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

Review of UK patent cases in 2019 Bristows team

Paper copies of patents cited in searches IPO update

Registered design applications in Singapore

March 2020 / Volume 49 / Number 3

Yellow Sheet – a letter to my younger self Julia Florence

IP Scholars Programme & Radio 4 Appeal in2scienceUK


OUT NOW

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

Hardback ISBN: 9780414073920 December 2019 ÂŁ295

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

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

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

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

56

48

23

54

SWEET & MAXWELL


Contents

UP FRONT

ARTICLES

EDUCATION

3

9

Review of UK patent cases in 2019

34

Life Sciences Conference

Bristows team

38

Business Development & Soft Skills – the other side of IP

50 53

Institute events Non-Institute events

Council Minutes

Lee Davies

NEWS 5

6 6

#UsToo?

Promoting dignity at work within the IP profession Jim Pearson

North American Roadshows

CIPA IP Roadshows in the US and Canada 6

27

Save the date

Student Conference 2020

Official news

DECISIONS

PERSONAL

IPO, Government, EPO and WIPO updates

32

52

Government will not seek to be part of the UP/UPC system Paper copies of patents cited in searches

Beck Greener 35

Examining patent applications

7 8

The Times publishes IP report Singapore update – registered designs

45

New Brexit guidance for the transition period

IPO update

Ian Mirandah and Ang Chuan Heng

IPO decisions

David Pearce & Callum Docherty 36

IPO update 6

Patent decisions

38

Andrea Brewster 54 57 58

in2scienceUK update

IP Scholars Programme and BBC Radio 4 Appeal Luke McKelvey

Trade marks

Bird & Bird 58

New PR videos

THE PINKS 59

Volume 49, number 3

Yellow Sheet A Letter to My Younger Self

Julia Florence

EPO decisions

Bristows

IP Inclusive update

Courses; Support; International; Recruitment

MARCH 2020

CIPA JOURNAL

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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. © The Chartered Institute of Patent Attorneys 2020 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314 2

CIPA JOURNAL

MARCH 2020

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 Julia Florence; 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 Tony Rollins; IP Paralegals Julia Tribe; Life Sciences Simon Wright; Litigation Matthew Critten; Media & Public Relations Jerry Bridge-Butler; PEB Michael Yates; Patents Tim Jackson; Protected Titles Lee Davies; Regulatory Affairs Chris Mercer; Textbooks & Publications Bill Jones; Trade Marks 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


NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 8 January 2020, at 14:30 Item 1: Welcome and apologies Present: Richard Mair (President), Alicia Instone (Vice-President), Julia Florence (Immediate Past President), Gwilym Roberts (Honorary Secretary), Andrea Brewster, John Brown, Roger Burt, Paul Cole, Anna Denholm, Stuart Forrest, Catriona Hammer (Chair of IGC), Greg Iceton (by phone), Tim Jackson, Rob Jackson, Parminder Lally, Keith Loven, Chris Mercer, Bev Ouzman (by phone), Alasdair Poore, Tony Rollins, Vicki Salmon, Sheila Wallace, Simon Wright and Carolyn Palmer, (co-opted Informals Honorary Secretary, by phone). Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Daniel Chew, Matt Dixon, Emily Nytko-Lutz, Andrew Sunderland, and Julia Tribe (co-opted IP Paralegal Committee Chair). The Immediate Past President, Julia Florence, congratulated Richard Mair on becoming CIPA President on 1 January, 2020, and invested Richard with the President’s Badge of Office. Richard Mair congratulated Alicia Instone on becoming CIPA’s Vice-President on 1 January, 2020, and invested Alicia with the VicePresident’s Badge of Office. Richard Mair welcomed new members of Council, Parminder Lally and Sheila Wallace. Council confirmed Gwilym Roberts in the position of Honorary Secretary for 2020.

Item 2: Conflicts of interest 1/20: Chris Mercer and Roger Burt declared a potential conflict of interest in relation to the discussion about JDD Consultants, both having worked as tutors for JDD. Tony Rollins advised Council that he had recently become a policy Volume 49, number 3

advisor for the IP Federation and that this might be a future conflict of interest. 2/20: Lee Davies informed Council that it was necessary to update the Register of Interests and Related Parties as this is an audit requirement. Action: Council members to complete the Register of Interests and Related Parties form and return this to Charlotte Russell as soon as possible.

Item 3: Minutes 3/20: The minutes from the meeting held on 4 December, 2019 were approved. 4/20: From minute 261/19. To receive an update from the International Liaison Committee on its strategy and operation. Tony Rollins informed Council that the wording of the strategy document had been amended to say “…CIPA will involve other organisations such as CITMA, etc.”

Item 4: Brexit 5/20: Council noted that, following the result of the General Election in December, it was now certain that the UK would leave the EU at the end of 2020, following the transitional period. Catriona Hammer informed Council that there would be a meeting with the Chief Executive of the UK IPO, Tim Moss, on 14 January, 2020, to consider further the IP content of free trade agreements. Catriona added that this would be an opportunity for CIPA to put across the continuity and certainty messages and to stress the importance of not making substantive amendments to intellectual property law through bilateral trade agreements. Catriona informed Council that the next meeting of the Department of International Trade’s IP Expert Trade

Advisory Group would be on 20 January, 2020. Catriona said that she was unable to attend this meeting and that Chris Mercer had agreed to represent CIPA. Catriona added that she had asked for the papers to be sent to Chris in advance of the meeting, so that she and Chris could discuss the agenda items. 6/20: [Redacted.]

Item 5: Regulatory issues 7/20: Lee Davies informed Council that joint work with CITMA and IPReg on the application of the Money Laundering Regulation to the work of patent and trade mark attorneys was now complete, and that the guidance was now available on the website. 8/20: Lee Davies reminded Council that the LSB’s new Internal Governance Rules (‘IGR’) require CIPA and CITMA to ensure that the Delegation Agreement complies with the IGR and related guidance. Lee added that he, Keven Bader, Chief Executive of CITMA, and Fran Gillon, Chief Executive of IPReg, had been working together on a first draft of the Delegation Agreement. Lee said that a small working group of the Officers and Council members had reviewed the draft and that Lee would be providing feedback to Keven and Fran. Council reaffirmed its position that CIPA should delegate its regulatory powers to IPReg separately from CITMA, not in a joint Delegation Agreement. Council restated its position that it was in support of the restructuring proposal made by the Chair of IPReg, Chris Smith, to reduce the number of IPReg Board members and that it had no objection to the amalgamation of the Patent Regulation Board and Trade Mark Regulation Board into a single IPReg Board. MARCH 2020

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NEWS

Lee advised Council that Fran Gillon had approached Jessica Clay, of Kingsley Napley, with instructions to provide detailed legal advice on the final drafting of the Delegation Agreement. IPReg agreed to meet the cost of this advice. Lee added that CIPA, CITMA and IPReg need to reach agreement on the broad terms of the Delegation Agreement, including the type and frequency of assurance information needed by both Institutes in their roles as the Approved Regulators. Lee said that the timetable for agreeing the Delegation Agreement was tight and that Council would need to sign off the final version of the Delegation Agreement at its meeting on Wednesday 4 March, in good time to ensure that the submission to the LSB can be made by 31 March 2020. Action: Lee Davies to provide Council with a progress report on the Delegation Agreement at the February meeting of Council.

COUNCIL

facility to renew patents, trade marks and designs online Monday through to Sunday, including Bank Holidays. Alicia said that concerns were raised about the intention to remove the rolling over deadlines to the next working day. Richard Mair said that he would raise the matter at the upcoming Four Presidents Meeting. Action: Richard Mair to raise the matter of online renewals with the UK IPO at the next Four Presidents Meeting. In relation to the proposed requirements for address for service for designs and trade marks, Alicia Instone asked Council members to send their feedback through to the Trade Mark Committee or the Designs and Copyright Committee. This will provide a clearer indication of the issues firms face and will help to set out CIPA’s concerns to the UK IPO.

Item 8: Committee Chairs Item 6: The Mercer Review 9/20: Lee Davies advised Council that the call for evidence had been sent out to members and key external stakeholders and that the deadline for responses was 14 February, 2020. Lee added that he had already received ten responses, some of those were from students requesting the facility to give an anonymous response. Council asked Carolyn Palmer to tell the Informals Committee that students need not feel anxious about providing feedback and that their comments will not go beyond the Education Committee.

Item 7: IPO and EPO matters

12/20: John Brown informed Council that he is standing down as the Chair of the Congress Committee and that Julia Florence had agreed to succeed him. Richard Mair proposed a vote of thanks to John for his many years of service to the committee, which was passed by acclamation. 13/20: The current committee chairs are as follows: • • •

10/20: [Redacted.] • 11/20: Alicia Instone informed Council that she attended the UK IPO’s Marks and Designs Forum (MDF) earlier that day. Alicia said that the meeting received an update on Brexit, where it was confirmed that work on implementing the Withdrawal Agreement was going ahead. Alicia added that there had been discussions about the proposed changes to the renewal service, including the 4

CIPA JOURNAL

MARCH 2020

• • • • •

Patents Committee – Tim Jackson Litigation Committee – Matthew Critten Designs and Copyrights Committee – Alicia Instone Trade Marks Committee – Keith Howick IP Commercialisation Committee – Catriona Hammer Life Sciences Committee – Simon Wright International Liaison Committee – Tony Rollins Education Committee – Vicki Salmon Media & PR Committee – Jerry Bridge-Butler

• • • • • • • •

IP Pro Bono Committee – Stephen Jones Computer Technology Committee – Simon Davies Business Practice Committee – Matt Dixon Textbooks and Publications Committee – Bill Jones Congress Committee – Julia Florence IP Paralegal Committee – Julia Tribe Internal Governance Committee – Catriona Hammer Regulatory Affairs Committee – Chris Mercer

Richard Mair agreed to write to each of the committee Chairs to ask if they wish to continue and to nominate a Vice-Chair. Action: Lee Davies to draft a letter for Richard Mair to send to committee Chairs. In response to a question about reports, Lee Davies informed Council that the Textbooks and Publications Committee did not meet and that requests for new or repeat publications were normally dealt with by Neil Lampert liaising with Bill Jones and Iain Ross. Council agreed that it might be sensible to move publications into the Education Committee, perhaps as part of the Professional Development Working Group, and asked the Education Committee to consider this. Action: The Education Committee to consider taking on responsibility for CIPA’s textbooks and publications. Following on from the discussion about the need for a Code of Conduct for members at the December Council meeting, Council agreed that this should include conduct whilst serving on a CIPA committee. Council asked the Membership Committee to take the lead on developing a Code of Conduct for members and to report back to Council. Action: Lee Davies to research the different membership Codes of Conduct www.cipa.org.uk


NEWS

used by professional bodies and to work with the Membership Committee on recommendations for Council.

Item 9: Committees and committee reports 14/20: Congress Committee John Brown said that it gave him great pleasure to inform Council, as the outgoing Chair of the Committee, that Lord Smith of Finsbury, parliamentarian and Chair of IPReg, had agreed to give a keynote speech at Congress. John added that the programme is coming together well and that and a more detailed report will be provided at the February Council meeting.

COUNCIL

Lee Davies informed Council that the Committee had reviewed its membership for 2020. The four Officers of CIPA are ex officio members of the Committee. Council appoints four other members of Council to the Committee. Lee explained that Alicia had served on the Committee as a member of Council but is now an ex officio member of the Committee, leading to the creation of a vacancy. Council members were encouraged to think about volunteering to join the Committee and to speak to either Lee or Catriona for information about how the Committee works.

Item 10: Officers’ reports 16/20: Council noted the Officers’ reports.

15/20: Internal Governance Committee Catriona Hammer informed Council that the Committee met in December to discuss the first draft of the budget for the year commencing 1 April, 2020. Catriona added that there was more work to do on the budget and that the Committee would meet again early in 2020 to consider a second draft.

Item 11: Chief Executive’s Report 17/20: Council noted the Chief Executive’s report.

Item 12: Any other business 18/20: Tony Rollins informed Council that he had attended a meeting on

Substantive Patent Law Harmonisation with Tim Moss and drew Council’s attention to his report of that meeting in the Council papers. 19/20: Richard Mair informed Council that the 6th Presidents’ Meeting will be held in Sydney and that the 7th Presidents’ Meeting would come to London, both dates yet to be agreed. Richard added that the theme of the meeting in Sydney will be professional representation. 20/20: [Redacted.] Action: Lee Davies to provide Council’s feedback to the course provider and the complainant. 21/20: Paul Cole informed Council that the CIPA Guide to the Patents Act had been published on time and proposed a vote of thanks to all of the contributors and the team at Sweet & Maxwell. Council passed the vote of thanks by acclamation. 22/20: Paul Cole informed Council that the amicus brief in relation to the Athena v Mayo case had been submitted to the US Supreme Court and proposed a vote of thanks to all of those who had contributed to drafting and submitting the brief. Council passed the vote of thanks by acclamation. Paul Cole added that he would provide the names of the contributors for the minutes.

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.

Addendum: Paul Cole noted that CIPA’s brief was filed pro bono by McAndrews, Held & Malloy, Ltd. of Chicago, Illinois, and the assistance of Michael Tomsa, Aaron Barkoff and Christopher Singer of that firm in the non-trivial task of checking and formatting the document and submitting to the Court the required 40 copies in special printed booklet form.

Item 13: Date of next meeting 23/20: Wednesday 5 February 2020. The President closed the meeting at 16:47. Lee Davies, Chief Executive

Volume 49, number 3

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NEWS

OFFICIAL

Official news channels will be updated to reflect these changes. If the first search was requested before 8 March 2020 paper copies of patent document citations will still be sent through the search and exam stages, the changes only apply to requests that are made on or after the 8 March 2020.

Examining patent applications UK IPO news Government will not seek to be part of the UP/UPC system On 27 February 2020, CIPA was informed by a personal telephone call to its President Richard Mair by IPO CEO Tim Moss that the government will no longer seek to participate in the Unitary Patent or Unified Patent Court system. Richard Mair said: “This was not entirely unexpected, given the Government’s well-known views on the jurisdiction of the CJEU. British companies and SMEs will still be able to use the UPC if and when it comes into operation and, more importantly, the Rights of Audience of British-based European Patent Attorneys are unaffected by the Government’s decision. British companies and SMEs will still have the benefit of British representation by CIPA Fellows when litigating in the UPC.”

Paper copies of patents cited in searches From 8 March 2020, the IPO will no longer offer the option to request a paper copy of patents that are cited in patent searches. However, the patent documents are available from Espacenet and paper copies of cited non-patent documents will still be sent. The IPO is making this change to significantly reduce the amount of paper consumed and to streamline IT systems. The free availability of patent citations via Espacenet means this service is no longer justified. The Form 9 and online filing 6

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The IPO has recently reviewed its approach to examining patents to ensure that it continues to provide a quality, consistent and cost-effective examination under the Patents Act 1977. The IPO has sought to ensure that any objections it raises have a solid foundation in the law and are appropriate and necessary to the case in hand. The IPO has also considered feedback received suggesting that, at times, objections raised are minor or unfounded. As a result, the IPO has updated the Manual of Patent Practice (MoPP) to emphasise the importance of examiners looking at applications through the eyes of the skilled person who is trying to understand the invention. The IPO will continue to search all claims, independent and dependent, in an application unless there are clear reasons not to do so, in which case what has been searched and the reasons why will be made clear. Examiners will continue to examine all the claims, and objection will be raised when the issue genuinely makes the scope of the claims unclear or means that the claims lack the required support. Minor imperfections, which do not create this lack of clarity or support, will not be objected to. Parts of the application such as statements of invention, boilerplate clauses and minor inconsistencies or typographical errors, will not be objected to unless they affect the clarity of the independent claims. Similarly, embodiments that clearly fall outside of the claims and therefore do not cast doubt on the scope of the claims will also not be objected to.

The IPO will object to conflict between two or more patent applications only where the scope of the independent claims is considered to conflict; this covers both the situation where respective applications contain independent claims explicitly including all the same features and where the independent claims differ in their wording, but their scope does not differ in substance. The approach will ensure that all IPO examiners adopt a consistent approach across all technology areas. None of this affects the applicants’ right to make voluntary amendments as previously allowed.

New Brexit guidance The IPO has issued new guidance on intellectual property during the transition period. See www.gov.uk/government/news/ intellectual-property-and-the-transitionperiod

UK government New Minister for IP

On 14 February 2020, Amanda Solloway MP was appointed Minister for Science, Research and Innovation.

UK – US trade agreement On 2 March 2020, the UK government published its objectives (covering many aspects of intellectual property) in trade negotiations with the USA. See www. gov.uk/government/publications/the-uksapproach-to-trade-negotiations-with-the-us. www.cipa.org.uk


NEWS

EPO news •

EPC and PCT-EPO Guidelines On 2 March 2020, the EPO launched a public consultation on its Guidelines and invited interested parties to provide input. The deadline for submissions is 15 April 2020. The Guidelines are a vital resource for illustrating the law and practice in proceedings before the EPO and are widely consulted by external parties. They are revised annually to keep them aligned with the latest legal and procedural developments. In its Strategic Plan the EPO outlines its commitment to greater user involvement in the revision of Guidelines. In November 2019, the Standing Advisory Committee before the EPO (SACEPO Working Party on Guidelines) supported the proposal to launch a public online user consultation. This will provide all external patent system users with an opportunity to comment on both the EPC and PCT Guidelines. See www.epo.org/ news-issues/news/2020/20200302.html

OFFICIAL

Maleo, San Fiorano, Somaglia, Terranova dei Passerini and Vò) and South Korea. Meetings of up to 50 (external) participants will go ahead as planned (under the precautions stated above). For other meetings, decisions will be taken on a case-by-case basis and participants will be notified of any cancellation. All duty travel to China, the “red area” of Italy and South Korea has been cancelled until further notice. Please note that, in view of the current situation, the EPO is not obliging staff to undertake duty travel to any destination. As a result, some external meetings may be postponed or conducted via video conferencing.

The EPO will continue to monitor the situation. Please check the EPO website for the latest updates.

WIPO news Lisbon Agreement The Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications has officially entered into force. The international registration system provides protection for names identifying the geographic origin of products such as coffee, tea, fruits, wine, pottery, glass and cloth. See more at www.wipo.int/lisbon/en/ news/2020/news_0001.html

Update on Coronavirus The EPO is monitoring the spread of the Coronavirus (Covid-19) worldwide and has published information for external partners and potential visitors to its offices at www. epo.org/news-issues/news/2020/20200301. html. In response to the latest developments and in line with recommendations issued by international health authorities, the EPO has adopted the following precautionary measures for all of its sites: •

External partners are kindly requested to abstain from visiting the EPO if they have recently visited China, the “red area” of Italy (Bertonico, Casalpusterlengo, Castelgerundo, Castiglione d’Adda, Codogno, Fombio,

Volume 49, number 3

The Times publishes 2020 IP report CIPA once again was a publishing partner with Raconteur on its “Intellectual Property” special report, published in The Times on Thursday 30 January 2020. Through CIPA’s Media and PR Committee, CIPA provided an opinion editorial and expert interviewees for the supplement. Ilya Kazi from Mathys & Squire wrote the opinion editorial on the potential impact of artificial intelligence on the future of IP, while Emily Hayes from Mewburn Ellis gave an interview on the pros and cons of the America Invents Act and Mark Aldred from Gill Jennings & Every gave an interview on why your IP needs to be a priority for 2020. Read the report at www.raconteur.net/intellectual-property-2020

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NEWS

OVERSEAS

Singapore update – registered designs Novelty checks for registered design applications in Singapore.

I

n Circular No. 1/2019 (5 April 2019) and a follow up Circular No. 4/2019 (29 November 2019), the Intellectual Property Office of Singapore (IPOS) indicated that it has heightened its checks on the declaration of novelty in registered design applications. A registered design application that is not new or does not meet the registration criteria may be refused. Whilst this is provided for under section 17(2) of the Registered Designs Act the section has seldom been invoked by the Registrar. To provide clarity on the objection(s), the Registrar will include at least one example, in support of their opinion, citing how the subject matter of the application is the same as or differs from the example(s) only in immaterial details or in features that are variants commonly used in the trade. This is a shift in the position taken by IPOS in 2016. Following a comprehensive review of the registered designs regime, it was decided that substantive examination procedures for design applications would not be implemented, so as to maintain a quick registration process and significantly lower the cost of registration for the applicant. Registered design applications prior to the release of the two 8

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circulars were checked for compliance with formalities only. With this latest guidance, new design applications in Singapore will now be subject to some form of substantive examination. It remains to be seen how stringent and extensive the Registrars will be in implementing the heightened checks. A heightened check on the novelty of the design application may be welcomed by most applicants as they might not have the resources and means to perform selfassessment checks prior to applying for design protection. With the Registrar now performing this heightened check at no additional cost, registered designs granted under this new scheme are bolstered against challenges and oppositions. This should provide greater confidence to registered design owners when exploiting their rights for commercial gains and enforcement actions in suspected infringement cases. In addition, nonregistrable designs can be nipped in the bud, saving the proprietors and companies resources and effort in maintaining their intellectual property portfolio. The process for responding to a deficiency notice remains unchanged. When a deficiency notice is received, the applicant will have three months

from the date of notice to file a response. If an applicant does not agree with the deficiencies raised, they should reply to the Registrar in writing with their arguments. If the Registrar accepts his submission, the application will proceed to registration. Otherwise, it will be refused. The applicant can request for the due date to respond to the notice be deferred by up to four instances. The request for extension has to be submitted prior to the expiry of the due date to respond to the deficiency notice, and official fees are payable for the third and fourth requests. If there is no response filed by the expiry date of the notice, the application shall be treated as withdrawn. It is worth noting that a withdrawn application may still be reinstated if a request along with a response to the deficiencies is filed within six months from the date that the application is treated as withdrawn. Official fees are payable when responding to the Registrar. In essence, applicants have some flexibility when responding to deficiency notices, which can possibly be exploited to suit prosecuting strategies. A heightened check of the declaration of novelty by the Singapore Registrar appears to be a positive progression towards improving the quality of Singapore design applications. This mirrors the recent developments of the Singapore patent regime from a selfassessment system to a positive grant system, which has gained recognition in the region (if not globally). This latest development will no doubt enhance Singapore’s position as a global IP hub in Asia and eventually bring about greater benefits to all stakeholders. Ian Mirandah and Ang Chuan Heng (Shawn); see more at www.mirandah.com www.cipa.org.uk


UK PATENT CASES

REVIEW OF 2019

Review of UK patent cases in 2019 By the Bristows team – Brian Cordery, Dominic Adair, Katie Cambrook, Naomi Hazenberg, Emma Trott, Nadine Bleach and Lucy Sewter

Introduction 2019 was a busy year in the English Patents Courts and a return to high output: the total case count of 86 decisions being the highest of the past four years. As with 2017 and 2018, there were two decisions from the Supreme Court; one of which addressed an issue of widespread application, in this case the question of inventive step and expectation of success in relation to a dosage regimen patent for the drug, tadalafil1. However, in contrast to the Actavis2 decision of 2017, the tadalafil ruling from the Supreme Court3 did not change the landscape in any significant way. 2019 also brought interesting decisions in both the life sciences and technology arenas from the lower courts, although some aspects of the former remain unchanged: for example, the 2019 developments in the law relating to supplementary protection certificates (‘SPC’) illustrates that it continues to confuse and confound many practitioners. The Unified Patent Court (‘UPC’) spent another year in a holding pattern, but in light of Brexit and the expected decision from the German Federal Constitutional Court, there are signs that the next year or two will bring significant and rapid developments. Returning from retirement for one last outing, Alan Johnson tells us that the project may not be dead yet. The year also included the following events:

 In the autumn, Mr Justice Arnold was promoted to the Court of Appeal. His decade of first instance patent jurisprudence represents a remarkable achievement. He has addressed almost every substantive area of patent law and will no doubt continue to develop it from a higher bench.

 The Supreme Court heard, but did not decide, the joined Unwired Planet and Conversant cases on fair reasonable and non-discriminatory (‘FRAND’) licence terms and related issues. Hundreds, if not thousands of practitioners, tunedVolume 49, number 3

in to the live video feed to watch the proceedings and seek an answer to the big question on many minds: will English courts retain the ability to set the terms and royalty rate(s) of a global licence? Watch this space in early 2020 to find out. In the meantime, disputes relating to jurisdiction dominated cases concerning FRAND and encumbered many standard essential patents (‘SEPs’).

 Jurisprudence on the doctrine of equivalents continues to develop. His Honour Judge Hacon gave some interesting judgments, including on the application of equivalence to numerical ranges and on a German-style Formstein defence.

 Finally, and sadly, a long shadow was cast over the year by the passing away of Mr Justice Henry Carr in July. Both as a barrister and later as a Judge, Henry Carr J provided great inspiration to a generation of intellectual property lawyers. He was kind-hearted, fair-minded and warm-spirited and the whole IP community is still coming to terms with the loss. As with previous years, this review attempts to summarise the most important decisions on a topic-by-topic basis. The UK Patents Act 1977 is referred to as the “Act”, the European Patent Convention 2000 as the “EPC”, Regulation (EU) No. 1215/2012 of the European Parliament and of the Council of 12 December 2012 as the “Brussels Regulation Recast”, Regulation (EC) No. 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products as the “SPC Regulation” and Regulation (EC) No. 1107/2009 of the European Parliament and of the Council of 21 October 2009 concerning the placing of plant protection products on the market as the “Plant Protection Products Regulation”. As ever, the authors have endeavoured to cover every MARCH 2020

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important development that occurred during the course of the year. However, as this is a condensed summary, not every decision is mentioned.

