CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
April 2020 / Volume 49 / Number 4
Sheep farming and the doctrine of equivalents Goodbye to the Unitary Patent and UPC? Leythem Wall
Court procedure in IP litigation Chris Ryan
Origin of genetic resources Life Sciences Committee
Ferrero Rocher – a shape without a name is not protected
COVID-19 and business support
UP FRONT
CIPA JOURNAL
CIPA CONTACTS
Editor Alasdair Poore Deputy Editors Sean Gilday; Jeremy Holmes Publications Committee Bill Jones (Chairman) Production Iain Ross, 020 3289 6445, and advertising sales@cipa.org.uk Design Neil Lampert Contact editor@cipa.org.uk
Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. 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
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
Contents
UP FRONT
ARTICLES
EDUCATION
2
11 Sheep farming and the
38 40 40 41 35
Council Minutes
Lee Davies
NEWS 4 Business as usual during
5
COVID-19 office closure
CIPA update
IPO interrupted days
IPO update
6 Origin of genetic resources WIPO proposal for a requirement to disclose the country of origin of genetic resources Life Sciences Committee 8 COVID-19 and business support CIPA update 9 EPO and EUIPO services
10
and COVID-19
CIPA update
Overseas update
Amanda R. Gladwin 36 IP clinics to continue
– but with new dates 39 CIPA strengthens relations with Japan International Liaison Committee
Volume 49, number 4
17
doctrine of equivalents
Nicholas Fox
he UK says goodbye, T Germany decides, the UPC says… ?
Update on the Unitary Patent and the Unified Patent Court Leythem Wall 22 Procedure in IP litigation Chris Ryan 37 Ferrero Rocher – a shape without a name is not protected
Trade marks: Singapore Denise Mirandah & Bhavin Shah
DECISIONS 29 P atent decisions Beck Greener 30 I PO decisions David Pearce & Callum Docherty 31 E PO decisions Bristows 32 Trade marks Bird & Bird
Institute webinars AI at the IPO
Webinar report James Bishop
Cancellation of the EQEs
CIPA update
Training the trainers
Debbie Slater
Life Sciences Conference
Save the date
PERSONAL 42 43 44
CIPA staff profile
Lee Davies, Chief Executive
IP Inclusive update
Andrea Brewster
Yellow Sheet
THE PINKS 47
ourses; Support; C International; Recruitment
APRIL 2020
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NEWS
OVERSEAS
Overseas update International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 16 January 2020, the Government of the Republic of Nicaragua deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Nicaragua, on 16 April 2020. On 28 January 2020, the Government of the Republic of Indonesia deposited its instrument of ratification the Marrakesh Treaty. The Treaty will enter into force, with respect to Indonesia, on 28 April 2020. On 11 February 2020, the Government of the Swiss Confederation deposited its instrument of ratification the Marrakesh Treaty. The Treaty will enter into force, with respect to Switzerland, on 11 May 2020. On 24 February 2020, the Government of the Republic of Serbia deposited its instrument accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Serbia, on 24 May 2020. WIPO Copyright Treaty On 27 January 2020, the Government of the Democratic Republic of Sao Tome and Principe deposited its instrument of accession to the WIPO Copyright Treaty. The Treaty will enter into force, with respect to Sao Tome and Principe, on 27 April 2020. WIPO Performances and Phonograms Treaty On 27 January 2020, the Government of the Democratic Republic of Sao Tome and Principe deposited its instrument of accession to 10
the WIPO Performances and Phonograms Treaty. The Treaty will enter into force, with respect to Sao Tome and Principe, on 27 April 2020. Singapore Treaty (Law of Trademarks) On 29 January 2020, the Government of the Eastern Republic of Uruguay deposited its instrument of ratification of the Singapore Treaty. The said instrument contained the declaration that Uruguay makes a reservation with regards to article 19(2), Certain Rights of the Licensee, on the grounds that its content is in conflict with existing provisions on the subject in its national legislation. The Treaty will enter into force, with respect to Uruguay, on 29 April 2020. Beijing Treaty (Audiovisual Performances) On 28 January 2020, the Government of the Republic of Indonesia deposited its instrument of ratification of the Beijing Treaty. Thirty eligible parties have now deposited their instruments of ratification or accession. The date of entry onto force of the Treaty will therefore be 28 April 2020. On 11 February 2020, the Government of the Swiss Confederation deposited its instrument of ratification of the Beijing Treaty. The instrument contained the declaration that instead of the exclusive right of authorization referred to in article 11(1), and pursuant to article 35 of the Swiss Copyright Act of 9 October 1992, Switzerland shall grant a right to remuneration subject to collective management and to the principle of reciprocity for the broadcasting, retransmission or public reception of
