki Salmon; IP Commercialisation Catriona Hammer; IP Pro Bono Stephen Jones; Informals Carolyn Palmer; Internal Governance Catriona Hammer; International Liaison Richard Mair; IP Paralegals Julia Tribe; Life Sciences Simon Wright; Litigation Matthew Critten; Media & Public Relations Jerry Bridge-Butler; PEB Michael Yates; Patents Tim Jackson; Protected Titles Lee Davies; Regulatory Affairs Chris Mercer; Textbooks & Publications Bill Jones; Trade Marks Keith Howick. Head of Membership Dwaine Hamilton Membership Officer Frances Bleach Events and Professional Development Officer Emma Spurrs Events Co-ordinators Grace Murray, Kathryn Espino Chief Executive Lee Davies Deputy Chief Executive Neil Lampert Executive Assistant Charlotte Russell Head of Qualifications Angelina Smith 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

UP FRONT

Overseas update

EDUCATION

Dr Amanda R. Gladwin 2 3

President’s Address

Richard Mair

India: Patent patent infringement

Council Minutes

Ian Mirandah

Update your diary systems for 24/7 renewals

IPO update 6

Restrictions on pro bono advice

IPReg’s proposals for mandatory run-off cover

Consultation response

DECISIONS 18

Patent decisions

Mercer Review – Education, Training & Assessment of CPAs

IPO decisions

UK/Japan Trade Agreement

PERSONAL 27 32 35

IP Pro Bono update Announcements Patent Attorneys Golfing Society (PAGS)

38 42

Yellow Sheet IP Inclusive update

Chris Mercer

Consultation response

IP Commercialisation Committee 11

Top tips from a former patent examiner

Suzanne Gregson

Beck Greener

Call for Evidence 10

Institute events

US update - patent eligibility

Emily Gabranski & Tim McAnulty. 40

Wales Meeting

Seminar report Suzanne Gregson

ARTICLES 13

Life Sciences Conference

Seminar report Isla Furlong 33

Lee Davies

NEWS

Andrea Brewster

David Pearce & Callum Docherty 19

Trade marks

Bird & Bird

THE PINKS

Manual of Patent Practice

IPO update

Volume 49, number 1

Courses; Support; International; Recruitment

JANUARY 2020

CIPA JOURNAL

President’s Address The Chartered Institute of Patent Attorneys has elected Richard Mair as President for 2020. His one-year term of office started on 1 January 2020, after being elected at the Institute’s 136th Annual General Meeting on 5 December 2018. He served as Vice-President to Julia Florence during 2019. Richard has spent 30 years of his 40-year career at the firm of Abel & Imray, and becomes the sixth CIPA President from that firm.

Richard Mair, CIPA’s President for 2020

e embark on a New Year in which it finally looks inevitable that the UK will formally leave the EU. Credit, however, to the UK IPO, which has worked hard to put in place the necessary legislation to secure the continuation of rights in the UK of proprietors of existing EU trade marks and designs. Brexit does, of course, provide opportunities as well as disadvantages. It gives the opportunity to level the playing field in terms of rights of representation and address for service for UK patents, registered designs and registered trade marks, which CIPA will be pressing for to end the unjust inequality that our members currently have to live with. I have been most impressed by the various preparations made by UK firms 2

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to deal with the deleterious effects of Brexit – whether that be by CIPA and CITMA members taking and passing the Irish professional examination, setting up offices within EU27 countries, teaming up with firms in EU27 countries and/or using ancestry in EU27 countries to acquire a relevant nationality, in order to maintain rights of representation at the EUIPO. I am convinced that that investment will be well rewarded. We live in an age of misinformation and, worse, disinformation. Both are dangerous. Misinformation can be picked up by our competitors and used against us, either as disinformation or simple ignorance. One particular example occurred during the CIPA International Liaison Committee delegation’s meeting in Tokyo with the

