CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
February 2020 / Volume 49 / Number 2
Sky v SkyKick
– any clearer?
China: smoothing the path for AI inventions Toby Mak
EPO upholds CRISPR priority dispute Carolyn Palmer
CPVO, Brexit transition period Neil Lampert
Routes to qualification Chris Smith
Employerowned inventions Shanks v Unilever
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SWEET & MAXWELL
Contents
UP FRONT
ARTICLES
EDUCATION
3
12
38
Routes to qualification
Lord Chris Smith, Chair of IPReg 4
5
18
CJEU decides Sky v SkyKick in time for Brexit
Alasdair Poore
Passing the baton
Address by CIPA's Immediate Past-President Julia Florence 7
Foreign-filing licences for patents and AI inventions Toby Mak
President's reception
IP Judges and overseas Presidents welcome new CIPA President Richard Mair
China update
DECISIONS
Council Minutes
Lee Davies
23
NEWS 10
Overseas update
Dr Amanda R. Gladwin 11
IPO decisions
44
Institute events
PERSONAL 40
Letters to the Editor
Shanks v Unilever 43
IP Inclusive update
45 46
Announcements Yellow Sheet
Andrea Brewster
David Pearce & Callum Docherty 28
EPO decisions
30
Trade marks
Bristows
CPVO, Brexit transition period
Neil Lampert 10
26
Seminar report Sean Gilday
Patent decisions
Beck Greener
Patent Case Law – Bristol
Bird & Bird
THE PINKS 49
Courses; Support; International; Recruitment
CRISPR priority dispute
Carolyn Palmer
Volume 49, number 2
FEBRUARY 2020
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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.
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
© The Chartered Institute of Patent Attorneys 2020 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314 2
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www.cipa.org.uk
Routes to qualification
E
ntry to the intellectual property profession depends on the development of a body of knowledge and skill in the fields of either patents or trade marks or both: that is of course only right and proper, as it protects both the integrity of the profession and the rights of the consumer. And that is why IPReg’s role in overseeing the quality of the educational routes into the profession is so crucial. It is an aspect of our work to which we are now giving additional emphasis. Alarm bells sounded when we received recent feedback from CITMA relating to one particular course – and this has prompted us to examine carefully both the quality of that course itself and also our own accreditation procedures. We have established an Education Working Group of IPReg Board Members, to look in detail at how we go about the process of oversight. No longer is it good enough for us to go through a re-accreditation exercise for each university provider once every five years, and between times to sit back and assume everything is all right. We are determined to examine what happens on a regular basis, to respond immediately to expressions of concern from those undertaking the courses, to question the providers rigorously, and to step in
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if necessary. We see accreditation as an ongoing exercise, not just a once-off thing. We were also pleased to see CIPA taking an active role in looking at the patent qualification routes, and the establishment of a CIPA committee to examine this in detail is very welcome. We are very conscious of the fact that successfully undertaking an
Chris Smith
We are also aware that there is currently a rather limited list of university providers for the profession. We are keen to see some more competition in this space, though we are aware that there will always and must always be a limited capacity. But if one or two alternative providers were to come into the picture, this is something we would welcome. They do, however,
We were pleased to see CIPA taking an active role in looking at the patent qualification routes. accredited course is the only way into the profession; that many of those studying for a qualification are doing it at weekends and in their own time; that the cost of courses can be high; that sometimes people travel long distances to attend lectures; and quite often that employers are supporting and funding the process. The courses therefore have to be good. And the delivery has to be irreproachable. When it is not, IPReg has a duty to intervene.
have to meet the crucial test of being up to scratch. The gateway into IP is narrow, by its very nature. But precisely because there are limited options, and the qualification process is so essential for the entrant into the profession, we have to make sure the educational route through it is up to the highest standards. IPReg is determined to play its part in helping to do so. Lord Chris Smith, Chair of IPReg
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NEWS
CIPA
IP Judges and overseas Presidents welcome new CIPA President Richard Mair On Wednesday 8 January 2020, CIPA’s new President for 2020, Richard Mair, was joined by Sir Robin Jacob and Sir Colin Birss at a reception to mark his term in office. He was also joined by other VIPs and friends of CIPA who travelled from far and wide – in some cases from the other side of the globe – to wish him well. Those attending included: Chair of IPReg, Lord Smith of Finsbury; Kar Liang Soh, President of the Association of South East Asian Nations Intellectual Property Association; Tony Lin, President of the Taiwan Patent Attorneys Association; a number of IP barristers, and representatives from CITMA and the IP Federation. Read Richard's Presidential statement at January [2020] CIPA 2. Our new Vice-President, Alicia Instone, will become our fifth female President in January 2021. Alicia, who works for Cleveland Scott York, is a CIPA Council member and chair's the Institute's Designs and Copyright committee. Three of the Institute's past female Presidents are pictured below.
Richard Mair (right,) CIPA's President for 2020 with Sir Robin Jacob (centre) and Sir Colin Birss
Past-Presidents John Brown (top-left), Tony Rollins; Alasdair Poore, Anna Denholm, Chris Mercer, Julia Florence and Andrea Brewster welcomed Richard Mair and Vice-President for 2020 Alicia Instone (bottom-right)
Kar Liang Soh (left), President of the Association of South East Asian Nations Intellectual Property Association, and Tony Lin, President of the Taiwan Patent Attorneys Association.
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Guests enjoyed a reception at the Chartered Accountants Hall at One Moorgate Place, London.
www.cipa.org.uk
NEWS
CIPA
Passing the baton At the AGM on 4 December 2019, CIPA expressed its thanks to Julia Florence (CIPA President in 2019), who has worked tirelessly and with great enthusiasm to represent members and the wider patent attorney profession at home and around the world. This editorial is based on Julia’s address made at a reception to mark the start of Richard Mair’s term in office, on 8 January 2020.