an audiovisual fixation where it is made from a commercially available audiovisual fixation. The Treaty will enter into force, with respect to Switzerland on 11 May 2020. Berne Convention (Protection of Literary and Artistic Works) On 11 February 2020, the Government of the Republic of Nauru deposited its instrument of accession to the Berne Convention. The Convention will enter into force, with respect to Nauru, on 11 May 2020. On that date Nauru will also become a member of the International Union for the Protection of the Literary and Artistic Works. Convention establishing WIPO On 11 February 2020. The Government of the Republic of Nauru deposited its instrument of accession to the Convention establishing WIPO. The Convention will enter into force, with respect to Nauru, on 11 May 2020. Hague Agreement (Registration of Industrial Designs) On 6 March 2020, the Government of the United Mexican States deposited its instrument of accession to the Geneva Act of the Hague Agreement. The Act will enter into force, with respect to Mexico, on 6 June 2020. Dr Amanda R. Gladwin (Fellow), GSK
CIPA Journal welcomes news and alerts. Please email editor@cipa.org.uk
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Sheep farming and the doctrine of equivalents By Nicholas Fox (Fellow)
C
ontemplating the Supreme Court Actavis v Lilly1 decision, and playing around with Word, I was prompted to draw the following two drone’s-eyeviews of grazing sheep. As every sheep farmer knows, basically there are two ways you control how sheep graze. You can build a fence (Figure 1), in which case the sheep can eat all the grass in the field. Alternatively you can put a stake in the ground and tie one end of a rope to the stake and the other end of a rope to the sheep in which case the sheep can eat all the grass in the area of a circle centred on the stake (Figure 2). Patent attorneys may recognise similarities with Article 1 of the Protocol on the Interpretation of Article 69 EPC which states that:
Figure 1 – The traditional English approach Volume 49, number 4
“Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.”
Figure 2 – The traditional German approach APRIL 2020
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ARTICLE
the patent in question was invalid, he did not have to issue a decision on the matter of equivalents but after commenting on the European case law presented to him, he concluded his judgment commenting that: ‘Had [the patent] been valid it would have been infringed, unless there exists in English law a Formstein defence, in which case Teleste has a Formstein defence to infringement.’ In other words, third parties should be permitted to graze on the area outside of the claim boundaries which are “shared” with other sheep illustrated in Figure 7. If a Formstein defence does exist, then that would provide the second example of a reason for restricting a claim to it’s literal (i.e. purposive) meaning – the other being where novelty only prior art exists outside the scope of the literal claim language but within the inventive concept of a claim as was touched upon by Arnold J in Generics v Yeda in 2017.12
So where are we now?
Given the universal success of claims of infringement by equivalence in 2019, it is tempting to think that the UK courts are currently applying the old German approach to infringement, using the claims as a guide to finding an inventive concept and finding infringement if someone takes advantage of that inventive concept. But that would be taking the case law too far. In many cases judges have taken a very conservative path regarding equivalents (cf Arnold J in Eli Lilly v Genetech) and even when an alleged infringement clearly omits a claim feature (e.g. in Conversant v Huawei) infringement by equivalents has only been found where a defendant has been unable to provide a coherent answer to an allegation as to why one feature is not equivalent to another – in that case where it was found to be irrelevant whether data was based on a previous or a current time period. Further it is quite possible that the cases which proceed as far a trial suffer from selection bias. After all, it is unusual for a patentee to pursue a case unless they have reasonably strong grounds for assuming that a patent is infringed.