Index Quotation of the year .................................................. 13

Claim construction and infringement Claim construction / interpretation and infringement ....10 Doctrine of Equivalents ..............................................10 Validity The skilled person and their CGK.............................11 Patentability ............................................................. 12 Novelty ..................................................................... 12 Prior disclosure / use............................................... 12 Obviousness / inventive step .................................. 12 Insufficiency ............................................................ 14 Added matter .......................................................... 14 Arrow declarations ...................................................... 15 FRAND, competition defences and FRAND jurisdiction............................................... 15 FRAND injunctions ................................................... 17 When can a party avoid a FRAND enquiry then? .... 17 Supplementary protection certificates (SPCs) ......... 18 Procedural issues Pleadings ................................................................. 19 Joint tortfeasance .................................................... 19 Non-FRAND jurisdictional issues ............................. 19 Interim injunctions .................................................. 19 Disclosure ............................................................... 20 Experts ..................................................................... 21 Costs ........................................................................ 21 Summary judgment ................................................. 21 Employee inventor compensation ......................... 23 Expedition / speedy trial ........................................ 23 Adjournment of trial ............................................... 25 Transfer applications .............................................. 25 Unitary Patent / Unified Patent Court Déjà vu all over again ............................................. 24 A positive end to the year ...................................... 24 The Brexit effect ..................................................... 24 Looking ahead to 2020 .............................................. 26

In his own words, the Lilly v Genentech4 dispute, involving a patent to IL-17 A/F antibodies to treat certain autoimmune disorders, was one of the most complex cases Arnold J, as he then was, has ever heard. Certain aspects of the judgment dealing with validity and SPCs will be summarised later in this review. However, readers who made it to the final sections of the decision were rewarded with some interesting, albeit obiter, observations on construction and infringement. In particular, Arnold J opined that for EPC 2000-style purpose limited product claims, it would be appropriate to consider infringement pursuant to the indirect infringement provisions contained in section 60(2) of the Act. Thus, following the principles laid down by the Court of Appeal in cases such as Grimme v Scott5, there would be infringement by a supplier of means relating to an essential element of an invention where the supplier knew or it was obvious that end-users would put the invention into effect in the UK. The Judge held that, for a second medical use claim in EPC 2000 form, the means essential was the drug substance and that Lilly would have known, or it was at least obvious, that ultimate users would put the invention into effect in the UK because the drug substance was authorised by the regulatory authorities for the treatment of the second indication. Arnold J’s treatment of EPC 2000 claims may be contrasted with his approach to Swiss-type claims where it has been held in cases such as Warner-Lambert v Generics6 that the claim is directed to the act of manufacture and only acts prior to the manufacture of the medicine could be considered under an allegation of indirect infringement. A plethora of construction issues arose in Garmin v Philips7 in relation to which Henry Carr J emphasised that purposive construction requires the patent to be interpreted objectively, and without regard to, or knowledge of, the grounds of invalidity. He also confirmed the approach in Virgin Atlantic v Premium Aircraft8 that there is no presumption that the patentee necessarily intended the widest possible meaning be given to their words consistent with their purpose. In Technetix v Teleste9, HHJ Hacon considered an argument that a certain construction should be rejected, as it would render the patent invalid over the common general knowledge (‘CGK’). Examining Floyd LJ’s judgment in Adaptive Spectrum v BT10, he held that there is no absolute rule that the Court should be slow to arrive at a construction that would render a patent anticipated or obvious over the CGK and, on the facts, the skilled person may conclude quite readily that a patent is anticipated by the CGK. He rationalised this by concluding that the patentee was either isolated from or overlooked that part of the CGK.

The authors................................................................. 26

Doctrine of equivalents Following the Supreme Court decision in Actavis v Lilly11, the doctrine of equivalents continues to be a burgeoning area of law. 10

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Understandably, there remain areas of uncertainty when it comes to the proper approach to application of the doctrine. One area in which there appears to be divergence is whether infringement by equivalents should be addressed integer by integer, or by considering the variant as a whole. Arnold J and Nugee J in Conversant v Huawei12 and E Mishan v Hozelock13, respectively, considered infringement of each of the integers of the claim separately. On the other hand, HHJ Hacon in Technetix v Teleste14 considered that the patentee is not “invariably required to assert equivalence in relation to each integer of the claim” but rather an accurate identification of the inventive concept “may be enough to focus attention on the integers that matter”. HHJ Hacon, sitting as a High Court Judge, also took a similar approach in Regen v Estar15 where he considered the variant as a whole. Some guidance on the definition of the elusive inventive concept came from HHJ Hacon in BDI Holding v Argent Energy16, an entitlement dispute over a patent for converting waste material into biodiesel. The Judge confirmed that the identification of the inventive concept of a patent for the purpose of an entitlement dispute is the same as that identified by the Supreme Court in Actavis. Whilst so doing, he also confirmed that the inventive concept could be found outside the claims, following Jacob LJ in Markem v Zipher17. Also in Regen v Estar18 HHJ Hacon, sitting as a High Court Judge, had to grapple with how numerical ranges should be handled under the doctrine of equivalents. Regen alleged that its patent for preparing a platelet-enriched blood plasma product via a polyester-based thixotropic gel was infringed by Estar. The Judge found that Regen’s patent was invalid but went on to consider infringement on an obiter basis. One of the main differences between Estar’s product and the claims, which prevented Estar from infringing as a matter of normal interpretation, was that its anticoagulant had a molarity of 0.136M, rather than 0.10M as required by the claim. The Judge highlighted the importance of the inventive concept to the third re-formulated Improver19 question and found that a numerical limit does not drive the skilled person to the view that the patentee intended strict compliance with the relevant number unless it is part of an essential element of the inventive concept, i.e. a numerical limit should be treated like any other integer as per Jushi20 and Smith & Nephew21. HHJ Hacon found that Estar’s product exploited the inventive concept of Regen’s patent in substantially the same way to achieve substantially the same result, with no intended strict compliance to the claims. As such Estar would have infringed under the doctrine of equivalents had the patent been valid. In a lengthy decision from HHJ Melissa Clarke, sitting as a High Court Judge, in Excel-Eucan v Source Vagabond Systems22, the issue of infringement by equivalents was considered in the context of a declaration of non-infringement. The Actavis23 questions were applied and the request for the declaration was denied. Interestingly, separate validity proceedings were afoot in the UK IPO and Source sought to rely on the non-binding Volume 49, number 3

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opinion from the UK IPO on validity of the patent to rebut ExcelEuan’s arguments under limb (i) of the Actavis test. However, applying the guidance from Actavis on when the contents of a prosecution file may be used in Court proceedings, HHJ Melissa Clarke declined to consider the opinion in her analysis. The Court has also had to consider the interplay between the doctrine of equivalents and validity. In Technetix v Teleste24, the issue before HHJ Hacon was whether Teleste would be afforded a defence to infringement under the doctrine if the product lacked novelty or inventive step over the prior art (the Formstein defence, as it is known under German law). On the facts, HHJ Hacon considered it would have been obvious to adapt CGK devices to create a device like Teleste’s cable tap unit and therefore, if a Formstein defence exists in English law, Teleste would be entitled to it. However, HHJ Hacon did not have to consider whether such a defence in fact existed in English law as he held that the patent was invalid. The question of the possibility of an added matter squeeze based on the arguments run under the doctrine of equivalents came up in Conversant v Huawei25. Arnold J rejected this as a possibility, explaining that infringement by equivalents cannot give rise to an added matter objection as it is “an argument about scope of protection, not about disclosure”.

Validity The skilled person and their CGK Can claim amendments change the identity of the skilled person? This was the question was before Birss J in Conversant v Apple26 where the unamended claims related to a “computing device” but the claims as amended related to a “smart phone”. Birss J explained that whilst it will be unusual, the identity of the skilled person relevant to an amended claim may be different from the identity relevant to the unamended claim. This is because a patent is taken to be directed to those with a practical interest in its subject matter (following Catnic27) and the subject matter is the invention, which is defined in the claims28. Therefore, in this case, although the patent specification and unamended claims related to computing devices more generally, Birss J held, in relation to the amended claims, that the skilled person was someone with a practical interest in smart phones. Arnold J’s view that an English case requires an English outlook gained further momentum with his judgment in Illumina v TDL Genetics29. Building on his findings in Generics v WarnerLambert30 that a case concerning a UK designation of a patent requires consideration of the CGK as it was in the UK, which may be different to the CGK elsewhere, in Illumina, he considered the position of foreign prior art. The Judge held that, for a UK designation of a patent, the skilled person is located in the UK and is, therefore, deemed to read an English language translation of any non-English language prior art document, rather than the document in its original language. He also provided a reminder that evidence relating to a disputed translation is a form of expert MARCH 2020

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evidence, as per Sobrinho v Impresa Publishing31 and Umeyor v Ibe32, and that the Court’s permission must be sought to adduce it under the Civil Procedure Rules (‘CPR’) Part 35.

Patentability The subject matter of a patent cannot comprise mere presentation of information as that is excluded by section 1(2) (d) of the Act. The issue arose in Garmin v Philips33 as to whether a conditional claim amendment, which added a new feature consisting of music volume reduction during the audio playback of real-time athletic performance information from a GPS-based athletic performance monitoring device, was purely presentational in nature. Henry Carr J emphasised that “the key point is that the claimed feature is not in substance a claim to information content”. He held that the combined feature of audio entertainment and volume dimming during presentation of real time performance information was technical and solved the technical problem (how to enable the athlete simultaneously to listen to music from an audio entertainment system and also be provided with aural feedback on their performance). The technical contribution was therefore not the presentation of information as such and was patentable.

Novelty The UK approach to the issue of anticipation remains that set out by the House of Lords in Synthon34; namely, that the prior use or disclosure must both disclose and enable something falling within the claims of the later patent. This can often be a relatively simple test to apply but there are nuances and one such nuance came to the fore in relation to a dispute between Takeda v Roche35 regarding the latter’s patent to glycosylated antibodies in which the claimed antibodies were fully fucosylated. The issue under consideration was whether, for anticipation, the prior use or disclosure must be capable of precise repetition. Disagreeing with the approach taken in two EPO Technical Board of Appeal cases36, Birss J held that the fact that the skilled person’s repetition of the prior art would likely not produce a product that was identical to the prior art did not matter as long as the differences did not take the product outside the scope of the claims. The Judge illustrated the point by reference to an example, if a prior art document disclosed an antibody whose amino acid sequence could be analysed and reproduced without undue burden, a later claim to a product with an identical amino acid sequence would be anticipated. The fact that the prior art antibody might possess certain features that could not be identically reproduced, such as a different glycosylation pattern, would not make a difference to a claim stated at the level of the amino acid sequence. The test from Synthon also played a role in Technetix v Teleste37, where HHJ Hacon held that novelty can be destroyed by working the prior art even if the skilled person doesn’t realise it. In his decision, the Judge explained that it does not matter whether or not the skilled person would appreciate that what the prior art disclosed fell within the scope of the claims. What matters is what in fact would happen when the prior art is performed. 12

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Prior disclosure/use In the case of E Mishan v Hozelock38, Nugee J had to consider whether the inventor’s work in his front garden amounted to a relevant prior disclosure. The Judge found that information is not made available to the public when no member of the public could have accessed it. On the facts, the inventor’s evidence that he would have stopped his work if he had noticed someone watching him was sufficient to prove that there was no prior disclosure. Therefore, it seems that the “brightline” test for prior use in Milliken v Walk Off Mats39 may not be as tight as previously thought. HHJ Hacon heard an unusual application in Regen v Estar40 when Estar applied to re-open the trial prior to judgment based on new evidence relating to an alleged prior disclosure contained in witness statements filed in opposition proceedings before the EPO. He dismissed Estar’s application because: 1. it was an abuse of process as the prior use could and should have been pleaded at trial41; 2. it would not make a difference to the overall outcome of the trial; and 3. the extra Court time and cost that would be required to deal with the issue was not proportionate, as per the overriding objective.

Obviousness/Inventive step To many practitioners, the biggest surprise about the Actavis v ICOS42 case concerning a patent to a dosage regimen for the PDE5 inhibitor tadalafil, was that permission was granted at all for an appeal to be taken to the Supreme Court following a finding of invalidity by a strong panel in the Court of Appeal. When the Supreme Court’s decision was handed down, readers looking for a significant change in approach to the issue of inventive step were disappointed. However, Lord Hodge’s judgment, with which the other four Judges concurred, is interesting as it sets out some relevant considerations, which a Court should take into account in assessing obviousness in a case of this kind. These include: 1. Whether something was “obvious to try”. The Court addressed this together with whether there was a reasonable or fair prospect of success. The Court agreed that the results of some experiments can be obvious even if there is no expectation of success. 2. Whether the research was routine in nature. However, the Court noted that this had no primacy and certainly no paramount status as a consideration. 3. The burden and cost of the research programme. The Court noted here that the need to facilitate expensive pharmaceutical research is an important policy consideration. 4. The need to make, and the nature of, value judgments during a research programme. 5. The existence of alternative or multiple paths of research. www.cipa.org.uk


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The Court noted that multiple paths will often, although not necessarily, be an indicator of non-obviousness; 6. The motivation of the skilled person to undertake certain technical trials. 7. Whether the results of the research were unexpected. 8. The need to avoid hindsight43. 9. Whether the feature of the claimed invention is an added benefit and the claimed innovation is obvious for another purpose, referring to the well-known UK authority in Hallen v Brabantia44. 10. In relation to dosage regimen patents, the Court reiterated that there is no blanket prohibition on such patents but that there should be no relaxation of the rules relevant to the assessment of inventive step. Concerned with the possible general applicability of some of the statements from the Court of Appeal judgment, several industry bodies had intervened before the Supreme Court. However, Lord Hodge held that the judgments of the Court of Appeal did not support “any general proposition that the product of well-established or routine enquiries cannot be inventive” and so the fears of the industry bodies were, by and large, unfounded. As well as the substantive considerations, the judgment also re-states the established law in the UK from cases such as Biogen v Medeva45 that an appellate court should exercise caution when reversing a first instance judge’s evaluation of the evidence on the issue of inventive step. Further, although the Court had heard submissions about judgments of courts of other countries in relation to parallel patents, these were found to be of limited use in the evaluation of the UK patents. The fact that the approach taken by the Supreme Court in tadalafil46 was no different from than the previous law was later confirmed by Arnold J in Allergan v Aspire47, in which Allergan’s patent for a formulation of the prostaglandin analogue bimatoprost and the preservative benzalkonium chloride was held to be obvious. It is well known that making a mosaic from the prior art is not permitted under English law in almost all circumstances, the exception being where there is a cross-reference and motivation to follow it. In E Mishan v Hozelock48, Nugee J had to grapple with whether the various occasions on which the inventor had worked on his prototype garden hose in his front garden could be put together via mosaicing. He held that they could not. This was because it would not have been clear to the skilled person watching the inventor that he was testing a prototype that he had made on a previous day. Further commentary on the skilled person’s approach to complex documents was provided by Henry Carr J in TQ Delta v ZyXEL49, where the Judge distinguished (i) cherry picking using impermissible hindsight from, and (ii) the skilled person’s ability to identify relevant parts of documents having read and assimilated them properly and with interest. Therefore, although the prior art was a 320-page technical Volume 49, number 3

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Quotation of the Year:

It would be an exercise in jurisdictional imperialism to foist this Court’s view… on an unknown foreign jurisdiction. Per Floyd LJ in TQ Delta v ZyXEL [2019] EWCA Civ 1277, at paragraph 52.

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standard, the skilled person would read the relevant sections with interest. The skilled person in this case was used to confronting and solving technical problems and would be aware of a real problem if one existed. The Judge found that no “superhuman ability” was required to identify the problem from the prior art. As it was accepted that if the problem were known the patented solution would have been obvious, the patent was found to be invalid. A question on the impact of the claims on the way prior art is treated came up in the Court of Appeal decision in Philips v Asustek50 in which the defendants sought to argue that the first instance Judge ought to have treated the prior art with a comparable level of generality to that of the invention. Floyd LJ dismissed this argument, explaining that the nature of the invention “cannot logically impact on the way in which the skilled person approaches the prior art”. Whilst a simple invention provides that same simple idea as the target for an obviousness attack, this does not entitle the Court to strip out detail from the prior art or ignore paths down which the skilled person would probably be led. As well as conventional obviousness, it is now commonplace to challenge a patent’s validity by arguing that the patent is obvious due to a lack of technical contribution and/or failure to solve the technical problem. As noted by Birss J in the Takeda v Roche51 case, the general principle is that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art. In the same case, the Judge noted that this argument is sometimes put on the basis that the patent makes no technical contribution over a given item of prior art and such an allegation was made out on the facts of this case, in the Judge’s opinion.

Insufficiency It is settled law that a patent will be held insufficient if it is ambiguous in the sense that the skilled person genuinely cannot tell if a given product or process falls inside or outside the scope of a claim. In Takeda v Roche52, Birss J commented that the principles are not too hard to state, but they can be tricky to apply. Nevertheless, the Judge considered that this was a case where the claim was ambiguous as a product could fall within the claim when measured on one machine but could fall outside the claim if measured on another machine and both were reasonable testing methods to use. This was held not to be a case of a fuzzy boundary at the edges of the claim, but one of true ambiguity. However, the Takeda v Roche decision may well be the last time we see the use of the term “ambiguity” in the context of sufficiency. One of the take-home points from the Court of Appeal’s judgment in Rhodia v Neo53 is that practitioners should no longer use it. The better term is “uncertainty”. As Lewison LJ observed,

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“[s]omething is ambiguous when it is capable of having two (or more) meanings, and ultimately the Court will be able to decide which of them is the correct meaning. Rather the issue here is that of uncertainty. If the Court cannot ascertain the boundary [of the claim]…. it must conclude [that it is insufficient]”. The leading judgment of Floyd LJ in Rhodia v Neo54 also serves as a useful guide to the law on this type of insufficiency, and also on breadth-of-claim or Biogen-type insufficiency. On the first point, insufficiency due to uncertainty, he upheld the first instance judgment that the wording of Rhodia’s claim in the form “consisting essentially of ceric oxide” did not present the skilled person with an insurmountable burden when deciding whether any other elements present in small amounts materially affected the essential characteristics of the product. On Biogen-type insufficiency, Floyd LJ probed the leading House of Lords authorities of Biogen55 and Lundbeck56. He extracted several principles to help navigate the general principle from Biogen that a claim’s breadth should not exceed its technical contribution, and the application in Lundbeck of that principle to product claims. In what is clearly a very fact-sensitive area of the law, Floyd LJ held that although the insufficiency objection made by Neo was viable in law, the evidence it relied upon did not go far enough to meet the burden of proof.

Added matter As readers may be aware, the English courts generally currently adopt a more permissive approach to added matter than the various tribunals of the EPO. A good example of this was provided by Novartis v Dr Reddy’s57 in the context of an interim injunction application. The EPO’s Opposition Division had found that Novartis’ patent for a combination of everolimus and exemestane for use in the treatment of hormone positive breast cancer was invalid for added matter. Novartis had appealed against this decision. In response to Novartis’ application for an interim injunction in the UK, Dr Reddy’s made an application for summary judgment on its counterclaim that the patent was invalid for added matter. After reading the papers, Birss J informed the parties that he had “formed a provisional but clear view there was no added matter” and thus the patent was not invalid. The Judge even asked Dr Reddy’s if he should give judgment on the main claim then. However, given Novartis had made no application to that effect, he did not. After the summary judgment hearing, the Judge maintained his view on added matter. He held that if he were to follow the case law set out in the EPO’s case law book “there is a danger of taking a rather too rigid approach” to added matter. He considered the Opposition Division’s approach to be unduly technical and confirmed that added matter is primarily a matter of construction and not of expert evidence. www.cipa.org.uk


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Arrow declarations When seeking an Arrow58 declaration, the applicant asks the Court to make a finding that a particular product or process was known or obvious at a particular date. It is now settled law that such declarations can be made by the Court where it is in the interests of justice to do so and where the declaration would serve a useful purpose. However, the exact circumstances in which an Arrow declaration may be granted is a developing area of law. A further small increment of clarity in this regard was delivered by Pfizer v Roche59, a case relating to patents for bevacizumab, a monoclonal antibody used to treat certain types of cancer. Pfizer wished to be able to sell a bevacizumab biosimilar upon expiry of an SPC for the patent to bevacizumab. However, Roche held several pending patent applications at the EPO to the use of bevacizumab in various oncological indications. Upon commencement of proceedings by Pfizer in late 2017, Roche de-designated the UK from all relevant patent applications such that there could never be a patent in the UK for the indications of potential concern to Pfizer. Having taken such steps, Roche contended that the Court ought not to grant an Arrow declaration. Unusually, Roche also elected not to adduce expert evidence on the technical issues in the case and did not cross-examine Pfizer’s experts, thereby underlining its position that a decision on the technical issues was not appropriate. Birss J concluded that Roche’s motive for de-designating the patent applications from the UK was to shield its portfolio from the risk of an adverse decision from the English Court, as there was “no other rational explanation”. The Judge also concluded that an Arrow declaration would be of real commercial value to Pfizer including that it would likely be influential in any patent case brought by Roche in Belgium, from which country Pfizer proposed to supply the UK. Nevertheless, notwithstanding that if there had been any pending UK applications, there would be a “plain case for an Arrow declaration” on the technical evidence before him and he would have examined the merits of the Gillette60 defences in detail, Birss J considered that the true purpose of the Arrow declaration sought in the case was for it to be used in courts in other jurisdictions and that this was not enough. Having distinguished the facts of this case from those of FujiFilm61 (where there was a degree of uncertainty regarding AbbVie’s UK rights so as to justify the granting of an Arrow declaration), the Judge declined to consider the Gillette defence in any detail as to do so would be to do the very thing that he had decided he should not do. The Court was not prepared to grant an application for summary judgment or strike out a claim for Arrow relief in Mexichem v Honeywell62. Mexichem had sought declarations of invalidity in respect of six granted patents and, given its knowledge of pending patent applications, an Arrow declaration in relation to those applications. Honeywell considered that the Arrow declaration sought was too broad and not clearly linked to any of Mexichem’s products. Considering Floyd LJ’s decision in Glaxo v Vectura63, HHJ Hacon, sitting as a High Court Judge, disagreed that the Volume 49, number 3

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relief sought was too broad and noted that Floyd LJ had not ruled out the possibility of a general Arrow declaration. He held that even if any resulting declaration would not provide total freedom for Mexichem to sell its product, it would go at least some way to so doing. Whether that was sufficient to allow the grant of Arrow relief was a matter for the trial judge to consider.

FRAND, competition defences and FRAND jurisdiction In January, the Court of Appeal confirmed Henry Carr J’s first instance decision in Conversant v Huawei64 that the English Court has jurisdiction to determine global FRAND licence terms even in circumstances where the vast majority of infringing acts were taking place in another jurisdiction. FRAND enthusiasts are now awaiting the Supreme Court’s decision in the combined appeals in Unwired Planet v Huawei and Conversant v Huawei. This will deal with both the substantive issues of the applicable FRAND licence terms but also some of the jurisdictional questions raised if these FRAND terms sought lead to a global licence. It is also expected to address the availability of injunctive relief for SEP infringement. In the meantime, however, 2019 also saw an array of additional jurisdictional and procedural issues being raised in SEP litigation where a FRAND determination was in issue. The Court of Appeal previously made clear in Unwired Planet v Huawei65 that the English Court cannot adjudicate on the validity of foreign patent rights and so it: “ought not to grant relief of what amounts to damages and royalties under those rights, save with the agreement of the parties”. One might think that it would follow that evidence on validity of the patent holder’s portfolio would be irrelevant to the FRAND determination; it turns out that is not the case. Nugee J concluded in Conversant v Huawei66 that there is no principle of law precluding the Court from hearing arguments as to the validity of foreign patents for the purpose of determining how a hypothetical willing licensor and licensee would perceive the patents in question in terms of attributing value to them setting FRAND licence terms. It is for the FRAND trial judge to determine on the evidence whether, and if so, the extent to which, validity should in fact be taken into account when concluding the licence terms that hypothetical willing parties would negotiate. On that basis, Nugee J gave the defendant permission to adduce technical evidence regarding, inter alia, the validity of any of the patents in Conversant’s portfolio. Birss J commented on the possibility of irreconcilable decisions arising from multijurisdictional SEP disputes leading to a stay of cases under article 30 of the Brussels Regulation Recast when hearing a jurisdiction challenge in IPCom v Vodafone67. Although the issue was ultimately settled between the parties, the judge noted that there was a strong argument that litigation MARCH 2020

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in Germany concerning different patents in IPCom’s portfolio, which could lead to a consideration of whether a FRAND offer had been made in the context of assessing whether to grant an injunction following a finding of infringement, was related to the English litigation (which included a claim for a declaration that a certain offer made by IPCom was FRAND). Jurisdictional gamesmanship reached new heights in the case between IPCom v Lenovo68. In his last decision before retirement, Norris J considered whether to grant an anti-anti -anti-anti-suit injunction. Unsurprisingly, such an application has a complicated history. IPCom had commenced infringement proceedings against two UK Lenovo and Motorola companies in relation to one of its patents, notwithstanding the pre-existence of proceedings in California brought by Lenovo and Motorola’s US affiliate companies for an adjudication of the terms of a FRAND licence to the entire IPCom portfolio. This caused the following cascade of anti-suit motions and applications: 1. First, the Lenovo and Motorola US companies launched in anti-suit motion in California to enjoin IPCom from pursuing the English infringement proceedings and to prevent it from requesting an anti-suit injunction of its own from any foreign tribunal. 2. In response, IPCom brought their own anti-suit application in the UK to restrain the Lenovo and Motorola UK defendants from pursuing an application in California that affected the progress of the English action. 3. In turn, the US companies applied to expedite their Californian anti-suit motion on an ex parte basis to ensure that it is heard before IPCom’s application. The substantive application considered by Norris J was, therefore, IPCom’s further application to restrain the Lenovo and Motorola UK companies from pursuing the Californian expedition motion until the English Court had considered the substance of IPCom’s first anti-suit application. The Judge noted that caution should be applied to granting anti anti-suit injunctions but determined that the substance of IPCom’s first application needed to be considered by the English Court, and not effectively decided in an ex-parte motion in the United States, not least because the Lenovo defendants in the English action had positively chosen to accept jurisdiction here and filed an invalidity counterclaim against the UK patent in suit. Norris J, therefore, restrained the UK Lenovo and Motorola entities on a temporary basis from assisting or sanctioning their US counterparts from seeking to prevent the English Court from addressing these issues substantively. This task fell to HHJ Hacon (sitting as a High Court Judge)69, who heard IPCom’s original application a week later. In restating the principles pertaining to anti-suit injunctions set out by Touson LJ in Deutsch Bank70 and Sir Terrence Etherton, Master of the Rolls in Michael Wilson71, the Judge highlighted that there was an even greater danger of interfering improperly with the conduct of foreign proceedings when considering an 16

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anti-anti suit injunction. The Judge added a simple corollary: if improper interference is less likely, the English Court will be more likely to grant the injunction. HHJ Hacon noted that, in this case, if the English proceedings were halted, IPCom would be deprived of its right to litigate the infringement and validity of its UK patent and would lose the only realistic means of moving on negotiations between the parties to settle FRAND terms. Preventing that alone, however, was not considered to be unconscionable behaviour by the UK Lenovo and Motorola companies. When taken together, though, with statements made in the US that could lead the US Court to understand that the UK Lenovo and Motorola companies approved of and supported the US anti-suit application (notwithstanding their embracing of the UK jurisdiction previously), it led to an increased likelihood that IPCom’s rights in relation to its patent in the UK would be extinguished. In granting IPCom’s anti-anti-anti-suit injunction, the Judge noted that the principle of comity would not be significantly infringed, as the injunction would not interfere with the bulk of the issues before the US Court. Implementers seeking to take advantage of the Court’s willingness to set the terms of a global FRAND licence might have thought that bringing a case in England would enable them to seek some clarity in situations where negotiations with SEP holders are not bearing fruit. However, in the case of Vestel v HEVC Advance72, HHJ Hacon (sitting as a Deputy High Court Judge) held that, on the arguments raised by that implementer, the Court did not have jurisdiction to hear the claim in question. To “break the deadlock” in licensing negotiations relating to patents that had been declared essential to the High Efficiency Video Coding standard, Vestel sued both Advance and Philips, claiming that they had abused their dominant position by offering unacceptably high “supraFRAND” rates73 and sought a determination of the applicable FRAND licence terms (which would therefore by definition be fair). Seeking to establish the English Court’s jurisdiction to hear the claim, Vestel argued that, as a result of the group having to pay royalties above what it considered to be a FRAND rate, it would suffer damage in the UK because the cost increase would be passed down the chain to Vestel UK. However, the Court noted that if the patents were ever asserted, the ultimate outcome would be that the relevant Court would settle FRAND terms. As Vestel would only ever be paying royalties on that basis, the royalties it paid would not exceed the FRAND rate and no damage would be suffered. Vestel also argued against Advance (the jurisdictional regimes the Court had to apply were different) that jurisdiction was established as the claim related to property within the jurisdiction but this too was rejected because less than 5% of the patents in the relevant pool were UK designated European Patents. It is yet to be seen whether the English Court will ever consider it has jurisdiction to hear a stand-alone FRAND declaration claim brought by an implementer. A related issue arose in Optis v Apple74, where the Court was also similarly asked to consider a question of jurisdiction in the context of abuse of a dominant position. This time, the first www.cipa.org.uk


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defendant (a US Apple entity) applied to set aside the previously granted permission to serve the first defendant out of the jurisdiction. The application was made on the basis that there was no reasonable prospect of Optis defeating Apple’s defence under article 102 of TFEU (i.e. that Optis had abused its dominant position) and therefore there was no serious issue to be tried on the merits. Apple argued that there were a number of terms within the licence offered by Optis, which could not conceivably be regarded as FRAND terms. Whilst Nugee J considered it possible that a Court hearing a FRAND trial might conclude that the licence offer made by Optis was not FRAND, he decided that it would be premature for the Court to conclude at this stage that Optis had abused its dominant position. The Judge explained that the time for determining whether or not an implementer should be injuncted comes only after there has been a finding of infringement and after the Court has settled FRAND terms, which the implementer has had an opportunity to take. Although this differs in approach to that taken by Henry Carr J in TQ Delta75 (discussed below), Nugee J noted in a hearing between the same parties the following day76 that this understanding was based on the submissions before him and that he need not resolve the question of when it is appropriate to put the defendants to the election of committing to a court determined FRAND licence.