Japan Patent Attorneys Association in February. I gave a talk on Brexit and the first question raised was on the lines: “You tell us that the EPC is unaffected by Brexit, but what does the EU have to say about that?” Apart from the usual explanation that the EPC is not an EU Convention, I was fortunately able to find quickly the article on the EPO website about CIPA’s visit in 2018 with then President Battistelli confirming the point, but it does show what misleading information is circulating. Among several important initiatives, CIPA members will already be aware of the Mercer Review of the education, training and assessment of UK patent attorneys. Members were requested by CIPA’s e-mail of 10 December 2019 to provide their views, and I do encourage our members to express their opinions so that the Review can be as effective as possible. The deadline for responses is 14 February 2020. [Also see page 8.] A very important matter for the UK in a post-Brexit world will of course be trade agreements. CIPA is working with the other IP professions, the IPO and the Department for International Trade to ensure that IP is considered in trade agreement negotiations and we look forward to continuing this work in 2020. Lastly, I have a personal ambition which is to inaugurate an annual Presidential Charitable event, to take place in the autumn. Watch this space! And may I wish all our members a very happy and, in particular, prosperous New Year! Richard Mair www.cipa.org.uk

NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 6 November, 2019, at 14:30 Item 1: Welcome and apologies Present: Julia Florence (President, in the Chair), Stephen Jones (Immediate Past President), Gwilym Roberts (Honorary Secretary), Andrea Brewster (by phone), Roger Burt, Anna Denholm, Matt Dixon, Stuart Forrest (by phone), Catriona Hammer, Greg Iceton (by phone), Alicia Instone, Keith Loven, Bobby Mukherjee, Bev Ouzman (by phone), Carolyn Palmer (Informal Honorary Secretary, co-opted), Alasdair Poore, Vicki Salmon and Simon Wright (by phone). Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Richard Mair (VicePresident), John Brown, Daniel Chew, Paul Cole, Tim Jackson, Chris Mercer, Emily Nykto-Lutz, Tony Rollins and Andrew Sunderland. Julia Florence congratulated Carolyn Palmer on her election as Honorary Secretary of the Informals and welcomed Carolyn to her first Council meeting.

Item 2: Conflicts of interest 232/19: There were no conflicts of interest.

to scrutinise. Neil said that the Chair of the Committee, Tony Rollins, will report on progress at the December Council meeting. 235/19: From minute 211/19. Report on the Brexit Business Readiness Fund activities. Lee Davies advised Council that CIPA was unable to undertake the research into the economic impact of a no-deal Brexit on the profession, due to the limited availability of suitable research companies and the high cost of those who were prepared to take on the work. Lee said that the special edition of the Journal was on schedule to be published, with a 31 October publication date. Neil Lampert added that the Media and Public Affairs Committee had created an informative animation and that this had been published on the CIPA YouTube channel. Lee Davies thanked Julia Florence, Alicia Instone and Matt Dixon for being panel members on the live broadcast ‘IP in a Post-Brexit World’. Lee advised Council that he was still waiting for a report on the level of participation in the broadcast, adding that there had been a large audience outside the UK. Lee said that he had received a lot of positive feedback about the event.

Item 3: Minutes 233/19: The minutes from the meeting held on 2 October, 2019 were approved. 234/19: From minute 207/19. To receive an update on the International Liaison Committee on its strategy meeting. Neil Lampert informed Council that the International Liaison Committee will discuss the strategy document and the future operations of the Committee at its next meeting on 28 November, 2019. The Committee has provided a draft budget for the Internal Governance Committee Volume 49, number 1

236/19: From minute 216/19. Report on the discussion with IPReg and CITMA about the size of the IPReg Board. Lee Davies informed Council that he had met with the Chief Executive of CITMA, Keven Bader, and the Chief Executive of IPReg, Fran Gillon, to discuss the proposal from the Chair of IPReg, Lord Smith, to reduce the size of the IPReg Board. Lee advised Council that Keven and Fran had said that they would take CIPA’s suggestion that the IPReg Board could be reduced further to CITMA’s