It is not, at least not yet, irrelevant how claims are drafted. The boundaries fixed by the wording of the claims would – it appears to be – save a patent where novelty only prior art lies close to the literal wording of a claim or where, assuming a Formstein defence does exist, obvious variants of the prior art occur outside of the claim boundaries but within the inventive concept of a patent. It is also not the case that patentees get a completely free run with equivalents. The Courts have confirmed that the inventive concept or the “bit which is clever”, as eloquently put by counsel in E. Mishan & Sons v Hozelock, is the same for assessing both equivalents and inventive step (see Technix v Teleste in the High Court). This means that if a patentee needs to run an expansive inventive concept, the patentee runs the risk that a similarly expansive inventive concept will apply when determining validity – all sheep are constrained by the same length of rope. But certainly, the recent case law does demonstrate that many of the certainties which existed before the Actavis decision no longer apply. Infringement in the UK is no longer about arguing where the fence posts are. Whether or not an alleged infringer is seen to be taking advantage of an inventive concept now plays a much larger role than was the case in the past. Until, the courts do start to answer the question as to what might cause a claim to be constrained to its literal, or rather its purposive meaning, any attempts to design around a patent claim by replacing or avoiding integers present in a claim are going to be fraught with danger. In such a brave new world, any third parties looking for safety will increasingly have to rely on invalidity arguments rather than any defence based on claim construction. It might just be safer to take up sheep farming.
Nicholas Fox (Fellow) is a partner at Finnegan Europe LLP. See more at www.finnegan.com.
Notes and references
6. Regen v Estar [2019] EWHC 63 (Pat)
1. Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48
8. Regen v Estar paragraphs [210] & [211]
2. Warner-Lambert v Generics (UK) Ltd t/a Mylan [2018] UKSC 65 3. Actavis v ICOS Corp [2019] UKSC 15 4. c.f. Lord Kitchin (Floyd LJ and Longmore LJ agreeing) in Icescape v Iceworld [2018] EWCA Civ 2219; Arnold J in Mylan v Yeda [2017] EWHC 2629 (Pat); Carr J in Illumina v Prematha Health [2017] EWHC 2930 (Pat); and Birss J in Liqwid v L’Oreal [2018] EWHC 1394 (Pat) 5. Eli Lilly v Genetech [2019] EWHC 387 (Pat) paragraphs 595-599
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DOCTRINE OF EQUIVALENTS
7. Technix v Teleste [2019] EWHC 126 (IPEC) 9. Regen v Estar paragraphs [212]–[218] 10. Regen v Estar paragraphs [219]–[224] 11. c.f. Floyd LJ with whom Kitchin and Henderson LJJ agreed in Jushi Group Co. Ltd v OCV Intellectual Capital LLC [2018] EWCA Civ 1416 and Kitchin LJ (with whom Briggs and Christopher Clarke LJJ agreed) in Smith & Nephew Plc v Convatec Technologies Inc [2015] RPC 32 12. Generics (UK) Ltd v Yeda Research and Development Co Ltd [2017] EWHC 2629; [2018] RPC 2 (at [161]–[167]
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The UK says goodbye, Germany decides, the UPC says… ? By Leythem Wall (Fellow)
UK says goodbye?
