CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
IP and the Covid crisis: a moral dilemma? Alasdair Poore
Challenges for the IP professions Lord Chris Smith
Patents in the US constitution Finnegans
June 2020 / Volume 49 / Number 6
Dusting off innovation Alasdair Poore
• Yellow Sheet • Staff profile • IP Inclusive
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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Contents 24-27 13-23
4-6
UP FRONT
ARTICLES
EDUCATION
3 Challenges for the
13 US update – PTAB inter partes
Chris Smith 4 Innovation and IP in
Brooke Wilner & Tim McAnulty 19 US update –
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IP professions
challenging times: a moral dilemma?
7
Alasdair Poore
Council Minutes
Lee Davies
NEWS 3 Postponed: Introductory Patent 10
Administrators Course 2020 Information on Covid-19
CIPA update 11 EUIPO update
on extension periods 12 EPO oral proceedings CIPA update 12 Overseas update Amanda R. Gladwin 12 Hague users excused over missed deadlines WIPO update
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review proceedings
Patents in the US constitution
Emily Gabranski & Tim McAnulty 24 Dusting off innovation Inspiring futures – can we move beyond the steam train? Alasdair Poore
DECISIONS 28 P atent decisions Beck Greener 31 I PO decisions David Pearce & Callum Docherty 32 E PO decisions Bristows 33 Trade marks Bird & Bird
Webinars CIPA Congress Study Guide to the Patents Acts (2020)
PERSONAL 39 42
London IP clinics Black Lives Matter
43 44 46 47
CIPA staff profile
CIPA statement
Dwaine Hamilton
Yellow Sheet IP Futures – Pub Quiz IP Inclusive update
Andrea Brewster
THE PINKS 48-52 Courses; International; Recruitment; Support
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NEWS
EPO • OVERSEAS
EPO update on oral proceedings before examination and opposition divisions
D
ue to ongoing disruptions caused by Covid-19, the European Patent Office (EPO) announced on 21 May 2020 that all oral proceedings in opposition scheduled before the 14 September 2020 will be postponed until further notice, unless already confirmed to take place by videoconference or held by videoconference with the parties’ consent under the pilot project – see Article 2 of the Decision of the President of the EPO dated 14 April 2020 concerning the pilot project for oral proceedings by videoconference before opposition divisions.1 All oral proceedings in examination will be held by videoconference following
the Decision of the President of the EPO dated 1 April 2020 concerning oral proceedings by videoconference before examining divisions.2 The EPO has confirmed all affected parties will be informed about the postponement of oral proceedings as soon as possible, and are advised to check respective files online via the European Patent Register, where the notice will be available.
Notes and references 1. www.epo.org/law-practice/legal-texts/official-journal/2020/04/a41.html 2. www.epo.org/law-practice/legal-texts/official-journal/2020/04/a39.html 3. www.epo.org/news-events/covid-19/oral-proceedings-examination-opposition.html
Overseas update Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 6 May 2020, the Government of the Republic of Vanuatu deposited its instrument of accession to the Marrakesh Treaty. The treaty will enter into force, with respect to Vanuatu, on 6 August 2020. WIPO Copyright Treaty On 6 May 2020, the Republic of Vanuatu deposited its instrument of accession to the WIPO Copyright Treaty. The treaty will enter into force, with respect to Vanuatu, on 6 August 2020. WIPO Performances and Phonograms Treaty On 6 May 2020, the Government of the Republic of Vanuatu deposited its instrument of accession to the WIPO Performances and Phonograms Treaty. The treaty will enter into force, with respect to Vanuatu, on 6 August 2020 12
These measures have been put in place to prevent the spread of Covid-19 and to protect the health of all participants. For full details, please read the EPO’s statement.3 CIPA continues to support and work closely with the EPO to improve technology and communications, while also consulting on developments of video conferencing for oral proceedings.
Beijing Treaty (Audiovisual Performances) On 22 April 2020, the Government of the Republic of Korea deposited its instrument of accession to the Beijing Treaty. The said instrument of accession a declaration that in accordance with article 11(3), Korea will apply the provision of article 11(1) thereof only in respect of the performances fixed in audiovisual fixation for broadcasting or transmission by wire. Transmission by wire does not include transmission over the Internet. The treaty will enter into force, with respect to Korea, on 22 July 2020. On 6 May 2020, the Government of the Republic of Vanuatu deposited its instrument of accession to the Beijing Treaty. The treaty will enter into force, with respect to Vanuatu, on 6 August 2020.