Council and the IPReg Board. Lee Davies said that he, Keven and Fran had agreed that progress on the revised delegation agreement, required to meet the Legal Services Board’s new Internal Governance Rules, should be paused until there was agreement on the future size of the IPReg Board and structure of the organisation. Lee added that he had informed Keven and Fran that CIPA Council had taken the view that it might be best for CIPA and CITMA to delegate their regulatory powers through separate Delegation Agreements and that the delegation could be direct to IPReg, rather than through the Patent Regulation Board (PRB) and the Trade Mark Regulation Board (TRB). This would address Lord Smith’s observation that IPReg worked as a single Board rather than as two separate Boards as indicated in the current Delegation Agreement. Lee Davies said that there was little more for Council to consider in terms of the Delegation Agreement until CITMA and IPReg respond to Council’s position on the size of the IPReg Board. Council agreed to Lee’s proposal that the Regulatory Affairs Committee should establish a small working group to do the initial drafting of the Delegation Agreement and that it would be necessary to take professional legal advice on the document. Action: Lee Davies to liaise with the Chair of the Regulatory Affairs Committee, Chris Mercer, on the formation of a small working group to consider the drafting of the Delegation Agreement. 237/19: From minute 217/19. Mayson Report on the Independent Review of Legal Services Regulation. Lee Davies informed Council that he had been in contact with Professor Mayson JANUARY 2020

CIPA JOURNAL

NEWS

OVERSEAS

India update – patent infringement An action for patent infringement in India is not maintainable during the pendency of an appeal against an order revoking the patent

Decision The Court held as follows:

n Novartis AG & Anr v Natco Pharma Limited (CS (COMM) 229/2019 and I.As. 11304/2019, 11305/2019), the Delhi High Court (the ‘Court’) has clarified that an action for infringement is not maintainable in respect of a revoked patent, even whilst an appeal against the revocation order is pending and until disposal of the appeal. The facts of the case and the decision are summarized below:

Background Novartis (the ‘plaintiff ’) filed a suit seeking a permanent injunction, damages, rendition of accounts and delivery-up in respect of its granted patent (Indian Patent No. 276026 entitled ‘Novel Pyrimidine Compounds and Compositions as Protein Kinase Inhibitors’). The patent related to a novel and inventive compound Ceritinib, which is a drug meant for the treatment of non-small cell lung cancer. According to the plaintiff, the molecule, which forms part of the broader group of 2, 4- diaminopyrimidines, is novel and inventive. The patent application was filed as a Patent Convention Treaty (‘PCT’) application claiming priority since 2007, and was granted on 28 September 2015. 12

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Natco Pharma (the ‘defendant’) filed a post-grant opposition under section 25(2) of the Patents Act, 1970 (as amended) (the ‘Act’). The opposition was initially referred to the Opposition Board, which issued a report in favour of the plaintiff. However, the defendant thereafter filed additional material. A hearing was held and orders were reserved on 10 April 2019. The suit was first listed on 2 May 2019; while granting an interim order on 2 May 2019, the Court had directed that the post-grant opposition (wherein orders were reserved) be decided by the Patent Office prior to the next hearing date. However, on the next date, the Court was informed that no orders had been passed in the post-grant opposition proceedings. Thereafter, the order in the post-grant opposition proceeding was issued on 16 August 2019 and the patent was revoked on the grounds that the patent lacked novelty. The plaintiff submitted that the order passed in the post-grant opposition proceedings had been appealed against and that the same was listed before the Intellectual Property Appellate Board (‘IPAB’) on 19 August 2019, and that until an order was passed by the IPAB the injunction ought to stand.