FRAND Injunctions Earlier in 2019, upon finding that one of TQ Delta’s patents was valid, essential and infringed77, Henry Carr J granted an injunction with immediate effect when ZyXEL, before any FRAND determination, refused to undertake to enter into a licence on whatever terms the Court determined to be RAND78,79. ZyXEL’s position was, notwithstanding its previously pleaded position that it was a willing licensee, it would not now commit to taking a licence from TQ Delta as the patent was due to expire in only a few months’ time. In the face of that election, and despite not having been expressly asked to do so, the Judge found that ZyXEL was guilty of “hold-out” for blowing hot and cold on whether it would enter into a RAND licence and having never paid any royalties for any of the relevant SEPs. He found that while ZyXEL was now refusing to submit to the outcome of a RAND determination, it was still trying to claim the benefit of the RAND undertaking and avoid the injunction. Interestingly, this appears to move the point of election for an infringing implementer earlier than in previous cases (e.g. after the actual determination of FRAND terms as in the Unwired Planet case). As noted above, there is some uncertainty as to whether this is a new generally applicable principle or a consequence of the proximity of the patent’s expiry in this particular case. The Judge dismissed arguments that it was disproportionate to grant an injunction with only a few months left in the life of the patent and stated that refusing to grant the injunction would effectively amount to a compulsory licence that would wrongly and unjustly deprive the patentee of its rights. Both Henry Carr J and Floyd LJ refused permission to appeal the imposition of the injunction. Volume 49, number 3

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When can a party avoid a FRAND enquiry then? Having been injuncted, ZyXEL took action. It expressly waived any right it might have had as a result of TQ Delta’s RAND obligations in the UK and sought to strike out the declaratory aspects of TQ Delta’s claim, stating that in the face of the injunction and the shutting down of ZyXEL’s relevant UK business there could no longer be any basis for a RAND enquiry. TQ Delta took the opposite approach; it started a new infringement action with a new patent and applied to amend its pleadings in connection with the declaratory relief sought at the scheduled RAND trial, which had been scheduled to follow the technical trial. The question of whether to vacate the RAND trial was first considered by Birss J, who was deeply sceptical about the workability of ZyXEL’s waiver and thought that it was simply more of the same “hold-out” tactics that Henry Carr J had noted. The Judge held that there was still a “real and lively” dispute between the parties and noted that ZyXEL was reserving the right to still argue the RAND obligation should still apply against TQ Delta in other jurisdictions; in his view, the RAND trial should proceed as planned. The Court of Appeal, however, reversed this decision. Floyd LJ, with whom Lewison LJ agreed, found that a declaration to determine the scope and terms of the RAND licence would no longer serve a useful purpose now that the licence would never be deployed. Whilst noting that it might not be open to an implementer to selectively claim the right to be granted a RAND licence, an implementer was able to say that it no longer wanted to rely on any licence to which it was entitled in order to resist the grant of relief in a particular jurisdiction following a finding of infringement of a local (in this case, UK) patent. The Judge commented that the Unwired Planet decision did not suggest that a patent owner had an independent right to seek a declaration of the relevant licence terms if the implementer has no interest in taking the licence. Further, Floyd LJ saw a number of “quite serious problems” with TQ Delta’s new request for a declaration, that ZyXEL was not a willing licensee, that being sought for export to foreign jurisdictions as a res judicata finding. Not only were there no foreign proceedings (either afoot or in contemplation), but also the Judge noted that the lack of a unified approach to the interaction between the RAND undertaking and relief for patent infringement, as well as the fact that “willing licensee” was not an internationally recognised term of art, meant that any declaration might be of no use at all. Furthermore, the declaration may equally be of no use if it were exported to a jurisdiction that did not have a doctrine of res judicata or that did not recognise foreign judgments. Additionally, the wider ZyXEL group of companies would need to be involved for there to be consideration of whether or not they were “willing global licensees”. Finally, it would be contrary to the overriding objective to consider granting declaratory relief that had no utility, would occupy ten days of court time and cause an estimated £4 million in costs to be incurred. MARCH 2020

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Supplementary protection certificates (‘SPC’) Just as practitioners were starting to believe that maybe, just maybe, some clarity on the interpretation of the SPC Regulation would be forthcoming, 2019 demonstrated that the law in this vitally important area to life sciences companies remains in a state of flux. It is true that, by and large, most SPCs are applied for, granted, exist and expire without much fuss but several important questions remain. One area of uncertainty familiar to all SPC practitioners is the interpretation of the ostensibly simple requirement of article 3(a) of the SPC Regulation that the product should be “protected by a basic patent in force”. In 2018, the Grand Chamber of the CJEU set down what it appeared to consider to be a definitive test in Teva v Gilead80. This test, in the context of a product consisting of a combination of two active ingredients, was that to be protected: 1. the combination must necessarily fall under the invention covered by the patent; and 2. each of the active ingredients had to be specifically identifiable in light of all the information disclosed in the patent. In September 2018, applying the test as best as he could, Arnold J held that Gilead’s SPC for the combination of tenofovir disoproxil and emtricitabine was invalid.81 Just before Christmas 201982, the Court of Appeal upheld Arnold J’s decision, focusing only on the first limb of the test and opining that since the presence of the further active ingredient in the relevant claim of the patent was optional, the combination product did not fall under the invention disclosed in the patent. Despite the CJEU’s apparent final word on article 3(a) in Teva v Gilead, it is clear to all practitioners that many difficulties remain. Two particular problems relate to (i) Markush claims and (ii) functional claims. As many readers will know, these issues, respectively, were the subject of references in Sandoz v Searle83 and Royalty Pharma.84 The Opinion of Advocate General (‘A-G’) Hogan, covering both cases, was issued on 11 September 2019 but, besides confirming that the Gilead test applied across the board and not just to combination products and that Arnold J’s core inventive advance test was not appropriate, the Opinion contained little of any substance. It is to be hoped (but not to be expected) that the CJEU’s ruling will offer the guidance that practitioners so crave. Article 3(d) of the SPC Regulation provides that the marketing authorisation (‘MA’) relied upon for the SPC must be the first MA for that product. In December 2018, there was much dismay amongst practitioners at the Opinion of A-G Saugmandsgaard Øe in Abraxis85 relating to the availability of SPCs for new and inventive formulations of existing active ingredients when the A-G appeared to cast doubt on the soundness of the earlier Neurim86 ruling on the availability of SPCs for second medical uses as well as inventive new formulations. The CJEU ruling issued on 21 March 2019 does not appear to go as far as the 18

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A-G in that it does not expressly overrule the Neurim decision. However, it seems to leave the possibility open. Thankfully, some clarity should be given in the Santen87 case relating to a new use of the immunosuppressant drug, cyclosporine. In particular, the CJEU has been asked to rule on whether Neurim is limited solely to a new human application, following an earlier veterinary application of a given product or whether the ruling is more general than that and if so, how general. A hearing took place before the Grand Chamber on 5 November 2019 suggesting that the CJEU hopes to issue a definitive ruling on the topic88. In June 2019, the Swedish Court referred a question to the CJEU in the context of article 3(c) of the SPC Regulation, which provides that the product should not previously have been the subject of an SPC89. By virtue of Recital 17 of the Plant Protection Products Regulation, article 3(c) should be interpreted in light of article 3(2) of the Plant Protection Products Regulation, which provides: “the holder of more than one patent for the same product shall not be granted more than one certificate for that product. However where two or more applications concerned the same product and emanating from two or more holders of different patents are pending, one certificate for this product may be issued to each of these holders”. Novartis holds a patent for the use of canakinumab in the treatment of systemic juvenile idiopathic arthritis and, based on this patent and an MA for the treatment of this condition, sought an SPC. Novartis was the owner of an existing SPC based on a patent for the antibody per se and an MA for the use of canakinumab in the treatment of Cryopyrin-Associated Periodic Syndromes. The question referred asked whether the existence of the earlier SPC precluded Novartis obtaining an SPC based on a new therapeutic application and a new basic patent. Last but not least, the question of the necessity of a relationship between the patentee and the MA holder remains outstanding. Hopes were raised when Arnold J made a reference to the CJEU on the issue in the Lilly v Genentech90 IL-17 A/F antibodies case in early March 2019. This reference was made notwithstanding the Judge’s finding that the underlying patent was invalid, because of the then looming 31 March Brexit deadline. He asked, in essence, whether it mattered that Genentech had filed for SPCs based on Lilly’s MA for ixekizumab, the active ingredient in Taltz®, when Lilly’s consent to such SPCs had not been obtained and would not be forthcoming. Unfortunately for those seeking clarity on this issue, on 5 September 2019, the CJEU issued a Reasoned Order91 rejecting the reference because of its hypothetical nature. The CJEU considered that the shadow of Brexit did not override the CJEU’s policy not to answer hypothetical questions. Undeterred by this ruling, Lilly asked the English Court to give a reasoned decision on the issue but Arnold J refused to do so, preferring to leave things to the Court of Appeal92. www.cipa.org.uk


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Procedural issues Pleadings Providing proper particulars of a pleaded case is important but parties must be realistic in their expectations of what is possible at an early stage. In Emtelle v Hexatronic93, Mann J refused an application requesting that Hexatronic provide further particularisation of its statement of case in relation to obviousness over several pieces of prior art. Whilst the Court was sympathetic to the need of the parties to understand the case pleaded against them, without consulting with an expert, it was difficult for a particularised case to be put forward that would not require amendment further down the line.

Joint tortfeasance Company control at the executive level rather than the constitutional level is required for one group company to be a joint tortfeasor with another. In other words, it is wellestablished law that something more than mere governance or corporate control is required94. The question on appeal in Anan Kasei v Molycorp95 was whether the judge below, Nicholas Caddick QC96, sitting as Deputy Judge, was correct to dismiss the possibility of joint tortfeasance between a parent company and its subsidiary. Floyd LJ decided that, on the limited evidence available (disclosure had yet to be given), it was at least arguable that the parent company exercised executive control because: 1. it was involved in the running of a business unit that included personnel common to the parent and subsidiary in which decisions were taken about activities across the group; and 2. that although the ownership of the parent company had changed during the relevant period, the new parent was liable for the acts of the old parent under a court-approved insolvency arrangement. A related procedural appeal against a decision of HHJ Hacon97, sitting as a High Court Judge, that limited any assessment of damages for joint tortfeasance only to goods seized during a particular period of corporate ownership (ruling out the possibility of claiming for other infringements during that period), was also allowed.

Non-FRAND jurisdictional issues Interesting issues relating to jurisdiction were discussed in the appeal case of Ablynx v VHSquared98. Ablynx had sought to serve proceedings for patent infringement in the UK, but VHSquared contested the jurisdiction of the English courts on the basis that the patent was the subject of a licence dispute where the licence in question conferred exclusive jurisdiction on the Belgian Court. Ablynx argued that should proceedings go ahead in the UK, VHSquared would bring a defence of patent Volume 49, number 3

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invalidity (amongst other defences) which would mean the English Courts had jurisdiction. At first instance99, HHJ Hacon, sitting as a High Court Judge, held that article 24(4) of the Brussels Regulation Recast should be interpreted widely such that the English Court had exclusive jurisdiction over the claim. However, the Court of Appeal disagreed with HHJ Hacon’s approach and held that it was first necessary to consider article 31(2) of the Brussels Regulation Recast. In deciding whether article 31(2) was engaged, the English Court held that it was necessary to determine whether there was a prima facie case that there was an exclusive jurisdiction clause in favour of another Member State (here, Belgium). Having found that there was, it was then necessary to consider article 25(4) and article 24(4) on a prima facie basis. When considering whether a prima facie case is present, the principles in the Supreme Court decision in Koza v Akçil100are relevant (this judgment was handed down after the decision of HHJ Hacon). In that case, the Supreme Court had also held that article 24(4) should be construed narrowly and that, even where a claim relating to exclusive jurisdiction falls to one Court, it can be severed from another claim which does not (even if the claims are linked). Following these principles and based on the fact that VHSquared would likely raise defences other than patent invalidity, the Court of Appeal found there was a prima facie case that article 24(4) would not be engaged for all matters. As such, it was not right that all claims would be pulled into the English Court and the case was stayed pending a decision on jurisdiction from the Belgian Court.

Interim injunctions As mentioned above, in January 2019, Birss J decided an interim injunction application in Novartis v Dr Reddy’s101 and in so doing, considered some important questions relating to the scope of relief in relation to second medical use patents. Dr Reddy’s stated it would launch a medicine during the term of the patent, which was indicated for the patent-protected use. Dr Reddy’s also stated that it believed the patent to be invalid for added matter in light of the finding to the same effect from the EPO Opposition Division. In granting Novartis’ application for an interim injunction, Birss J noted that there would be a real risk of unquantifiable harm to both sides. When considering the terms of the order, Dr Reddy’s sought some carve-outs, including that they be allowed to sell for the non-patented indications. While there is a clear principle not to injunct a party from doing something that is plainly a lawful act, there were not considered to be any appropriate safeguards which could accommodate this, given Dr Reddy’s product label covered all uses and that 90% of Novartis’ sales are for the patent-protected indication. Dr Reddy’s also asked for permission to supply clinical trials but this was not formally pleaded and the Judge did not rule on it. The Department of Health did not appear at the hearing but a letter was sent by the Court to the NHS to confirm if it wished to apply to take the benefit of the cross undertaking102. MARCH 2020

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In Evalve & Abbott v Edwards103, Abbott was granted a speedy trial for patent infringement. In support of its application, Abbott submitted that if expedition was allowed, it was possible there would be no need for an application for an interim injunction. This was not to be though and two months later, Henry Carr J heard an application for an interim injunction. The interim injunction was not granted, in the main because Edwards provided undertakings pending judgment or further order to limit the use of its device for mitral valve regurgitation (to ten implantations in two hospitals) and in the circumstances, it was held that Abbott would not suffer any irreparable harm. Henry Carr J issued a note of caution in relation to the production of evidence for interim injunction applications. Both parties had spent considerable time and money in putting forward several statements from clinicians on the clinical superiority of their respective products. For this application, the Court was not required to consider them, and in any event, the Judge considered the Court would have difficulty in resolving this type of issue on an interim basis. He advised the parties to think very carefully before setting such a ball rolling on an interim application. The costs of this evidence were borne by each party despite Edwards being the overall winner of the application. Whilst interim injunctions are not uncommon in the context of pharmaceutical patent litigation, an interim injunction application in litigation concerning a FRAND-encumbered SEP is practically unheard of. However, HHJ Hacon, sitting as a High Court Judge, heard such an application in the case of IPCom v Xiaomi104. The decision is noteworthy in several respects. First, the Judge confirmed that the SEP/FRAND context of the dispute did not affect the applicability of the American Cyanamid105 test. IPCom had asserted a patent against Xiaomi that had previously been found to be valid and essential to the UMTS standard by the Court of Appeal on two occasions. As the patent was due to expire in February 2020, at the start of the action, IPCom asked Xiaomi to undertake to enter into a licence on terms deemed to be FRAND by the Court if, at trial, the patent was found to be valid, essential and infringed. When Xiaomi refused to give such an undertaking, IPCom applied for an order that Xiaomi be injuncted from dealing with UMTS compliant devices unless and until the requested undertaking was given. The basis for IPCom’s application was that the patent would expire before the Court could reach a decision that might result in Xiaomi being injuncted if it did not submit to a determination of the terms of a FRAND licence. IPCom argued that Xiaomi could simply refuse to give the requested undertaking and would essentially be given a compulsory licence allowing it to take the benefit of the patent until its expiry. This would, IPCom submitted, lead to it suffering irreparable harm by losing the opportunity to seek a global and portfolio wide licence in a FRAND determination. Xiaomi’s position was that it would not give the requested undertaking even if the Court injuncted it, and in those circumstances, there was no connection between IPCom’s loss 20 CIPA JOURNAL

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of opportunity (to gain a licence) and the proposed injunction. IPCom’s application was, ultimately, rejected by the Judge who noted that there was no right to force Xiaomi into taking a licence, no right to any royalties and, therefore, there was no lost opportunity at this point in time. HHJ Hacon commented that this was not parallel to the TQ Delta106 case, as there was no finding in these proceedings that the patent was valid and infringed by this particular defendant and, therefore, no starting presumption that a final injunction should be granted. It is also worth noting that, despite there being an outstanding jurisdiction challenge, the Judge confirmed that the Court still had jurisdiction to grant interim relief107. In April, Sandoz (and potential additional defendants) sought to fortify a cross undertaking in damages provided by Napp following the interim injunction awarded to Napp in February 2016108 so as to better protect Sandoz’s financial position in an ongoing damages enquiry. The application was given short shrift by Henry Carr J who, following earlier case law, held there was no jurisdiction to fortify a cross undertaking once the interim injunction had been discharged. The cross undertaking is the price a claimant is willing to pay in return for the grant of an interim injunction. Once the injunction is discharged, there is no price worth paying given there is no request for the injunction to continue.

Disclosure The beginning of 2019 brought with it a new headache for practitioners in the form of the Disclosure Pilot Scheme109, which will run for two years, the aim of which is to bring a “cards on the table” approach much earlier in proceedings using tools such as Initial Disclosure (given with statements of case) and the early disclosure of Known Adverse Documents. Practitioners who may have thought that disclosure was all but dead in patent cases after Positec110 must think again under the scheme. Although it is still too early for any decisions that offer significant guidance as to how the scheme should operate in patent cases, there are indications that disclosure is alive and well. For example, in MSD v Wyeth111, Arnold J ordered a search for “laboratory notebooks, internal reports, e-mails, meeting minutes or presentations created, modified or received” by the authors of a prior art presentation cited in MSD’s grounds of invalidity, two of the authors being employees of the patentee, Wyeth. It is also clear from Akebia v FibroGen112 that although the Judge declined to extend the scope of disclosure already agreed between the parties under the pilot scheme, that scope was already considerable, dealing with test data on the functional and therapeutic properties of certain molecules in the context of an allegation of insufficiency. It is not unusual for a patentee to request samples so that it can test for infringement before a potentially infringing product comes to market. However, applications for an order that such samples be provided before proceedings are commenced www.cipa.org.uk


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are rare. Such an application was heard by Henry Carr J in Boehringer Ingelheim v Mylan113 concerning Boehringer’s patent for a polymorphic form of the active ingredient in its dry powder inhaler product, Spiriva®. The Judge granted the order sought by Boehringer noting that, although its evidence on infringement was provided at a high level of generality, it was sufficient, and Mylan had offered no evidence against it. The Judge was also content that the purpose of obtaining samples was for experiments to be performed. Turning next to the “important issue of principle”, Henry Carr J considered whether the results of such experiments could be used outside of the UK. Although, in principle, he acknowledged that the English Court had jurisdiction to make such an order, he thought that to do so was premature in this case. The Court considered in detail the status of a product and process description (‘PPD’) in JC Bamford Excavators v Manitou114 in the context of JC Bamford’s application for use of the PPD in other jurisdictions. Although the Evidence (Proceedings in other Jurisdictions) Act 1975 expressly envisages that disclosed documents could be used in foreign proceedings if there is a request from or on behalf of a foreign Court, the Court considered that a PPD is not a disclosed document within the meaning of the categories of documents in the 1975 Act. A PPD is an artificial document prepared, in lieu of disclosure, for the purposes of litigation in the UK; it is not the same as a document that has been disclosed more generally. Furthermore, whilst the Court can order a party to disclose a pre-existing document, it has no power to order a party to create and to provide a PPD against its will115. Nevertheless, once a PPD has been provided, it is treated as if it is a disclosed document. Ultimately, Nicholas Caddick QC, sitting as a Deputy Judge, did not have to decide the issue as his concerns regarding confidentiality in other jurisdictions overshadowed the issue and therefore practitioners are none the wiser about what application of the law would be appropriate in this situation.

Experts Readers will be familiar with the strict approach Arnold J has taken in relation to the way experts are instructed and in particular the order in which they are directed to read the documents in the case (so-called “sequential unmasking”116) so as not to be tainted with hindsight. However, Conversant v Huawei117 illustrates that the Court can trust an expert to put hindsight to one side. Huawei sought to argue that Conversant’s expert’s evidence was tainted by hindsight because he (i) had considered the patent as proposed to be amended rather than the application as filed and (ii) was aware of the infringing functionality when he considered the disclosure of the patent. Arnold J agreed that the procedure had the potential to lead the expert to interpret the patent with hindsight but considered it did not necessarily follow that his interpretation was hindsight-tainted. In Illumina v TDL118, Henry Carr J applied Rogers v Hoyle119 and Mondial Assistance v Bridgewater Properties120 and held that Volume 49, number 3

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the evidence of an expert witness in a previous patent case could be relied on by Illumina under a hearsay notice without requiring the Court’s permission under CPR 35 as the expert (i) had not been instructed by either of the current parties in the earlier case and (ii) was not instructed by either of the current parties in the current case and, therefore, CPR 35 did not apply. However, the Judge made it clear that the Court still has discretion to exclude evidence under CPR 32.1 if, for example, it is considered to be duplicative of other evidence already being adduced by one of the parties.

Costs Readers will appreciate that the general rule for determining costs is that the losing party should pay the winning party’s costs (both in the context of trials and in the context of applications). However, the position is often not that straightforward. For example, in the context of applications, it may be that deciding the application requires a consideration of case management issues. This was the case in an application to bring in two divisional patents into the Conversant v Huawei121 proceedings where Birss J held that the application involved considering significant case management questions, which took up the bulk of the hearing, such that the appropriate order was costs in the case. The same case came before Arnold LJ (hearing the case in the High Court) to decide the form of order following the trial122. The decision is a cautionary tale to parties on the number of points they bring to trial. The Judge took the unusual stance of ordering that the successful party, Huawei, should pay 70% of Conversant’s costs. Huawei submitted that, having been successful in invalidating the patent and thereby defending the infringement claim, it should recover the entirety of its costs of this part of the litigation. Arnold LJ found this suggestion “preposterous” given they were in fact only successful in 1 of 20 issues, noting that the way in which its case was presented was “in significant respects unsatisfactory and unreasonable” and referring to Stena Rederi v Irish Ferries Ltd (No. 2)123; another case in which a successful defendant was ordered to pay 80% of the patentee’s costs on the basis that the issues could have been narrowed in order to reduce the time to be spent by the parties and the Court dealing with the issues at trial.