As widely reported, CIPA was informed on 27 February in a personal telephone call to President Richard Mair by IPO CEO Tim Moss that the government will no longer seek to participate in the Unitary Patent (‘UP’) or Unified Patent Court (‘UPC’) system.1 Despite the UK government having ratified the UPC Agreement back in April 2018, on World IP Day no less, for many such a decision to pull back is not entirely unexpected given the inevitable jurisdiction of the Court of Justice of the European Union (‘CJEU’) over states participating in the new system. A government spokesperson is quoted as saying: “The UK will not be seeking involvement in the UP/ UPC system. Participating in a court that applies EU law and bound by the CJEU is inconsistent with our aims of becoming an independent self-governing nation.”2 Seeking further clarification on the government’s position, on 10 March, CIPA Past-President Julia Florence and IP barrister Daniel Alexander QC gave evidence to the House of Lords EU Justice Sub-Committee, who met to discuss the impact of the decision on UK businesses.3 The questions to be discussed included: • Why development of the UPC was pursued outside the EU’s formal structure and why was it necessary to pass EU legislation in support of the Agreement? • The nature of the formal relationship between the UPC and the Court of Justice of the EU. • Could aspects of the UPC be amended to allow the UK to participate while maintaining its ‘red line’ over EU Court of Justice jurisdiction? Volume 49, number 4
• The impact on business in the UK if the UK does not participate in the establishment of the UPC. • If the UK does not participate in the UPC is it likely it will still go ahead without the UK given the prominent role the UK has played in its creation? Much of the session, which can viewed on the UK Parliament website, covered explaining the limited impact the CJEU would actually have on the UPC, as well as the successful role the UK plays in the European patent system.4 Following this, Lord Morris of the Sub-Committee wrote to Amanda Solloway MP, the Parliamentary Under Secretary of State (Minister for Science, Research and Innovation), asking her to confirm the government’s position.5 At the time of writing there is yet to be an official public statement on the matter.
Germany decides
Perhaps the biggest hurdle that has faced the UPC up to now is not Brexit, but the constitutional complaint filed with Germany’s Federal Constitutional Court (Bundesverfassungsgericht) in 2017.6 While there has been plenty of speculation as to the timing and outcome, the decision finally arrived on 20 March upholding the complaint against the Act of Approval to the Agreement on a UPC.7 The decision was reached with a 5 to 3 majority of the judges. The ruling concludes there was an insufficient quorum and majority at the original vote in Germany’s parliament in favour of the Act. The substantive grounds raised against the Act appear to have been dismissed, hence in theory it seems the current rejection might be overcome by re-holding a vote with the required presence and majority. How and when this would be APRIL 2020
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Procedure in IP litigation Chris Ryan (Associate) highlights a number of recent developments in litigation procedure. Some are from IP cases. The others, though from other areas of the law, have relevance to IP litigation. Each topic covered can be mapped onto the teaching materials provided to students on the courses run by Nottingham Law School at Nottingham University on Basic Litigation and Intellectual Property Litigation1. However, it is hoped that they will also provide a useful update for all those involved in litigating IP disputes.
Statements of truth
A statement of truth, whether in a witness statement or a statement of case, must now show the date on which the witness signed it and must include an acknowledgement of the penalty for signing without an honest belief in its truth. The changes arise from the 113th Update to the Practice Directions supplementing the Civil Procedure Rules which, at the time of writing, are expected to come into effect in either late March or early April 2020. A Statement of Case will now conclude with the words: “[I believe] [the (claimant or as may be) believes] that the facts stated in this [name document being verified] are true. I understand that proceedings for contempt of court may be brought against anyone who makes, or causes to be made, a false statement in a document verified by a statement of truth without an honest belief in its truth.” [new language highlighted] [PD22 paragraph 2.1] A Witness Statement will now conclude with the words: “I believe that the facts stated in this witness statement are true. I understand that proceedings for contempt of court may be brought against anyone who makes, or causes to be made, a false statement in a document verified by a statement of truth without an honest belief in its truth.” [new language highlighted] [PD22 paragraph 2.2] A witness statement must also now include a statement describing the “process by which it has been prepared, for example, face-to-face, over the telephone, and/or through an interpreter” (new paragraph 18.1(5) in PD32). These changes should not create difficulty in most cases (provided practitioners remember to update their template witness statement appropriately). However, there has been
judicial criticism in the past where evidence has been gathered from consumers on the High Street, typically to support trade mark reputation/confusion claims, and it has been noticed that several witnesses have used identical language in key passages. This has led the court to suspect that draft statements had been developed from completed questionnaires, with the witnesses then not being given a proper chance to record their impressions in their own words. The rule-makers clearly hope that the inclusion of the new wording will lead both practitioners and witnesses to pay closer attention to the principles that have always applied to witness statements – they set out the truth, in the witnesses own words, and distinguish clearly between those facts that the witness knows and those that are matters of information or belief obtained from statements made by others, whether oral or in writing.