1. Rights in a patent are only for the life of a patent that remains granted and which has not been revoked. The manner in which patent rights operate is that they are merely statutory rights and there are no common law rights in patents. Patent infringement actions are maintainable only in respect of granted and live patents. The fact that no infringement action is maintainable in respect of an unregistered or revoked patent is clear from section 62(2) and section 11A(7) of the Act. If a patent is not renewed, no infringement action would lie. Similarly, once the patent is published, no infringement action can be filed until the patent is granted, though damages can be sought with effect from the date of publication. Thus, the continuation of an injunction, even for a day, would not be permissible once the patent is revoked. 2. In light of the factual matrix (specifically, the passing of the order dated 16 August 2019, revoking the patent), the interim order restraining the defendant from carrying out any fresh manufacturing of pharmaceutical preparations comprising the Active Pharmaceutical Ingredient (‘API’) Ceritinib, stands suspended. 3. Be that as it may, the Court stated that the plaintiffs are at liberty to seek appropriate orders, if any order is passed in favour of the plaintiffs by the IPAB. Ian Mirandah; see more at www.mirandah.com www.cipa.org.uk

US UPDATE

PATENT ELIGIBILITY

US update – are the storms of change swirling? Although uncertainty about patent eligibility continues, Congress, the Supreme Court and the USPTO have indicated that change may be on its way. By Emily Gabranski and Tim McAnulty

n the United States, patent eligibility remains in flux, particularly in the life sciences. And the unrest is primarily a direct result from the Supreme Court’s Mayo1 and Alice2 decisions and how the lower courts, especially the Federal Circuit, apply that test. Those cases were decided more than five years ago, and momentum for change may be building. Recently, Congress, the Courts, and the USPTO are all active. Congress held hearings on the subject of patent eligibility and released a proposal for legislation that would change statutory interpretation and curtail the scope of limits imposed (and interpreted) by Mayo and Alice.3 The USPTO again issued updated patent eligibility guidance to help guide examiners and practitioners during prosecution. The Federal Circuit denied rehearing in Athena4 in a decision that repeatedly requested guidance from the Supreme Court on the proper interpretation of Mayo and Alice. And the Supreme Court has two petitions for certiorari in Vanda5 and Athena currently awaiting decision, which, if reviewed, could clarify the scope of Mayo and Alice. While all of this activity shows the relative uncertainty and difficulty in addressing patent eligibility, it also suggests momentum for change.

Congress The statutory definition of patent eligible inventions in the US provides broad classes of eligible inventions and has generally remained the same since it was first passed in 1897.6 All of the limits on the types of inventions that can be patented have come from Supreme Court decisions. However, Congress has the power to change the law and has signaled an interest in doing so in the relatively near future.7 In April and May 2019, a bipartisan group of representatives and senators released draft proposals that would abrogate the Alice/Mayo framework and transform the current statutory scheme. The House held hearings in June 2019 on patent eligibility and innovation, and many expected a bill to reform section 101 would be introduced Volume 49, number 1

in the Fall of 2019.8 In September 2019, the Congressional Research Service released a report on the impact that new legislation might have, which emphasized: “These proposed changes could have significant effects as to the types of technologies that are patentable. The availability of patent rights, in turn, affects incentives to invest and innovate in particular fields, as well as consumer costs and public access to technological innovation.”9 Since then, however, Congress has not introduced a bill, and the legislation appears to be stalled for the time being and may be slow to gain traction over the next year, given the current political climate and approaching 2020 presidential election. Nonetheless, the current patent eligibility debate has caught Congress’s attention and may gain additional momentum if the Supreme Court does provide clarification and certainty soon.

Supreme Court In the near term, it is more likely that the Supreme Court will grant one of the two petitions for certiorari – in Vanda and Athena – that are currently pending. The Vanda petition arises out of the Federal Circuit’s decision in Vanda Pharmaceuticals v West-Ward Pharmaceuticals International,10 which was the first case to address patent eligibility of methods of treatment using the Mayo/Alice framework. When that case was before the Federal Circuit, a split panel found claims directed to a method for treating schizophrenia were not directed to a natural law or phenomenon and were, therefore, patent eligible. The petition, filed by Hikma Pharmaceuticals USA Inc in December 2018, asks the Supreme Court to consider “whether patents that claim a method of medically treating a patient automatically satisfy section 101 of the Patent Act, even if they apply a natural law using only routine and conventional steps.”11 In March JANUARY 2020

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CPD & EDUCATION

LIFE SCIENCES

Life Sciences Conference 2019 Report of CIPA seminar, 11-12 November 2019, The Brighton Grand, Brighton

elebrating 20 years, the CIPA Life Science Conference 2019 took place by the seaside at the Brighton Grand Hotel. It was a conference packed with delegates and a busy agenda, bringing life science patent professionals together to hear the latest updates in the life sciences field.