Hague users excused over missed deadlines The International Bureau has taken measures addressed to Hague applicants, holders of international registrations and IP offices excusing them, due to issues with Covid-19, from failure to meet a time limit: (i) for transmission of a communication, (ii) for submission of information to correct an irregularity, or (iii) to pay fees, including renewal fees, to the International Bureau. Therefore, submission of evidence concerning Covid-19 issues will not be required. These measures, however, do not cover payment of the second part of the individual designation fee. For further details concerning these measures, please refer to Information Notice No. 14/2020. If you have any questions, you can access the “Contact Hague“ online page.
Dr Amanda R. Gladwin (Fellow), GSK
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US UPDATE
PATENTS
Printed, incentivised to combine? Evident(ial) challenges on inter partes review proceedings In September 2018, the Patent Trial and Appeal Board (which hears inter partes review proceedings, analogous to EPO oppositions) established a “Precedent Opinion Panel”. The idea is to identify cases which could be regarded as have value in harmonising the approaches of different panels, an issue which is well known from the EPO. Brooke Wilner and Tim McAnulty discuss three recent cases considered by the panel, all taking a critical look at what is “sufficient evidence”. The first looks at what amounts to proof that a publication is a printed publication made available to the public by a specific date, and although specific to printed publications (a specifically US characterisation) also highlights that simple indicia such as a copyright notice with a date may, on their own not be enough. The second and third look at when it is legitimate to combine references – perhaps bringing US practice closer to the approach applied elsewhere. All three remind practitioners that evidence matters.1
S
ince its inception in September 2012 as part of the America Invents Act, the Patent Trial and Appeal Board (PTAB) has sometimes rendered inconsistent judgments.2 These inconsistencies exist at least in part because every routine decision, i.e., every panel decision that is not otherwise designated by the US Patent and Trademark Office (USPTO), is binding only on the parties in that particular case.3 While a routine decision from one panel may be persuasive to other panels, there is no obligation for different panels to adopt the same approach or reach the same outcome. Generally, the merits of each particular case are typically unique to the challenged patent and asserted prior art, however, individual panels also address issues that affect overall practice before the PTAB. Even in its eighth year (and after significant impact from the Federal Circuit and Supreme Court through numerous appeals), the PTAB is still addressing jurisdictional, procedural, and substantive issues that implicate the overall practice before the PTAB. In September 2018, the PTAB created the Precedential Opinion Panel (POP) to help address this concern. The POP is intended to serve two functions. First, it is tasked with rehearing
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matters in pending cases (including IPR, PGR, and CBM trials, as well as ex parte appeals from prosecution) that raise issues of “exceptional importance”, including constitutional issues; important issues regarding statutes, rules, regulations, or binding or precedential case law; and issues of “broad applicability to the Board [PTAB]”.4 Second, it can help promote consistency by resolving conflicting PTAB decisions where different panels reached different outcomes.5 This latter function allows the panel to assist the Director in designating PTAB decisions as precedential or informative.6 A precedential decision establishes binding authority for all panels, while an informative decision provides helpful but non-binding guidance on both issues of first impression and recurring issues.7 In addition to designation by the POP, a PTAB decision can be designated informative or precedential by a nomination process,8 suggested by a committee of PTAB judges,9 or at the discretion of the Director.10 A POP may be convened in one of three ways: the Director may convene a panel to determine whether to order rehearing of a case sua sponte; a party in a given proceeding may request POP review of a request for rehearing; or a member of the PTAB itself may recommend review.11 Once convened, the panel assists the JUNE 2020
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US UPDATE
Petitioners should consider providing detailed and thorough analysis of the asserted references and making specific arguments about why an ordinary artisan not only could but would have combined the asserted references.