Summary judgment The provisions of the CPR dealing with summary judgment are generally unsuitable for the disposal of patent cases given that proceedings are factually complex and often depend upon the opinion evidence of expert witnesses. However, occasionally, circumstances do arise in which summary judgment is appropriate. One such case came before Douglas Campbell QC, sitting as a High Court Judge, in Price v Flitcraft124. There was no denial as to the substance of the infringement case, nor any counterclaim for invalidity. Rather, the defence was MARCH 2020

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Notes and references 1. The second being Shanks v Unilever [2019] UKSC 45 2. Actavis v Eli Lilly [2017] UKSC 48 3. Actavis v ICOS [2019] UKSC 15 4. [2019] EWHC 387 (Pat) 5. [2010] EWCA Civ 1110 6. [2015] EWHC 2548 (Pat) 7. [2019] EWHC 107 (Ch) 8. [2010] RPC 8 9. [2019] EWHC 126 (IPEC) 10. [2014] EWCA Civ 1462 11. [2017] UKSC 48 12. [2019] EWHC 1687 (Pat) 13. [2019] EWHC 991 (Pat) 14. [2019] EWHC 126 (IPEC) 15. [2019] EWHC 63 (Pat) 16. [2019] EWHC 765 (IPEC) 17. [2005] EWCA Civ 267 18. [2019] EWHC 63 (Pat) 19. Improver Corp v Remington Consumer Products [1989] 5 WLUK 162 20. Jushi Group v OCV Intellectual Capital [2018] EWCA Civ 1416

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41. Following Henderson v Henderson (1843) 3 Hare 100 42. [2019] UKSC 15 43. The Court noted that the “obvious danger of a step-by-step analysis is that the combination of steps by which the inventor arrived at his invention is ascertained by hindsight knowledge of a successful invention”, but went on to say that there may be cases in which “the steps which the notional skilled person would take can readily be ascertained without the taint of hindsight”.

73. In breach of article 102 of the Treaty on the Functioning of the European Union (‘TFEU’) 74. [2019] EWHC 3538 (Pat) 75. [2019] EWHC 562 (Pat) 76. [2019] EWHC 3561 (Pat) 77. [2019] EWHC 562 (Pat) 78. [2019] EWHC 745 (Pat)

52. [2019] EWHC 1911 (Pat)

79. For those readers not accustomed to the world of SEPs, Birss J provided helpful guidance in TQ Delta v ZyXEL [2019] EWHC 1089 (Pat) on the distinction between FRAND and RAND: “This action concerns standard essential patents which relate to the ITU-T standard concerned with DSL. The obligation which the standard essential patent holders have relation to this standard setting environment is to give licences on a RAND basis. The obligation is RAND rather than FRAND. I will almost certainly use the expression FRAND by force of habit but it makes no difference whatsoever.”

53. [2019] EWCA Civ 1646

80. C-121/17

54. [2019] EWCA Civ 1646

81. [2018] EWHC 2416 (Pat)

55. Biogen v Medeva [1997] RPC 1

82. [2019] EWCA Civ 2272

44. [1991] RPC 195 45. [1997] RPC 1 46. Actavis v ICOS [2019] UKSC 15 47. [2019] EWHC 1085 (Pat) 48. [2019] EWHC 991 (Pat) 49. [2019] EWHC 745 (Pat) 50. [2019] EWCA Civ 2230 51. [2019] EWHC 1911 (Pat)

56. Generics v Lundbeck [2009] UKHL 1

83. C-114/18

57. [2019] EWHC 92 (Pat)

84. C-650/17 85. C-443/17

22. [2019] EWHC 3175 (Pat)

58. Arrow Generics v Merck [2007] EWHC 1900 (Pat)

23. [2017] UKSC 48

59. [2019] EWHC 1520 (Pat)

87. C-673/18

24. [2019] EWHC 126 (IPEC)

60. Gillette Safety Razor v Anglo-American Trading [1913] 1 WLUK 39

88. An Opinion from A-G Pitruzella was handed down on 23 January 2020 and proposes as a primary position that the interpretation of article 3(d) in Neurim should be abandoned.

21. Smith & Nephew v ConvaTec Technologies [2015] EWCA Civ 607

25. [2019] EWHC 1687 (Pat) 26. [2019] EWHC 3266 (Pat) 27. Catnic Components v Hill & Smith [1980] 11 WLUK 270 28. Section 125 of the Act 29. [2019] EWHC 1497 (Pat) 30. [2015] EWHC 2548 (Pat) at [123]-[124] 31. [2015] EWHC 3542 (QB) 32. [2016] EWHC 862 (QB) 33. [2019] EWHC 107 (Ch) 34. Synthon v SmithKline Beecham (No.2) [2005] UKHL 59 35. [2019] EWHC 1911 (Pat) 36. T 1833/14 and T 2045/09 37. [2019] EWHC 3106 (Pat) 38. [2019] EWHC 991 (Pat) 39. [1996] F.S.R. 292 40. [2019] EWHC 63 (Pat)

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61. Fujifilm Kyowa Kirin Biologics v Abbvie Biotechnology [2017] EWHC 395 (Pat)

86. C-130/11

89. C-354/19

62. [2019] EWHC 3377 (Pat)

90. [2019] EWHC 388 (Pat); C-239/19

63. [2018] EWHC 3414 (Pat)

91. C-239/19

64. [2019] EWCA Civ 38

92. [2019] EWHC 3260 (Pat)

65. [2018] EWCA Civ 2344

93. [2019] EWHC 2230 (Pat)

66. [2019] EWHC 3471 (Pat) 67. [2019] EWHC 1255 (Pat)

94. See, for example, MCA v Charly Records [2001] EWCA Civ 1441

68. [2019] EWHC 2980 (Pat)

95. [2019] EWCA Civ 1646

69. [2019] EWHC 3030 (Pat)

96. [2018] EWHC 3459 (Pat)

70. [2019] EWCA Civ 725

97. [2019] EWHC 881 (Pat)

71. Michael Wilson & Partners v Emmott [2018] EWCA Civ 51

98. [2019] EWCA Civ 2192

72. [2019] EWHC 2766 (Ch)

100. [2019] UKSC 40

99. [2019] EWHC 792 (Pat) 101. [2019] EWHC 92 (Pat)

www.cipa.org.uk


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mounted solely on the basis that an assignment had been made such that the Flitcraft, rather than Price, was the owner of the patents in suit. However, no documents were put forward to support Flitcraft’s defence and it was found to be unlikely that any further evidence would turn up if the matter proceeded to trial. Summary judgment was therefore given in Price’s favour. The proceedings came back before Douglas Campbell QC, sitting as a High Court Judge, some months later in the form of committal proceedings in respect of two directors for contempt of Court125. Here, the Judge found that the injunction ordered following his summary judgment decision had been breached, inter alia, by offers for sale of infringing products in the form of the distribution of old brochures. Ultimately, a custodial sentence of two months’ imprisonment was ordered126, suspended for six months.

the least violence to its language”, he decided that the benefit to the employer could be equated to the benefit to the group and the comparison should be between the benefit conferred by the patent in question relative to the benefit to the group from other patents deriving from the same research company. Although Unilever had made billions from ice creams, spreads and deodorants, Lord Kitchin was not satisfied these returns were linked to the underlying patents rather than the commercial machinery, including sales and marketing, found within any large multinational company. He cautioned against the approach that had been characterised as “too big to pay” and noted,

Employee inventor compensation

Elsewhere in the judgment, Lord Kitchin opined on how benefit may be found more generally within a company, noting it may derive from a higher-than-expected income, a risk-free income, an extraordinarily high rate of return, or even in pure opportunity: either to develop a new line of business or to engage in unforeseen licensing activity. With the bar seemingly lowered, employee inventors may be emboldened to bring claims. Once outstanding benefit has been decided, the next step is to check that it is just to award compensation, to decide what the “fair share” should be, and to award what effectively amounts to interest by taking into account the time value of money that has been at the employer’s disposal and not the employee’s. On the facts of the case in hand, Lord Kitchin agreed with the UK IPO hearing officer that a fair share for Professor Shanks would be 5%, amounting to £2 million, once the time value of money was included.

More than 13 years after Professor Ian Shanks initiated his claim against Unilever for compensation under the statutory scheme prescribed by section 40(1) of the Act, a final decision has been reached, thanks to the unanimous judgment of the Supreme Court, given by Lord Kitchin127. Shanks prevailed and was awarded £2 million, but not before climbing the rungs of the English Court system from the bottom to the top, starting from a UK IPO hearing (with an early appeal on a discrete point going up as far as the Court of Appeal before coming back down again). The protracted proceedings were attributable mainly to the difficulty experienced by the various tribunals in applying the legal framework to the unusual facts of the case; without doubt, Shanks had invented something special and successful but it was outside Unilever’s core business and therefore not exploited by Unilever except via licensing revenue, revenue which was dwarfed by the profits of Unilever’s corporate group. Furthermore, Shanks was employed by a Unilever subsidiary company specialising in R&D that did not have much of a role in generating revenue. The decision is only the second successful case of compensation being awarded under the section 40 scheme128 and has therefore attracted considerable interest. The key issue, on which the Supreme Court overturned all the instances below, was the question of whether the patent was of “outstanding benefit” to the employer, being the immediate employer (not the wider corporate group), having regard to the size and nature of the employer’s undertaking. Lord Kitchin held that the patent, covering disposable biosensor devices used for measuring blood glucose, was of outstanding benefit when interpreting that term according to the ordinary English meaning of the words, i.e., “exceptional” or “to stand out”. Where he differed from the decisions below was in putting that in the context of Unilever’s undertaking. Acknowledging the difficulty of this task in the present case where the immediate employer is a research facility, the benefits of whose research are shared by the group, and taking the approach to section 40 “that does Volume 49, number 3

“a tribunal should be very cautious before accepting a submission that a patent has not been of outstanding benefit to an employer simply because it has had no significant impact on its overall profitability or the value of all of its sales”.

Expedition/Speedy trial It is an inevitability of the current European patent system that EPO proceedings and national proceedings will run in parallel. An option to try to reduce the risk of inconsistent decisions is to ask a national court to request acceleration of EPO opposition proceedings. Parties should consider whether to do so or they may face criticism, as was the case in Lilly v Genentech129 when the judge opined that it was “particularly unfortunate” that the Court had not been asked to request acceleration. Birss J considered the behaviour of a potential licensee when hearing IPCom’s application to expedite certain aspects of its case against Vodafone130 in May 2019. Here again, IPCom had requested that Vodafone give an undertaking to enter into a licence on terms determined by the Court to be FRAND if the patent was found to be valid, infringed and essential. When Vodafone refused to do so, IPCom requested that both the patent liability and FRAND trials be expedited to take place prior to expiry of the patent. IPCom argued that it needed an injunction to be an available remedy to be able to put Vodafone to a choice MARCH 2020

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Unitary Patent / Unified Patent Court Déjà vu all over again 2018 began with the seemingly positive news in February that the Bundesverfassungsgericht (‘BVerfG’) – the German Federal Constitutional Court – had listed the UPC case for hearing that year. There was a hope that if it heard the case, and gave a decision favourable to the project, the UPC might open for business in 2019, perhaps even before Brexit (about which, more later). The year ended, however, with no hearing, still less a decision. So too then, in February 2019, was the case listed for hearing that year. Again there was a hope that if the BVerfG heard the case, and gave a decision favourable to the project, the UPC might open for business in 2020, perhaps before a postponed Brexit, or at least before the end of the half-in, half-out, Brexit transitional period, with the UPC provisional phase having been commenced. Again, however, the year ended with no hearing still less a decision. And so again, UPC supporters were disappointed (and in your author’s case, retired!)

A positive end to the year However, by the end of the year, there was at least a glimmer of hope for a BVerfG hearing with the UPC crawling up the list of cases to be heard as various other cases above it were decided; and a positive beacon of hope with a statement in a press interview in mid-November from the case rapporteur, Judge Huber, that he intended to issue a decision early in 2020. Now, unless between sending this piece for print and publication there has been a decision, we should take “early” with a pinch of salt. Nonetheless, the timing of the interview, so late in the year, with a prediction of a decision in early 2020, and hence within a very few months, is surely positive? What is more, with Brexit finally actually having happened on 31 January 2020, the UK’s position as a non-EU member state has crystallised, and any hope or fear (depending on your perspective) of a further delay or indeed cancellation of Brexit has removed the uncertainty which that has added to the future of the project and in particular the UK’s participation in it.

The Brexit effect Much can be said about Brexit and its relevance to the UPC, but having left the EU without either the UPC opening or even the provisional phase beginning, some would undoubtedly argue that the UK simply cannot be part of what has been seen in recent years as an EU project. This is not the place to enter into a detailed debate about this point, but suffice to say that the fact that the UPC, and especially the unitary patent, would undoubtedly be more popular where the UK participates remains crucial. This has meant that there still appears to be broad industry and political support, within both the UK and the participating EU states, for the project to include the UK. 24 CIPA JOURNAL

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REVIEW OF 2019

Hence, the oft quoted words of Margot Fröhlinger: “where there’s a will, there’s a way”, remain apposite. This is not to imply that there are not legal issues, but generally, these can always be overcome by agreement. So, for example, when the UPC Agreement refers to an “EU Member State”, the parties can agree that what is meant is a state which was an EU Member State when the agreement was signed (which is actually quite logical). Other issues are more difficult and will require some more detailed thought but are not insurmountable, as your author has explained on numerous occasions. Of these, so far as concerns the UPC itself (i.e. the Court) probably the most tricky is caused by the mis-match between the Brussels Regulation jurisdictional regime, which the UK will leave, and the Lugano Convention regime, which it hopes to join, but let us not ponder here on such a technical issue. More significantly perhaps for patent attorneys in industry and private practice alike, are the difficulties of participating in the unitary patent part of the package when not an EU member state. That is genuinely more difficult. If it is possible to participate in that, then why not also the EUTM system? But again, agreements are possible, and whether the unitary patents can cover the UK may depend on the shape of the longer-term arrangement now being thrashed out (one hopes) between the UK government and the EU. This last point illustrates, however, that whilst the most major element of uncertainty caused by Brexit has been removed, there are nonetheless important remaining uncertainties. Hence, a huge question is the attitude of the contracting parties to allowing the project to start without complete certainty as to the political and legal landscape post-Brexit. And since Germany is not only first among EU equals, but also holds the key to the project with its ratification being mandatory but outstanding, everything depends, it would seem, on the German position. Can then we say anything about the possible timing of a UPC opening? Absent being a fly on the wall of any German government discussion which may or may not be going on regarding the dossier, the best we can do is to note the words of the Chair of the Preparatory Committee, Alexander Ramsay. Following Judge Huber’s statement, he predicted a start date of early 2021. This is significant in being after the (at least current) end of the Brexit transitional period due to end 31 December 2020. It would signal a start only when the dust has really settled on the UK’s position, but (and it is a very important “but”) would require the start of the UPC provisional phase in mid-2020 at latest. It suggests a potential major push forward on the UPC (and implicitly German consent) really rather soon and within a very few months of the BVerfG decision – at least if positive. As usual, of course, we are now in the realms of speculation – and in that sense, it is again a case of déjà vu all over again – but there are genuine reasons for a degree of optimism that rumours of the UPC’s death are greatly exaggerated. Unitary Patent / Unified Patent Court update by Alan Johnson www.cipa.org.uk


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of submitting to the FRAND determination or being injuncted. Without expedition, IPCom submitted that this would not be possible and it would be limited to seeking more limited historic damages only. In ordering expedition, Birss J noted that he could see no flaws in the undertaking being requested and that ultimately, Vodafone was at risk of being characterised as an unwilling licensee in refusing to give the requested undertaking. Having ordered expedition, the judge commented that the defendants should be aware that there was a serious risk of an injunction being granted if IPCom were successful at trial and “woe betide” Vodafone should they say at that stage they needed time to think about the implications of that injunction.

Adjournment of trial Litigants should consider whether they should seek an adjournment to ensure a point conceived just before trial is properly considered at trial. It is fiendishly difficult for a party to re-open the issue after the judgment has been provided. Case law is littered with reminders of this fact. A good example in

STOP PRESS: The UK Government will not seek to be part of the UP/UPC system On 27 February 2020, CIPA was informed by a personal telephone call to its President Richard Mair by IPO CEO Tim Moss that the government will no longer seek to participate in the Unitary Patent or Unified Patent Court system. See page 6.

2019 came from the Court of Appeal in L’Oréal v Liqwd131 where Arnold LJ emphatically endorsed Birss J’s decision to deny L’Oréal the opportunity to re-open an issue after trial for various reasons including that L’Oréal did not seek an adjournment of the trial. In contrast, in relation to the expedited trial itself in IPCom v Vodafone132, Douglas Campbell QC, sitting as a Deputy Judge of the High Court, reminded us that the appropriate time to apply to adjourn a trial is probably not the day before it is due to commence.

Transfer applications In 2019, several litigants considered the IPEC as an alternative to the Patents Court. In IOT IP v Haandle133, Arnold J considered the circumstances in which a case should be transferred from the Patents Court to the IPEC. Haandle requested the transfer on the basis that the value of the claim was low and the trial would only last for two days. However, Arnold J disagreed and refused to transfer the action. He found that the financial value of any injunction had not been made out in the evidence before him and the multiple validity attacks pleaded by IOT IP meant that a trial estimate of four days was more realistic. Conversely, in Kwikbolt v Airbus Operations134, Airbus applied to transfer the action out of IPEC and into the Patents Court but was unsuccessful. The case was a classic “David and Goliath” situation in which Airbus had deep pockets but Kwikbolt had more limited means. In refusing the request to transfer the case to the Patents Court, HHJ Hacon considered that the case could be heard fairly in two days and that keeping the IPEC costs cap in place was desirable in circumstances where forcing the parties in a forum with unlimited costs could severely prejudice the claimant.

122. Conversant v Huawei [2019] EWHC 3130 (Pat)

Notes and references (continued)

109. CPR PD 51U

102. This case came before the update to the Patents Court Guide in April 2019 which requires parties to inform the NHS of applications for interim injunctions (as well as their outcomes).

111. [2019] EWHC 1692 (Pat)

124. [2019] EWHC 1965 (Pat)

112. [2019] EWHC 1943 (Pat)

125. [2019] EWHC 2476 (Pat)

113. [2019] EWHC 584 (Ch)

126. [2019] EWHC 2772 (Pat)

114. [2019] EWHC 3071 (Pat)

127. Shanks v Unilever [2019] UKSC 45

103. [2019] EWHC 1158 (Pat)

115. CPR PD 63 6.1(1)

104. [2019] EWHC 3074 (Pat)

116. See, for example, Medimmune v Novartis [2011] EWHC 1669 (Pat) at [118]

128. The other case being Kelly & Chiu v GE Healthcare [2009] EWHC 181 (Pat)

105. [1977] 10 WLUK 126 106. TQ Delta v ZyXEL Communications [2019] EWHC 745 (Pat) 107. Pursuant to Article 35 of the Regulation (EU) 1215/2012 and the Civil Jurisdiction and Judgment Act 1982. 108. [2019] EWHC 1009 (Pat)

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110. Positec v Husqvarna [2016] EWHC 1061 (Pat)

123. [2003] R.P.C. 37

129. [2019] EWHC 387 (Pat)

118. [2019] EWHC 1159 (Pat)

130. IPCom v Vodafone [2019] EWHC 1255 (Pat)

119. [2014] EWCA Civ 257

131. [2019] EWCA Civ 1943

120. [2016] EWHC 3494 (Ch)

132. [2019] EWHC 3323 (Pat)

121. [2019] EWHC 973 (Pat)

133. [2019] EWHC 534 (Pat)

117. [2019] EWHC 1687 (Pat)

134. [2019] EWHC 2450 (IPEC)

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Looking ahead to 2020 The end of January 2020 brought the UK certainty with regard to the fact of Brexit, although the terms of our future relationship with the EU remain to be resolved. An aspect of this future relationship of upmost importance to the patent industry, though perhaps not front and central in the mind of the UK government, is the question of our participation in the UPC and the Unitary Patent System. Practitioners will wait with bated breath both as to the outcome of the German Federal Constitutional Court challenge and the ongoing negotiations with Brussels. However, there is every reason to be confident that, whatever the outcome, the UK patent system will remain one of the flagship jurisdictions of Europe. 2020 is also expected to bring the following significant developments in UK patent litigation and practice:

 The Supreme Court’s decision in the Unwired Planet and Conversant cases is expected to be handed down in the first few months of the year. This will answer the thorny questions of the Court’s jurisdiction over and the exercise of its discretion to set global FRAND licence terms, the scope for a patentee to offer discounted rates to any licensee whilst still complying with the “nondiscriminatory” aspects of their FRAND obligation, and the rigidity of the Huawei v ZTE CJEU framework. Practitioners are hopeful that this will be applied in one of the upcoming FRAND determinations listed before the High Court in the first half of the year (in

REVIEW OF 2019

the Conversant and Philips trials). 2020 may also bring guidance as to the principles applicable to damages for historic infringement of an SEP when there is no forward-looking FRAND licence;

 In February 2020, the Supreme Court will hear the appeal in Regeneron v Kymab. This appeal is likely to tackle important questions relating to insufficiency and in particular the issue of what amounts to a “principle of general application”.

 SPC enthusiasts remain ever hopeful that year ahead will bring clarity in relation to several issues including the long-running debate on the meaning of “protected by a basic patent”, whether the principles set down in the Neurim case are sound and whether SPC applications based on third-party MAs are allowable. Experience suggests that very little clarity will be forthcoming.

 The summer of 2020 is likely to see the appointment of several new judges to the Patents Court. It is a requirement of any flourishing patents Court system to have specialist judges who are diligent and fair-minded. We await with interest any news of the appointments.

The authors in the Bristows team are Brian Cordery, Dominic Adair, Katie Cambrook, Naomi Hazenberg, Emma Trott, Nadine Bleach and Lucy Sewter: they can be contacted via the firm’s website www.bristows.com.

REVIEW of UK PATENT CASES in 2019 For more information on Bristows LLP or the authors of this review, please visit www.bristows.com

VOLUME 49 NUMBER 3 MARCH 2020

Brian Cordery Partner

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Dom Adair Partner

Nadine Bleach Associate

Katie Cambrook Senior Associate

Naomi Hazenberg Senior Associate

Lucy Sewter Litigation Support Manager

Emma Trott Associate

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#UsToo?

#UsToo? Promoting dignity at work within the IP profession. By Jim Pearson (Fellow)

U

nless you’ve completely cut yourself off from the rest of society and all forms of news and social media (I could understand why you might have given how the world seems to be evolving politically in the last few years), you will know that the words “me too” have acquired what some might refer to as a secondary meaning. There will be many of you who read this article who will know what #metoo refers to as a result of experiencing such things first-hand. If you need a reminder though, the hash tag #metoo went viral on Twitter in 2017 following the multiple sexual-abuse allegations against American film producer Harvey Weinstein, who (as of 24 February 2020) is awaiting sentencing subsequent to being found guilty in the US of sexual assault and rape1. The resulting “Me Too movement” is a movement against sexual harassment and sexual assault, particularly in the workplace2.

What constitutes sexual harassment? Just to be clear here, I should probably give some examples of what constitutes sexual harassment in the workplace3:  indecent or suggestive remarks (e.g. comments of a sexual nature about someone’s body and/or attire);  making jokes of a sexual nature;  sharing, whether intentionally or otherwise, comments of a sexual nature about another person;  questions, jokes, or suggestions about a colleague’s sex life;  the display of pornography in the workplace;  circulating material of a sexual nature (by email or social media or messaging platforms, for example);  unwelcome and inappropriate touching (e.g. placing hand on lower back or knee), hugging or kissing; and  unwelcome verbal sexual advances, or requests/demands for sexual favours. Volume 49, number 3

Stereotypes Not all perpetrators are senior heterosexual men and not all victims are less senior women. However, it is the case that women are significantly more likely to be a victim and men are more likely to be the perpetrator4. I’ve focused on this typical type of sexual harassment in this article, although many of my comments will apply to instances of sexual harassment where different genders and/or different sexual orientations are involved. As a middle-aged white male partner in a private practice firm of patent attorneys and trade mark attorneys I can’t say that I’ve personally been on the receiving end of any sexual harassment in my professional life. But, as a father of four daughters I didn’t need to subscribe to twitter.com/EverydaySexism to get familiar with the types of behaviour girls and women have to endure every day – including both derogatory name-calling at school (we’re not quite sure why a boy at one of my daughters’ schools felt it appropriate to repeatedly call one of their classmates a slut) and casually-made threats of sexual violence (one of a pair of local boys shouting at the eldest of two of my daughters that his mate was “gonna rape your little sister” – her little sister was 11 at the time). The latter incident was pretty scary and shocking for me (there was more to it than this, but it got resolved in an OK way, quickly enough). All in all, I’ve been saddened that my daughters have had to toughen themselves up to this kind of behaviour already.

Depressing statistics The prevalence of sexual harassment is not limited to the school playground of course. Are my daughters going to have to continue to battle against this as they eventually (I hope) get some paid employment somewhere? If recent stats are anything to go by, if you are a young woman working today you will more MARCH 2020

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likely than not already have directly experienced some form of sexual harassment in the workplace. In 2016, researchers from the Trades Union Congress and the Everyday Sexism Project found that 52% of women had experienced unwanted behaviour at work including groping, sexual advances and inappropriate jokes. Among women and girls aged 16-24, the proportion reporting sexual harassment rose to 63%5. Yet, as I think we all know, the vast majority of instances of sexual harassment typically go unreported.

Are we part of the problem? But what about sexual harassment in the workplace within the IP profession? To think that we are all the nerdy bookish types who would never stray into behaviour that would constitute sexual harassment would of course be naïve in the extreme. If anything, the press and media coverage on the subject of sexual harassment in the workplace seems to suggest that the legal profession harbours some of the worse culprits. The Lawyer reported in 2018 that 42% of women said they had experienced sexual harassment at work, with instances including inappropriate comments, propositioning and unwanted physical contact6. An FT article in March 2018 on this survey reported that, “in the two years to October 2017, the Solicitors Regulation Authority received only 21 complaints of sexual harassment within law firms, and has received just two reports since then”. Sexual harassment is widespread but victims tend to take little or no action. This might explain why the FT chose to publish their findings under the headline, “Women lawyers say sexual harassment is fact of life at UK law firms”7 – victims tend to find

#UsToo?

themselves having to “just deal with it” without making a fuss. Whether or not what’s going on in the legal profession as a whole is indicative of the state of affairs within firms and companies employing IP professionals, I think that it’s inevitable that improvements can be made in our profession. Men, in particular, but also women, underestimate how much sexual harassment there is in the UK, by quite some margin8. It seems likely that whatever any of us think about how rare or common sexual harassment is in our workplaces, we’re underestimating the scale of the issue. I’m not suggesting that my firm is perfect. I also suspect we’re not alone in that. We have more work to do before we can claim to be an example of best practice, and we’re in the process of taking positive steps to improve our policies and culture. I hope other firms and employers within our profession are doing the same. After all, it makes good business sense9.