Day 1 Simon Wright (J.A.Kemp) welcomed the delegates and reflected back to the first life sciences conference set up by Anna Denholm back in 1999. He announced that a celebratory disco that would be taking place after the conference dinner and gave thanks to the organising committee, Dev Crease, Maria Nichol, Robin Nott, Marion Rees and Charlotte Teall.

Litigation strategies The first morning session was “Litigation Strategies and Recent Changes”, chaired by Nicole Jadeja (Pinset Masons). Jasper Clube (Kymab) gave an overview of the scope and style of injunctions issued in the UK. He took us through some examples of how the courts have exercised a proportionate approach (as required by article 10(3) of the Enforcement Directive 2004/48/EC) to providing exceptions from injunctions and product recall orders for delivery up/destruction to allow infringing activities to continue. In practice, the courts have emphasised that orders for delivery up/destruction are ancillary to the injunction and their purpose is to make sure the injunction is obeyed (see Mayne Pharma v Pharmacia Italia [2005] EWCA Civ 294), taking questions of springboards into account (Merck Canada v Sigma (No 2) [2012] EWPCC 21) but material abroad is outside the court’s jurisdiction (Amgen v TKT (No 2) [2002] RPC 3). An order may provide for modification of an infringing product where it can be altered to be non-infringing or used for noninfringing purposes. Orders may also be temporary (Pro tem) to protect the position of the patentee e.g. to maintain the status quo while an appeal is pending (Amgen v TKT (No 3) [2005] FSR 41). Overall, the courts increasingly show a balancing of interests of the patentee and the infringer, using a flexible approach especially where public interests should be protected. This was seen in Edwards Lifesciences v Boston [2018] EWHC 1256 (Pat) where an injunction for Edwards’ infringing trans catheter heart valve included provisions for a stay to allow clinicians to have time to train to use a different device. The injunction further permitted continued supply, where the infringing device was the only suitable device for a patient. Jasper also drew on his own more recent experience in Regeneron v Kymab ([2018] EWCA Civ 1186) where the Court of Appeal paid particular attention to both the impact on the parties and the potential public policy 28 CIPA JOURNAL

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consequences of their decision. The final injunction was qualified to allow Kymab to continue specified uses of Hu-antibodyproducing transgenic mice, cells and antibodies, including continuing in their HIV programmes in its partnership with the Gates Foundation. This is pending the appeal to the Supreme Court due to be heard February 2020. Jocelyn Man (Gilead) considered European Patent strategies including those before grant, during the opposition period, after filing an opposition and for oral proceedings. She noted that both patentee and a potential opponent can take strategic steps before grant e.g. to delay or speed up the grant procedure allowing time for negotiations or preparations. As opposition hearings are now being held at about 18 months from filing an opposition, a patentee that may be expecting a competitor to oppose should begin to prepare for this as soon as possible after grant or receipt of a notice of opposition. This allows time to address possible arguments, line up experts or carry out any experiments. It is also worth bearing in mind the possibility of concurrent national proceedings and balancing timing of these against the now much faster opposition proceedings. The implications of the revised RPBA coming into effect 1 January 2020 will also need to be considered.