G
ood evening everyone. A very warm welcome and thank you for joining us in this splendid venue to help us celebrate the handing over the CIPA Presidential baton. Under our new-ish bye-laws CIPA now holds its AGM towards the end of the year, at which it elects Council Members and officers to take up their positions as from 1 January. That means I ceased to be President and Richard assumed the Presidency on the stroke of midnight on New Year’s Eve. Clearly, that is not the most convenient time for an official hand-over, so we decided to follow our first Council meeting of the year (chaired for the first time, and ably so, by Richard) with this special reception. Tonight, we are not only welcoming Richard Mair as the new CIPA President, but also Alicia Instone as our incoming Vice-President, and Sheila Wallace and Parminder Lally as new members of Council. Including our co-opted Council members, the Informals Hon Sec and the Chair of the IP Paralegal Committee, we now have a total of 11 female Council Members. My brief tonight is to be brief, but I hope Richard will allow me some short, personal reflections on the past year. It goes without saying that it has been an absolute privilege to have been CIPA President in 2019 representing this Institute and our members. I have to say it has also been a great experience,
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and there has been a lot of fun. A year goes by very quickly and it really does feel like a relay race – warming up while one is Vice President, grabbing the baton and doing the best you can to run with it during the following year, before gratefully passing it on. Each President brings their own flavour to CIPA, but there is also continuity. This is reinforced
Julia Florence
was for continuity and consolidation, to ensure we had the space to react quickly to external events. In particular, that meant continuing our work in relation to Brexit, which included engaging with government, providing guidance to support our members and to inform IP communities outside the UK as to where Brexit would and importantly would not affect the UK IP system. Most recently we did this via a live broadcast in October, which reached not only audiences in the UK, but also around Europe, US and Canada. As we enter 2020 there is plenty more to be done, and CIPA is working with other key IP organisations to ensure clear and consistent messages to
During 2019, we have been delighted to welcome to CIPA some 500 members in our new Paralegal membership category. by the steady presence and influence of the Chief Executive and his staff – to mix my sporting metaphors, I suppose they are the management and coaching team – although I’m not sure that Lee Davies would want to be known as the Special One (if you know Lee at all, Special-Shoes One may be more appropriate!) Anyway, what have I been up to? Given the political uncertainty of the past year, and the fact that CIPA had introduced a number of changes and new initiatives in recent times, my aim
government in relation to the future of IP in the UK. Another priority for CIPA in 2019 was education, and after a considerable amount of work by the Education Committee we have now launched a comprehensive review of education and training needs, known as the Mercer review. It is important that all our student members have access to high-quality training, and that the assessment process appropriately measures the skills and knowledge they have acquired as a result. FEBRUARY 2020
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In terms of highlights, September was a particularly busy month. This included some very useful meetings with heads of three patent offices, our own Tim Moss, António Campinos from the EPO and Andrei Iancu from the USPTO. September is also the month for our annual CIPA Congress which was held for the first time at the QEII conference centre – and though I say it myself, it was a great success. We will be returning there for this year’s Congress on 17 September 2020. That event was swiftly followed by a very successful CIPA Paralegal Conference and Dinner. During 2019, we have been delighted to welcome to CIPA some 500 members in our new Paralegal membership category and their
CIPA
enthusiasm and professionalism was very evident at that event. Speaking of new members, we have also seen an increase in Student membership, and I’ve very much enjoyed meeting many of the new intake at a recent CIPA Student induction day. They are a very bright and engaging bunch and bode well for the future of the profession. The final conference of the year was the CIPA Life Science conference, which after 20 years has become a regular November fixture. It has a welldeserved reputation for high-quality presentations, and high-profile and entertaining dinner speakers. So many attendees return year after year it has something of the feel of a family reunion [see January [2020] CIPA 28].
North American Roadshows 2020 CIPA is gearing up for the IP Roadshows in the US and Canada in May 2020. We will be heading to Toronto, New York City and Boston alongside the Intellectual Property Owners Association to give presentations on AI, biotechnology, Brexit and IP litigation topics and to continue promoting the UK profession in the US. Officials from the UK IPO and the USPTO will also join us for panel sessions on their use of AI and their digital transformation programmes to improve their services for users. The events will once again be sponsored by Patent Seekers and law firms who are also providing speakers to join litigation panels. If you and your firm is interested in participating, please contact Neil on neil@cipa.org.uk for an initial discussion.
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This is a good opportunity to thank all those who have supported me personally during the past year – especially my fellow officers and Council members, and most importantly our Chief Executive and the fantastic CIPA staff who work tirelessly on behalf of our members and our profession. And on a personal note, thank you to my husband Keith, who has been a tremendous support on the home front – although as he’s also a member of this profession I suppose he had no choice. I also want to thank those who support CIPA in so many ways – and please forgive me if I don’t mention you all. I know we have a number of judges here tonight and members of the UK-IPO and we are always grateful to you for giving your time to participate in CIPA events, both in the UK and overseas. And still on the subject of thanks, in the past year I have had the lovely opportunity to meet many CIPA members around the UK, and I have been hugely impressed by how many contribute on a purely voluntary basis to this profession – whether through active membership of CIPA committees, supporting overseas visits, or providing education in the form of seminars, webinars, talks at CIPA meetings and tutorials. The fact that so many of our members are willing to give their time and share their expertise for the good of others in the profession is for me the mark of a really great collegiate, professional community. Long may it continue. And that’s me done. Now it’s my very great pleasure to introduce Richard Mair, our new CIPA President. Richard will be well known to many of you, having been a partner at Abel & Imray for many years, and also active in CIPA, as Chair of the International Liaison Committee. I am sure Richard will be bringing his international experience to bear during his tenure as CIPA President. So Richard, I’ll now officially endow you with the President’s medal and ask all of you to raise your glasses to CIPA President Richard Mair. www.cipa.org.uk
NEWS
COUNCIL
Council Minutes Minutes of the Council meeting held on Wednesday 4 December, 2019, at 14:30. Welcome and apologies Present: Julia Florence (President, in the Chair), Richard Mair (Vice-President), Stephen Jones (Immediate Past President), Gwilym Roberts (Honorary Secretary), Andrea Brewster (by phone), John Brown, Roger Burt (by phone), Matt Dixon, Stuart Forrest, Catriona Hammer, Alicia Instone (by phone), Tim Jackson, Rob Jackson, Keith Loven, Chris Mercer, Bobby Mukherjee, Bev Ouzman (by phone), Carolyn Palmer (Informals Honorary Secretary, co-opted), Tony Rollins, Vicki Salmon and Andrew Sunderland. Lee Davies (Chief Executive, by phone), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Fran Gillon (IPReg CEO) was present for item 1. Jim Boff (Fellow) and Charlotte Pihlqvist (HR consultant) were present for an item taken under AOB. Apologies: Daniel Chew, Paul Cole, Anna Denholm, Greg Iceton, Alasdair Poore and Simon Wright.
Item 1: IPReg update 258/19: Julia Florence welcomed Fran Gillon, IPReg Chief Executive, to the meeting. Fran thanked Julia for the invitation to attend the meeting and said that she intended to give Council an update on IPReg’s work during 2019 and to identify priorities for the coming year. Fran informed Council that, in addition to the normal regulatory activities, 2019 had seen a focus on improving IPReg’s back-office systems, in particular the procurement and implementation of a new CRM system to replace the existing database. Fran confirmed that the new system went live at the end of September. Fran advised Council that the 2020 annual renewal process had commenced Volume 49, number 2
and that registrants would be at different stages of the process, which was being managed in batches according to categories of registration. Fran said that all registrants would receive an email from IPReg inviting them to pay their 2020 practice fees. Before payment can be made, registrants will have to activate their accounts. The emails will set out the renewal process, which differs from previous years in that registrants will have to provide their CPD information and submit a statement confirming that they are fit to practice before paying the practice fee. Vicki Salmon said that she had been unable to determine if an attorney had a litigation qualification on the public website. Fran said that she would check this and rectify it if it is an issue with the new CRM. Julia Florence said that the home address of registrants not in active practice was visible on the public website. Fran said that she would check this and review what information needs to be displayed on a public register. Fran informed Council that, with the lease at Outer Temple due to expire shortly, plans were in place for IPReg to move to 20 Little Britain, London, on 16 December 2019. Fran said that this was a fully serviced office, with meeting room space. Fran informed Council that, following the feedback from CIPA and CITMA to Chris Smith’s proposal to restructure the IPReg Board, IPReg had thought further about its structure and that this would be discussed at the Regulatory Forum on Wednesday 11 December 2019. Fran stressed that it was important for CIPA, CITMA and IPReg to reach a consensus in order to meet the LSB’s timetable for the review of the Delegation Agreement, by the end of March 2020, to bring it in line with the Internal Governance Rules.