Consequences Having a culture where low-level sexual harassment is tolerated – or even propagated – by those running and managing the business, is going to drive away talented staff10. Victims of sexual harassment are far more likely to move firms than take action. Although the matter is now decades old, I know that one of my former female colleagues almost left our firm when on the receiving end of a series of unwanted advances from a more senior male employee in the firm. Members of senior management or “star” attorneys in the legal profession seem historically at least to have been able to engage in inappropriate behaviour and effectively get away with it. Times are finally changing, however, with individuals in senior positions in some of the larger law firms in the UK finding themselves accused of less than professional behaviour in recent years11, with the potential for embarrassment and reputational damage to their (ex-)firms. On the flip-side, having an open, inclusive and gender-diverse workplace (which will naturally reduce the instances of sexual harassment in the workplace) tends to be more productive, be more profitable, be better at retaining talent and have a better external reputation12.

What can / should we do? Detailed guidance on dealing with sexual harassment at work has recently been published by The Equality and Human Rights Commission13. If improvements could be made in your workplace, and you are someone who can make a difference, then I hope that you will be prompted into doing something positive, such as, for example:  Making sure that your policies that concern sexual harassment in the workplace are appropriate, understood and put into practice. We’re working on this now.  Raising awareness – for example simply reminding all staff that there is a zero-tolerance to sexual harassment in the workplace. 28 CIPA JOURNAL

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Help if you need it I sincerely hope that I’ve not caused anyone distress or upset by anything written in this article. If you’ve been a victim of sexual harassment or worse, or have concerns raised by this article, then please bear in mind the following suggestions:  Talk to someone you trust and can confide in about what’s happened.  Before speaking to someone, it may be useful to make notes about the incident, especially if recalling the incident is particularly upsetting.  If the incident relates to something that has happened at work, or at a work-related event or business trip, then your employer has a responsibility to help and protect you.  If you have witnessed sexual harassment taking place within a workplace environment, consider reporting it or calling-out the behaviour.  If you can, tell the perpetrator to stop the unwanted behaviour. You could do this in writing if preferred.  Employers should have a policy in place that provides a framework for reporting incidents / complaining about the behaviour of others – ideally a policy which specifically caters for instances of sexual harassment – which will set out what to do and who to approach for help and support. If you’d like to see our policy, once we’ve finalised it, please ask.  If you’ve been a victim of sexual harassment in the workplace, and are unable for whatever reason to find resolution informally or via your company’s formal HR procedures, there are various independent sources of help and support you can draw on: o Lawcare – 0800 279 6888 – see www.lawcare.org.uk o ACAS Helpline – 0300 123 1100 – see www.acas.org.uk o Citizens Advice Bureau Adviceline – 03444 111 444 – see www.citizensadvice.org.uk o The Samaritans – 116 123 – see www.samaritans.org  If you or someone else is in immediate danger then phone the police on 999. Call 101 to contact the police if the crime is not an emergency.

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#UsToo?

 Providing training on the subject, or access to training. I hope that the subject may be covered by an IP Inclusive webinar one day soon. Listening to and discussing that with colleagues could get some healthy conversations going.  Ensuring that all those at the top of the organisation lead by example and call-out others when they witness poor behaviour not only in colleagues, but also amongst clients and suppliers. If you’re in a position of management and think that this is too tricky, or not sufficiently important to tackle now, or just not your problem, then you should know that this issue is not one which is going to quietly go away. There is an active government consultation on whether the current laws on protecting people from sexual harassment in the workplace are effective14. This may follow on from the Government’s published recommendations and comments following the “Sexual harassment in the workplace” report of “The Women and Equalities Committee”15. There appears to be encouragement that regulators take a more active role, by: “… starting by setting out the actions they will take to help tackle this problem, including the enforcement action they will take; and making it clear to those they regulate that sexual harassment is a breach of professional standards and a reportable offence with sanctions”

What do IPReg, CIPA and CITMA have to say about this? It would seem that IPReg will in time come under pressure to take positive action to ensure that regulated entities are dealing with the matter appropriately. I’ve contacted IPReg, and also CIPA and CITMA, for their input on this matter. Instances of complaints being made against patent attorneys or trade mark attorneys and escalated to one of these bodies are rare. There has been only one case in recent years apparently – although that excludes the relatively high-profile case brought against a solicitor/patent attorney before the the Solicitors Regulation Authority (‘SRA’) for inappropriate (and criminal) behaviour in his leisure time16. If the SRA figures are anything to go by, the low number of complaints to a professional or regulatory body should not be taken by themselves to suggest that instances of sexual harassment in the workplace are correspondingly low. IPReg currently takes the view that compliance with statutory and regulatory requirements rests firmly with the regulated entity/individual and they are the ones that must take action to ensure that they are compliant. Allegations of sexual harassment in the workplace should first be reported to someone senior/ in HR within the firm (or, depending on the circumstances, to the police or to get independent legal advice). If an allegation is made within a firm, IPReg expects the firm to investigate such an allegation and, if the matter is sufficiently serious to appear to be a breach of the Rules of Professional Conduct, to MARCH 2020

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refer the matter to IPReg for them to deal with. The focus on any investigation by IPReg would probably be on the issue of integrity.

It’s all a bit of a minefield this! Female readers will no doubt tell me that all this is pretty standard stuff. I wonder what male readers will think though. Is this all a case of political correctness gone mad? Will office romances be a thing of the past? (I can think of at least three male ex-partners of my firm who are married to female exemployees of the firm, who all met through work.) Will we be lambasted for complimenting someone on their new outfit, their new hairstyle or on the fact that their new diet seems to be working for them? Can you comfort someone who is upset by giving them a hug? Is it now risky for two work colleagues, one senior and one junior, to be booked into adjacent hotel rooms when travelling on business or to have an evening meal together? To some men in senior positions this now seems like a bit of minefield. Perhaps that’s a good thing, as most of us can readily envisage situations where one set of actions would seem innocuous whereas the same actions in a different context would seem like sexual harassment. If you really can’t tell the difference, then my advice would be to adopt the cautious approach. It may surprise some to know that an uninvited hand on the thigh could cause your name to move from your firm’s letterhead to the sex offenders register. I’d hope, however, that most of us know how we should behave and have the capacity to be decent respectful human beings.

Calling out behaviour can be for the good Some of us will get it wrong some of the time inevitably. For the most-part I would hope that this would involve the making

#UsToo?

of a clumsy comment, an ill-timed joke, or doing or saying the wrong thing by simply not knowing the audience sufficiently well. (Thinking of past indiscretions, I’ve done all three at least once during my time in the IP profession.) Some of these things will be perceived as undesirable/inappropriate by the person on the receiving end and that person will often find it very difficult or awkward to do anything about the matter. What good will come of making a fuss after all? If your workplace has senior management made up of people who are at the very least striving to be decent respectful human beings (most of us are, honest!) then your calling-out undesirable behaviour, even if originating from one of said senior management, should be seen as a good thing. Tolerating low-level bad behaviour will lead to a poor culture in the organisation, which will eventually reduce productivity and/or affect staff retention. Challenging or calling-out such behaviour gives an opportunity for positive change and for the individuals concerned to learn, and hopefully self-improve. Good culture promotes improved efficiency in a business. Calling-out the behaviour of others, particularly those more senior to you, is a scary prospect but it can and does work. As an example, I said something to a member of staff a little while ago, as part of what I thought was some harmless banter, but which certainly wasn’t seen as 100% hilarious by them. A little while later they called me out on the matter. I was initially taken aback somewhat as I had been completely oblivious to having stepped over the line, but once they had pointed out how they felt about the matter, I could see that my “banter” was misjudged on that particular occasion. It took courage for the person to approach me, but without being called-out I wouldn’t have had the opportunity to understand their viewpoint or to modify and hopefully improve my future behaviour. I

Notes and references

9. www.cipd.co.uk/knowledge/fundamentals/emp-law/harassment/sexual-harassment-work-guide

1. www.bbc.co.uk/news/entertainment-arts-41594672

10. See just one example here: www.rollonfriday.com/feature-content/ mythical-sexual-harassment-free-law-firm

2. https://en.wikipedia.org/wiki/Me_Too_movement 3. www.tuc.org.uk/sites/default/files/SexualHarassmentreport2016.pdf 4. Para 10 of this report – https://publications.parliament.uk/pa/ cm201719/cmselect/cmwomeq/725/725.pdf 5. www.theguardian.com/lifeandstyle/2016/aug/10/half-of-women-ukhave-been-sexually-harassed-at-work-tuc-study-everyday-sexism 6. Originally at www.thelawyer.com/metoo-lawyer-sex-harassmentsurvey-2018-2/ (no longer available) but see www.thelawyer.com/metoo-worst-experience-sexual-harassment/ and https://twitter.com/TheLawyermag/ status/969139954940039168 which refer to the survey 7. www.ft.com/content/a1688488-211a-11e8-a895-1ba1f72c2c11 8. www.ipsos.com/sites/default/files/ct/news/documents/2018-03/ international-womens-day-2018-global-misperceptions-of-equalityand-the-need-to-press-for-progress_1.pdf

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11. See examples here: https://natwestbusinesshub.com/content/ legal-profession-tackles-metoo 12. www.catalyst.org/research/why-diversity-and-inclusion-matter/ 13. www.equalityhumanrights.com/en/sexual-harassment-workplace 14. www.gov.uk/government/consultations/ consultation-on-sexual-harassment-in-the-workplace 15. www.parliament.uk/business/committees/committees-a-z/commons-select/women-and-equalities-committee/ news-parliament-2017/sexual-harassment-workplace-governmentresponse-17-19/ 16. www.solicitorstribunal.org.uk/sites/default/files-sdt/ 11171.2013.Wotherspoon.pdf 17. www.theguardian.com/uk-news/2019/jul/11/ who-was-carl-sargeant-what-were-allegations-against-him-wales

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appreciated their honesty and openness. Nothing negative has come from this; the respect I have for the person as an individual is undiminished and the nature of our professional and working relationship is, I think, as open and healthy as it ever was. If anything, I think we trust each other a little more as a result of the way we both behaved. Organisations with an open and honest culture, supported and promoted by senior management, will make such conversations easier, which I’m convinced is healthier for everyone concerned. If calling-out poor behaviour, nipping it in the bud, or tackling things in an informal way doesn’t work, then a more formal procedure may be required. Ideally there should be an agreed procedure for dealing with things properly, preferably in a sensitive way for all concerned, if and when a matter needs to be escalated. If the behaviour is such that it could be grounds for dismissal or, worse, criminal prosecution, are the individuals in your organisation who might need to be involved (alleged victim, alleged perpetrator, HR people, line managers, etc.) adequately equipped to deal with the matter? On the subject of escalation, it’s often said that making an allegation of sexual harassment can end your career; however, being on the receiving end of any serious allegation, whether or not justified, can also have potentially devastating consequences for the accused – end of career, end of personal relationships, or worse, end of life17. In practice, dealing with this in a proportionate, balanced and sensitive way for all concerned appears extremely difficult to get right. I don’t want to be the catalyst that unfairly ends a career, or worse, for anyone – the subject troubles me (but that’s not an excuse not

#UsToo?

to get a conversation going!). There needs to be change, but in my view the changes need to be in promoting a healthy and productive culture in the workplace where everybody is treated with dignity.

Conclusion I hope you will join me in ensuring that our workplaces in the IP profession are safe and happy places for all to work, making sexual harassment in particular a thing of the past. It makes good business sense. Workplaces with a culture where everyone knows that they will be treated with dignity and respect by their colleagues at all levels are likely to be more productive and efficient businesses. I’ve found this an extremely difficult article to write, and it has taken far too long for me to finish it. However, I hope that I get people talking about the subject in a healthy and positive way. I’d like the culture within the IP profession as a whole to be one we can all be proud of.

Jim Pearson, senior partner, Abel & Imray. This article was first published on the IP Inclusive website in February 2020. If you’d like to contact me in relation to this article, please feel free to email me at work at jim.pearson@abelimray.com, but please put the text #private# in the subject of your email so that the email doesn’t automatically get distributed to others in my firm.

Business Development & Soft Skills – the other side of IP A patent or trade mark attorney with good soft skills is no longer an unexpected bonus for their employer. Nowadays, soft skills are necessary for IP professionals to thrive. These skills enable you to develop relationships, build credibility/trust with those in and out of your network, and secure future work. Michael Evans, BDforIP, alongside CIPA Vice-President, Dr Alicia Instone, Cleveland Scott York, will present a workshop session at the Student Conference 2020. This session will provide practical tips and advice under the banner of business development, which will serve you well as you progress your career. Date: Thursday 30 April 2020 Location: etc. Venues, Maple House, 150 Corporation Street, Birmingham, B4 4TB Timings: 9am – 5pm with a Drinks Reception to Follow • Price: £160 (+VAT)

CIPA is pleased to announce that the Student Conference 2020 sponsor will be JDD Consultants

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PATENTS: UK

Patent decisions The UK patent court case reports are prepared by John Hull, Anna Hatt, Nick Bebbington, Deborah Hart, Matthew Ng and Sarah-Jane Crawford of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.

Validity | Inventive step | Worthwhile starting point in prior art Adolf Nissen Elektrobau Gmbh v Co Kg & Horizont Group Gmbh [2019] EWHC 3522 (IPEC) 18 December 2019 • Hacon HHJ The parties were both in the business of electric road traffic signs. The defendant (‘Horizont’) owned UK Patent No. 2410366. The claimant (‘Nissen’) sought to revoke the Patent for lack of inventive step. The invention related to a “mobile warning device for road traffic”. As discussed in the specification, devices of this type comprise a board to be mounted on vehicles, the board having spotlights arranged in a flat pattern to produce images. The images include directional arrows to tell road users to change lane and warning crosses to indicate that the lane is closed. Claim 1 was characterised by: “The warning cross is shown in an additional colour to the flashing directional arrows, and shines constantly.” The specification explained the advantage of this arrangement as causing an increased level of attention, because it has an unusual – and thus unexpected – form and colour, which has not previously been mounted on vehicles, and so warns the road user of a particularly dangerous situation, namely of the closing off of a lane or carriageway, in a very emphatic way. Lack of inventive step was alleged over each of three items of prior art, DE007 (a German utility model), Pederson and Nissen. The court first heard submissions on the approach to be taken to inventive step in a heavily regulated field such as in the present case. The claimant drew attention to the judgment of Lewison J in Ivax Pharmaceuticals UK Ltd v Akzo Nobel BV [2006] EWHC 1089 (Ch), in which it was said “Obstacles to lawful sale are not relevant to obviousness.” The patentee relied on a passage in the judgment of Kitchin J in Eli Lilly and Co v Human Genome Sciences, Inc [2008] EWHC 1903 (Pat), at [295] which said: “I accept that the skilled person must be deemed to consider any piece of prior art properly and in that sense with 32 CIPA JOURNAL

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interest… But the law does not deem the skilled person to assume the prior art has any relevance to the problem he is addressing or require him to take it forward. Having considered it, he may conclude that it is simply not a worthwhile starting point and so put it to one side.” Hacon HHJ noted: “In the present case it was said of one of the cited items of prior art that the skilled person would have thought that implementing its content would result in making a product that was dangerous to users and that therefore the prior art would have been of no interest as a starting point. I think that characterising prior art as a good or bad starting point can be a distraction. Whatever the prior art may be, the skilled person is invariably required to start with it in the sense that he or she is deemed to have considered it carefully. Having done so, the skilled person either will or will not find the invention in suit technically obvious. The perception of a dangerous outcome might be relevant on certain facts. To take an example, a line of investigation may not be pursued by the skilled person because of expected dangers involved and this might make a difference to the obviousness of the end-product of such an investigation. However, such circumstances must be distinguished from a situation in which the skilled person believes a variant of the prior art to be technically obvious but of limited or no commercial value because the result may be dangerous or otherwise unattractive to users. Such unattractive qualities would not make the variant any less obvious from a technical standpoint.” The court then turned to the three items of prior art. The proprietor argued that DE007 (a German utility model) would have been dismissed as a starting point for modification because it was unsafe to users and unlikely to satisfy the UK regulations. The judge held that an obvious modification does not cease to be such because the adapted product would be unsafe in use or would not meet regulatory approval. claim 1 was found to be obvious over DE007. The same applied to Nissen. However, claim 1 was found to be inventive over Pedersen. www.cipa.org.uk


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Infringement | Validity | Novelty | Obviousness | Priority | Standards essential patent Conversant Wireless Licensing S.a.r.l v (1) Huawei Technologies Co. Ltd, (2) Huawei Technologies (UK) Co. Ltd, (3) ZTE Corporation, (4) ZTE (UK) Ltd [2020] EWHC 14 (Pat) 8 January 2020 • Birss J This decision relates to infringement proceedings brought by Conversant against Huawei and ZTE (‘the defendants’). Conversant, a so-called non-practising entity, was the proprietor of three European (UK) patents, EP(UK)1878177, EP(UK)3267722, and EP(UK)3197206. The patents originated from Nokia and related to the way in which data packets are sent over data channels in the context of Voice Over Internet Protocol (‘VOIP’) in UMTS and LTE networks. Conversant claimed that the patents were essential to UMTS and LTE standards, whilst the defendants contended that they were invalid and not essential. For the 177 and 722 patents, the defendants relied on a single document, the PhD thesis of Robert Bestak (‘Bestak’). One of the main points of contention was whether Bestak disclosed the idea of not sending control messages together with data packets in a data channel with fixed time allocation when transmission parameters for that channel has not changed. Another point was whether such a requirement on the transmission of data packets would be limiting on the scope of a claim to a mobile station, which is effectively a receiver. On the question of novelty, Conversant argued that a mobile station according to the claims would be configured differently to the mobile station taught in Bestak. The judge disagreed and found that there would be no material difference between Bestak and the mobile station of claims 18 and 19 of the 177 patent. The judge also found that the mobile stations of claims 1 and 2 of the 722 patent were similar disclosed in Bestak. However, the judge found that claims 20 and 35 of the 177 patent, and claims 3, 13, and 14 of the 722 patent, were novel. On the question of obviousness, the defendants argued that with the “VOIP overhead problem” in mind, the skilled person starting from Bestak would inevitably arrive at the invention of the 177 and 722 patents. However, the judge found that that assumption was tainted with hindsight and found that the novel claims were also inventive over Bestak. For the 206 patent, it was common ground that it was essential and infringed if the priority claim of the patent was valid. The issue turned on whether the disclosure of the priority document was limited to a “fixed time allocation” whereby a mobile station knows when to expect a data packet. Conversant argued that there was no explicit description in the priority document limiting to fixed time allocation. However, the Volume 49, number 3

PATENTS: UK

judge disagreed and found that all the examples in the priority document required timing to be fixed in some way. Dismissing Conversant’s expert evidence as “thoroughly unconvincing”, the judge noted that: “Just because the priority document is limited in that way does not necessarily mean that a claim which is not so limited must lose priority. The question of support still needs to be asked and answered. However when it is asked, in my judgment the answer is clear. The difference between the scope of claim 1 of 206, in covering a case in which timing is not fixed, is materially wider than the disclosure of the priority document and relates to a different concept. What would be required to implement it is different and its effects would be different too. It is not the same invention. It is not entitled to priority.” In summary, the judge found that claims 20 and 35 of the 177 patent and claims 3, 13, and 14 of the 722 patent were valid and essential. The 206 patent was found to be not entitled to the priority claims and therefore not valid.

FRAND licences | Compensation for infringement Koninklijke Philips Nv v (1) Asustek Computer Incorporation, (2) Asustek (UK) Limited, (3) Asus Technology Pte Limited, (4) Htc Corporation And (5) Htc Europe Co Limited [2020] EWHC 29 (Ch) 17 January 2020 • Mr Justice Marcus Smith The decision relates to an upcoming trial (‘Trial D’ – one of a long-running dispute) that will take place later in 2020 in the Patents Court between the claimant, Koninklijke Philips NV (‘Philips’), and five defendants. These defendants fall into two groups – those part of the ASUS group of companies (‘ASUS’) and those part of the HTC group of companies (‘HTC’). Trial D concerns the determination of the appropriate FRAND rate for the licensing of the Philips patent portfolio, which comprises nearly 80 patent families, covering a range of technologies relating to the 3G/UMTS and 4G/LTE telecommunications standards in Europe, the US and other countries.

The Black Book Jonathan Markham, Anna Hatt and John Hull are proud to be contributing authors of the The CIPA Guide to the Patents Acts, 9th edition, which is available to purchase (hardback, eBook – ProView) online via Sweet & Maxwell: https://bit.ly/30qo97B

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ASUS have a small market in the UK for products requiring a licence to the Philips Portfolio. They have taken the view that this is a market not worth developing and that therefore they will not be seeking a FRAND licence to the Philips Portfolio. ASUS admit that Philips is entitled to injunctive relief and is prepared to pay the damages claimed by Philips for past acts of infringement. In view of its decision not to seek a licence, ASUS raised the question of an application, which, if successful, would result in ASUS leaving Trial D and so avoid the time and costs involved in ASUS defending the claims advanced by Philips. The question to be decided in the present judgment related not to whether the application was well-founded, but when the application should be determined. Philips contended that the application could only properly be determined at the trial itself because the amount of damages that Philips was entitled to remained at large. ASUS sought determination of the application as soon as possible. Mr Justice Marcus Smith reviewed the law on damages, and said: “In the present case, the level of compensatory damages is calculated by reference to the counterfactual, hypothetical licence that the Holder would have charged the Implementer had the Implementer, prior to infringing, sought a licence from the Holder validating what would otherwise be an infringement. I shall refer to this licence – which is a fiction only – as the Counterfactual Licence.” He went on: “The key issue is the extent to which the FRAND terms that are declared by the court are to be “read across” into the assessment of the appropriate compensatory damages for past infringements which are calculated by reference to the Counterfactual Licence.”

PATENTS: UK

The judge decided that both ASUS and Philips had misunderstood the essence of the compensatory principle in putting their case and were too dogmatic in reading across (selected) terms of the Declared Licence. More specifically: (1) ASUS’ measure of damages – being based upon a global royalty rate of US$0.75 – runs the risk of undercompensating Philips. The fact is that a global rate – based on the sales of many more devices – will for that reason be lower than a rate targeted only at Infringing Devices. (2) Philips’ measure of damages – being based on global royalties that would be payable were ASUS to be assumed to have entered the Declared Licence prior to its infringing conduct – runs the risk of over-compensating Philips as well as potentially dragging English courts into an exorbitant jurisdiction encroaching upon the jurisdictions of other courts. The judge concluded it was wrong in principle to automatically link the terms of the Declared Licence and the terms of the Counterfactual Licence. He decided: “The short answer to ASUS’ application is that the extent to which the terms of the Declared Licence are relevant to the assessment of damages is itself a question of fact to be determined at trial. That question is in no way susceptible of summary determination. It follows that the dispute between ASUS and Philips as to the damages payable for ASUS’ past infringement of the Philips UK Patents is one that has to be determined at a trial. Given that the terms of the Declared Licence are relevant to that question, it follows that this issue must be determined as part of Trial D.”

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

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www.cipa.org.uk


DECISIONS

PATENTS: UK IPO

IPO decisions By David Pearce (Barker Brettell) and Callum Docherty (Withers & Rogers) Patent decisions of the comptroller can be found on the IPO website via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/opinion-requests.

Patentability: section 1(2) Lenovo (Singapore) Pte. Ltd. BL O/017/20 13 January 2020 The application related to a method of converting handwriting strokes into text input for a computer-implemented user application, in which candidate-input words were checked for spelling and a highest-ranking spell-checked word selected as a text input. The examiner objected that the invention was excluded as a program for a computer because the contribution provided was in the area of data processing, the handwriting recognition part being conventional. The applicant argued that the contribution should be wider to encompass handwriting recognition, and that the general problem to be solved should be how to improve handwriting recognition. The hearing officer considered the applicant’s arguments to be more persuasive, and that the contribution should be considered more broadly than just data processing because the specific task of disambiguating user input was a technical field of endeavour. Considering the AT&T/CVON signposts, the hearing officer agreed with the applicant that the user interaction with the computer was improved and that the invention provided a better computer. The contribution provided by the application was therefore considered to be technical in nature and the invention not excluded as a program for a computer as such. The application was remitted to the examiner for final preparations before grant. Motorola Solutions, Inc. BL O/030/20 16 January 2020 The application in question was filed as a divisional following a hearing regarding patentability of the parent application but before a written decision was issued, which refused the application (BL O/800/18) on the grounds that the claimed invention was excluded under section 1(2) as a program for a computer and a method of doing business as such. The hearing officer also found that a suggested amendment would not save the application, and that there was nothing in the specification as a whole that could be expected to Volume 49, number 3

form the basis of a valid claim. The divisional application was objected to by the examiner on the same grounds as the parent, following which the matter came before the same hearing officer. The hearing officer first considered whether the earlier decision on the parent application had created an estoppel against the divisional. Although it was generally accepted that decisions of the Comptroller could give rise to estoppel for inter partes proceedings, the question of whether a decision in an ex-parte procedure could give rise to any form of estoppel was not one that seemed to have been considered in any depth. The hearing officer’s previous statement that there was nothing in the specification that could save the application was not, however, enough to give rise to a question of whether there was any estoppel. The hearing officer concluded that it would therefore be inappropriate to deny the applicant consideration of the divisional application. A further question, however, was whether the applicant’s behaviour constituted an abuse of process. Referring to Johnson v Gore Wood [2001] 1 All ER 481, in which Lord Bingham stated that the Court required the parties to litigation to bring forward their whole case and would consider reopening a matter already decided to be an abuse of process, the hearing officer considered that it would have been preferable if the applicant had presented the claims of the divisional as alternative claims at the hearing on the parent. Whether the applicant’s behaviour in filing the claims instead as a divisional went as far as an abuse of process was open to question, but the hearing officer considered it was not so abusive as to justify refusing to consider the claims on the divisional. The hearing officer noted, however, that should other applicants seek to exploit the window offered between a hearing and a subsequent decision to file further divisionals, the IPO may need to consider whether any estoppel or abuse of process arose that would justify a stronger response. The hearing officer also noted that the IPO might wish to consider issuing a decision on the day of the hearing, as typically happens at the EPO. For the present application, the hearing officer proceeded to determine on its own merits the claims of the divisional application. After considering the invention, the claims of the divisional were found also to be directed to a program for a computer and a method of doing business, and the application was refused. MARCH 2020

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PATENTS: UK IPO • EPO

Extension of time limits: rule 108 Nanjing University BL O/063/20 31 January 2020 An international application was filed by the applicant at the State Intellectual Property Office of China (‘SIPO’) on 15 June 2017, claiming priority to an earlier Chinese application filed 14 months previously. A request was made to SIPO acting as receiving office to have the right of priority restored under rule 26bis3 PCT, which was allowed according to the unintentional test. The applicant later requested entry into the European regional phase, following which the EPO invited observations regarding the more strict ‘due-care’ test to allow the right of priority to be restored under rule 49ter.2 PCT. No response to the invitation was filed in time, following which the EPO issued a decision indicating that the priority right was lost. A request was then filed at the UK IPO to enter the UK national phase, together with a request under rule 108 for an extension

of time to the 31-month period, which had expired more than two months previously. The applicant’s attorney argued that the extension request should be allowed because the applicant’s intention had always been to seek patent protection in the UK, and indicated that they were not informed of the request for restoration of priority by SIPO. Had they been aware, they would have advised the applicant to enter the UK national phase rather than the European phase due to the difference in standards required. The hearing officer considered that the evidence showed at best an intention to seek patent protection covering the UK, but that the strategy was to do so by way of a European application and not via a national filing. The applicant’s attorney had been informed of the priority issue at the EPO before the 31-month due date and could have informed the applicant to file a request to enter the UK national phase in time. The attorney should therefore have been alert to the issue in time for such a request to be made. The hearing officer concluded that the applicant’s failure to request entry into the UK national phase in due time could not be considered unintentional, and refused to reinstate the application.