Disclosure requirements for functional genus claims US attorney, Katherine Helm (Dechert)’s talk – “Satisfying the disclosure requirements for functional genus claims” – focused on written description and enablement requirements in 35 USC §112. For written description, she talked about broad claims and highlighted Ariad v Eli Lilly (Fed. Circ 2010) as setting the standard for the applicant being “in possession” of the claimed subject matter. She noted the demise, since the 1990s, in allowing functional claiming based on limited disclosures across the fields of nucleic acids, small molecules and antibodies – see AbbVie Deutschland v Janssen (2014). In Amgen v Sanofi, Fed. Cir. 2017; Supreme Court 2019, the Supreme Court reversed the jury-led Fed. Cir. decision on written description but found a lack of enablement, following a trend for the rise of enablement as a ground for invalidity. The traditional approach for undue experimentation, set out in re Wands, has evolved over the last 10-20 years towards a lack of enablement being found if just one embodiment cannot be practiced without undue experimentation. Most recent decisions are Enzo Life Sciences Inc. v Roche Molecular Sys, Inc. (928 F. 3d 1340 (Fed. Cir. 2019), MorphoSys v Janssen (358 F. Supp. 3d 354 (D. Del. 2019) and Idex Pharm. LLC v Gilead Scis. Inc. No 18-1691 (Fed. Cir. Oct 30, 2019). www.cipa.org.uk

CPD & EDUCATION

At 11 am, a minute’s silence was observed for Armistice Day to remember and honour those who lost their lives fighting in both World Wars and later conflicts.

Hot Topics in Pharma The second morning session focused on “Hot Topics in Pharma” and began with CIPA President, Julia Florence, providing an update on Brexit and the UPC. There was little clear progress on Brexit to report in view of the general election on 12 December. Julia reviewed the extensive work that CIPA has done to raise awareness worldwide of the “business as usual” message from the UK patent profession, as well as engaging with UK IPO and other IP organisations to ensure IP rights are preserved in any new legislation. For the UPC, we await resolution of the German constitutional challenge which it is generally assumed will not happen until Brexit has been resolved. Julia mentioned the recent paper published from The European Parliament Think Tank on the question of whether the UK can remain a member of the Unitary Patent Court (UPC) in a post-Brexit world (reported in IPKAT 8 November 2019) which makes an interesting read. There followed a panel session with David Rosenberg (formerly GSK), James Horgan (MSD) joined by Julia Florence and moderated by Marion Rees (Adiga Life Sciences). The lively discussion flowed through a range of topics. We heard views on the possible effects and opportunities of Brexit at a corporate level. The panel considered the possible free trade agreements that may be negotiated, whether any IP harmonisation may be required to enact these and whether clearer drafting of legislation might be achieved. Bigger questions were raised around drug pricing and treatments – questioning the approach set out in the Labour Party’s “Medicines for the Many” initiative – and if the current patent system needed to evolve to provide incentives for newer, more complex, technologies.

Pushing the Frontiers in IP The first afternoon session was chaired by Simon Wright (J A Kemp). Simon gave a joint presentation with George Schlich (Schlich & Co.). Each presented their opposing sides of the

LIFE SCIENCES

“CRISPR priority” debate being argued in T0844/18. Here, an inventor, Marraffini, was included on the US priority application but omitted from the PCT, leading to the OD finding the priority claim invalid. The OD’s reasoning was that, because Marraffini did not assign his right to any of the subsequent applicants of the PCT, there was an alleged lack of “legal unity” between the applicants of the priority application and those on the PCT. Three lines of argument have been submitted by the patentee (represented by Simon) to overturn the OD’s decision: 1. entitlement to priority should not be examined by the EPO; 2. the meaning of “any person” in article 4a of the Paris Convention means “any one person”; and 3. under article 87(1) EPC, national law (here US) governs the determination of “any person who has duly filed”. After hearing each side’s arguments for and against these points, George, acting for the opponent, was determined as the “winner” by a show of hands. We will have to wait until the Appeal hearing, due 13-17 January 2020, to hear whether the EPO takes the same view.