PATENTS
different” systems for chemical binding that the petitioner did not adequately address.77 Without more explanation or a deeper rationale for making the proposed combination, the PTAB found the petition did not sufficiently show how or why an ordinary artisan would combine teachings from the different references. In the remaining grounds of its petition, the petitioner selected disclosures from various prior art references and matched them to the limitations of the challenged patent.78 The PTAB also found this approach deficient. Each of the petitioner’s prior art references were directed to different objectives and were useful in different contexts.79 The PTAB found that the petitioner’s assumption that all thermoset binders were useful in the same context was unsupported, and the petitioner’s limited additional reasons for combining these references were not enough to show an ordinary artisan would have actually combined them.80 Overall, the PTAB credited the petitioner with showing the references were analogous art, and further showing that an ordinary artisan could have combined them — but the PTAB concluded that the petitioner did not sufficiently show that an ordinary artisan would have combined them.81 By designating this decision, along with Hulu II, the PTAB is suggesting that it is looking for more detailed analysis of the prior art and asserted obviousness grounds in a petition. And a petitioner’s basic argument that merely suggests two or more references could be combined runs the risk that the PTAB may risk a decision denying institution (like in John Mansfield) or a finding that the claims are not unpatentable (like in Hulu II). In other words, merely identifying the different claim elements in (analogous or even closely related) prior art may not be enough to show how or why an ordinary artisan would have combined their teachings to meet the claims. Going forward, petitioners should consider providing detailed and thorough analysis of the asserted references and making specific arguments about why an ordinary artisan not only could but would have combined the asserted references.
Conclusion
Since 2018, the PTAB has designated 36 decisions as either precedential or informative. In only its first full calendar year of existence, the POP has already heard three cases82 and is currently hearing another relating to the PTAB’s role in evaluating substitute claims proposed in motions to amend.83 Many practitioners expect the PTAB, through the POP and other methods, to continue designating decisions as precedential or informative as part of its continued effort to increase consistency in PTAB practice. Stay tuned as we continue to follow the ever-evolving practice before the PTAB and share updates. Brooke Wilner is an Associate in the Atlanta office and Tim McAnulty a Partner in the Washington, DC office of Finnegan. 18
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US UPDATE
PATENTS
Patents and debating their place in the US constitution Another challenge to the propriety of the Patent Trial and Appeal Board (PTAB) – is the Federal Circuit’s Arthrex decision the beginning or the end of this new debate? Emily Gabranski and Tim McAnulty of Finnegans discuss the ramifications and how they are unravelling. It appears that IP practitioners will increasingly have to engage with constitutional law. The German courts have recently rejected Germany’s ratification of the Unified Patent Court Agreement on constitutional – entirely procedural – grounds: the requisite majority was not obtained. The Federal Court has rejected, in Arthrex, decisions of the PTAB on inter partes review, the quasi opposition procedure in the USPTO, also on procedural grounds (the appointment process for Administrative Patent Judges only slightly more). The Editor understands that a similar challenge has been raised in the German courts to the EPC, and it is not clear whether this has been rejected together with the latest challenge to the UPC. One can see, following the UK’s departure from the EU or indeed under the emergency Covid legislation, whether Ministers have the powers they purport to exercise. Interesting times.1
L
ast autumn, the Federal Circuit’s decision in Arthrex, Inc. v Smith & Nephew, Inc.,2 caused another constitutional debate over the propriety of the Patent Trial and Appeal Board (PTAB). In one of the more divisive decisions in 2019, the Federal Circuit ruled that the Administrative Patent Judges (APJs) who hear PTAB challenges were improperly appointed. The holding opened a debate about both the court’s ruling and its remedy. And, as many readers may know, it caused a flurry of activity that is likely to continue for the foreseeable future. All parties in Arthrex petitioned the court for rehearing: Smith & Nephew (challenger-appellee) disagreeing with the court’s ruling, Arthrex (patent owner-appellant) disagreeing with the court’s remedy, and the US Patent and Trademark Office (USPTO) (intervenor) defending the appointment of the APJs, and the propriety of the PTAB. Many practitioners thought the court would grant en banc review but, in a fractured decision, it denied the request.3 Arthrex filed a petition for certiorari in early April, and many practitioners believe there is a strong chance the Supreme Court will hear the case because it reaches a US constitutional question. A decision on whether to Volume 49, number 6
hear the case may take several months. Meanwhile, Arthrex is affecting numerous other cases on appeal and before the PTAB. Here, we break down what has happened since Arthrex and provide some insight about what might lie ahead in the coming months.