Fran advised Council that the guidance on the application of the Money Laundering Regulations to the work of patent and trade mark attorneys had now been finalised and that there would be a joint statement from IPReg, CIPA and CITMA published shortly. Fran closed by saying that IPReg hoped to complete its review of the regulatory arrangements and implement any resulting rule changes by the end of 2021. Fran said that CIPA and CITMA would be fully involved in the consultation process and that IPReg wanted to work with both Institutes to ensure that regulation was proportionate and followed best practice. Julia Florence thanked Fran Gillon for an excellent update.
Item 2: Conflicts of interest 259/19: There were no conflicts of interest.
Item 3: Minutes 260/19: The minutes from the meeting held on 6 November 2019 were approved. 261/19: From minute 207/19 and 234/19. To receive an update from the International Liaison Committee (ILC) on its strategy and operation. Tony Rollins informed Council that an ILC strategy meeting took place in September to enable the committee to discuss its priorities and how it will operate in the future. Tony said that Neil Lampert produced a strategy document following the meeting, which led to further debate by email. Tony said that, as a result of the feedback received, he slimmed down the strategy section and put some of the points into the operational section of the document. Tony added that the debate centred on the key countries/regions that the ILC should focus on. FEBRUARY 2020
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Tony informed Council that there were three other important considerations: 1. That CIPA staff should be more involved in the operation of the Committee and should participate in visits to maintain continuity with overseas associations. 2. That the UKIPO should be invited to attend Committee meetings. 3. That CITMA should be invited to attend Committee meetings.
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Item 4: Brexit 263/19: Continuity and certainty Gwilym Roberts confirmed that the continuity and certainty joint letter was sent out in October and that a reply had been received from the IP Minister, Chris Skidmore (December [2019] CIPA 6). Bobby Mukherjee requested if CIPA could share the letter with the CBI, given its political experience and connections. Julia Florence informed Council that a meeting with Tim Moss had been arranged, along with some of the other signatories of the joint letter.
USPTO and would also think about the questions that could be asked in a future financial impact assessment. 266/19: Council considered a recent IPKat article that referred to EPC countries and national grace periods. Council concluded that, despite there being inaccuracies in relation to incompatibility with the EPC, the article was a matter of opinion and opinions vary widely on this issue. Council decided not to make a formal response to the article.
Item 5: Regulatory issues Council supported the proposal that CIPA staff should be more involved in the operation of the Committee and should attend overseas visits. Council supported the UKIPO and CITMA attending Committee meetings as observers, not full members of the committee, meaning neither would have the power to vote. Council suggested that the Committee could invite the EPO to send an observer to Committee meetings. Action: Tony Rollins to amend the strategy document as follows: ‘The ILC will invite other organisations such as CITMA and the UKIPO as observers as appropriate.’ Tony Rollins to provide the Internal Governance Committee with the ILC’s budget proposals for its December meeting. 262/19: From minute 236/19. Delegation Agreement. Lee Davies informed Council that he had spoken with Chris Mercer, Stephen Jones and Alasdair Poore about setting up a working group. Rob Jackson, Richard Mair, John Brown and Roger Burt volunteered to participate in a working group to review the draft Delegation Agreement. Action: Lee Davies to liaise with Fran Gillon and Keven Bader on the first draft of the Delegation Agreement and to arrange for the working group to meet in January. 8
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264/19: Free trade agreements and CPTPP Catriona Hammer confirmed that CIPA had been well represented in discussions about free trade agreements with the Department for International Trade (DIT) and the UKIPO. Lee Davies added that it had not been possible to carry out an analysis of the financial impact of the UK leaving the EPC during the Brexit readiness work, due to the cost of the research and the need to complete the work by the end of October. Lee added that he had spoken to Tony Clayton, former head of the economics, research and evidence team at the UKIPO, for advice on a financial impact assessment and that Tony had expressed an interest in helping CIPA with this in the future. Action: Lee Davies to go back to Tony Clayton and explore options for a financial impact assessment of the UK leaving the EPC. 265/19: Catriona Hammer informed Council that the December meeting of the IP Expert Trade Advisory Group (ETAG) had been cancelled due to the general election and that nothing will now happen until the outcome of the election is known. [Redacted.] Catriona said that the IP Commercialisation Committee would consider an approach to the
267/19: Money Laundering Regulations Lee Davies advised Council that agreement on fees had been reached with counsel, the final figure being £39k, with CIPA meeting one third of the cost of the work.
Item 6: The Mercer Review 268/19: Lee Davies advised Council that the call for evidence was about to be sent out to members and key external stakeholders.
Item 7: IPO and EPO matters 269/19: Stuart Forrest informed Council that the UKIPO is considering introducing a renewal service that will be available 24/7 (January [2020] CIPA 5). Stuart added that the Patents Committee was monitoring this initiative and that there would not be any changes until February 2020. 270/19: Gwilym Roberts informed Council that the EPO will not be issuing the revised guidelines until 2021. Tim Jackson said that the Patents Committee would continue to monitor the situation and make a response on behalf of CIPA if necessary. 271/19: Council agreed that CIPA should attempt to arrange to meet with President Campinos in 2020. It was agreed that it would be worth www.cipa.org.uk
NEWS
writing to President Campinos to invite him to a meeting and that this meeting could include the IP Federation. It was suggested that President Campinos should also be invited to make a keynote speech to Congress in 2020. 272/19: Gwilym Roberts informed Council that the epi elections take place in January 2020 and encouraged everyone to vote.
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275/19: Congress Committee John Brown informed Council that Congress 2020 will take place on 17 September, at the Queen Elizabeth II Conference Centre. John added that the Committee is currently discussing the delegate rates for Congress. 276/19: International Liaison Committee Council noted the report from the International Liaison Committee.
Item 8: Strategic Plan 273/19: Lee Davies presented his revised draft version of the Strategic Plan and thanked those members of Council who had provided feedback. Council considered the inclusion of European Patent Attorney members and Paralegal members within the final document. Matt Dixon said that he felt quite strongly that CIPA must promote Chartered Patent Attorney (CPA) status as the gold standard and that, whilst EPAs were welcome as members of CIPA, the Strategic Plan should focus on the promotion of CPAs. Tony Rollins agreed and questioned if the same was true for IP Paralegal members. Rob Jackson said that IP Paralegal members were different as CIPA sets and maintains the standards. Council voted in favour of revising the document to remove references to EPAs and IP Paralegal members, 13 Council members voting for the proposal, two against and two abstaining.
277/19: IP Paralegal Committee Council noted the report from the IP Paralegal Committee.
Item 9: Committees and committee reports
282/19: Council noted the Chief Executive’s report.
274/19: Lee Davies reminded Council that one of the first jobs for Council following Richard Mair becoming President in January would be to review and appoint new committee Chairs, if necessary. Richard Mair said that he would like to write to the Chairs of each committee. Action: Charlotte Russell to send Richard Mair a list of committee Chairs. Volume 49, number 2
278/19: IP Commercialisation Committee Council noted the report from the IP Commercialisation Committee. Council approved the appointment of Christian Reinders (Dräxlmaier) to the Committee. 279/19: Membership Committee Council noted the report from the Membership Committee. 280/19: Patents Committee Council noted the report from the Patents Committee.
Item 10: Officers’ reports 281/19: Council noted the Officers’ reports.