CAR-T: challenges & IP Hannes Iserentant, who works at Celyad, a Belgian company pioneering innovative therapies for patients with lifethreatening diseases, reviewed “Challenges and IP in the CAR-T space”. Chimeric Antigen Receptor T cells (CAR-T) represent a promising approach to cell immunotherapy, particularly for cancer, with two therapies approved, to date. Patent applications in this space have increased exponentially since 2008. Early examples of granted patents include US7446190, US8399645 and US8911993, which comprise some broad product claims. Additional product IP includes further molecules within the CAR design and applications including method claims to the methods of manufacturing/engineering CAR-T cells. For these, Hannes suggested caution for enforcement as different parts of the manufacturing process (e.g. apheresis, manufacturing,

CIPA Life Sciences Conference Save the date Thursday and Friday 12-13 November 2020 • Whittlebury Hall, Northamptonshire

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CPD & EDUCATION

INSTITUTE EVENTS

CIPA events 2020 For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events.

Thursday 21 January 2020 Tuesday

Tuesday 28 January 2020 Webinar

COMPETITION LAW AND INTELLECTUAL PROPERTY

INTELLECTUAL PROPERTY: PR AND MARKETING TIPS

Time: 12.30–13.30

There is significant interaction between competition law and IPR. This webinar gives an overview of the main issues from a competition law perspective, including: an introduction to competition law concepts; Parallel imports and exhaustion of rights; Predatory and excessive pricing; Patent litigation settlement and pay for delay; FRAND licensing; and product hopping.

A webinar explaining the basics of IP marketing and PR for small firms and sole practitioners. Neil Lampert, Deputy Chief Executive at CIPA, will chair the webinar, and his panel members will be marketing and public relations experts Greg Birmingham and James West. The webinar will explain the difference between marketing and business development and will provide practical advice and top tips on things like developing key messages and how to structure a press release. The overarching aim of the webinar will be to show small firms how they can generate value for money in the context of a limited budget.

Speakers: Gustaf Duhs (Stevens & Bolton LLP) CPD: 1; Prices: £73.20 | £49.20 members Thursday 23 January 2020 Regional Meeting

MERSEYSIDE MEETING Time: from 12.30 Location: Hard Days Night Hotel, 41 North John Street, Liverpool, L2 6RR Join CIPA at the Merseyside Regional Meeting 2020. A range of speakers covering different aspects of IP, including: • Digital Transformation at the IPO Peter Slater (IPO) • Updates on Patents for Computer Software Simon Davies (D Young & Co) • Examination at the EPO: how it’s done, and what the Examining division is looking for Cillian Ó Donnabháin (EPO) Followed by a great networking opportunity. See the full programme online. CPD: 3.5 Prices: £238.80 | £159.60 members

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Speakers: James West, PR Director, Potter Clarkson; Greg Birmingham, Head of Marketing, Mathys & Squire) CPD: 1; Prices: £73.20 | £49.20 members Thursday 30 January 2020 Webinar

‘’ISN’T IT OBVIOUS?’’ UNDERSTANDING AND BEATING THE USPTO’S MOST COMMON ART-BASED REJECTION Time: 12.30–13.30 The ability to overcome obviousness rejections under 35 U.S.C. 103 before the USPTO is a key skill for patent practitioners. Recent USPTO statistics show that obviousness rejections are issued in 79% of office actions with at least one rejection. How can you win key patent rights for your clients as anticipation rejections wane in popularity and frequency, and

obviousness rejections rage? We will discuss obviousness at a foundational level and progress to drafting strategies and practice tips to help you overcome obviousness at the USPTO. Speaker: Loren Hulse (Holland & Hart) CPD: 1; Prices: £73.20 | £49.20 members Monday 3 February 2020 Workshop

TRAIN THE TRAINER 2020 Time: from 09.30-16.30 Location: Etc.venues Manchester, 11 Portland Street, Manchester M1 3HU Training Overview: This one-day workshop aims to give participants the confidence and skills to train others in learning, understanding and applying IP theory and practice. Focusing on one-to-one training in the workplace. , the workshop will give participants the opportunity to understand their own style of learning and consider how they can flex and modify their approach to create the best learning for their trainee. The workshop will consider exploring individual learning styles and training methodologies and techniques. There will be opportunity to practise some of the techniques discussed as well as explore the challenges involved in the practical implementation of training others. Target Audience: Patent attorneys who are involved in training colleagues (who are studying for their CIPA qualification) in the workplace. Trainer Information: Jane Michel, Emphasis HR & Training CPD: 7.0 Prices: £216

www.cipa.org.uk

CPD & EDUCATION

Friday 7 February 2020 Webinar

CLEARING THE PATH TO EXAMINATION: HOW TO OVERCOME CLARITY ISSUES

INSTITUTE EVENTS

• Patent Prosecution Efficiency in the US Michael Piper (AA Thornton)

EAST OF ENGLAND MEETING Followed by a great networking opportunity. See the full programme online.