Disclosure The “normal” disclosure process.
There are times when judges issue a clear “listen up” command. The Chancellor of the High Court, Sir Geoffrey Vos, did this in February in order to tell litigation practitioners how to approach the task of defining the scope of disclosure under the new pilot scheme for disclosure2. In particular he instructed solicitors and attorneys to stop using the new procedures “as a stick with which to beat their opponents”. The pilot is set out in Practice Direction 51U. I wrote about it in the January 2019 issue of the Journal3, where I expressed the view that it represented an over-engineered solution to the problem of disclosure frequently costing far too much than could be justified by the contribution it made to the decisionmaking process. Robust and easily understood rules apply in the Intellectual Property Enterprise Court (‘IPEC’) and the Shorter Trials Scheme. But in all other cases the pilot imposes an obligation on the parties to exchange a specified form4 recording
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each side’s views on the issues requiring disclosure and the depth of disclosure sought in respect of each one. Readers may recall that the Practice Direction provides for a number of “models” for disclosure from the lightest (Model A) to the most severe (Model E) and the court will determine (it hopes with the parties’ co-operation) which one to apply in respect of each issue. In my January 2019 article, I suggested that the requirement for the parties’ views to be exchanged using a specified form and against a rigid timetable simply formalised the obligations imposed under existing procedures, when read in the light of the overriding objective. I asked whether reiterating those obligations in a new and more elaborate framework would really change the behaviour of litigation practitioners. I think that Sir Geoffrey Vos may have come to the conclusion that it has not. He announced, at the start of a hearing on the scope of Extended Disclosure in the case of McParland & Partners v Whitehead5 that, instead of giving his decision at the end of the hearing (which would be the normal arrangement), he would deliver a reserved judgment. The application, he said: “presented questions on the approach to disclosure issues which gave the court the opportunity to provide guidance for other users of the Business and Property Courts.” He clearly wanted to take time in order that his decision should be as carefully drafted, and as clear to the reader, as possible. The broad message of the decision is that disclosure should not be sought on every issue that emerges from the pleadings as needing to be determined at trial. A party to litigation should instead consider the documents it holds, and those that its opponent is likely to hold, and decide, in respect of each issue to be determined at trial, whether the court is likely to be assisted by having sight of contemporaneous documentation. It should then consider how deep and extensive the search for documents needs to be in each case, selecting the appropriate Model A-E in light of the parties’ knowledge of the documents they are likely to hold and the issues to which they are relevant. Finally, throughout the process, the parties’ representatives should cooperate with one another and try to agree the outcome. The guidance given on each of those issues is sufficiently important that I have set out relevant extracts in the box, “Extracts from the decision in McParland v Whitehead” [see page 24]. A less strident guidance statement, issued from a lower level of the judicial hierarchy, is to be found in the earlier judgment of HHJ Hacon in the IPEC case of Coloplast v MacGregor Healthcare6. In the course of writing his judgment, the judge came to suspect that a specific disclosure order for a class of document relevant to inventiveness may not have been fully complied with. The judge made two points. First, at paragraph 67 of his judgment he said: Volume 49, number 4
IP LITIGATION
“First, it is not satisfactory that an order for specific disclosure, however framed, should result in a party concluding that it need not disclose documents which to its knowledge relate to a material and central issue and which is known to be in its possession” Later he commented that the party that received the incomplete disclosure may have lacked focus in apparently failing to notice the omission and not bringing the matter back to the court. At paragraph 69 he said: “... although the IPEC procedure is designed to keep disclosure to the essential minimum... this should not be allowed to result in a real likelihood that the court will reach a false understanding of an important issue. The overriding objective, including making sure that the case is heard fairly, must always take precedence. Notwithstanding the IPEC rules, an application for disclosure should be pursued, even after the CMC where appropriate, if it is based on solid evidence, i.e. more than speculation however keenly felt, that documents likely to shed light on an important issue are held by the opposing party.” It seems likely, from what HHJ Hacon said elsewhere in his judgment, that it was this case that led him to introduce into IPEC procedure the requirement for parties to disclose “known adverse documents”, even though the disclosure pilot does not apply in IPEC. That requirement now appears in paragraph 4.6(c) of the IPEC Guide.