Arthrex – decision and appeal
The Arthrex decision arose out of a constitutional challenge to the process for appointing APJs that sit on the PTAB. The USPTO is an administrative agency within the US Department of Commerce, with its powers and duties vested in the Director (currently Director Andrei Iancu).4 The PTAB is an administrative tribunal within the USPTO, with its authority vested in (currently over 200) APJs that sit on the PTAB. The USPTO Director is nominated by the President and confirmed by the Senate, while APJs are appointed by the Secretary of Commerce in consultation with the USPTO director.5 The Appointments Clause of the US Constitution requires the President to nominate, and the Senate to confirm, certain agency positions (“principal [o]fficer[s]”) but permits the appointment of other “inferior [o]fficers” without the advice and JUNE 2020
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ARTICLE
INNOVATION
Dusting off innovation Inspiring futures – can we move beyond the steam train? By Alasdair Poore (Fellow)1
T
he UK has been a centre of innovation for years. The first steam train was built here, and one can view it in the Science Museum. More on this later – but for now: is technology just for male nerds – or can technical education be made exciting for everyone? And can this promote diversity across all fields of technology and indirectly within the patent profession. Before Andrea Brewster so successfully established IP Inclusive, as Vice President of CIPA I had tried to understand why the patent profession was so reluctant to embrace diversity. At the time, one of the outstanding statistics was the division of male and female patent attorneys across the different disciplines – more or less 50/50 across life sciences but women represented only 10% or so in other disciplines2. These turn out to mirror the divisions across university education – so an answer to improving diversity in the professions lay in the larger question of diversity in higher (and secondary) education. At the other end of the education spectrum, I saw young children in the Science Museum3 racing around noisily and to all appearances, enjoying every moment of their exposure to technology – and the Science Museum has more school visitors than any other museum in the country. So why does this apparently fall away? When this article was originally conceived, it was intended to encourage members of the IP profession to reflect on the progress of technology over the years, and particularly the extraordinary rapid progress of technology – in
Puffing Billy — the oldest surviving steam railway locomotive (circa 1814).
engineering and especially in medicine – in a relative short period of time; and the role that IP professionals have played and continue to play in the promotion of innovation. Some examples of this are the progress from steam engine to space travel, autonomous vehicles (including in the artistic opportunities presented by such technology), or through the medical field from collecting and distilling urine, to “iron lungs” for victims of the polio virus, and the OncoMouse. And by providing some tasters of the current displays, far from my youthful recollection of dusty exhibits in glass
cabinets, to encourage patent attorneys to visit the museums unconstrained by childhood (whether their own or that of their offspring). And by doing so to spread the word about communicating the excitement of science and technology to a wider audience and to raise the appreciation of STEM to a more diverse community. Since then, Covid has taken over and visiting in person just does not work. With Covid, innovation and promoting engagement with innovation has never been more important for the UK. Innovation has been the buzzword of current politics for a considerable time. Covid-19 will cause a major4 hit to the world economy. Two of the self-identified leaders in innovation, the USA and UK have been hit by Covid much more seriously than many other countries, despite their levels of sophistication in innovation, and, at least in the UK being “led by the science”. That comes on top of Brexit – as to which we currently still do not know the road map, still less the outcome. But objective forecasters predicted Brexit will, unless there is some major intervention, also lead to a significant hit to the economy. And we are told a hit to the economy is also a hit to social wellbeing. Of course innovation will arrive from many directions, and one has already seen significant innovation in addressing issues in relation to Covid, some serious, such as potential vaccines, fast-tracked drug trials, test-and-tracking apps as well as financial innovations. These include also some not so serious innovations – you can take your pick5. The
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ARTICLE
INNOVATION
The Black Arrow R4 launch vehicle, 1971 – on display in Exploring Space
Citroen DS19 (1960) – early example of self driving technology modified by the Road Research Laboratory
Dominic Wilcox concept vehicle – on loan from Dominic Wilcox