Item 11: Chief Executive’s Report
Item 12: Any other business 283/19: Julia Florence reminded Council that this was the final meeting for Stephen Jones and Bobby Mukherjee, who were both standing down from Council. Julia thanked Stephen and Bobby for their individual contributions to Council over many years, referring to Bobby’s leadership of the Internal Governance Committee in its formative stage and
Stephen’s time in office as President. Council endorsed Julia’s comments by acclamation. 284/19: Richard Mair thanked Julia Florence for serving as the 2019 CIPA President. Richard said that Julia had worked tirelessly on behalf of CIPA members and for the patent attorney profession. Richard said that he was looking forward to becoming CIPA President on 1 January 2020, but that Julia would be a tough act to follow. Council endorsed Richard’s comments by acclamation. 285/19: Council noted the report from Tony Rollins on the WIPO NGO meeting held in Geneva on 26 November 2019. 286/19: [Redacted.] 287/19: ChIPs (Chiefs of Intellectual Property) initiative Council noted the document in the papers. 288/19: Carolyn Palmer expressed concerns arising out of the Informals that there were insufficient examination facilities in the UK, resulting in a number of UK candidates being asked to travel to Munich to sit the EQEs. Chris Mercer said that the situation was more complex that this and that he and Lee Davies would meet with Carolyn outside of the Council meeting to discuss the arrangements for holding the EQEs in the UK. Action: Lee Davies to liaise with Chris Mercer and Carolyn Palmer on a date for a meeting to discuss the EQEs.
Item 13: Date of next meeting 289/19: Wednesday 8 January 2020. The President closed the meeting at 19:14. Lee Davies, Chief Executive FEBRUARY 2020
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Overseas update International treaties Lisbon Agreement (Protection of Appellations of Origin) On 26 November 2019, the European Union deposited its instrument of accession to the Geneva Act of the Lisbon Agreement. The instrument contained the following declarations: •
•
that in accordance with article 28(1) (iii), the European Union has been duly authorized, in accordance with its internal procedures, to become party to the Geneva Act of the Lisbon Agreement and that, under the constituting treaties of the European Union, legislation applies under which regional titles of protection can be obtained in respect of geographical indications; and that the European Union avails itself of the possibility provided for in article 29(4) to extend by one year the time limit referred to in article 15(1), and the periods referred to in article 17, in accordance with the procedures specified in the Common Regulations.
The Lisbon Agreement will enter into force on 26 February 2020, that is, three months after the deposit by the fifth eligible party of its instrument of ratification or accession. Locarno Agreement (International Classification for Industrial Designs) On 19 December 2019, the Government of the Republic of Singapore deposited its instrument of accession to the Locarno Agreement. The Agreement will enter into force, with respect to Singapore, on 19 March 2020.
OVERSEAS • BREXIT
CPVO, Brexit transition period CIPA worked with the UK Intellectual Property Office and a concerned member to secure changes to misleading advice being issued by the EU’s Community Plant Variety Office (CPVO) relating to Brexit and the transition period. CIPA Fellow and plant variety rights expert Simon Bradbury alerted staff to a notice and webpage published by the CPVO, which notified rights holders of their “obligation” to appoint an EU-based legal representative by Brexit day on 31 January if they wanted to retain their rights and proceed with a pending application. Simon, a partner at Appleyard Lees, wrote to the CPVO, copying CIPA, pointing out that the EU and the UK had agreed a withdrawal deal and that the UK would be treated as if were a member of the EU until the end of the transition period on 31 December 2020. CIPA staff immediately alerted colleagues at the UK Intellectual Property Office, who took the matter up with the CPVO. Independently of this, Simon escalated the matter, writing to CPVO President Martin Ekvad. The result of this combined lobbying was that, on 24 January, the CPVO published fresh guidance confirming that: “neither a refusal of applications nor the cancellation of existing rights will occur during the said transition period based on the non-designation of a procedural representative in EU27 for UK applicants or applicants represented by UK procedural representatives. We apologise for not having referred to the eventual impact of a ratified withdrawal agreement in the previous note and for any inconvenience this may have caused.” We thank Simon for his vigilance and persistence on behalf of members and our friends at the UK IPO for pursuing the matter on our behalf. Neil Lampert (CIPA,Deputy Chief Executive)
Books for review We have some review copies of intellectual property titles. If you are interested in reviewing these for the CIPA Journal please let us know, editor@cipa.org.uk. The titles we have include: •
Intellectual Property in Electronics and Software (2nd edition) Nicholas Fox (Consulting Editor); Globe Law and Business
•
Dutfield and Suthersanen on Global Intellectual Property Law (2nd edition) Graham Dutfield (University of Leeds) & Uma Suthersanen (QM-UL); Edward Elgar
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Research Handbook on Intellectual Property and Digital Technologies Edited by Tanya Aplin (King's College London); Edward Elgar
•
Proceedings Before the European Patent Office (2nd edition) Marcus O. Müller (EPO) & Cees A.M. Mulder (Maastricht University); Edward Elgar
•
Research Handbook on Art and Law Edited by Jani McCutcheon & Fiona McGaughey (University of Western Australia); Edward Elgar
Dr Amanda R. Gladwin (Fellow), GSK 10
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NEWS
CRISPR
CRISPR priority dispute EPO Technical Board of Appeal upholds Opposition Division’s decision regarding settled law with respect to the right to claim priority
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vid readers of the CIPA Journal will note that the January Edition contained a report on the Life Sciences Conference 2019. The “Pushing the Frontiers in IP” section of the report discussed the joint presentation given by George Schlich and Simon Wright regarding the CRISPR1 priority dispute ongoing at the EPO. Isla Furlong reported that “After hearing each side’s arguments […] George […] was determined as the ‘winner’ by a show of hands”. Of course, at the time the report was written, the Appeal hearing had not yet taken place. The verdict is now out: the Appeal in T844/18 was heard on 13-16 January 2020, and The Technical Board of Appeal (TBA) upheld the Opposition Division’s Decision to hold the Broad Institute’s CRISPR patent, EP2771468, (1) not entitled to priority from its first, second, fifth and eleventh priority filings and (2) to lack novelty. As such, the Appeal was dismissed and EP2771468 has been revoked. So, it turns out that the audience was correct to side with George. The issue of priority, more specifically the right to claim priority, has always been at the centre of the dispute. EP2771468 claims priority to 12 US provisional applications, some of which name inventor-applicants who were not named on the subsequent PCT application from which EP2771468 is derived, nor were there assignments showing the effective transfer of their priority rights to any of the applicants named on the PCT application at its filing date. Under article 87(1) EPC, for a valid Volume 49, number 2
claim to priority, the applicant for the European patent has to be the applicant or the successor in title to the applicant who made the previous application. Where a priority application was filed in the name of joint applicants, all of the applicants, or their successors in title, must be amongst the applicants of the later European patent application. The patentee has never argued that they made a mistake when naming the applicants for the PCT that gave rise to EP2771468, instead they have in effect petitioned for a change in EPO practice with respect to the right to claim priority in order to accommodate their actions. The first argument raised was that the EPO does not have jurisdiction to examine the right to claim priority because that assessment amounts to an assessment of entitlement, an area into which the EPO cannot stray. The second argument raised was that “any person” within article 87(1) EPC means “any one of ” and that when a priority application is filed in the name of multiple applicants, any one of the priority applicants, independently of and in parallel to the others, should be able to file a subsequent application validly claiming priority. The patentee’s third argument was that the national law of the territory of the first filing should govern who is “any person” within article 87(1) EPC. Whilst the parties submissions on each of the above arguments were extensive, the TBA, as can be seen from page 6 of the minutes2, determined that: (1) the EPO is competent to assess whether an applicant for a patent application was entitled to claim a priority right; (2) “any person” in article
87(1) EPC does not mean “any one of the persons” and instead requires all persons named on a priority filing, or their successors in title, to be named on the subsequent European application; and (3) reference to national law is not required in order to determine who “any person” is within the meaning of article 87(1) EPC. This decision was not one the TBA came to lightly. In fact, on day three of the hearing, the Chairman opened the proceedings with the announcement that the Board was currently of the view that certain questions of law should be referred to the Enlarged Board of Appeal. However, after hearing the parties extensive submissions for another 1.5 days, the Board was convinced that no referral to the Enlarged Board of Appeal was needed and a decision could be made. The decision that followed stands in line with decades of case law regarding the right to claim priority. For those readers eager to know more about the arguments that were run by each side, but less eager to troll through the EPO register to fish them out, a further, more detailed, article will follow in the March edition of the CIPA Journal. Carolyn Palmer (Student), Schlich Ltd
Notes and references 1. clustered regularly interspaced short palindromic repeats 2. The minutes from the Appeal hearing can be found on the EPO register, dated 23 January 2020.