EPO decisions This month’s contributors from Bristows are Nadine Bleach, Adrian Chew and Nicholas Round. Legal Board of Appeal (LBA) and Technical Board of Appeal (TBA) decisions are available on the EPO website at www.epo.org/law-practice/case-law-appeals/recent.html and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from www.epo.org/law-practice/case-law-appeals/eba/number.html. A list of the matters pending before the Enlarged Board is included at www.epo.org/law-practice/case-law-appeals/eba/pending.html. Recent notices and press releases of the EPO are published at www.epo.org/service-support/updates.html and www.epo.org/news-issues/press/releases.html respectively, and recent issues of the Official Journal can be downloaded from www.epo.org/law-practice/legal-texts/official-journal.html.

Novelty – article 54 EPC T 1943/15: Tabular connection with self-locking threading used in the oil industry TBA decision, 21 October 2019 Chairman: M. Poock Members: T. Vermeulen and C. Brandt This was an appeal by the opponent against the decision of the Opposition Division, which had upheld the patent. One of the most interesting points arising from the decision concerns the EPO’s approach to the interpretation of figures in the prior art. Claim 1 of the patent was directed to a threaded connection between a first and second tube; where the width of the thread on one tube decreases along its length, whereas the width 36 CIPA JOURNAL

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of the thread on the other tube increases along its length. In particular, the claim set out specific dimensional constraints on to the relative maximum and minimum widths of the thread at different places on the tubes. The opponent argued that the claim lacked novelty over a number of pieces of prior art. This was based on an argument that the drawings in the prior art patents disclosed threaded connections with dimensions falling within the scope of the claim. In light of established case law, the TBA considered that features can be taken from the drawings of a prior art patent for the purpose of showing lack of novelty “if their structure and function are clearly, unmistakably and fully derivable from the drawings”. The TBA distinguished between patent drawings on the one hand and construction drawings, which may be generally relied on to show dimensions and proportions of elements to scale, on the other. The TBA concluded, following www.cipa.org.uk


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T 204/83, that dimensions obtained solely by measurements carried out on patent drawings did not constitute part of the disclosure of that prior art for the purpose of a novelty attack. The question was then whether the claimed dimensional constraints in the patent under opposition could be inferred from the prior art patent drawings by visual perception (without measuring any dimensions). Whilst in some cases a detailed cross-sectional view might directly imply that one dimension is much larger than another, that was different to the claim in question which required a more complex relationship between the dimensions. The TBA explained that determining this merely from looking at a prior art patent drawing is not straightforward and therefore tends to be ambiguous. Considering the particular drawings in the cited prior art documents, the EPO concluded the skilled person would not clearly and unmistakably derive the relative dimensions of the thread widths portrayed, let alone that they were of dimensions falling within the scope of the claim. The TBA therefore upheld the Opposition Division’s finding that the patent did not lack novelty. The appeal was dismissed.

Designation of the inventor – article 81 and rule 19 EPC Patent Application EP 18 275 163: Food Container EPO decision, 27 January 2020 This is a decision by the Examining Division to refuse a patent application due to a failure to designate the inventor. In accordance with article 81 EPC, a European patent application must designate the inventor. In accordance with rule 19 EPC, the designation must state the family name, given names and full address of the inventor. In this case the applicant designated an artificial intelligence (AI) machine named “DABUS” as the inventor. As a result, the applicant, as the owner of the machine, argued he was an assignee of any intellectual property rights created by the machine. The Examining Division rejected the application: the AI machine could not be an inventor as it was not a natural person. The Examining Division found that the application did not satisfy rule 19 since the indicated name of the machine was a name to a ‘thing’ which is not the same as the names of natural persons. Further the legal framework of the EPC is restricted to natural and legal persons and does not provide for non-persons. In the context of inventorship reference is made only to natural persons, which indicated a clear legislative understanding that the inventor is a natural person. Additionally, the legislative history of the EPC shows that the legislators were in agreement that “inventor” could only refer to a natural person. This was consistent with the provisions in the EPC safeguarding inventors’ rights. AI systems or machines can have no such rights by virtue of being an inventor, since they lack legal personality. Finally, the decision considers that AI machines can neither be employed nor transfer any rights to a successor in title. AI Volume 49, number 3

PATENTS: EPO

machines are owned (not employed). Further they cannot have legal title over their output and have neither rights nor legal personality that would allow them to exercise those rights. It would therefore not be possible for a hypothetical AI inventor to transfer rights in a patent application to the eventual applicant.

Added matter – article 123(2) EPC T 1362/15: Catalytic converter and associated method of assembly TBA decision of 8 October 2019 Chairman: M. Harrison Members: P. Cipriano and E. Kossonakou This was an appeal by the patentee against the Opposition Division’s decision to uphold the patent in amended form. The most significant point arising from the decision concerns an aspect of the EPO’s approach to added matter. The patentee requested that the patent be maintained as granted (main request) and also filed five auxiliary requests, with auxiliary request 5 being to the claims found allowable by the opposition decision. The TBA found the subject matter of the main request and auxiliary request 1 as not allowable for lack of inventive step over the prior art (article 56 EPC). For auxiliary requests 2 to 4, no combination of dependent claims in the application as filed provided for the combination of features present in claim 10 of those requests. The patentee argued, inter alia, that this was due to the application as filed including claims with a “US-style” dependency; that is with the relevant dependent claims referring back to the independent claim separately. The patentee requested that questions were referred to the Enlarged Board of Appeal on the application of article 123(2) EPC to patent applications with US-style claims. The TBA refused to refer the questions as in its opinion sufficient guidance had been given in previous EBA cases regarding article 123(2) EPC. Further, it considered the questions were only of a theoretical significance. Firstly, there was no actual limitation regarding the possible combinations of features in the claims of US applications. 35 U.S.C. 112 merely states that a multiple dependent claim shall not serve as a basis for any other multiple dependent claim. Secondly, certain relevant claims in the application as filed relied upon as the basis for claim 10 in auxiliary requests 2 to 4 were not actually in the US-style claim format as described. Thirdly, the patentee’s argument that the use of multiple dependent claims would involve high cost, did not constitute a legal limitation to the rights of the party. The Board concluded that it could not recognise any dependency “style” or any other reason that could change the way of assessing compliance with article 123(2) EPC. The TBA found that the subject matter of claim 10 of auxiliary requests 2, 3 and 4 extended beyond the content of the application as filed and were not allowable under article 123(2) EPC. The appeal was therefore dismissed. MARCH 2020

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

Decisions of the GC

Ref no.

Application (and where applicable, earlier mark)

GC T-213/18 Brita GmbH v EUIPO 19 June 2019 Reg 2017/1001 Reported by: Louise O’Hara

– beverage-making machines and installations consisting thereof (7) – apparatus and installations for water treatment, water filtering apparatus, water dispensers (11) – household non-electric apparatus for the production of carbonated water and beverages (21) – filtered water, preparations for making mineral water (32) – rental of vending machines for coffee, tea and sugar (35) – maintenance and cleaning of water filters, water filter apparatus (37) – rental of water filters, water filtering apparatus (40)

GC T-747/18 Refan Bulgaria OOD v EUIPO 12 December 2019 Reg 2017/1001 Reported by: Henry Elliott

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– soap products, sponges impregnated with soaps, toiletries, cleaning and fragrancing preparations (3) – candles, tealights (4) – medicated soap, disinfectant soap, antibacterial soap (5)

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Comment

The GC upheld the BoA’s decision that the mark was devoid of distinctive character in relation to a large number of the claimed goods and services pursuant to article 7(1)(b). The GC held that the relevant public had an average degree of attention and noted that even if the public had a particularly high level of attention, this would not automatically confer a sufficiently distinctive character on the mark. In fact, a discerning public would be fully aware of all innovative shapes used for the goods at issue, with the result that the sign would not depart significantly from the norm of the sector. The GC confirmed the BoA’s finding that, whilst not all water beverage dispensers are identical, the relevant public would recognise different designs as mere variations of the standard shape to be found in all water dispensers. It was not sufficient that certain features of the shape applied for differed from the norm: these features had to be sufficiently marked to enable customers to distinguish the faucet offered under the sign from those of other undertakings solely on the basis of the shape.

The GC upheld the BoA’s decision that the mark was descriptive pursuant to article 7(1)(c). Although the goods concerned did not necessarily have the fragrance of a flower, the GC noted that they could all be used with such a fragrance. This was sufficient for registration to be refused based on article 7(1)(c). Further, the GC held that any decorative purpose of the mark applied for did not preclude it from designating another characteristic of the goods, such as fragrance.

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Ref no. GC

Application (and where applicable, earlier mark) WANDA FILMS

T-533/18, T-542/18 Wanda Films, SL and Wanda Visión, SA v EUIPO; Dalian Wanda Group Co. Ltd 3 October 2019 Reg 2017/1001 Reported by: Matthew Vance

– apparatus for electricity; information technology and audiovisual equipment (9) – services of a film distributor; entertainment; sporting and cultural activities; audio and visual entertainment services; production of motion picture films and television programmes; providing entertainment news and information (41) WANDA – apparatus for electricity; apparatus for recording, transmission or reproduction of sound or images; computers (9) – entertainment; sporting and cultural activities; providing online electronic publications (41)

GC T-428/18 McDreams Hotel GmbH v EUIPO; McDonald’s International Property Co. Ltd 10 October 2019 Reg 2017/1001 Reported by: Tom Hooper

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– providing temporary accommodation (43) McDONALD’S BIG MAC (and the family of Mc trade marks) – foods prepared from meat, pork, fish and poultry products, preserved and cooked fruits and vegetables (29) – edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, confectionary (30) – non-alcoholic beverages (32) – provision of food and drink (43)

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Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The BoA correctly found that the marks were similar, at least to an average degree, and that the goods and services were identical. The GC rejected Wanda Films’ submissions that the use and reputation of their earlier Spanish marks including the word element ‘wanda films’ prevented the relevant public from confusing the marks in question, noting that earlier rights should be asserted under an application for a declaration of invalidity. The GC further noted that although prior use could indicate coexistence on the market and reduce the likelihood of confusion, Wanda Films’ had failed to establish that the marks coexisted peacefully throughout the whole of the EU and that such coexistence was due to an absence of likelihood of confusion between such marks.

The GC upheld the BoA’s decision that the mark applied for would take unfair advantage of the reputation of McDonald’s International Property Co. Ltd (‘McDonald’s’) earlier marks under article 8(5). The GC agreed with the BoA that there was at least a low degree of overall similarity between the marks and that the structure of the dominant ‘mc dreams’ element of the mark applied for was similar to that of McDonald’s family of marks. In addition, the GC found a ‘significant degree of closeness’ between services applied for and the services covered by the earlier marks in class 43. As the McDONALD’S mark had an exceptionally high reputation, particularly for fast food restaurants, the GC considered there to be an obvious risk of unfair advantage being taken of the earlier mark. The GC also noted that the colour combinations of the mark applied for were similar to those used frequently by McDonald’s and that the slogan in the mark applied for (which translated to “sweet dreams at low prices”) was of a similar notion to the idea of low-cost meals conveyed by the earlier marks.

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Ref no. GC T-268/18 Luciano Sandrone v EUIPO; J. Garcia Carrión, SA

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Application (and where applicable, earlier mark)

Comment

LUCIANO SANDRONE – alcoholic beverages (except beer); preparations for making alcoholic beverages (33)

The GC annulled the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC held that the names within the signs at issue did not convey any concept so it was not possible to carry out the conceptual comparison and as such the BoA had erred in finding that there was an average degree of conceptual similarity between the marks. In carrying out its global assessment, the BoA failed to consider the low degree of distinctiveness of the ‘Luciano’ element and the ‘higher intrinsic value’ of the ‘Sandrone’ element which the GC regarded as an uncommon surname. Additionally, the BoA had not adequately considered the specific characteristics of the goods: French and Spanish names were highly prevalent in the wine market and goods with the same name would not necessarily be perceived by consumers as originating from the same undertaking.

DON LUCIANO – alcoholic beverages (except beer)(33)

27 June 2019 Reg 2017/1001 Reported by: Megan Curzon

GC T-361/18 Agricultural and Processed Food Products Export Development Authority (‘APEDA’) v EUIPO; Burraq Travel & Tours General Tourism Office SA 5 November 2019 Reg 2017/1001

–various rice related goods including: rice; sago; artificial rice [uncooked] (30) – unprocessed rice; paddy; rice bran [animal feed]; natural rice for use as animal fodder (31) – rice alcohol (33)

Reported by: Katie Rimmer

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The GC partially annulled the BoA’s decision and held that the mark was invalid in relation to all goods under article 59(1)(a) as it was descriptive within the meaning of article 7(1) (c). The GC noted that the word element ‘basmati’ indicated a specific type of rice to the relevant public, which was known to be grown in India and was therefore descriptive of the geographical origin and nature of the goods. Further the word element ‘rice’ was descriptive. Contrary to APEDA’s submissions, the GC held that the image of the turbaned man suggested an inhabitant of an oriental country, but not specifically an inhabitant of India or Pakistan, so did not indicate the origin of the goods. However, the GC held that the figure was not dominant and the combination of this with the decorative elements and the word element ‘sir’ was not sufficient to confer distinctive character on the mark as a whole.

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Ref no. GC T-642/18 T-643/18 T-644/18 Dr August Wolff GmbH & Co. KG Arzneimittel v EUIPO; Faes Farma, SA 28 November 2019 Reg 207/2009 Reported by: Louise O’Hara

GC T-665/18 Soundio A/S v EUIPO; Telefónica Germany GmbH & Co. OHG 28 November 2019 Reg 2017/1001 Reported by: Nicholas Puschman

Application (and where applicable, earlier mark) DermoFaes Atopimed DermoFaes DermoFaes Atopiderm – chemicals used in science, agriculture, horticulture and forestry (1) – perfumery, including cosmetics, soaps, lotions, essential oils, dentifrices, washing preparations and other substances for laundry use (3) – pharmaceutical, veterinary and sanitary preparations; baby food; materials for dressings; disinfectants; fungicides (5) Dermowas – soaps; perfumery; essential oils; cosmetics; hair lotions (3) – pharmaceutical and veterinary preparations; food for babies; materials for dressings; disinfectants; fungicides (5)

Vibble – computers; computer software (9) – telecommunication services (38) – design and development of computer software; hosting computer sites; consultant services related to computers, computer software (42) vybe – telecommunication, in particular mobile communications (38) (German mark)

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Comment The GC upheld the BoA’s decisions that there was no likelihood of confusion between the marks applied for and the earlier mark under article 8(1)(b). Concluding that the earlier mark and the ‘DermoFaes’ mark were visually and aurally similar ‘only to a certain degree’, the GC noted that the ‘Dermo’ element was weakly distinctive, so the attention of the public would focus on the endings of the marks; as these endings were short, the differences between them would be immediately perceived by the relevant public. The second word elements ‘Atopimed’ and ‘Atopiderm’, were weakly distinctive for medical professionals, however, they significantly increased the length and syllable count of the marks applied for resulting in a low degree of visual and aural similarity. The GC agreed with the BoA that the suffixes ‘Faes’ and ‘was’ should be ignored for the purpose of conceptual comparison, as they had no meaning for the relevant public. Whilst the ‘Atopi’, ‘Med’ and ‘Derm’ elements would be understood by medical professionals, the general public would likely consider ‘Atopimed’ and ‘Atopiderm’ to be imaginary words, so a conceptual comparison was not possible. The conceptual similarity between the marks was thus limited to the ‘Dermo’ element, which only had a limited impact given its weakly distinctive character. The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The GC confirmed the BoA’s finding that all of the goods and services were identical or similar. In particular, the GC noted that the IT services applied for in class 42 were highly complementary and shared similar purposes to telecommunications services. The BoA’s finding that there was an average degree of visual similarity between the marks was upheld, as the ‘minor differences’ in letters and length did not outweigh the similarity arising from the letters ‘v’, ‘b’ and ‘e’ appearing in the same order. In addition, there was a considerable degree of phonetic similarity between the marks as the relevant public (being the Germanspeaking public) would pronounce the beginnings of both marks in the same way. As the marks had no meaning for a significant part of the relevant public, a conceptual comparison was not possible.

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Ref no. GC T 524/18 Billa AG v EUIPO; Boardriders IP Holdings LLC 4 December 2019 Reg 2017/1001 Reported by: Olivia Bowden

Application (and where applicable, earlier mark) Billa – precious metals and stones; jewellery; ornaments; horological and chronometric instruments (14) – leather and imitation leather goods; trunks and travelling bags (18) – outerclothing and underwear; footwear; headgear; heated clothing (25) – games; toys; gymnastics and sports articles (28) – bringing together of a variety of goods, for advertising purposes; enabling customers to conveniently view and purchase those goods (35) BILLABONG – jewellery; charms; ornaments; precious and semi-precious gem stones; watches; clocks; watch accessories; key rings (14) – chamois leather; bags (18) – clothing; footwear; headgear (25) – sporting goods; sporting parts and accessories (28)

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Comment

The GC partially annulled the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b) insofar as it related to ‘games’ in class 28 of the mark applied for. The BoA was correct to find that the marks were visually and phonetically similar, as the mark applied for was identical to the first five letters of the earlier marks. As the BoA had not ruled on the identity or similarity of the services applied for in class 35, the GC did not assess this, however, the GC confirmed that the goods applied for in classes 14, 18 and 25 and ‘gymnastics and sports articles’ and ‘toys’ in class 28 were identical or similar to the goods covered by the earlier mark and that there was a likelihood of confusion in relation to these goods. However, the GC held that the ‘retailing of sporting goods’ in class 35 was dissimilar to ‘games’ in class 28 as they were not complementary, ‘sporting goods’ themselves were different to ‘games’ and there was no evidence to support the finding that the goods and services shared the same distribution channels.

BILLABONG – retailing of the aforementioned goods (35) GC T-28/19 Karlovarské minerální vody a.s. v EUIPO; Aguas de San Martín de Veri, SA

VERITEA – iced tea and tea-based beverages (30) – mineral waters and other nonalcoholic drinks (32) VERI – AGUA PURA DEL PIRINEO – non-alcoholic beverages

19 December 2019 Reg 2017/1001

VERI – all types of table water (32)

Reported by: Justin Bukspan

(EUTM and Spanish mark)

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The GC upheld the BoA’s decision that there was likelihood of confusion between the marks under article 8(1)(b). The GC confirmed the BoA’s finding that the expression ‘agua pura del pirineo’ (pure water from the Pyrenees) in the earlier mark was of weak or no distinctive character, as it would be understood by the Spanish-speaking part of the relevant public as describing the nature, characteristics and qualities of ‘non-alcoholic beverages’, so the ‘veri’ element was the most distinctive element of the earlier EUTM. Likewise, the BoA correctly noted that although the mark applied for, as a whole, was distinctive, it was possible that some of the Spanish-speaking public would artificially isolate the English word ‘tea’. In this scenario the ‘veri’ element was distinctive whereas the ‘tea’ element was descriptive. Given the coincidence of the distinctive elements at the start of both marks, the GC upheld the BoA’s finding that the marks were visually and phonetically similar to an average degree.

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Ref no. GC T-648/18 Super bock group, SGPS SA (‘SBG’) v EUIPO; Agus sp. z o.o. 12 December 2019 Reg 2017/1001

Application (and where applicable, earlier mark) CRYSTAL – various food and drink products, including tea, coffee, drinking chocolate, cocoa and related beverages, crisps and biscuits (30) CRISTAL – non-alcoholic beverages and beers (32) (Portugese mark)

Reported by: Jonathan Edwards

GC T-729/18 El Corte Inglés, SA v EUIPO; Lloyd Shoes GmbH 19 December 2019 Reg 2017/1001 Reported by: Rebecca Slater

– perfumery; cosmetics (3) – jewellery; costume jewellery; tie pins and clips; horological and chronometric instruments (14) – leather and imitations of leather and goods made of these materials; travelling bags; briefcases and attaché cases (18) – clothing, footwear, headgear (25) – sales services relating to the goods in classes 14, 18 and 25 (35)

– bleaching preparations; abrasive preparations; soaps; perfumery; cosmetics (3) – precious metals; jewellery; precious stones; horological and chronometric instruments (14) – leather and imitations of leather and goods made of these materials, (excluding footwear); travelling bags; umbrellas and walking sticks; saddlery (18)

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Comment The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b). As SBG had only been able to prove genuine use of the earlier mark in relation to ‘beers’, the BoA correctly held that the drink products applied for were dissimilar: the public perceived alcohol content as a significant difference in the nature of the beverages, so non-alcoholic drinks such as tea and coffee were not in competition with alcoholic drinks such as beer. In addition, the GC noted that such drinks were consumed on different occasions, for the satisfaction of differing social needs, and attracted different levels of regulation. The foodstuffs applied for were not complementary to ‘beers’ as they were not indispensable or important for the consumption of beer. The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b) in respect of the services in class 35 relating to clothing, footwear and headgear. The BoA’s decision that there was a likelihood of confusion in respect of the goods in classes 3, 14, 18 and 25 was not under appeal. The GC noted that although goods such as shoes, clothing and hats in class 25 and handbags in class 18 shared common aesthetic function, and were therefore similar to one another, this was not sufficient to establish similarity between the goods in class 18 and sales services in class 35 relating to the goods in class 25: these goods and services were dissimilar on account of their different nature, intended purpose and method of use.

Note: Case T-589/18 – Vins el Cep, SL (‘Vins el Cep’) v EUIPO; Rotkäppchen-Mumm Sektkellereien GmbH 19 December 2019 Reg 2017/1001 – will be reported in the April 2020 edition of the CIPA Journal.

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Invalidity under section 3(1)(a) Fromageries Bel SA v J Sainsbury Plc* (“Sainsbury”) Hacon J; [2019] EWHC 3454 (Ch); 9 October 2019

Judge Hacon invalidated FBSA’s three dimensional “Babybel” shape mark registration as the colour indication was not sufficiently clear or precise. Robert Milligan reports.

Facts Fromageries Bel SA (‘FBSA’) owned a UK trade mark registration for the three-dimensional shape mark, pictured below:

registered in class 29 in relation to cheese. The registration had the description: “The mark is limited to the colour red. The mark consists of a three-dimensional shape and is limited to the dimensions shown above”. J Sainsbury Plc (‘Sainsbury’) brought an invalidity action against the registration pursuant to section 47(1) on the basis that the mark did not satisfy the requirements in sections 3(1) (a) or 3(2). At first instance, the hearing officer dismissed the argument under section 3(2), but found that the trade mark was invalid pursuant to section 3(1)(a) on the basis that the reference to “the colour red” in the description of the trade mark was not sufficiently clear and precise. FBSA appealed to the High Court.

Application of the Sieckmann criteria FBSA argued that, since the colour red was not the only essential characteristic of the mark, the mark need not be defined with any greater precision than that contained within the mark’s description. However, Judge Hacon disagreed with FBSA in finding that:

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undertakings on the assumption that the hue used in the mark was any hue of red which FBSA cared to use. Judge Hacon found that the trade mark could be capable of distinguishing the cheese of FBSA from the cheese of other undertakings only if a particular hue of red used on the main body of the product was associated with FBSA’s cheese. In other words, the mark had to be limited to a single hue of red.

Is the mark limited to the colour red shown in the pictorial representation? FBSA argued that where a mark was filed with a description referring to a colour and pictorial representation, the description would be taken to mean the hue of the colour shown in the picture. Judge Hacon disagreed as the absence of any statement about hue (such as a Pantone number) was all the more striking in light of the fact that the description expressly limited the shape to particular dimensions. Judge Hacon agreed with the hearing officer that had the mark been filed with no description then the consumer would have assumed that the colour was the hue shown in the pictorial representation. Alternatively, if the description had said “the colour red as shown in the representation”, the result would have been the same. However, as the description was for “the colour red” a consumer would conclude that the mark encompassed any red hue.

Should FBSA be allowed to retrospectively specify the Pantone? Judge Hacon rejected FBSA’s application pursuant to section 13 to limit the rights of the mark by specifying that the colour red was Pantone 193C on the basis that the clarification would introduce an additional feature into the content of the mark in order to make it distinctive and would affect the description of the mark itself.

Survey evidence Glaxo Wellcome UK Ltd & Anr v Glenmark Pharmaceuticals Europe Ltd & Ors* Arnold LJ, [2019] EWHC 3239 (Ch); 13 November 2019

Arnold LJ dismissed an application by GSK to adduce additional survey evidence in response to criticism of survey evidence it had adduced in a separate trial. Mark Day reports.