role of IP practitioners and in particularly the patent profession will be important in this – as will be the politics of seeking and enforcing IP protection when it comes to Covid-inspired inventions, at least while Covid is a world health threat. One of the features of Covid-19 has also been the repeated display and reliance on mathematics – the “models” of infection and the now completely jargonised infection rate, or R number. Admittedly, some of the mathematician commentators – connected by another surging technology, Zoom – have
observed that the maths and especially the graphical representations of the maths, are simply awful. But the profile of mathematics and science generally, has led to a new interest in aspects of maths and science for a number of people. Similarly stories of the development of tests – antigen and antibody test, of spray patterns of droplets carrying viral material, of tracking and tracing (and apps for doing this), of vaccines and immunity, and of infection clusters, and the discussion of social behaviour, amongst many others display science to the general public. But sadly the level of understanding portrayed by politicians still appears to be weak. Why else is the UK, a leader in innovation including life sciences, one of the worst performers in handling the Covid crisis? Many of the lessons from this crisis are ones that could have been learnt, or at least interest excited, by displays at the Science Museum. I do not expect politicians and broadcasters to become conversant in
science in a moment, but I would like them to understand enough of it to know when and how to rely on it. Or to ask appropriate questions to make the decisions supported by it, and then convey that to the public. An example which springs to mind – and no doubt we will learn more about it in the future – is how decisions on testing were made in the UK. My lay conclusion at a very early stage (consistent with World Health Organization guidance) was that testing was important. I had been involved in work with both biotech companies and with the NHS and NHS laboratories. When I first heard that testing was going to be extended from the Public Health England Laboratories to labs in NHS hospitals6, my jaw dropped – why on earth had testing not been carried out more widely before or was the UK in a position that it could not keep up with testing requirements immediately following that announcement. Talking with colleagues in the patent profession, they repeated stories, similar to sourcing
Glass vessel for heating urine (1760 -1870) – Wellcome Collection
Iron Lung, England, 1953 – designed by George Thomas Smith-Clarke
The Harvard Mouse, or OncoMouse – freeze dried male transgenic mice
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INSTITUTE 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
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. CPD: 1; Prices: £73.20 | £49.20 members
Friday 19 June 2020 Webinar
EXAMINATION AT THE EPO: How it’s done, and what the examining division is looking for Time: 12.30–13.30
The Procedure of examination of European applications is defined in the European Patent Convention. It is described in more detail in the Guidelines for Examination. But how precisely does the Examining Division come to the conclusion that the application documents are in order for grant? An insight into the decision-making process knowledge may help to draft replies to the Communications of Examiner more efficiently. Speaker: Cillian Ó Donnabháin (EPO) CPD: 1; Prices: £73.20 | £49.20 members
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; Free for CIPA members – booking essential
Wednesday 24 June 2020 Webinar
ESSENTIALLY BIOLOGICAL PROCESSES AFTER G 3/19
Time: 12.30–13.30
Now that the Enlarged Board of Appeal in G 3/19 has confirmed that products obtained by an essentially biological process are not patentable, Rhiannon Turner will provide an overview of the decision and how we got here. She will also consider the remaining options for IP protection for such products. Speaker: Dr Rhiannon Turner (Greaves Brewster) CPD: 1; Prices: £73.20 | £49.20 members
Tuesday 30 June 2020 Webinar
CRISPR IP CONSIDERATIONS
Time: 12.30–13.30
Ever wondered why CRISPR is at the forefront of multiple patent interferences in the US and contentious proceedings before the EPO? This webinar will explain for those not familiar with the technology why there is such interest, will give a short overview of the IP battles aimed at all patent attorneys and, for those working
in life sciences, will finish with some considerations when drafting in this field. Speaker: Cath Coombes (Murgitroyd) CPD: 1; Prices: £73.20 | £49.20 members
Thursday 2 July 2020 Webinar
US PATENT-ELIGIBLE SUBJECT MATTER – LATEST THINKING
Time: 12.30–13.30
US patent attorneys Thomas J Kowalski and Dr Deborah L Lu (Duane Morris LLP) will provide an overview of patent eligibility under 35 USC 101, and examine the latest developments in the US – case law and practical experience before the USPTO – in the ongoing saga of patent-eligible subject matter vs ineligible natural phenomenon. The panel will examine the approaches being taken for determining patent-eligible subject matter, including whether and how a type of problem-solution approach is playing into whether an invention is patenteligible in the US under 35 USC 101. CPD: 1; Prices: £73.20 | £49.20 members