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Smoothing the way for AI inventions in China On 1 February 2020, the CNIPA brought its revisions on examining computer-related inventions (“New AIRelated Revisions”) into effect. These New AI-Related Revisions provide clearer guidance on determining whether a computer related invention is directed to patentable subject matter. They will be welcomed by the applicants as they should make patenting computer-related inventions easier, and the related prosecution smoother. By Toby Mak (Overseas Member).
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n 11 November 2019, the CNIPA published draft revisions to its patent examination guidelines for computer-related inventions (“New AI-Related Revisions”). These were finalised on 31 December 2019, and became effective on 1 February 2020. In general, the changes follow the direction in the earlier revisions in 2017, reported in my article published in the August 2017 issue of the CIPA Journal. Specifically, as long as a claim has a technical feature like a computer-implemented step, a non-patentable subject matter objection should not be raised. Before looking at the New AI-Related Revisions, it is useful to comment on my experience prior to the 2017 revisions: 1. For inventions involving computer programs, business methods, or methods of treatment, particularly if the claims are only directed to such problematic matter, it was not unusual that the first office action only raised nonpatentable subject matter objections against such claims. 2. If a non-patentable subject matter objection was raised against a claim, it was typical that the novelty and/ or inventiveness of the claim was not examined by the Examiner. Because of this, it was possible that, subsequently, a novelty and/or obviousness objection could be raised after the non-patentable subject matter objection was resolved. In fact, I have one case in which the non-patentable subject matter objection was resolved after two office actions and a rejection decision, and only then obviousness objections were raised, in the third office
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action, after the case was returned from the Re-examination and Invalidation Department (previously known as the Patent Re-examination Board). 3. When raising the non-patentable subject matter objection against a claim, a Chinese examiner would allege a number of features in the claim to be not novel, either without providing any reference (like a generic computer processor, or a step of collecting data) or with a reference (like a specific step of comparing two parameters), while asserting that the remaining feature(s) were directed to nonpatentable subject matter. 4. Ironically, the CNIPA (SIPO back then) Chinese Patent Examination Guidelines (the Guidelines) emphasised full examination and procedure saving principles. As a more general comment, my personal experience is that after the 2017 revisions I had not in fact received one first office action with only non-patentable subject matter objections. As mentioned above, the New AI-Related Revisions again stressed that as long as a claim has a technical feature like a computer-implemented step, such as a step involving computer hardware, whether that was special or conventional hardware, a non-patentable subject matter objection should not be raised, and the revisions further provide: a. further explanations of what would constitute a technical solution, that is, patentable subject matter; www.cipa.org.uk
UPDATE
b. that when the office is examining novelty and inventiveness, all features should be taken into account; c. various examples illustrating what constitute a technical solution; d. specific guidance on drafting of the description and claims. These are discussed below:
a. What constitutes a technical solution?
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features that have mutual supportive and interactive relations in function with the technical features should be considered as a whole”, in which “mutual supportive and interactive relations in function” refers to the qualification of a technical means, that is, solving a technical problem to obtain technical effect. That is the features of the invention which interact with each other should be considered as a whole, and not separated into non-technical features and technical features. The following examples are recited:
The New AI-Related Revisions stipulate the following: • • •
all features recited in a claim should be considered (emphasis added); and the presence of “technical means” in the claim is required. In order to be accepted as technical means, such “means” are required to solve a technical problem in order to obtain a technical effect in conformity with the laws of nature.
Comments: Fellow readers in Europe would be familiar with the concepts of a technical problem and a technical effect. An explanation may be required of “in conformity with the laws of nature”. In general, this refers to technical means that could be carried out without subjective intervention of human beings. For example, if how a step is carried out requires a determination by an operator depending on the current working conditions, then this step would be considered as not in conformity with the laws of nature, and therefore not technical.
•
Comments: The following points could be useful: •
Although all features should be taken into account, this section in the New AI-Related Revisions imply that technical features not fulfilling the above requirements will be discounted when considering novelty and inventiveness. This follows the line of thinking in the Cubicin invalidation proceedings (please refer to my article published in the August 2014 issue of the CIPA Journal). This is further confirmed by the later examples in the New AI-Related Revisions, which will be discussed below.
•
It is interesting to note that the New AI-Related Revisions specifically state that adaptation or improvement of a
b. When examining novelty and inventiveness, all features should be taken into account Although the above is specifically recited in the New AIRelated Revisions, this section also stipulates that “the technical features and algorithm or business rule and method
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Application of algorithm features in a specific technical field. If it is required to adapt or improve the technical means to implement business rule and method features in a claim, then the business rule and method features usually have mutual supportive and interactive relations in function with technical features.
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technical means due to implementation of business rule and method could be allowed. This could be a useful angle to obtain patent protection for a business rule or method, provided that there is a change to the technical means to implement such a business rule or method, notwithstanding that the technical means may not be a physical means. •
At present, the typical prosecution of computer-related inventions is that novelty and/or obviousness objections are raised in a first office action. When at least one distinguishing feature from the prior art is identified, the question of whether this distinguishing feature is technical would be raised in determining whether such should be discounted in the determination of novelty and/ or inventiveness. Compared to before the 2017 revisions, this could result in more efficient prosecution. At the very least, what happened to me in (2) above is now less likely to occur. The above prosecution practice is expected to continue under the New AI-Related Revisions.
c. Various examples illustrating what constitute a technical solution The following are examples in the New AI-Related Revisions to illustrate the views from the CNIPA on what would be considered as patentable subject matter in China: A method for training a convolutional neural network (CNN) model The technical problem solved is to overcome the defect that the CNN model can only identify images of a fixed size. By employing different processing and training the image in different convolutional layers, the trained CNN model could identify the images to be identified of any size. A method for using shared bicycles The technical problem to be solved is how to precisely find the location of a ridable shared bicycle, and unlock that bicycle. By controlling and guiding the user’s behavior of using the shared bicycle through computer programs executed on the terminal device and the server, which control the collection and calculation data like location information, authentication data and so on, the effects of matching the location of the ridable shared bicycle and permitting the use that bicycle could be achieved. A method and device for communication between nodes of blockchain The technical problem to be solved is how to prevent the blockchain service node from leaking user privacy data in an alliance chain network. Carrying the certificate authorization server (CA) certificate in the communication request and pre-configuring the CA trust list to determine whether a 14
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connection should be established could limit the target from connecting with the service node, thereby reducing data leakage and improving security. Comments: It is interesting to note that the New AIRelated Revisions specifically include patentable examples related to business methods (the shared bicycles example) and blockchain. This could be encouraging as patenting of similar inventions may now be easier in China. By contrast, non-patentable examples recited in the New AIRelated Revisions are: • • •
a method for establishing a mathematical model; a method of rebating for spending; and a method for analyzing an economic sentiment index based on electricity consumption characteristics.