Varying a disclosure order/directing disclosure of specific documents
Although the courts have the power under CPR3.1(7) to vary case management orders, the general approach is that the power will not be exercised unless there had been a major change of circumstances since the first order was made, or the facts on which the original decision was made had been misstated, whether innocently or not7. On an application for disclosure of certain licence agreements in the context of FRAND litigation – Conversant Wireless Licensing v Huawei Technologies8 – Birss J had to decide whether that was the correct test to apply when considering PD51U paragraph 18. He decided that it was not. Under paragraph 18.2 the court must be satisfied that: “… varying the original order for Extended Disclosure is necessary for the just disposal of the proceedings and is reasonable and proportionate…”. The pilot set out a different, and easier, test that trumped the general case management rule in the specific circumstances of extended disclosure. APRIL 2020
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CPD & EDUCATION
INSTITUTE EVENTS
CIPA webinars For a complete list of all CIPA events see www.cipa.org.uk/whats-on/events
HR COFFEE BREAK UPDATE: CHANGES TO THE WRITTEN STATEMENTS
Time: 10:30-10:45
Employees are entitled to receive a statement of their employment particulars within two months of starting work. This sets out your main employment terms, including the job description, pay, hours of work and any disciplinary or grievance procedures your employer has. This webinar will review the written statement of employment and the recent updates, which are set to take place in April 2020. This webinar will also help employers on what information should be provided at the start of employment. Ensuring employees understand the written document, summarising the main terms of employment. Speaker: Lea Weir-Samuels (Human Resource Officer, CIPA) Price: Free – members only
as correct parties and accurate identification of the rights.
Thursday 16 April 2020 Webinar
Tuesday 28 April 2020 Webinar
OUTSIDE YOUR COMFORT ZONE: IP AGREEMENTS 2020
Time: 12.30–13.30
This talk will guide you through; 1. Understanding when your client needs an IP agreement. 2. Types of IP agreement: e.g. memorandum of understanding, assignment, license, confidentiality agreement. 3. An introduction to some basic contract law principles. 4. Top IP agreement pitfalls such
Speaker: Lucy Harrold (Keystone Law) CPD: 1; Prices: £73.20 | £49.20 members
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. Speaker: Geraint James (Patent Seekers) CPD: 1; Prices: £73.20 | £49.20 members
Monday 11 May 2020 Webinar
OUTSIDE YOUR COMFORT ZONE: ARTIFICIAL INTELLIGENCE – BASIC CONCEPTS & PATENTING
challenges lie and what patent offices make of this technology. The webinar will look at some basics of AI and ML and the current approach to patenting through the lens of the updated EPO guidelines. It will also touch on how AI might influence the future of patent law and issues that will be central in thinking about the impact of AI on society. Speaker: Alexander Korenberg (Kilburn & Strode) 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
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
Time: 12.30–13.30
Artificial intelligence (AI) and its enabling dual machine learning (ML) are pervasive in technology and society and becoming more so by the day. To join the conversation about this patent attorneys need to know what AI and ML are, what is and is not possible today, where the
Reporters Needed – CIPA is looking for volunteers to report on CIPA events. If you are interested, please contact cpd@cipa.org.uk.
