CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
Practical tips to help keep anxiety in check Emily Collins
Sleep – the unsung hero for our mental health Val McCartney
Patent administrators’ course and membership
May 2020 / Volume 49 / Number 5
China update – trade agreement with the US Toby Mak
• Examination prizes 2019 • Yellow Sheet • Decisions
O UT 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 £295
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™
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SWEET & MAXWELL
Contents
16 UP FRONT
ARTICLES
PERSONAL
3
9
31 33 34 35 35 36
Council Minutes
Lee Davies
NEWS 6 Updated information on
7
Covid-19
CIPA update
HR support and Covid-19
Lea Weir-Samuels 7 IPEC Multi Track and Small
Claims Track update 7 New scam reported to EUIPO 7 IPO ceases fax services 8 Manual of Patent Practice IPO update 8 Southeast Asia update Mirandah Asia
hina update – C US trade agreement
Toby Mak 16 It’s ok to feel scared Practical tips to help keep anxiety in check Emily Collins
DECISIONS 18 P atent decisions Beck Greener 22 E PO decisions Bristows 23 Trade marks Bird & Bird
Cited document availability
Letter to the Editor Ronald Camp
Salary survey CIPA staff profile
Neil Lampert, Chief Executive
IP Inclusive update
Andrea Brewster
IP Pro Bono Yellow Sheet
THE PINKS 42
ourses; International; C Recruitment
EDUCATION 4 CIPA Congress 31 Patent Administrators’
Course and membership
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Volume 49, number 5
Emma Spurrs
Webinars Examination prizes
MAY 2020
CIPA JOURNAL
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NEWS
IPO • OVERSEAS
Manual of Patent Practice updates The April 2020 changes that have been incorporated into the latest version of the Manual of Patent Practice are listed below. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp Paragraphs Update Section 1
pdated to clarify the guidance relating to artificial intelligence inventions and the excluded matter U guidance more generally
7.11.1, 13.10.1
Updated to include BL O/741/19 (Stephen L Thaler’s application).
Various paragraph in sections 14, 18, 73, 125
pdated in light of our changes in examination practice to ensure objections raised have a solid foundation U in the law and that objections raised are necessary to the particular case.
5.04, 55.05.1, 5 56.03
Updated to include IPCom GmbH v Vodafone [2020] EWHC 132 (Pat)
Various sections
arious updates to reflect that the UK has left the EU with a transition period until December 2020, during V which EU law continues to apply.
SPM3.02.6 to 3.02.6.1
pdated SPC guidance in light of Court of Appeal decision in U Teva & Ors v Gilead [2019] EWCA Civ 2272.
Southeast Asia update A roundup of the newsworthy mentions in the Southeast Asian from the first quarter of 2020 Singapore: Snagging the headlines in Singapore in early March, on top of the Covid-19 coverage, is the nomination of IPOS’ current Chief Executive, Mr Daren Tang, by WIPO’s Coordination Committee, for the position of WIPO Director General. His nomination is due to be confirmed by the WIPO General Assembly in early May, with official duties beginning from 1 October 2020 for a six-year term. Malaysia: Since its accession to the Madrid Protocol on 27 December 2019, Malaysia has received more than 400 international registrations from abroad, as well as 15 applications for overseas filing by its local entrepreneurs through the system. Malaysia is one of the last two member states of ASEAN (besides Myanmar) to join the Madrid Protocol. 8
Myanmar: Since the announcement of the new trade mark laws in Myanmar in 2019 (see September [2019] CIPA 11), IP circuits around the world has been waiting with bated breath for its implementation, including and in particular, the launch of the “soft opening” period. While rumoured to start from as early as 20 December 2019, to a later date of 1 January 2020, the first quarter of 2020 has slipped by without further news. Meanwhile, trade mark owners seeking registration in Myanmar continue to do so by way of filing of declaration of ownership and the customary publication of cautionary notice(s) in the local daily newspapers. Philippines: Elsewhere in ASEAN, Philippines had been delisted from the European Union’s priority watch list of
countries concerning counterfeiting and piracy as of 8 January 2020. Philippines had been downgraded to the priority 3 category – countries of the least concern – since 2015. Reasons for the delisting are two-fold: there were very few complaints received from stakeholders; and the increase in the relative importance of other countries for EU right holders. India: The Indian Patent Office and the Japan Patent Office launched a pilot patent prosecution highway (‘PPH’) programme effective from December 2019, allowing applicants to request for expedited examination under certain guidelines (‘PPH guidelines’), but limiting to no more than 100 applications per year, on a first-come-first-served basis.