Facts “where a mark contains colour but is not a colour mark per se, the need for precision as to hue will depend on the extent to which other elements of the mark serve to make the mark capable of distinguishing”. The question therefore was whether the mark was capable of distinguishing the cheese of FBSA from the cheese of other 44 CIPA JOURNAL

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GSK issued proceedings in November 2018 alleging infringement of EU and UK trade marks and for passing off. In June 2019, Arnold LJ made an order on an application of the defendants to expedite the trial. GSK then applied for and were granted permission to adduce survey evidence. However, two days before the hearing of that application, judgment in the Glaxo v Sandoz [2019] EWHC 2545 www.cipa.org.uk


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(Ch) litigation was sent to the parties in draft. The judgment was subsequently handed down on 4 October. In that judgment, Arnold LJ criticised the survey evidence adduced by GSK for not complying with the Whitford guidelines. Further, he ruled that the surveys were useless as they invited speculation and certain questions were ‘both leading and misleading’. GSK subsequently sought permission to vary the order in the present litigation to allow for further surveys to be carried out. GSK freely admitted that the criticism in the Sandoz judgment prompted it to make the present application.

The seriousness and significance of GSK’s failure to comply GSK conceded that the admission of the further survey evidence would make it impossible to achieve the trial date. The original deadline for applying to adduce survey evidence was agreed and ordered precisely to avoid this and failure to comply with the deadline was a significant and serious one. This was particularly so as the trial had been fixed following a successful application by the defendants.

Why the default occurred Arnold LJ thought it was difficult for GSK to seek to vary an order that was made at a time when they were well aware of the criticisms in the Sandoz judgment. GSK was on notice of the criticisms put forward in Sandoz well before the handing down of the judgment. The same firm of solicitors and two of the same barristers were instructed by GSK in relation to both the Glenmark and Sandoz proceedings and, in Arnold LJ’s view, the judgment could not have come as a surprise to GSK. There was no good reason for the default.

New Brexit guidance for the transition period CIPA has updated its practice advice to members to reflect the UK leaving the EU on the 31 January and entering the year-long transition period. These documents have been prepared by Alicia Instone, CIPA Vice-President and Chair of the Designs and Copyright Committee and Julia Florence, CIPA Immediate Past President. You can find the updated guidance on the Brexit Updates pages of the CIPA website – www.cipa.org.uk/policy-and-news/brexit-updates/. The UK IPO has also issued new guidance on intellectual property during the transition period. To find out more, see www.gov.uk/government/news/intellectualproperty-and-the-transition-period

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Consideration of ‘all the circumstances’ Arnold LJ stated that the overriding objective went beyond achieving allegedly correct decisions on the merits; such decisions should also be just and procedurally fair in a proportionate way. He was not prepared to overturn his earlier order to expedite the trial and commented that this in itself would be a good reason for dismissing the application. GSK knew the rules relating to survey evidence and the criticism from the Sandoz litigation, yet made a conscious and deliberate choice to apply to adduce further survey evidence in the Glenmark litigation. The consequences were of GSK’s own making. Dismissing GSK’s applications, Arnold LJ ordered GSK to pay 88% of the costs of the first and second defendants and 85% of the costs of the third defendant. TJX UK (2) NBC Fourth Realty Corp v SportsDirect.com Retail Ltd* Deputy Judge Treacy; [2019] EWHC 3246(Ch); 29 November 2019

TJX succeeded in an application to adduce survey evidence in a claim for trade mark infringement and passing off to assist the court in issues relating to acquired distinctiveness and recognition of a component part of a composite mark. Louise Vaziri reports.

Facts TJX UK (‘TJX’) is part of the TJX Group of companies, which operate online and physical retail stores under the TK Maxx brand. TJX sells a range of goods under the TK Maxx brand, including clothing and accessories. SportsDirect.com Retail Ltd (‘SportsDirect’) is a well-known sportswear retailer that operates online and physical retail stores. SportsDirect opened stores under the name BRAND MAX. TJX issued proceedings for trade mark infringement and passing off of its TK MAXX sign and logo. It applied to adduce survey evidence to assist the Court in determining the acquired distinctiveness of MAXX which was component part of a composite mark.

Whitford guidelines The Deputy Judge held that the proposed survey was not leading and that the answers provided were sufficiently captured by the interviewers. Accordingly, the Deputy Judge held that the survey satisfied the Whitford guidelines.

Real value and cost Composite marks were considered to be a special factor when determining whether or not a survey would give real value to at trial. In this case, the Deputy Judge found that the survey could be of real value in assisting the trial judge understand the distinctiveness of a mark, which is a made-up word in a MARCH 2020

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composite mark. It was accepted that the survey of itself was unlikely to prove that MAXX had acquired distinctiveness but this did not mean the survey could not have real value. The Deputy Judge held that the survey evidence would contribute to pleaded issues that were not admitted and that, whilst not central to the case, were still of such importance that the evidence would add real value. Since, the costs of adducing the survey evidence were proportionate to the likely value of the evidence at trial, permission was granted for it to be adduced.

Non-use: relevance of Nice Classification to interpretation of specification Multi-Access Ltd (‘MAL’) v Guanghzhou Wong Lo Kat Great Health Business Development Co Ltd* Mr David Stone; [2019] EWHC 3357 (Ch); 12 December 2019

Mr David Stone (sitting as a Deputy High Court Judge) dismissed MAL’s appeal from a decision of the hearing officer to revoke its two UK trade marks on grounds of non-use. Hilary Atherton reports.

Background MAL’s two UK trade mark registrations were for the following sign, one registered in class 5 for “Beverages for medicinal purposes; all included in class 5” and the other registered in class 32 for “Beverages; all included in class 32”:

Each of the registrations included the description “The transliteration of the Chinese characters appearing in the mark is “Wong Lo Kat” meaning “King Old Lucky”. The hearing officer found that the registrations had not been put to genuine use in the UK for the relevant goods and ordered that they be revoked from 3 July 1998 and 10 July 1998 (five years from their respective registration dates).

Appeal The Deputy Judge rejected each of MAL’s grounds of appeal, finding that the hearing officer: (i) had not erred in law by substituting an arbitrary period of less than five years in place of the correct five-year period, or by misdirecting himself to consider whether use of the marks stopped during the relevant period as opposed to whether or not use occurred during that period; (ii) had not erred in considering whether the evidence created an “overall picture” that the registrations had been put 46 CIPA JOURNAL

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to genuine use; (iii) had not failed to take proper account of the evidence; (iv) had not erred in finding that MAL had not shown use of the marks in relation to the goods for which they were registered; and (v) was not therefore wrong in his overall findings of no use. The Deputy Judge acknowledged that it was not necessary, in light of his findings on the other grounds of appeal, to deal with the ground of appeal at (iv) above (use in relation to the goods for which the mark was registered). However, he did so given that it had been argued and given the possibility of a further appeal. The hearing officer had concluded (obiter, given his other findings) that the specifications “beverages for medicinal purposes; all included in class 5” and “beverages; all included in class 32” did not cover herbal tea either in bag or instant form (which was what most of MAL’s evidence related to). He went on to state that, even if he was wrong on that point, the restrictions “all included in class 5” and “all included in class 32” meant that use in relation to herbal tea was irrelevant given that it was proper to class 30. The Deputy Judge found that the hearing officer did not err in reaching his conclusions in relation to tea bags, instant tea or tea extracts (dry goods). However, the Deputy Judge found that the hearing officer ought to have addressed canned (liquid) herbal tea in his analysis, even though it would not have changed his overall conclusions in relation to revocation. The Deputy Judge therefore went on to consider whether proof of genuine use of the mark on those goods would constitute use of the mark for which it was registered. Referring at length to the decision of Henry Carr J in Pathway IP Sarl v Easygroup Ltd [2018] EWHC 3608 (Ch) which found that the Nice Classification is relevant to interpretation of a trade mark specification, the Deputy Judge went on to apply that principle to the relevant specification. As there was no evidence to demonstrate the medicinal qualities of the canned herbal tea product, the Deputy Judge was not satisfied that the notional consumer of canned (liquid) herbal tea, whether at the filing date in 1992 or now, would consider it a “beverage for medicinal purposes” or a “dietetic substance adapted for medical use” which was the relevant part of the class 5 heading when the mark was applied for. Therefore, even if MAL has been able to prove genuine use of canned (liquid) herbal tea, it would not have been use to support the registration in class 5. In relation to the class 32 specification, the Deputy Judge was of the view that it was essential to look at the classification to resolve the ambiguity caused by the fact that beverages are registrable in multiple classes. As now, in 1992 tea was classified in class 30 and therefore canned (liquid) herbal beverages were not “beverages” within class 32. The Deputy Judge noted that the reference in the specification to “all included in class 32” further served to underline this finding in accordance with Altenic Ltd’s Trade Mark Application; Reliance Water Controls Ltd v Altenic Ltd [2001] EWCA Civ 1928. Therefore, even if MAL has been able to prove genuine use of canned (liquid) herbal tea, it would not have been use to support the registration in class 32. MAL’s appeal was dismissed. www.cipa.org.uk


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The importance of full and frank disclosure easyGroup Ltd v Empresa Aérea de Servicios y Facilitatión Logística Integral S.A. & ors* Nugee J; [2020] EWHC 40 (Ch); 14 January 2020

Was the website targeted at the UK? The Judge set aside an earlier order of Morgan J granting permission to serve proceedings out of the jurisdiction on the Colombian company, Easyfly. Although there were serious issues to be tried, there had been a failure by easyJet to give full and frank disclosure to Morgan J. Katharine Stephens reports.

Introduction The first defendant, was a Colombian company operating an airline providing domestic flights in Colombia. Although, as the judge pointed out, its full name was Empresa Aérea de Servicios y Facilitatión Logística Integral S.A. (‘Easyfly’), it traded under the name Easyfly, which, was almost, but not quite, an abbreviation of its full name. The second defendant was the founder and President of Easyfly. easyGroup complained of infringement of various of its trade marks and passing off and applied without notice to serve the first two defendants (both based in Colombia) out of the jurisdiction. Permission was granted by Morgan J in February 2018. easyGroup then applied to join the third defendant, a French entity trading as ATR Aircraft, which manufactured turboprop aircraft. The first two defendants applied to set aside the permission to serve out of the jurisdiction and ATR opposed the joinder

easyGroup’s complaints easyGroup made the following points concerning Easyfly’s use of “Easyfly”:

By CPR rule 6.36, a claim form can be served out of the jurisdiction with the permission of the court if one of the gateways set out in PD 6B apply. The first question was whether there was a serious issue to be tried. The basis of the claim was that both UK and EU marks were infringed. However, the judge noted that the fact that a website can be accessed anywhere in the world does not mean that, for trade mark purposes, the law regards it as being used everywhere in the world. It was necessary to consider whether the website was “targeted at” the UK or EU – easyGroup Ltd v Easy Fly Express Ltd [2018] EWHC 3155 (Ch). easyGroup submitted that the website was targeted at the UK and the EU, relying on the fact that Easyfly was not a Spanish word and it was likely that Easyfly had deliberately adopted it to take advantage of easyGroup’s reputation. Further, Easyfly was willing to serve international customers through its website. Easyfly’s defence was that its services were all provided in Colombia. It submitted that, whether one considered the website or the marketing e-mails or the tickets sent to the UK, no-one would see this as relevant to anything other than services in Colombia. That meant that there was no infringing use in the UK. Nugee J was not persuaded, finding that, at the very least, there was a serious issue to be tried in relation to the trade mark infringement claim, despite the fact that Easyfly’s website did not use a language or a currency other than that used in Colombia; it did not provide facilities for making reservations other than in Spanish; it did not use a top-level domain name other than that of Colombia; and it was not suggested that it mentioned an international clientele.

Other uses •

• •

Easyfly’s website, easyfly.com.co (which was in Spanish and recorded prices in Colombian pesos), allowed customers to buy tickets from the UK. The tickets had the Easyfly logo (see below) on them. Easyfly sent marketing emails to UK customers who provided their email addresses. They also included the Easyfly logo. The website itself, which was predominantly in the colours blue and orange, also included the logo. About 15 copies of a press release, in which ATR announced the deal to supply Easyfly with five aircraft, were made available in hard copy at ATR’s stand at the Farnborough Air Show 2018 for distribution to journalists. There was no evidence that any of them had been picked up. The branding of the new aircraft and the test flights made in France before their delivery.

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Having come to his conclusion on the website, Nugee J also found that there was a serious issue to be tried in relation to the sending of the electronic tickets and the direct marketing. In relation to the press release, he did not accept the submission that the reference to Easyfly was a purely descriptive statement of who they were and what they were doing and therefore its use could not affect the essential function of easyGroup’s marks. He distinguished Céline (C-17/06) on the facts. He also decided that the issue of branding the aircraft was potentially another form of advertising and that there was a serious issue to be tried as to whether Easyfly was responsible for it.

Full and frank disclosure There were a number of procedural points that Easyfly raised in support of their application to set aside the order of Morgan J granting permission to serve out of the jurisdiction. Of these, the most serious was the easyGroup’s failure to make full and MARCH 2020

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DECISIONS

frank disclosure to Morgan J when applying for the order. The solicitor’s supporting witness statement did not make clear that the flights offered by Easyfly were domestic flights in Colombia. Indeed, he stated that “the Defendants’ Services are offered for sale … to persons wishing to travel from London … to Colombia”. Furthermore, although a letter from Easyfly’s Colombian lawyers was exhibited, he failed to draw attention to their explicit denial of marketing directed at the UK and EU. As a consequence, Nugee J set aside Morgan J’s order.

The claim against ATR Since the judge had decided to set aside the order of Morgan J, there were no extant proceedings into which ATR could be joined. Nevertheless, the judge went on to consider the issues. The only acts relied upon against ATR were the issue of the press release and the branding of the aircraft. In relation to the latter, the UK court did not have jurisdiction as ATR was a French company and all the acts complained of had taken place in France. That left the issue of the press release. Although the court had jurisdiction, the use was de minimis and no threat had been made to repeat it. Therefore, had it been an issue, the judge would have refused to allow ATR to be joined into the action.

Lack of clarity and precision | Lack of intention to use Sky plc & ors v SkyKick UK Ltd & anr CJ; C-371/18; 29 January 2020

The CJEU ruled that Regulation 40/94 and Directive 89/104 do not mean that a CTM (now an EUTM) or national TM could be declared wholly and partially invalid because some of its goods and services lacked clarity or procession. Conversely, a TM application made without any intention to use the goods and services constitutes bad faith only if the applicant intended to undermine the interests of third parties or obtain rights for other purposes than fulfilling the essential function of a trade mark. Justin Bukspan reports.

Background SkyKick is a global provider of cloud management software for IT companies. Sky, the satellite TV and home broad brand and telephone provider, brought an action for trade mark infringement in the High Court on the basis of its (then) CTMs and a UK mark registered for the word SKY in inter alia class 9, all originally filed when Regulation 40/94 and Directive 89/104 were in force. The goods listed in class 9 included “computer software”. SkyKick filed a counterclaim for a declaration of invalidity of Sky’s CTMs on the basis that they had been registered for goods and services that lacked sufficiently clarify and precision. 48 CIPA JOURNAL

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It was also argued that Sky’s marks had been filed without the intention to use them for all the goods and services covered, and therefore that they ought to be invalidated for bad faith. The High Court referred various questions to the CJEU. Can a trade mark be invalidated if its specification lacks clarity and precision? If yes, is a term like “computer software” too general to be regarded as sufficiently clear and precised? The Court noted that the list of grounds for invalidity in article 3 of the Directive and articles 7(1) and 51(1) of the Regulation were exhaustive. Thus, lack of clarity and precision of goods or services could not be deemed to be a ground for invalidity, totally or partially, of a CTM or national TM. The argument for invalidity was based on the decision in IP Translator (C-307/10). However, that judgment could not be interpreted as meaning that the Court intended to recognise additional grounds of invalidity. It only provided clarifications on the requirement for the registration of new EU trade mark applications, not trade marks registered at the time of that decision (which included Sky’s marks). The Court considered and rejected the argument that a lack of clarity and precision in the specification could be captured by the Sieckmann (C273/00) requirements relating to the graphical representation of a mark. The Court held that those requirements were to enable operators to identify the signs of which a trade mark consisted, not the goods and services. Finally, the Court added that a requirement for clarity and precision of the goods or services could not be dictated by public policy within the meaning of article 7(1) of the Regulation and article 3(1)(f) of the Directive. Those provisions did not relate to characteristics concerning the trade mark application itself regardless of the characteristics of the sign for which the registration was sought. In this respect, the Court differed from the Advocate General who found that, for example, registration of “computer software” was unjustified and contrary to the public interest because it conferred on the proprietor a monopoly of immense breadth which could not be justified by any legitimate commercial interest. Can it constitute bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods and services? If so, is the trade mark application deemed wholly or partially invalid? The Court pointed out that neither article 51 (1)(b) of the Regulation nor article 3(2)(b) of the Directive, provide a definition of what constitutes bad faith. Applying its decision in Koton Mağazacılık Tekstil ve Ticaret v EUIPO (C-104/18), the Court emphasised that EU rules on trade marks aimed to prevent the distortion of competition across the EU and thus enabled consumers to distinguish clearly the origin of goods and services of one undertaking from those of its competitors. Therefore, there would be a finding of bad faith where a proprietor had filed an application, not for the purpose of engaging in fair competition, but instead: www.cipa.org.uk


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• •

either intending to undermine, in a manner inconsistent with honest practices, the interest of third parties; or intending to obtain, even without targeting any specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark (in particular the origin function).

However, bad faith could only be established if there were “objective, relevant and consistent indicia”. The bad faith of an applicant could not be presumed because the latter had, at the time of making the application, no economic activity related to the goods and services referred to in the application. If such bad faith was established in relation to some of the goods and services in the application, then the mark would only be held partially invalid in respect of those goods and services. Does Directive 89/104 preclude the inclusion at national level of a requirement that applicants declare that they use or have a bona fide intention to use the mark in relation to the goods or services? The Court pointed out that the Directive prevented Member States from adding grounds for invalidity or refusal to the list provided, but it gave them freedom in relation to the registration, revocation and invalidity procedure. The requirement under section 32(3) of the Trade Marks Act 1994 that applicants declare that they either use or have a bona fide intention to use a trade mark in UK was a matter of procedure; it did not add a ground that was not already listed in the Directive. Therefore, section 32(3) was not incompatible with the Directive.

Exhaustion; selling component parts Sebastian Brealey & Anr v Nomination Di Antonio e Paolo Gensini SNC & Anr* LJJ Patten, Floyd and Arnold; [2020] EWCA Civ 103; 5 February 2020

The Court of Appeal upheld the judge’s finding that the defendants (appellants) had infringed Nomination’s trade marks. Nomination had legitimate reasons to oppose further sales of its genuine products because the packaging in which those products were re-sold by the appellants was liable to damage the reputation of its trade marks. The finding of passing off was also upheld. Katharine Stephens reports.

Nomination was an Italian partnership which dealt in charm bracelets. One of its products was a ‘composable bracelet’ consisting of a number of individual links which could be detached from each other and rearranged by the wearer. Some of these links, referred to by Nomination as ‘base links’, were stainless steel links bearing Nomination’s mark. The appellants, trading as JSC Jewellery (‘JSC’), purchased Volume 49, number 3

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Nomination base bracelets disassembled them to separate out the base links. JSC sold single Nomination base links bundled together with a single JSC link. The bundles of two links were sold by JSC on ebay. At first instance [2019] EWHC 599 (IPEC), Judge Hacon held that JSC’s sales of the bundled links infringed Nomination’s EU marks for NOMINATION registered in class 14 for, amongst other things, jewellery. He found that, whilst Nomination sold its products in elegant packaging which gave the impression that the goods were of a high quality, JSC sold Nomination-branded base links either in blister packets or in small transparent plastic bags. This was likely to damage the reputation of Nomination’s mark. Nomination therefore had legitimate reasons to oppose such sales. He also found that, the advertising of the bundles in a manner that amounted to the use of the NOMINATION trade mark in relation to the JSC links in the bundles, constituted infringement of the marks and passing off. Arnold LJ, giving judgment for the Court, dismissed the appeal. JSC claimed that the judge failed to take into account evidence showing that the Nomination bracelets were not always sold in the luxury packaging provided by Nomination. There was evidence that the judge had not referred to in his judgment that JSC’s solicitor had purchased a Nomination base bracelet from Amazon SARL, which had arrived in a clear plastic sleeve inside a clear grip-seal plastic bag and without any luxury packaging. Arnold LJ found that this did not undermine Judge Hacon’s judgment. It post-dated the relevant period, did not reveal whether Amazon’s source was Nomination, an authorised retailer or an unauthorised retailer, said nothing about the frequency of such sales and did not negate the fact that many of Nomination’s customers bought their bracelets from bricks-and-mortar retailers, which would have been supplied in luxury packaging. JSC also criticized the judge’s finding that, where customers had never purchased or received a Nomination bracelet, Nomination would be deprived of the opportunity of conveying its desired luxury image to them through the sale of a base link if those links were sold in plastic bags and in that sense the reputation of the trade marks had been damaged. Whilst Arnold LJ saw some force in this submission, the Court of Appeal was not justified in substituting its own evaluation of the issue. The judge had heard oral evidence from three witnesses and had the opportunity of examining some physical exhibits. The Court of Appeal was not afforded the same opportunity, nor was it provided with transcripts of the oral evidence. As argued at first instance, the question of whether JSC’s advertising of the bundles of mixed links amounted to trade mark infringement stood or fell with the passing off case. JSC submitted that the judge had been wrong to find that there had been a misrepresentation and therefore passing off. This being a question of fact, JSC faced an uphill challenge, which they did not overcome. The judge had not been wrong to place weight on a letter and an email evidencing actual confusion even though they had been prompted by Nomination. JSC had not sought to apply to cross-examine the authors, which they could have done had they reason to believe that the statements were untrue. MARCH 2020

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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 12 March 2020 Webinar

PROTECTING PATENTS IN SOUTHEAST ASIA

Followed by a great networking opportunity. See the full programme online. CPD: 3.5 Price: £238.80 | £159.60 members

Time: 12.30–13.30 As the dynamic economies of Southeast Asia continue to build manufacturing capacity in industries ranging from pharmaceuticals to consumer electronics, patent infringement has emerged as a growing problem in the region. What options do foreign patent holders have to fight infringement in these important markets? In this hourlong webinar, IP experts from renowned Southeast Asian firm Tilleke & Gibbins will outline the available enforcement routes (civil, criminal, and/or administrative) and border control procedures in Thailand, Indonesia, and Vietnam, and share best practices gained from years in the field. Speakers: Loc Xuan Le and Wongrat Ratanaprayul (Tilleke & Gibbins) CPD: 1; Prices: £73.20 | £49.20 members 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) • Effective working relationships – private practice and in-house attorneys Sally Curran (AstraZeneca) 50 CIPA JOURNAL

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broadening by omitting features. Based on case law examples, the following questions will be discussed:

Thursday 19 March 2020 Webinar

EPO OPPOSITIONS & USPTO PTAB PROCEEDINGS Time: 12.30–13.30 Proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB) are often likened to oppositions before the EPO. However, there are many differences between the two types of proceedings and practitioners must adopt different strategies in order to succeed. Maeve O’Flynn and Josh Goldberg, Partners from Finnegan’s London and Washington DC offices, will compare the proceedings, and will address potential synergies and conflicts when proceedings are pending or anticipated in both jurisdictions. Speakers: Maeve O’Flynn and Joshua Goldberg (Finnegan LLP) CPD: 1; Prices: £73.20 | £49.20 members Friday 20 March 2020 Webinar

ADDED SUBJECT-MATTER: DOES THE EPO APPLY A STRICTER APPROACH THAN OTHER OFFICES? Time: 12.30–13.30 The EPO has a reputation for being stricter than other patent offices when assessing added subject-matter according to article 123(2) EPC. But is this really the case? In this webinar, the added subject-matter approach of the EPO will be compared to other jurisdictions like the US for specific topics such as intermediate generalisations and claim

• What are the differences in examining added subject-matter between the EPO and other patent offices? • What are the reasons for these differences / What is the legal background? • Is the EPO actually more restrictive than other offices in examining added subject-matter? Speaker: Jens Horstmannshoff (EPO) CPD: 1; Prices: £73.20 | £49.20 members Tuesday 24 March 2020 Webinar

POZZOLI & ITS APPLICATION IN ENGLISH HIGH COURT PROCEEDINGS Time: 12.30–13.30 This webinar will cover the basics on how to apply the Pozzoli test; comparing Pozzoli and “problem solution” and electing independent validity in English High Court litigation. There will also be worked examples to provide a greater understanding in this webinar. Speaker: Chris Hall (11 South Square) Chair: Gareth Morgan (CMS Cameron McKenna Nabarro Olswang LLP) CPD: 1; Prices: £73.20 | £49.20 members

The Patent Agents Golfing Society is holding its first meeting of 2020 on Tuesday 31 March at Swinley Forest Golf Club, Ascot. To find out more information and to book onto the event, please email kereiss@cipa.org.uk

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application to computer-implemented inventions at the IPO. The webinar will cover in detail each step of the Aerotel approach and the assessment of technical contribution using the AT& T signposts. Thursday 26 March 2020 Webinar

Speaker: Kalim Yasseen (IPO) CPD: 1; Prices: £73.20 | £49.20 members

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 Monday 6 April 2020 Webinar

FREEDOM TO OPERATE Time: 12.30–13.30 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 9 April 2020 Webinar

EXCLUDED MATTER & PROGRAM INVENTIONS Time: 12.30–13.30 This webinar will be an introduction to the Aerotel/ Macrossan approach and its Volume 49, number 3

Speaker: Geraint James (Patent Seekers) CPD: 1; Prices: £73.20 | £49.20 members Wednesday 13 May 2020 Webinar

TOP TIPS FOR STUDYING UNDER PRESSURE 2020 Time: 12.30–13.30

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.

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 Thursday 14 May 2020 Regional Meeting

MIDLANDS MEETING Time: from 12.30 Location: Clayton Hotel, Albert Street, Birmingham B5 5JE Come and join CIPA at the Midlands Regional Meeting 2020. There will be a range of speakers giving talks on different aspects of IP as well as a great networking opportunity after the event. See the full programme online. CPD: 3.5 Price: £238.80 | £159.60 members

CPD: 7 Prices: £192 members only Thursday 7 May 2020 Webinar

COMPETITIVE INTELLIGENCE & PATENT MAPPING – STRATEGY, REPORTS & TOOLS Time: 12.30–13.30 A live demonstration on how to perform a patent mapping and competitive intelligence report using the tools available in patent search databases (including PatWorld and Orbit Questel), while also exploring the added value from a patent search specialist.