The New AI-Related Revisions also includes four examples on determining inventiveness. In the last example of a method for visualizing evolution of dynamic views, it was determined that the claim differs from prior art by a rule of the classification of the emotion of the user, while there is no change in the technical means from the prior art for coloring the corresponding classification. This is considered to have no technical contribution, and therefore the claim is obvious.
d. Requirements on drafting of description and claims The New AI-Related Revisions emphasize that the description should: •
describe how the technical features and the features of the algorithm or business rule or method that have mutual supportive and interactive relations in function with the technical features, and thus produce advantageous effects; and
•
clearly and objectively describe advantageous effects of the invention as compared with the prior art.
Comments: The above illustrates the importance of positively stating the specific function and associated advantageous effects achieved by a feature in the description. This may not be welcomed by US practitioners, considering that such recitations would narrow the scope of protection. However, if this is not done, patent grant may not be achieved at all, i.e. the scope of protection could not exist at all, at least in China. Toby Mak (Overseas Member), Tee & Howe Intellectual Property Attorneys. www.cipa.org.uk
UPDATE
CHINA
Foreign-filing licences for patents in China China introduced requirements for foreign-filing licences for inventions in 2010 (when the third revision of the Patent Law came into force). It has become increasingly common for an invention to involve research teams in China and at least one foreign country. Multinational companies need to be aware that compliance with the foreign-filing licence requirements may become an issue – potentially affecting the validity of a corresponding Chinese patent. Toby Mak (Overseas Member) discusses various practical aspects of fulfilling this requirement.
L
ike the US, China has its foreign-filing licence requirement for inventions. This was introduced in 2010 when the third revision of the Chinese Patent Law came into force. In my view, this was reasonable, as China has more and more inventions, and some of these could be related to national security. Various other countries have similar measures (according to www.wipo.int/pct/en/ texts/nat_sec.html, in addition to the US, there are 28 countries with domestic law requirements similar to the US foreign filing licence, including China, India, France, Germany, Spain, Malaysia, Vietnam). So China having the same should be expected. The correct term for this requirement in China is the “secrecy [of] examination requirement”. However, for the ease of discussion, the requirement will be called China’s foreign filing licence (FFL) requirement below. (My personal comments are in red text and square brackets.)
Practical points to note regarding China’s FFL requirement •
The requirement only covers invention patents and utility models. A design patent does not require an FFL.
•
The requirement must be complied with before [“before” is the exact word in the Chinese Patent Law] filing a patent application outside China, including a US provisional application.
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•
The requirement is invoked when an invention is “completed in China” [“Completed” is the exact word in the Chinese Patent Law], and the nationality of the inventors has no relevance. That is, an FFL is still required in China even for a US inventor who has “completed” an invention within China. On the other hand, if the invention was completed by a Chinese inventor while working in the US, then an FFL from China should not be necessary. [The definition of “an invention completed in China” will be discussed later.]
•
A request for an FFL in China can be filed in any of the following three ways: 1. Filed as a separate request without filing a patent application. In such a case, the request must be filed with a detailed description of the invention in Chinese. The detailed description from a patent specification would be sufficient for this purpose. 2. Filing a request for an FFL simultaneously when filing a Chinese patent application with the CNIPA. The request for an FFL must be indicated in the application form by ticking a suitable box. Such a patent application, naturally, has to be filed in Chinese. 3. Filing a PCT application with the CNIPA as the receiving office (RO); this can be filed in either Chinese or English (thanks to Hong Kong). In such a case, a request for an FEBRUARY 2020
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FFL is considered to be filed automatically with the PCT application.
request for an FFL in China with an English specification. This avoids translation of the patent specification into Chinese, which can save a lot of trouble [mainly translation errors] and time [mainly required for the translation from English to Chinese]. There are no substantial cost differences if translation costs are also considered. [In fact, for a lengthy specification (25 pages or above), it would be cheaper to file a PCT application in English to avoid translation into Chinese]. Further, doing so can avoid the chance of the request for FFL being inadvertently not filed if a Chinese patent application is filed to secure an earlier priority date, as filing a Chinese national application does not come with the automatic filing of a request for an FFL. The automatic filing of the request for FFL in China is only triggered by filing a PCT application with the CNIPA as the RO. Further, for some reason, the CNIPA does not carry out an FFL examination for such PCT applications. [I asked a CNIPA official handling PCT filings during a visit by an AIPLA delegation, and this was confirmed.] As such, the applicant can file patent applications claiming priority from this PCT application outside China after four months from the PCT application date.1
[From a practical point of view, (2) or (3) is to be preferred, as an earlier priority date could be established at the same time.] •
If an invention is changed after the approval of an already granted FFL, for example due to modifications, and such modifications amount to something to be claimed as a separate invention, then a separate request for a new FFL should be filed.
•
An FFL is granted by the CNIPA in the following ways [in accordance with article 9 of the Implementation Rules of the Chinese Patent Law]: a. An FFL granted by the CNIPA in the form of an individual notice. [Typically taking between two and four weeks; could be up to three months]. b. An FFL is considered to be automatically granted if one of the following occurs: ✓ the CNIPA does not issue any notice that further examination is required within four months; or ✓ if a notice is issued that further examination is required, but the examination result is not issued within six months. The above timings are from the date when the request for the FFL is filed. [As with many people, I proposed (b) above to the CNIPA (SIPO back then) while CNIPA was soliciting public opinions for the third revision of the Chinese Patent Law. The aim was to prevent the CNIPA from indefinitely preventing foreign applications from being filed by not issuing the FFL results.]
•
•
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One typical scenario is an invention involving research teams in the US and China. Typically, the USPTO issues an FFL much quicker than the CNIPA. The USPTO can usually issue an FFL within a week under request for expedition, while my experiences with the CNIPA vary from two weeks to three months. [See (a) above. There is no formal way to expedite this at the CNIPA.] Judging from these, USPTO is a better choice than the CNIPA as the turnaround time of the USPTO is faster. Again, as the wordings of the Chinese Patent Law only governs filing of a patent application outside China, and the filing of a request for the FFL from the USPTO is not filing a patent application outside of China, there is no violation of the FFL requirement in China. Considering the above, for a foreign entity preferring to have a patent specification in English, a PCT application with the CNIPA as the RO is recommended as the form of CIPA JOURNAL
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•
In the case above, the foreign entity typically would be named as the PCT applicant. However, in order for the CNIPA to act as the RO, it is necessary to name a Chinese entity, for example one of the Chinese inventors or the Chinese branch of the foreign entity, to be an applicant for a PCT member state commercially unimportant to the foreign entity, for example Barbados (BB). PCT Rule 19 – www.wipo.int/pct/en/texts/rules/r19.htm – stipulates that the national office which can act as the RO is the one for which the applicant or one of the applicants (not the inventor) is a national or resident. The reason why it is advisable to name the Chinese entity only to be an applicant for a PCT member state commercially unimportant to the foreign entity is that back assignment to the foreign entity could be avoided. For example, as the Chinese entity is not an applicant for the US or EP, when entering the US or EP national phase, it is not necessary to record an assignment
Notes 1. Editor: Also, naming a different commercial entity (for important jurisdictions) has the potential to create priority problems unless care is taken, as there has to be an existing chain of assignments to justify the priority claim. Special thanks to Darts-IP for providing invalidation decisions involving the use of violation of China’s FFL requirement as a ground of invalidation.