Tuesday 19 May 2020 Webinar
OUTSIDE YOUR COMFORT ZONE: DESIGN LAW AND PRACTICE IN THE UK AND EUROPE
Time: 12.30–13.30
The webinar will cover some of the key aspects of design law in the UK and Europe, and some of the latest developments in design regulations, practice and case law. Speaker: Alex Brown (Venner Shipley LLP) CPD: 1; Prices: £73.20 | £49.20 members
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Wednesday 20 May 2020 Webinar
UTILITY MODELS REGIMES WORLDWIDE
Time: 12.30–13.30
Fast IP rights are available in many countries worldwide. Different regimes within Europe and the rest of the world exist, with less stringent requirements than is usually needed for filing patent applications. We will present a general overview of registration requirements and enforcement routes for successful fast IP rights protection in every country that allow such systems, with a special focus on Germany. The webinar will summarise the differences and advantages of a utility model registration with recommendations on when utility model registration might be more convenient for efficient business development. Speaker: Ernst-Ulrich Wittmann (Withers & Rogers LLP) CPD: 1; Prices: £73.20 | £49.20 members
Tuesday 26 May 2020 Webinar
PCT – UPDATE ON LATEST DEVELOPMENTS AT WIPO
INSTITUTE EVENTS
Thursday 4 June 2020 Webinar
DOMAIN NAME DISPUTES
Time: 12.30–13.30
This webinar will cover the basics of domain name disputes. It will discuss the various rights protection mechanisms, GDPR vs WHOIS, the new gTLD program. The webinar will highlight some bear traps to avoid and mention some proactive steps that might prevent cybersquatting in the first place. Speaker: Andrew Clemson (Cleveland Scott York) CPD: 1; Prices: £73.20 | £49.20 members
Thursday 11 June 2020 Webinar
UK PATENT CASE LAW UPDATE
Time: 12.30–13.30
The popular CPD webinar UK Patent Case Law Updates returns with speakers Jon Markham, Beck Greener, and James Porter, IPO. This webinar will focus on interesting patent decisions to have come from the UK courts over the past 12 months. CPD: 1; Prices: £73.20 | £49.20 members
Time: 12.30–13.30
This webinar will provide you with up-to-date information about the latest developments in the PCT system. It will cover recent and upcoming PCT Rule changes, practical developments concerning electronic communications and updates on other current developments. At the end of the presentation, there will be time available to post questions. Speaker: Matthias Reischle-Park (WIPO) CPD: 1; Prices: £73.20 | £49.20 members Volume 49, number 4
Wednesday 17 June 2020 Webinar
US/EPO PATENT CASE LAW UPDATE
Time: 12.30–13.30
CIPA strengthens relations with Japan CIPA’s International Liaison Committee (‘ILC’) held a video conference on 2 March with delegates from the Japanese Patent Attorneys Association (‘JPAA’). The ILC was pleased to strengthen links with their Japanese colleagues despite travel constraints due to coronavirus. Tony Rollins, ILC Chair, spoke on the future of the patent profession and how attorneys and IP offices could modernise and work with emerging technologies such as AI and blockchain. President Richard Mair spoke about the practical considerations after Brexit and reassured against uncertainty during the transition period and beyond. Richard emphasised that it was business as usual for patents. The ILC pleased that the meeting was such a success despite the global travel restrictions and are using the experience as a template for other planned international events, where possible, during the current crisis. We look forward to meeting JPAA face to face in the near future.
Join speakers Yelena Morozova and Anthony Tridico (Finnegan) alongside Dominic Adair and Gemma Barrett (Bristows) for this CPD webinar that will focus on interesting recent patent decisions to have come from the EPO and the US courts. CPD: 1; Prices: £73.20 | £49.20 members APRIL 2020
CIPA JOURNAL
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