Friday 3 July 2020 Webinar
ACTAVIS, THREE YEARS ON: Much ado about nothing? Time: 12.30–13.30
The Supreme Court handed down its judgment in Actavis v Eli Lilly on 12 July 2017, almost three years ago. At the time it was said variously to be:
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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CPD & EDUCATION
the most seismic shift in UK patent law since the 1977 Act; no real change except in marginal cases; a longoverdue recognition of the doctrine of equivalents; the worst decision made in patent law for as long as anyone could remember; the start of a new golden age for patentees; the beginning of a whole new world of uncertainty; and a ruling both that Na = K and Na ≠ K. Douglas Campbell QC considers: • Which of these views, if any, has turned out to be correct? • How is Actavis actually being applied at first instance and on appeal? • Are patentees winning more cases, or is it different routes to the same result? • Does the doctrine of equivalents apply to validity?” Speaker: Douglas Campbell QC (3 New Square) CPD: 1; Prices: £73.20 | £49.20 members
INSTITUTE EVENTS
Tuesday 7 July 2020 Webinar
GOVERNMENT USE OF PATENTED INVENTIONS: Implications for Covid and beyond Time: 12.30–13.30
The ongoing Covid-19 pandemic has stimulated a lot of discussion around the issue of national governments rights to use patented technologies in dealing with public health emergencies. This webinar provides an analysis of national governments’ powers to make use of patented inventions. The speakers will examine the situation in three jurisdictions: Canada, where the Covid-19 Emergency Response Act (Bill C-13) received Royal Assent on 25 March 2020; the United Kingdom, where government use of patented inventions is already part of the Patents Act; and South Africa,
which has been very successful in bringing about pricing changes and increased distribution of medicines through use of an active citizenry, skilful interpretation of the constitution. Speakers: Jennifer Marles (Oyen Wiggs, Canada); John McKnight (Spoor & Fisher, South Africa); Adrian Bradley (Cleveland Scott York, UK) CPD: 1; Prices: £73.20 | £49.20 members
Friday 10 July 2020 Webinar
LATIN AMERICA: Patent law and practice Time: 12.30–13.30
This webinar will explain the latest thinking in patent procedure and strategy in Latin America. It will focus on the legal situation in the three largest economies in the region, Argentina, Brazil and Mexico, with expert speakers from all three jurisdictions. In addition to essential knowledge for UK practitioners seeking to obtain protection in the region, the session will cover the latest thinking on important topics including the patenting of medical methods, software patents, and enforcement. Speakers: Dr Mariana Bullrich (Noetinger & Armando, Argentina); Dr Leonor Magalhães Galvão (Magellan IP, Brazil); Aída Rendón Amelio (ARA Law Firm IP, Mexico) CPD: 1; Prices: £73.20 | £49.20 members
Tuesday 1 September 2020 Webinar
DABUS: Seeking to patent inventions made by an AI system – a view from the applicant’s patent attorney Time: 12.30–13.30
The DABUS patent applications have been widely reported in the media and have prompted many commentaries on the merits of the cases by people working or Volume 49, number 6
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interested in patent law. The UKIPO, the EPO, the USPTO and the German Patent Office have refused to allow DABUS (an AI system) to be named as the inventor. However, their decisions have raised many more questions than they have answered. There are issues of law, for instance whether patent laws prohibit the granting of patents for inventions made by AI systems or the naming of an AI system as inventor, as well as issues of principle. Robert Jehan has been handling the UK and EPO patent applications, as well as being closely involved in the other applications in the same family. He will gladly provide a summary of the history of the cases and issues on appeal, to the extent that they can be discussed at this time. Speaker: Robert Jehan (Williams Powell); CPD: 1; Prices: £73.20 | £49.20 members
INSTITUTE EVENTS
Black Lives Matter CIPA statement, first published online, 7 June, 2020 As the world continues to react to the shocking death of George Floyd, CIPA is standing in solidarity with its black and minority ethnic staff and members and the work of IP Inclusive, particularly its network for black, Asian and minority ethnic professionals, IP & ME. CIPA and its members strive to ensure equality for all users of the IP and wider legal system and will continue to promote diversity and inclusivity in the IP professions. But the harrowing events in the USA and subsequent reaction in the UK and elsewhere give us all cause to reflect and consider how we can change. CIPA recognises that more needs to be done and will continue to work with IP Inclusive to improve under-representation, strengthen the roles of BAME allies and work towards removing racism and discrimination wherever it occurs. Racism has no place in our society.