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from the Chinese entity to the foreign entity such that the foreign entity is the only applicant in the US or EP.
Consequences of non-compliance with China’s FFL requirement Consequences of non-compliance with the FFL requirement include: a. A patent application in China directed to the relevant invention could be rejected. b. If somehow a Chinese patent is granted, the Chinese patent could be invalidated. c. If national security is breached, criminal prosecution could be imposed.
PRACTICE POINTS FOREIGN-FILING LICENCES ▶ China’s FFL requirement is not applicable to design patents. ▶ China’s FFL requirement should be complied with before filing any foreign application.
I have searched for reports of (b), as reports of (a) and (c) are not readily available and searchable. Thanks to Darts-IP, I was provided with various invalidation decisions involving the use of violation of China’s FFL requirement as a ground of invalidation. Until now, there is no success reported using violation of China’s FFL requirement to invalidate a Chinese patent. Various invalidation decisions indicate that an invalidation petitioner is required to substantively prove that the invention is completed in China. Only stating or even proving the following did not result in a successful invalidation: •
▶ Although it may not be easy to invalidate a Chinese patent on the ground of violation of China’s FFL requirement, China’s FFL requirement should be complied with to avoid exposure of the relevant parties to criminal prosecution.
The address of the inventor is in China, but without further substantive proof that the invention was actually completed in China (Chinese invalidation decision nos. 31927 and 37451), even with change from the inventor residing in China to an US inventor (Chinese invalidation decision nos. 36591 and 36667).
•
A foreign application was filed first, and then another Chinese application was filed with different claims that could not claim priority from first filed foreign application (Chinese invalidation decision no. 39047).
▶ To establish an earlier priority date, it is advisable to file the FFL request in China together with a patent application at the CNIPA.
•
The Chinese application was filed without a request for an FFL and granted, and foreign applications were filed after the grant of the Chinese application (Chinese invalidation decision nos. 34808 and 35901).
▶ An FFL is considered to have been granted after the first filed Chinese application is granted even if the request for FFL was not filed.
▶ For foreign entities preferring to work with English patent specification, filing a PCT application with the CNIPA as the RO is advisable due to various advantages mentioned above. ▶ For the CNIPA to act as the RO, in addition to the foreign entity being named an applicant, it is necessary to name a Chinese entity to be an applicant for a PCT member state commercially unimportant to the foreign entity. This could avoid back assignment to the foreign entity.
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As such, in order to invalidate a Chinese patent on the ground of violation of China’s FFL requirement, it is necessary to substantively prove that the invention was completed in China. With the high evidence requirement in China (i.e. has to prove beyond reasonable doubt with verification from a neutral third party, for example a Chinese notary), this may not be easy. Toby Mak (Overseas Member), Tee & Howe Intellectual Property Attorneys.
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Sky v SkyKick
Sky v SkyKick – any clearer? CJEU decides Sky v SkyKick in time for Brexit1… but leaves the most important questions' answers out of reach. By Alasdair Poore (Fellow)
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he Advocate General, in his opinion for the CJEU2, described the case of Sky v SkyKick as dealing with some of the most important trade mark issues of the time. The CJEU, on the other hand, chose to give a bland analysis mostly avoiding the important, albeit somewhat difficult, issues. Were these kicked into touch as the UK enters the EU endgame? Certainly, this avoided the difficult question of what to do about goods described just as “software”; and (neatly) circumvented the extension of the IP Translator problem – how to deal all those past trade mark registrations using the term “software”. Except the question of the use of the term “software” and some similar terms should essentially be one with a uniform answer across the EU. The CJEU appears to have thrown back the questions the UK court referred in a way that leaves the real decision open: was there bad faith of a type that affects the whole trade mark registration or only bits of it?
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In this article I explore the arguments and rationale for the decision – given the short time to review (and revise the underlying law) they are somewhat tentative and I welcome being shot down in a vigorous debate.
Introduction Readers will be familiar with the background to this reference,3 which originated with High Court proceedings for infringement of certain Sky trade marks4. Sky registered a number of trade marks for the word “SKY” and corresponding logos. These covered a wide range of goods and services, varying to some extent over the history of the applications, with specifications ranging in length from 238 to 8255 words. The specifications covered some esoteric goods (in the context of Sky’s business) such as whips and “fuel additives… for enhancing the combustion of fuels” – which Sky, in evidence, found rather hard
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to give a rational explanation for including in the specs5. But the key issue for SkyKick was goods and services in the specs, which were potentially very broad, such as “software”. These they said would inevitably cover their corresponding goods and services even though it was clear they were way outside what Sky had a legitimate interest in protecting. The judge, Arnold J (as he then was), said in his judgment: “I am forced to conclude that the reason for including such goods and services was that Sky had a strategy of seeking very broad protection of the trade marks regardless of whether it was commercially justified.”6 Sky, as with a number of other domineering trade mark owners, had an aggressive policy of preventing others getting close to the real area of interest by challenging registration or use of marks in the rather distant penumbra around their legitimate interests – with notable success7. So the underlying policy question is, is such an approach legitimate, and if it is not, how is it controlled? Following a detailed and excellent analysis of the issues, Arnold J referred five questions to the CJEU. Paraphrased these were: 1. Is it a ground of invalidity that the specification of goods and services for a trade mark includes terms that are uncertain or imprecise? 2. If so, is software such a term? 3. Is it bad faith to apply for a trade mark covering goods and services that you have no intention of using? 4. If it is bad faith can the mark be partially invalidated (i.e. for those goods and services for which you have no intention of using it), rather than entirely invalidated)? 5. Is the UK requirement for a statement of intent to use unlawful under EU trade mark law?
Sky v SkyKick
I further argued that where the specification was so broad that it covered goods or services where there was no legitimate interest in covering those goods or services, or where the marks were applied for in a context where they were intended to be used in an oppressive manner to prevent others carrying on legitimate activities, that would be bad faith; and in suitable cases that bad faith might extend to the whole mark (or just to the excessive breadth of goods and services). The Advocate General argued that seeking to cover goods and services without an intention to use the mark as a trade mark in relation to them or without other legitimate reason, amounted to bad faith; and that partial invalidation was permissible (as it was expressly contemplated in the legislation). He did not comment on invalidation as a whole. Finally, the Advocate General argued that the UK requirement of a statement of intention to use was not unlawful as long as that was not (on its own) the basis for invalidation.
Now up to the CJEU Despite (or perhaps because of) the Advocate General’s opinion that the questions being asked were “one of the most problematic aspects of a trade mark”11, the CJEU have taken a bland, essentially uninformative approach to the answers12.
Is lack of certainty of the scope of a specification just an examination question? Yes they say. There are three elements to this answer:
1. Are the grounds of invalidity referred to in the legislation exhaustive? There is plenty of authority for that in the various preambles so that is a difficult argument to contradict13.