CIPA JOURNAL MAY 2020
Mirandah Asia www.cipa.org.uk
UPDATE
CHINA
China update – US trade agreement The US-China trade agreement 2020 was signed on 15 January 2020.1 It will drastically change the IP laws in China, as it adopts the US IP practice in China in an unprecedented manner. There are many positive changes in this Agreement that are long awaited, and can now be introduced without further discussion. On the other hand, this Agreement also introduces some controversial measures from US practice. Toby Mak (Overseas Member) discusses the changes. Several aspects will be of interest to UK businesses if they are followed through effectively, in particular the reduction in a requirement for notarized evidence (at least for US businesses), and dropping requirements for effectively mandatory technology transfer when investing in China. The discussion is also interesting in the context of the UK negotiating a trade agreement with the US. Many of the changes are already consistent with UK and EU practice, but the Agreement highlights the US concerns about geographical indications and may already result in constraints on what the UK can negotiate and shows that the US push for effective protection for the pharma industry.2
Volume 49, number 5
MAY 2020
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CPD & EDUCATION
EVENTS
CIPA webinars For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events. Missed a webinar? Catch up at www.cipa.org.uk/whats-on/past-webinar-recordings
Friday 15 May 2020 Webinar
OUTSIDE YOUR COMFORT ZONE: SOFTWARE & PATENTING
Time: 12.30–13.30
Michael Williams, partner at Cleveland Scott York, will talk about how the EPO treats patent applications in the software area. Michael will provide some examples and compare the EPO approach with that in the UK and the US. This will be followed by some practice tips.
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.
CPD: 1; Prices: £73.20 | £49.20 members
Speaker: Ernst-Ulrich Wittmann (Withers & Rogers LLP) CPD: 1; Prices: £73.20 | £49.20 members
Tuesday 19 May 2020 Webinar
OUTSIDE YOUR COMFORT ZONE: DESIGN LAW & PRACTICE IN THE UK & 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
Tuesday 26 May 2020 Webinar
Wednesday 20 May 2020 Webinar
UTILITY MODELS REGIMES
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
Speakers: Simon Davies (D Young & Co); Rachel Free (CMS Cameron McKenna Nabarro Olswang LLP) CPD: 1; Prices: £73.20 | £49.20 members
PCT – UPDATE ON LATEST DEVELOPMENTS AT WIPO
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
particular controversy is inventorship. As the law is currently applied by the IPO and the EPO, a patent application requires the identification of at least one human inventor. In this webinar, we look at potential problems with the present approach, and review suggestions for a way forward from both a legal and practical perspective. The webinar ties in with other recent CIPA activity relating to AI, including a CIPA discussion paper concerning key issues and submissions to a WIPO consultation.
Monday 1 June 2020 Webinar
AI, INVENTORSHIP & THE PATENT SYSTEM
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
Time: 12.30–13.30
The rapid growth and adoption of artificial intelligence (AI) raises a number of different issues for the patent system, and more generally for intellectual property rights as a whole. One area of
Reporters Needed – CIPA is looking for volunteers to report on CIPA events. If you are interested, please contact cpd@cipa.org.uk.
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www.cipa.org.uk
CPD & EDUCATION
EVENTS
Thursday 11 June 2020 Webinar
UK PATENT CASE LAW
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
Wednesday 17 June 2020 Webinar
US/EPO PATENT CASE LAW
Time: 12.30–13.30
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.
Friday 4 September 2020 Webinar
TOP TIPS FOR STUDYING UNDER PRESSURE
ANNUAL SALARY SURVEY
Time: 12.30–13.30
Fellows and Associates is collecting data for its ninth annual salary survey.
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.
In 2020, they are taking a closer look at the impact of Covid-19 as well as a few additional diversity and social mobility questions. Please take part at fellowssurvey.com
Speaker: Elizabeth Rimmer (Lawcare) CPD: 1; Prices: Free for CIPA members
CPD: 1; Prices: £73.20 | £49.20 members
Non-Institute events
Money laundering regulations 2020, Webinar Provider: CITMA Date: 21 May 2020
Thursday 22 June 2020 Webinar
DIVERSITY IN IP BREAKFAST
Time: 08.30-09.30
The annual Diversity in IP Breakfast is back! This free event, open to all IP professionals, is a collaboration between IP Inclusive and CIPA. We will be joined by our guest speaker Daniel Winterfeldt, partner at Reed Smith and founder and chair of the InterLaw Diversity Forum. Together with IP Inclusive Lead Executive Officer Andrea Brewster, Daniel will share his thoughts on allies and “intersectionality”, and how we can all work together, across diversity strands, to ensure our sector is truly inclusive. CPD: 1; Prices: Free for CIPA members – booking essential Volume 49, number 5
IP Licensing: An Advanced-Level Drafting Workshop, Online Provider: Anderson Law / UCL IBIL Date: 26 & 27 May 2020 US Patent Round Up, Live webinar Provider: JIPLP Date: Tuesday 26 May 2020 Introduction to FD4 one-day course, Provider: JDD Date: 28 May 2020 Drafting “Legal” Clauses In Commercial Contracts, Online Provider: Anderson Law / UCL IBIL Date: 9 & 10 June 2020 Contract Drafting Skills Workshop, Online Provider: Anderson Law / UCL IBIL Date: 2 & 3 June 2020 IP Enforcement Round Up, Live webinar Provider: JIPLP Date: Thursday 4 June 2020 Revision courses for the PEB’s Foundation Certificate papers (FC1, FC2, FC3, FC4, FC5), see page 43 Provider: JDD Date: 19 June – 11 July Drafting & Negotiating IP Terms in Research Contracts, Online Provider: Anderson Law / UCL IBIL Date: 23 & 24 June 2020 Revision courses for the PEB’s Final Diploma papers (FD1, FD2, FD4) see page 43 Provider: JDD Date: 30 June – 18 July See full details at www.cipa.org.uk/whats-on/non-institute-events To list an event please email sales@cipa.org.uk MAY 2020
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