Time: 12.30–13.30 In order to deal efficiently with clarity issues it is important to understand how EPO examiners see clarity and where the main focus of their clarity analysis lies. This webinar aims to give the examiner’s perspective on clarity issues, in order to help you to solve them in a way that makes for an efficient examination procedure. Speakers: Kris Loveniers and Ricardo Oltra García (EPO) CPD: 1; Prices: £73.20 | £49.20 members Monday 10 February 2020 Workshop

TRAIN THE TRAINER 2020 Time: from 09.30-16.30 Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD See the details from the event on Monday 3 February 2020. Thursday 13 February 2020 Regional Meeting

YORKSHIRE MEETING Time: from 12.30 Location: Hilton Leeds City, Neville Street, Leeds LS1 4BX Come and join CIPA at the Yorkshire Regional Meeting 2020! There will be a range of speakers giving talks on different aspects of IP as well as a great networking opportunity after the event. • Update on subject matter eligibility in US and EPO Michael Piper, Conley Rose and Mike Jennings (AA Thornton) • New Rules of Procedure of EPO Boards of Appeal and brief comments on G1/19 (computer simulation) Mike Jennings (AA Thornton) Volume 49, number 1

Thursday 19 March 2020 Regional Meeting

CPD: 3.5 Prices: £238.80 | £159.60 members

Monday 2 March 2020 Seminar

JAPAN PATENT ATTORNEYS ASSOCIATION SEMINAR 2 Time: from 14.45-17.45 Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD Come and join the Japan Patent Attorney Association (JPAA) for this free seminar where the JPAA will be giving talks on Japanese IP topics at CIPA offices. There will also be a drinks reception after the seminar at the White Swan, which is a great opportunity for networking. Topics include: • • • • •

AI prosecution at the JPO Accelerated examination at the JPO Reform of the Design Acts in Japan Geographical indications Supreme Court decision – inventive step in chemistry/pharmaceutical

Speakers: Representatives of the European and African working group of the JPAA International Activities Center: Hidetoshi Kitade; Rie Kawai; Ryohei Saito; Shoko Tsutsui; Eisan Go. CPD: 2.5 Prices: £84 | free for CIPA member

Reporters Needed – CIPA is looking for volunteers to report on CIPA events. If you are interested, please contact cpd@cipa.org.uk.

Time: from 12.30 Location: Tamburlaine Hotel, 27-29 Station Rd, Cambridge CB1 2FB Come and join CIPA at the East of England Meeting 2020 this year at the Tamburlaine Hotel. There will be a range of speakers giving talks on different aspects of IP as well as a great networking opportunity after the event. Followed by a great networking opportunity. See the full programme online. CPD: 3.5 Prices: £238.80 | £159.60 members Thursday 30 April 2019 Conference

STUDENT CONFERENCE 2020 Time: from 09.30-17.00 Location: Etc.venues Maple House, 150 Corporation Street, Birmingham B4 6TB We are happy to announce the first ever CIPA Student Conference 2020 Following feedback from some student events, we realised that there was a demand for a conference tailored specifically for our student members who were no longer new starters. Working with the Informals Honorary Secretary, we have put together a programme we hope provides useful information and support for our trainees regardless of how far down the process of becoming qualified they are. This conference will cover topics such as soft skills training and how to cope with clients and work life; exam and post qualification guidance; PCT for EQE Students and many more topics to be confirmed. CPD: 7 Prices: £192 members only

JANUARY 2020

CIPA JOURNAL