Catch up with CIPA’s new podcasts at: https://cipa.org.uk/policy-and-news/podcasts/
Study Guide to the Patents Acts (2020) £59 non-members – £48 members, +PP for outside the UK Doug Ealey’s Study Guide to the Patents Acts sets out to achieve the opposite of such books as Visser and Hoekstra. Rather than provide exhaustive commentary on patent law for reference during the open book EQEs, it instead simplifies the law and commentary as far as possible to provide a bare-bones reference that can be readily learnt by students taking the closed-book UK finals. This book is designed to help prepare for the PEB FD1 (formerly P2) examination. The 12th edition has been updated to incorporate recent changes in law. To order a copy please email publications@cipa.org.uk or visit www.cipa.org.uk/eshop/ Or go to www.linkedin.com/groups/4425194/ to find out more on the FD1 / P2 Study Guide group on LinkedIn.
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PERSONAL
STAFF PROFILE
CIPA staff profile Dwaine Hamilton, Head of Membership What are your present duties at CIPA?
well the last time I saw it, it was clear with a copy of the CIPA Journal and my “B*£l$*%t button which is only used in extreme circumstances… can I say this?
• The CPD programme – yes behind all of those amazing webinars, seminars and conferences you’ll find the Membership Team and behind them, you’ll usually see me. • Membership renewals – usually the person who hounds the person who hounds you for your annual subscription. • Course delivery – Getting a grip of course delivery, especially at this unprecedented time is a big task but alongside our brilliant volunteers, the Events and Professional Development Coordinator and I are keen to make improvements to how CIPA delivers its courses.
How do you like to spend your time outside work? I’d love to say playing football
I shouldn’t take full credit as its completely a team effort but I’m ultimately responsible for the team that deliver:
When did you join CIPA? April 2014. What do you like most and least about the job? I love that I get to work with a diverse
group of individuals with a range of skills. I enjoy utilising my skills and applying them in an organisation that is continuously growing. I also enjoy watching my team grow, learn new skills and take on new challenges which working at CIPA will always bring. Let’s face it, it would be boring if it didn’t. Something i like least about the job? Right now, I would say the current office layout I have doesn’t work best for me but that’s probably because it’s the same space I live in. However in normal conditions, I genuinely can’t think of anything substantial that’s worth writing about.
What is the state of your desk at this moment? My desk is my breakfast table at the moment. I currently have a copy of our events insurance policy which has been read a large number of times recently. My daughter wrote a story about me and placed it on the table, so that’s currently on my desk too. My work desk,
Volume 49, number 6
but it seems like an age since I’ve been on a pitch, online gaming, socialising (a nice word for having a beer) and spending quality time with the family. Not in that order by the way!
What is your favourite food? Mum’s
cooking… but at work the team mock me for always making Spaghetti Bolognese. It’s not that it’s my favorite, it’s just that unfortunately my culinary skills are limited to about four dishes. If I’m out, I can never say no to a good steak.
What is your favourite drink?
Long Island Ice Tea. I don’t drink it that much as it usually means I don’t remember my night. I’m hoping all pictures have been deleted.
What is your favourite place you’ve visited? Jamaica as a whole but if I were to
to a person who was armed with absolutely everything in his pencil case.
What would you do if you won the Lottery? Combination of a few things; firstly
seek financial advice, then spend some on a holiday and looking after close family then invest in something that could possibly earn us more money.
What would you do if you became Prime Minister? Getting serious now… I could
say a number of things but if were to pick one, try and take key services like the NHS and policing out of party politics so that the foundations are secure.
What is a book, film or piece of music you’ve enjoyed recently? I’ve just watched
What place would you most like to visit? Brazil
part 4 of Money Heist on Netflix, which I found very engaging. I also stumbled upon The Capture on BBC iPlayer which is also worth a watch if you’re struggling during the lockdown stay safe period.
The person you most admire or would like to meet, and why? Paulo Coehlo
What are three words you’d use to describe yourself? Stoic (at times),
be specific – Dunns River Falls
to discuss where his ideas of spiritually motivated characters were created and to also say thank you. His books did wonders for me growing up.
What is the best piece of advice you’ve ever been given? “Try and surround yourself with people smarter than you” said to me by my Mum many many years ago on my way to secondary school. I remember it vividly as there was a whole thought process as to what smart people looked like. I think my Mum was stitching me up. In the end I sat next
straight-forward, supportive
Where would you like to be in five years? Personally, I’d like to be in a bigger
family home with a garden, (lockdown has been tough) with my daughters (warning off potential boyfriends!). Professionally, I have aspirations of being at an organisation, membership or otherwise, where I’m able to take the disruptive and creative approach (from Lee and Neil), matched with my own at a Chief Executive level. JUNE 2020
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