Thursday 11 June 2020 Regional Meeting

WEST OF ENGLAND MEETING Time: from 12.30 Location: Marriot Royal Hotel, College Green, Bristol BS1 5TA Come and join CIPA at the West of England Regional Meeting 2020. There will be a range of speakers giving talks on different aspects of IP as well as a great networking opportunity after the event. See the full programme online. CPD: 3.5 Price: £238.80 | £159.60 members MARCH 2020

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PERSONAL

IP INCLUSIVE

IP Inclusive update By Andrea Brewster OBE

Our 2020 priorities We had a fabulous annual meeting and diversity conference on 21 January – thank you to everyone who attended and contributed ideas to our plans for 2020. Those plans should soon be on our website; provisionally they include the following priorities for the year: •

Extending our reach: persuading more people of the importance of diversity and inclusion (D&I) to the IP professions, targeting in particular D&I opponents and sceptics; people from outside the “minority” groups, who believe that D&I are irrelevant or that IP Inclusive is not “for them”; and senior people in decision-making roles Through IP Ability, encouraging and supporting disability confidence in the IP professions Understanding more about, and starting to address, the current low levels of ethnic diversity in the IP professions Developing the Careers in Ideas resources, and using them to continue raising awareness of, and improving access to, IP-related professions, focusing on currently underrepresented groups Encouraging and supporting greater involvement from Charter signatories, and helping them to fulfil the Charter commitments

Much of the work on extending our reach will focus on encouraging, informing and supporting diversity “allies”, emphasising the importance of 52 CIPA JOURNAL

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IP Inclusive resources There are loads of free D&I resources on the IP Inclusive website – see https://ipinclusive.org.uk/resources/ – for example: •

Recordings of our webinars, and events follow-up such as speaker slides and notes

Presentations and toolkits, e.g. on unconscious bias and the business case for diversity

Guidance notes, for instance on recruiting for social mobility

Template documents such as EDI and mental health at work policies

The IP Inclusive logos (for Charter signatories to use in their communications) and poster

Information about the “Steps to Inclusion” D&I review, to help signatories fulfil their Charter commitments

We also have dedicated website pages on: •

Mental Health and Wellbeing (a collaboration with the charity Jonathan's Voice, packed with information, guidance and links to useful resources)

Diversity data for the IP sector, including the results of our 2019 benchmarking survey

Careers in Ideas, with links to a range of outreach materials including a work experience event pack

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PERSONAL

“intersectionality” between different diversity strands. Our North of England and Midlands networks are working with our five communities on an event about this, which will take place in several locations on 25 March – more details on our website Events page. We’re also hoping to collate and promote more about the business case for D&I, and to encourage greater involvement from business support professionals (for example in HR, training, business development or practice management), who we believe are well positioned to persuade their senior colleagues on board. We’ll be publishing more soon about specific activities and events around these key themes. Please get in touch if you’re particularly interested in any of them and would like to get involved.

January & February projects Quite apart from the January conference, the first couple of months of this year have been really busy for IP Inclusive. There have been events by IP Ability,

IP Inclusive is open to all IP professionals and those who work with them. For more information, visit our website, www.ipinclusive.org.uk; follow us on Twitter (@IPInclusive, @bameipinclusive, @IP_Ability, @ip_out, @WomeninIPI, @CareersInIdeas) or join one of our LinkedIn® groups. And if you’re interested in getting involved, please contact contactipinclusive@gmail.com To keep abreast of everything we’re doing, join our mailing list: there’s a “Stay in touch” form on the website.

IP Futures, IP Out, Women in IP and our Scottish, South West and Midlands networks. We also broadcast two webinars as joint projects with CIPA, one on the basics about unconscious bias and one on inclusivity and the menopause. February was also LGBT+ History Month. IP Out committee member Conor Wilman (Dehns) treated us to a series of fantastically well-researched articles about

the history of LGBT+ equality campaigns. And in mid-February we filed submissions in response to CIPA’s Mercer Review call for evidence, commenting on the potential impact of patent attorney training systems on diversity and inclusivity in, and access to, the patent profession. There’s always so much to do – please join us and help!

Non-Institute events See full details at www.cipa.org.uk/whats-on/non-institute-events. To list an event please email sales@cipa.org.uk Question the Trade Mark Judges, London Provider: UCL IBIL / MARQUES Date: 11 March 2020

Drafting "legal" clauses in commercial contracts, London Provider: Anderson Law / UCL IBIL Date: 9 June 2020

Beyond trade marks: a global perspective, London Provider: CITMA Date: 18-20 March 2020

Contract Drafting Skills, London Provider: Anderson Law / UCL IBIL Date: 2 June 2020

IP Transactions: Law and Practice, London Provider: Anderson Law / UCL IBIL Date: 20-24 April 2020

Revision courses for the PEB’s Foundation Certificate papers (FC1, FC2, FC3, FC4, FC5), Milton Keynes Provider: JDD Date: 19 June – 11 July (see page 60)

Basic Litigation Skills Course, London Provider: CPD Training Date: 11-15 May 2020 (see page 60) Drafting & Negotiating IP Terms in Research Contracts, London Provider: Anderson Law / UCL IBIL Date: 12 May 2020

Revision courses for the PEB’s Final Diploma papers (FD1, FD2, FD4), Milton Keynes Provider: JDD Date: 30 June – 18 July (see page 60)

IP Licensing: An Advanced-Level Drafting Workshop, London Provider: Anderson Law / UCL IBIL Date: 19 May 2020

Revision courses for the PEB’s Final Diploma papers (FD1, FD2, FD3, FD4), Milton Keynes Provider: JDD Date: 24-28 August (see page 60)

Introduction to Contracts, London Provider: Anderson Law / UCL IBIL Date: 26 May 2020

Basic Litigation Skills Course, London (see page 60) Provider: CPD Training Date: 21-25 September 2020

Introduction to FD4 one-day course, Milton Keynes Provider: JDD Date: 28 May 2020 (see page 60)

Basic Litigation Skills Course, London (see page 60) Provider: CPD Training Date: 2-6 November 2020

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The Yellow Sheet

The Yellow Sheet March 2020

Informals Honorary Secretary

Carolyn Palmer – Honorary Secretary Hi everyone, we are now at the end of March and EQEs are over – phew! I hope all those who sat the exams are reasonably happy with how they went, and if you are someone who is feeling less confident, do not worry, you are not alone. My advice is: give yourself a wellearned break! Before the EQEs, I asked Julia Florence (CIPA, Immediate Past President), on behalf of the Informals, to write a guest article for the Yellow Sheet in the format of a letter to her younger self. Our hope was that this letter would provide some useful tips for us trainees! Julia’s letter, which is a great read, is published on page 57, and I would encourage all trainees to take a look. One aspect of Julia’s letter that I can definitely relate to is being bamboozled by the patent jargon used by my colleagues when I first entered the profession. I remember thinking, how will I ever get to grips with the language of IP. But it isn’t long 54 CIPA JOURNAL

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until the words become part of your everyday vocab. So, if you are a trainee who is relatively new to the profession, do not worry, everything will become clearer as time moves on. Moving on to other matters, as most of you will probably already be aware, CIPA is hosting the first ever Student Conference on 30 April 2020. This looks set to be a great event and I would encourage all trainees to book a place. I think that’s all for now! See you next month.

Editorial

Jonathan Foster – Yellow Sheet Editor Hello again! What a Yellow Sheet we have this month. I hope you enjoy the many updates from the Informals Committee – it’s good to see so much regional activity going on. I’d like to thank Julia Florence for the great article she has written this month – even as a trainee, I’m sure you could

easily think of a huge list of things you wish you could tell yourself on day one. If you want to put these thoughts into action, the new Buddy System is the perfect way to chat to new trainees, and impart some of that wisdom (what a smooth link). Just to reiterate what was said last month, if you would like to be a buddy or if you would like more information about the scheme, please contact either Sara Jane (SJPaines@marks-clerk.com) or Khushbu Solanki (k.solanki@csy-ip.com); or visit the Yellow Sheet Blog. Both Carolyn and Julia mentioned the complex language of patents, I for one found this an extremely tough learning curve; which is why in the coming months you should expect an article that has slowly morphed from “The Wonderful World of Patent Language” to the new (very catchy) working title of “The Ridiculous Words Patent Attorneys Use in Drafts that are Completely Unnecessary but Actually, in the End, Might be Useful”. Finally, last month was LGBT+ History Month. IP Inclusive, in conjunction with IP Out, wrote a series of articles highlighting the challenges that people in the LGBT+ community have faced in the (what should be unnecessary) quest for acceptance and equality. If you get chance, head over to the IP Inclusive website to give them a read – it’s well worth it. www.cipa.org.uk


The Yellow Sheet

Introductions and Updates

Waseem Aldeek – Tutorial and Mentoring Coordinator Hi everyone, have you sat FD1 (P2) or FD4 (P6) twice or more times without success? Do you intend to sit the examination again this October? The Informals Committee is working with CIPA to offer mentoring if you have repeatedly sat one of these papers, to try to boost your self-confidence and help you pass the exam. If you are in this situation and you would like help preparing for the 2020 exam, please email me at w.aldeek@csy-ip.com and tell me which exam you would like help with by 1 May 2020. The Informals Committee will then work with CIPA to find you a mentor. Please note that you must already have sat the same exam twice or more times without success to be eligible for mentoring. Your information will be treated in confidence and will be known only to me and your mentor. You will not be identified to your employer without your explicit consent. If you have any questions, please do not hesitate to get in touch.

Joel Briscoe – Blog, Website and Social Media Editor Hey Everyone, hopefully you’ve been on the blog/website recently (yellowsheet. wordpress.com) and seen some of the weird and wacky patents, the great guest post from Jonathan’s Voice and the Mercer Volume 49 number 3

Review call to action. But, did you notice that there are new pages on the website? There’s a page with info regarding the buddy scheme and mentoring too. Regarding the latter, I am writing this in February so I don’t know the results of my FD1 exam I sat last October, but by the time you’re reading this, I will and so will you if you sat any. The Mentoring page that has been established is for those who have failed FD1 and/or FD4 two or more times, as Waseem has mentioned, so more information is available there. Don’t forget to keep checking the tutorials page too now that the EQEs are out the way, you’ll start to see more tutorials regarding the PEB exams blogged and posted on this page. Don’t forget to follow the blog by filling in your email at the bottom of the page!

Regional Secretaries

Amelia Barton – Yorkshire and Humber Hi all. Good luck to those of you sitting EQE exams this month! The next Yorkshire social will be on 23 April to belatedly celebrate the end of exams. We will be going for some food and drinks in York. If you’re not on the mailing list and would like some more information about the event drop me an email – amelia.barton@appleyardlees.com.

Elliot Stephens – North East The first north east social of the year went down a storm at Lane7 in Newcastle. We had our highest turnout, with five trainees from three firms, enjoying some drinks and ping-

pong. That’s quite a turnout considering that there were only two trainees in the whole region when I first started out! It was the first time many of us met one another too – so quite a successful night! The next social will be late-April – some post-EQE tapas! More details to follow nearer the time. In the meantime, good luck to all those sitting EQEs!

Jayne Parle – Oxford Hi all, Thank you to everyone who came along to our January drinks here in Oxford – it was really great to have attorneys from four different firms attending, and to have a chance to celebrate the end of the Queen Mary course for some of our newer members. Our next get-together will be on Wednesday 25 March (location TBC, look out for my email), so please save the date! In the meantime, good luck to everyone who is preparing for their EQEs. As always, if anyone would like to be added to the Informals mailing list for the Oxford region, please let me know.

Greg Aroutiunian – London Hi everyone, thanks so much to those of you that made it to flight club last month for our first Informals event. I hope you all had as much fun as I did. I’m planning on putting on another event after the EQEs, so stay tuned for that. Also a thank you to all of you that have agreed to be put onto the London Informals mailing list – I will get this up and running ahead of our next event. MARCH 2020

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The Yellow Sheet

8:30 pm. If you are not already on the South Coast mailing list, drop me a line at jsf@dyoung.com so that I can update you in the unlikely event that our plans change nearer to the time. I look forward to seeing you then!

Mark Kelly – Birmingham Thanks to everybody who attended the Birmingham social event in February, at Head of Steam. It was a great evening to kick-off socials for the year. We will have our next event in April, so please look out for emails about this, and please get in touch if you need to be added to the mailing list. STOP PRESS: At the time of printing, the EPO announced that the EQEs have been cancelled, with no further information on whether the exams would be re-arranged. Obviously, this is extremely frustrating for those due to sit these Exams, but the EPO had to make the decision based on the safety of all involved. There will be more to follow in next edition of the Yellow Sheet. For more up to date information, make sure you keep an eye on the Yellow Sheet Blog.

Helen Bartlett – East Midlands The East Midlands group has gone a bit quiet recently, owing mainly to exams. I’ll send out emails to start organising our next event in mid-March, so keep an eye out for that. Otherwise, let me know if you have any event suggestions – we’ll aim to meet in April.!

Jess Steven-Fountain – South Coast Join us for post-exams celebrations / commiserations on Friday 27 March 2020!. We’ll be enjoying a couple of drinks at The Vestry, Southampton from around

Cassie Smith – North West I hope revision hasn’t been too painful! I am writing this from the past so we don’t know the exact date yet, but we’ll be planning our next Informals social sufficiently far after the European exams to account for taking a week long nap at least, probably the week commencing 30 March. Keep an eye out for emails from me and for news on the blog. On that note if you’re a recent starter in and around the North West, drop me an email at csmith@hgf.com and I will add you to the Manchester social mailing list.

Informals Committee The Informals Committee for 2019–2020. If you have any questions and would like to get in contact with your local Informals secretary, then all the contact details are below:

Honorary Secretary, Carolyn Palmer, cipainformalshonsec@gmail.com

IPO Visit Coordinator, Suzanne Gregson, suzanne.gregson@wynne-jones.com

North East, Elliot Stephens, estephens@hgf.com

Treasurer, Khushbu Solanki, k.solanki@csy-ip.com

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

North West, Cassie Smith, csmith@hgf.com

Yellow Sheet Editor, Jonathan Foster, Jonathan.Foster@appleyardlees.com Blog, Website & Social Media Editor, Joel David Briscoe, informalsyellowsheet@gmail.com

Oxford, Jayne Parle, Immediate Past Hon. Sec, Matthew Veale, jparle@marks-cleark.com matthew.veale@wynne-jones.com South Coast, Jess Steven-Fountain, JSF@dyoung.com REGIONAL SECRETARIES: Birmingham, Mark Kelly, mkelly@hgf.com

South West & Wales, Ozgur Aydin, Ozgur.Aydin@wynne-jones.com

Foundation Lecture Organiser, East Midlands, Helen Bartlett, Jack Wheating, JWheating@marks-clerk.com Helen.Bartlett@potterclarkson.com

Sheffield, Nick Jenkins, njenkins@hgf.com

Tutorial and Mentoring Coordinator, Waseem Aldeek, W.Aldeek@csy-ip.com

Yorkshire and Humber, Amelia Barton, amelia.barton@appleyardlees.com

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London, Gregory Aroutiunian, GAroutiunian@jakemp.com

www.cipa.org.uk


The Yellow Sheet

Letter to My Younger Self Julia Florence – CIPA Immediate Past President Dear Julia, It’s 1978 and you are about to take your first steps into the world of patents. You’re attracted by the intriguing mix of science and law but you will find out that the commercial dimension is just as important and interesting. Working in an in-house department with no qualified patent attorneys means that you won’t be able to study for either the UK or European exams, or be a member of CIPA, so at times you will feel rather isolated from your peers in the profession. But on the plus side you will be involved with some excellent science and you’ll learn a great deal from your experienced colleagues and the external patent firms, which work with your department. It won’t all be plain sailing and at times you will wonder whether this is the right path for you. At first you’ll be bamboozled by the patent jargon so confidently used by your colleagues – ‘whole contents’, ‘pith and marrow’, and even worse ‘mutatis mutandis’. You will hesitate to ask questions for fear of looking stupid – and it will be quite a few years before friendly Mr Google comes on the scene. So be brave and ask those questions – not just about how to draft claims or respond to an examiner, but ‘why am I doing this piece of work?’ ‘what will it achieve?’ and ‘how will it help the business’? Eventually you will start to see the bigger picture and become more confident. You will decide that it’s time to get qualified and move to another in-house department where this is possible. You will wonder if you are too old (at 31!) to take more exams, but relax, you have plenty of years ahead of you. And the experience you have gained over the past eight years will stand you in good stead in those exams. In a few years’ time you’ll be qualified, still working in-house, and with two young sons. You are much more confident now, at least when working within your comfort zone. But you are not

Volume 49 number 3

confident about stretching your boundaries – you tell yourself that you’ll never be able to work in private practice, you don’t have the skills to conduct oral proceedings at the EPO, and could never dream of standing for CIPA Council. Looking back, I would urge you not to limit yourself – never say never! All these things will happen, and you will learn, grow and enjoy them. The sooner you start to live outside your comfort zone, the more comfortable it gets. You will face some unexpected changes in your career. The arrival of a third son will encourage you to work part-time – not that common in the 1990s. That is what will lead you to leave the in-house world and move to a private practice firm – which will come as a huge surprise to you, but you will adapt, learn new skills and meet some great people. Finally, you will move back in-house, again for family reasons. You’re not so young now! I can see that you have decided to balance work and family life and not to seek too much in the way of promotion and additional responsibilities, at least while your sons are at school. You worry whether you are making the right life decisions, but I can tell you that it works out fine and that you’ll be happy with your choice – everyone has to find their own balance. There will be time for a late surge once the boys are older and more independent, and then you will have time to get back to CIPA and – surprise, surprise – become CIPA President! You never know what the future has in store, but a career in IP can take you in many different directions, and there is always something new to learn! Enjoy it!

Postscript After writing this letter, I learnt that the indomitable Vida Voles has died. Vida was the manager who gave me my first position in the Glaxo Patent Department, and I owe her a huge debt of gratitude for taking a chance on me.

MARCH 2020

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PERSONAL

in2scienceUK

Update on in2scienceUK IP Scholars Programme and BBC Radio 4 Appeal

in2scienceUK IP Scholars Programme Update in2scienceUK is proud to announce its partnership with Intellectual Property Specialist HGF. HGF will support five young people from low-income backgrounds through the in2scienceUK work-placement programme. These young people will gain the work experience, skills and guidance they need to access further education and careers in STEM. HGF will also provide a workshop to the young people on the in2scienceUK programme to give them an insight into careers within intellectual property and motivate them to reach their potential. HGF is the first organisation specialising in IP to support the in2scinceUK programme and we are extremely excited to be collaborating with them to introduce young people to fulfilling careers with this sector. Every year in2scienceUK receives thousands of applications from young people wanting to gain highquality STEM work experience. It is thanks to organisations such as HGF that in2scienceUK can support more young people with opportunities to benefit from outstanding technical experience, training and advice. Together we can support diversity and inclusion within the STEM and IP sector. If you would like to find out more please contact luke@in2scienceUK or visit the New & Features page on the IP Inclusive website to read our IP Scholars proposal.

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in2scienceUK will feature in a BBC Radio 4 Appeal with Steph McGovern

The in2scienceUK BBC Radio 4 Appeal On 29 March, in2scienceUK will feature in a BBC Radio 4 Appeal in which Steph McGovern will be the celebrity broadcaster. The appeal will inform listeners on the great work being undertaken by in2scienceUK and how the British public can support this worthy cause. in2scienceUK is extremely excited to be launching this appeal with Steph who is equally passionate about supporting diversity and inclusion in STEM. Steph was awarded Young Engineer of Britain at the age of 19 and studied Science Communication and Policy at UCL. Steph has always held a keen interest in science and is a keen advocate of programmes that gives young people the essential experience they need to fulfil their potential. in2scienceUK is proud to be working with such a kind and generous celebrity broadcaster and we look forward to telling our story together. With your support in the BBC Radio 4 Appeal, we will be able to improve the lives of more talented young people from low-income backgrounds. The in2scienceUK Radio 4 Appeal broadcast will take place on Sunday 29 March at 7:55, 21:25 and again on

Thursday 2 April at 15:25. The appeal will also be available on the BBC Radio 4 website. During the appeal, members of the public will be able to donate to support our mission and ensure more young people from low-income backgrounds are able to take part in our award-winning in2scienceUK workplacement programme and reach their potential in STEM. You can donate to the in2scienceUK BBC Radio 4 appeal from 29 March onwards online through the BBC Radio 4 Appeal website or you can write a cheque to in2scienceUK and send to Freepost BBC Radio 4 Appeal. Please mark the back of the envelope, in2scienceUK. Every pound raised by the appeal will be used to support more young people through the in2scienceUK workplacement programme. Luke McKelvey, Development Officer, in2scienceUK. See more details at www.in2scienceuk.org; follow the #getin2science on Twitter

Brand new PR videos coming this spring CIPA has been working with Go Vocal Video on three brand new PR case study videos, set to launch this coming spring. Subscribe to CIPA’s YouTube channel to ensure you do not miss them.

www.cipa.org.uk


We offer a fresh approach to your career Looking for a unique role? Talk to us

Lead Attorney : North East CEF130235 A rare opportunity has arisen within this globally renowned practice for a commercially pragmatic and strategically focused patent attorney. With plenty of existing work, there is no need for a following just an impressive resource to support your natural ambition to keep developing business. Electronics Attorney : Cork CEF130179 Due to expansion a fantastic role has arisen for a formidable PQ or Qualified Electronics Attorney within a leading global IP practice at the forefront of innovation. You will enjoy complete connectivity to colleagues across all Irish offices and access full collaboration across the business. Electronics Attorney (PQ+) : London CEH129265 Joining the close knit team of expert Attorneys, you will be immersed in a caseload of Patent prosecution, strategic matters, portfolio management, litigation, licensing and more. Those with commercial acumen, ready to take on a challenging new role, flexible working and highly competitive remuneration on offer. Part-time Patent Administrator : North West CEH130317 Renowned academic institution seek an IP Paralegal on a part time basis to join their innovative and creative hub. You will enjoy a broad role encompassing all aspects of the IP life cycle, liaising with the wider Patent team and wider business. Flexible working, generous remuneration and bonus on offer. Patent Secretary : North West TJB129982 Highly regarded global IP firm due to expansion require a Patent Secretary to join their friendly team. Preferably CIPA qualified, and with Inprotech knowledge, you will provide full secretarial support to Fee earners across the Engineering team. Superb flexibility and remuneration package await.

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THE PINKS

COURSES

REVISION COURSES FOR THE PEB 2020 & EQE 2021 EXAMS May-August and November-December 2020 We are holding residential revision courses between May and August 2020 for the 2020 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations and in late November and early December 2020 for the 2021 European Qualifying Examination (EQE). Our main suite of FC and FD courses will be held between 19 June and 18 July, with a further suite of FD courses between 24-28 August. We also have an Introduction to FD4 course on 28 May 2020. The courses are in Milton Keynes and include a residential element, but if accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

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Partners, Designates and Senior Associates We’re adept at helping people at a senior level move firms. It could be the last move of their career. It might be that they feel their efforts are not being deservedly rewarded by advancement. We guide people through life changing decisions. We have active Partner vacancies across the country for patent attorneys in chemistry and electronics/physics (but if you have another technical background, get in touch too!). We can talk through restrictive covenants and contract issues, financial/tax implications, managing the transition of a client following and remuneration and compensation based on contribution upon joining. We don’t only recruit Partners and Senior Associates, to see the full range of our active vacancies please see: www.fellowsandassociates.com/jobs

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THE PINKS

64 CIPA JOURNAL

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SUPPORT

www.cipa.org.uk


Your partners in Patent recruitment

G2 Legal is one of the UK’s largest privately owned legal recruitment firms. Our dedicated Patent & Trade Mark Division was formed in 2013. We are proud to have assisted Attorneys, from trainees through to partners, achieve the next step in their careers

Electronics – Salaried Partner

Biotech - Part Qualified

Electronics - Patent Attorney

London

London

Munich

Ref: 118669

Ref: 127393

Ref: 464543

An exciting opportunity is available to join this

Suited to a part/newly qualified Patent Attorney

The team in Munich sits within a small growing

London firm as a salaried Partner, designed to

in biotech & life sciences. The firm has lots of

practice with the support of a wider world-renowned

develop to equity within three years. The firm is well

interesting work which consists of acting for a

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established and has a strong reputation within the

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industry for the quality of its work within electronics.

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on EPO oppositions and appeals. The firm has a

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track record for supporting part qualified attorneys

clients. You will be encouraged to build and develop

and strategic objectives.

through to qualification.

your own client relationships.

Patent Formalities Assistant

IP - Associate Solicitor

Patent - Paralegal

London

London

London

Ref: 589094

Ref: 520423

Ref: 426046

My client is a leading international firm seeking a

My client is a leading international firm that is

A field leading forward-thinking firm, and one of

Patent Formalities Assistant for an 8-month FTC

undergoing continued growth and is now looking

the fastest growing IP practices in the UK, that has

with an immediate start. It is essential that the

to develop their legal team with the position of an

expanded internationally via the opening of offices

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in the US and Europe, is now looking to develop

in European Grants. A CIPA qualification would be

opportunity to work with the firm’s prestigious client

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base in both life science and technology. The cases

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communication skills.

PQE. A STEM degree would be advantageous.

with Inprotech in an IP environment is highly desirable.

IP (Patent) - NQ Solicitor

Biotech - Part Qualified

High-Tech Patent Attorney

London

York

Eindhoven

Ref: 422735

Ref: 127393

Ref: 464835

My client is a tier 1 law firm that is looking to develop

This client is seeking a part/newly qualified

The firm is widely known as a market leader in the

its IP patent litigation team further and now has an

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oppositions and (in collaboration with attorneys-at-

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

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gain industry qualifications.

interest in effectively meeting the client’s needs.

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

Email patents.trademarks@g2legal.com

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RECRUITMENT

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Profile for CIPA Journal

CIPA Journal, March 2020  

Review of UK patent cases in 2019, by the Bristows team – Brian Cordery, Dominic Adair, Katie Cambrook, Naomi Hazenberg, Emma Trott, Nadine...

CIPA Journal, March 2020  

Review of UK patent cases in 2019, by the Bristows team – Brian Cordery, Dominic Adair, Katie Cambrook, Naomi Hazenberg, Emma Trott, Nadine...