Some of the arguments en-route to the CJEU
2. Is lack of clarity or precision of the specification one of those bases for invalidity?
In two earlier articles8, I argued that use of imprecise terms in the spec was primarily a matter for the trade mark office – but there could be cases where the impact of the uncertainly might justifiably be a reason for invalidity. The Advocate General, in his opinion, followed a similar approach: it was not a ground of invalidity, as such, that the specification of goods and services lacked clarity and precision (in a Sieckmann sense9) – that applied to the sign only; and the grounds of invalidity were indeed restricted to those expressly set out in the legislation. However, it was possible that the trade mark registration could be invalidated on the grounds that the trade mark was contrary to public policy. I then argued that software was an imprecise term – for the same reasons as put forward by Arnold J10 – indistinguishable from the imprecision of the word “machine”. The Advocate General endorsed the judge’s argument.
Here, rather elliptically, the CJEU simply says lack of clarity or precision is not mentioned as a ground – which in one sense is rather puzzling as IP Translator14 did set it as a requirement at the examination stage. However, following the Advocate General’s view, and the quotes from the relevant articles, they say that in relation to Sieckmann15 (certainty and precision) that “those considerations apply only in order to identify the signs of which a trade mark may consist and it cannot be inferred from this that such a requirement of clarity and precision should also apply to the terms used to refer to the goods and services in respect of which the trade mark in question has been registered”. One can understand this in the context of article 4, which has the proviso “provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings”. In particular it refers just to the signs, and not to the mark as a whole being able to distinguish goods or services
Volume 49, number 2
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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 13 February 2020 Regional Meeting
Thursday 27 February 2020 Seminar
YORKSHIRE MEETING
TRAINING NEW ENTRANTS
Time: from 12.30 Location: Hilton Leeds City, Neville Street, Leeds LS1 4BX
Time: from 18.00-21.00 Location: The Driver, 2-4 Wharfdale Road, London N1 9RY
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.
A seminar and networking event for anyone Involved in training new entrants to the patent attorney or patent paralegal profession (or with an interest in being involved in the future). Share experiences and best practice, and look at how we can evolve our training of new entrants to the profession so as to improve and adapt the training we provide to meet their needs. The meeting will finish with drinks and nibbles and an opportunity to network further. We are hoping to make this a regular event – both in London and around the UK. Feel free to join our ‘CIPA Trainers Community’ on LinkedIn which is for trainers of attorneys and paralegals.
• Update on subject matter eligibility in US and EPO Michael Piper, Conley Rose and Mike Jennings (AA Thornton) • Patent Prosecution Efficiency in the US Michael Piper (AA Thornton) • New Rules of Procedure of EPO Boards of Appeal and brief comments on G1/19 (computer simulation) Mike Jennings (AA Thornton) Followed by a great networking opportunity. See the full programme online.
CPD: 1; Prices: £72 members only
CPD: 3.5 Prices: £238.80 | £159.60 member Monday 17 February 2020 Webinar
As the UK and the EU have ratified the Withdrawal Agreement, and we left the EU on 31 January 2020, this webinar will look at the changes (or rather the lack of changes) that will happen during the Transition Period. It will also look at what will happen at the end of the Transition Period (currently 31 December 2020) if there is no further trade agreement with the EU that supersedes the Withdrawal Agreement in relation to IP. Speaker: Alicia Instone (Vice-President) CPD: 1; Prices: £73.20 | £49.20 members 44 CIPA JOURNAL
FEBRUARY 2020
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 Wednesday 4 March 2020 Social
LONDON HAPPY HOUR Time: 18.00–19.30 Location: The Argyle, 1 Greville Street, London, EC1N 8PQ The first London Happy Hour of 2020. Book now for a drink or two and an opportunity to network with other CIPA members. Please note: booking is compulsory for entry and the event is for CIPA Members only. Price: free for CIPA member
BREXIT IN IP UPDATE Time: 12.30–13.30
• • • • •
Monday 2 March 2020 Seminar
JAPAN PATENT ATTORNEYS ASSOCIATION SEMINAR 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, which is a great opportunity for networking. Topics include:
Thursday 19 March 2020 Regional Meeting
EAST OF ENGLAND MEETING Time: from 12.30 Location: Tamburlaine Hotel, 27-29 Station Rd, Cambridge CB1 2FB A range of speakers covering different aspects of IP including: • 20/20 Vision – thoughts and tips for patent attorneys, from a litigation solicitor Mark Pearce (Mills & Reeve) • Tips for EPO practitioners to respond to rejections at the USPTO Jaime Choi (Eversheds Sutherland) www.cipa.org.uk
CPD & EDUCATION • PERSONAL
• Effective working relationships – private practice and in-house attorneys Sally Curran (AstraZeneca)
INSTITUTE EVENTS • ANNOUNCEMENTS
Monday 6 April 2020 Webinar
FREEDOM TO OPERATE Time: 12.30–13.30
Followed by a great networking opportunity. See the full programme online. CPD: 3.5 Price: £238.80 | £159.60 members
Thursday 26 March 2020 Webinar
UPDATE ON SPCs Time: 12.30–13.30 An update on recent caselaw on SPCs: the end of the Truvada (Gilead v Teva and others) saga; the CJEU decisions of 2019 reviewed; discussion of the latest references; some thoughts on the SPC manufacturing waiver and finally, some speculation about what the future holds for SPCs in the UK, having “taken back control”. Speaker: Duncan Curley (Innovate Legal) CPD: 1; Prices: £73.20 | £49.20 members
Establishing freedom to operate is as, if not more, important for commercialisation than obtaining patent protection. As a patent attorney, knowing when and how to advise the client on searching and what to look for in the evaluation is key; dealing with any threats identified may be the difference between success and failure regardless of how well protected the technology is. Speaker: Nicola Baker-Munton (Stratagem IPM) CPD: 1; Prices: £73.20 | £49.20 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 Wednesday 13 May 2020 Webinar
TOP TIPS FOR STUDYING UNDER PRESSURE 2020 Time: 12.30–13.30 Exam stress isn’t just the pressure of the day itself, both the lead up and the follow on can be just as nerve wracking. This webinar will offer tips and advice on how to prepare for exams whilst balancing revision with full time employment. Speaker: Elizabeth Rimmer (LawCare) CPD: 1; Prices: Free – members only
Announcements
Thursday, 17 September 2020 Conference
Clinics – volunteers needed
CIPA Congress 2020
CIPA is always looking for more volunteers for the IP Clinics. If you are interested in volunteering, please email clinics@cipa.org.uk. The growth and success of continuous appointments every week would not happen without our members. We appreciate everyone’s help and would like to share this growth.
Location: QEII Centre, London
Haseltine Lake Kempner is delighted to announce that Frances Wilding (Fellow) has taken over as the firm’s Chair. Frances will replace Phil Davies (Fellow), and is the second female Chair of the firm in recent times. See more details at www.hlk-ip.com. In December 2019, IPReg and CITMA moved to new offices. IPReg's new address is: 20 Little Britain, London EC1A 7DH. The main telephone number to contact IPReg on remains the same: 020 7353 4373. CITMA's new address is Thanet House, 231-232 Strand, London WC2R 1DA. The main telephone number to contact CITMA on remains the same: 020 7101 6090 Letters for the Editor and announcements should be sent to: editor@cipa.org.uk
Volume 49, number 2
The Congress Steering Committee is working on the 2020 programme – save the date!.
Friday 2 October 2020 Conference
CIPA IP Paralegals Conference Location: Kempton Fitzroy London, 1-8 Russell Square, London WC1B 5BE Save the date!.
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