CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
July-August 2020 / Volume 49 / Number 7-8
Who has the authority to adjust the scope of the EPC?
Call for clarity on Talking about AI and patents the R word(s) Computer Technology Lee Davies Committee
Important developments for SPCs Summer Review
The EPC and its impact on the UK economy and innovation
Book Now! Congress 2020 & IP Paralegal Virtual Conference
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.
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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 12 18 UP FRONT 3 Towards a new CIPA Lee Davies 4 Talking about the R word(s) Lee Davies 6 Council Minutes Lee Davies 8 UK qualifying examinations Lee Davies
NEWS 5
Overseas update
Amanda R. Gladwin 9 Patenting inventions created
using an AI system
Computer Technology Committee 11 Representation rights for UK IP
12
professionals
Richard Mair
PO oral proceedings and E extensions of time
Patents Committee 14 Accreditation of a qualification
16
pathway
IPReg consultation response
Career-long competence
LSB call for evidence Lee Davies
Volume 49, number 7-8
50 18
Mercer Review Summary of the main points 20 European Patent Convention The EPC and its impact on the
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UK economy and innovation Tony Clayton Manual of Patent Practice
ARTICLES 40 Progression through the PEB exams
Julia Gwilt & Michael Yates 44 SPC Summer Review Carpmaels & Ransford 50 EPC – Dynamic interpretation Is the Enlarged Board immune to political pressure? Alice Wales
DECISIONS 54 P atent decisions Beck Greener 56 I PO decisions David Pearce & Callum Docherty 57 E PO decisions Bristows 60 Trade marks Bird & Bird
EDUCATION 55 IP Paralegal 69 70 75
Virtual Conference 2020 CIPA Congress Webinars and seminars Study Guide to the Patents Acts (2020)
PERSONAL 72 74 76
Obituary: Donald Vincent IP Inclusive update
77 78 82 83
Meet the team
Andrea Brewster
in2scienceUK update
Luke McKelvey
Angelina Smith
Yellow Sheet Letters to the Editor Crossword
THE PINKS 84 Courses; International; Recruitment; Support
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ECONOMY
EPC
The EPC and its impact on the UK economy and innovation The UK has formally left the EU, and the transition period will end on 31 December 2020. In order to build a new trading future independent of the EU, the UK is seeking to agree free trade agreements (FTAs) with various countries around the world. An FTA with the United States is seen as a priority. Both the UK and the US have set out their respective negotiating objectives. The UK government commits to securing intellectual property rights that “are consistent with the UK’s existing international obligations, including the European Patent Convention (EPC), to which the UK is party.” The US government states it will seek provisions governing intellectual property rights “that reflect a standard of protection similar to that found in US law”. UK and US objectives are not fully aligned, and a similar nonalignment may well arise in negotiations with other countries. This carries the serious risk of creating damaging uncertainty about the UK’s continuing membership of the EPC. The IP Federation and CIPA believe this is a most important issue on which the highest quality of evidence is essential, and
Executive summary
An effective intellectual property system is vital for competitive, innovative, economies. The US and UK were among the earliest to create patent offices with clear rules on what constitutes an innovation, and legal rights to protect it. The United Kingdom is a founder member of the European Patent Convention (EPC). Created in 1973 by EU and non-EU states, it set up:
Contents Executive Summary, 20 Background to the EPC, 22 IP, research and innovation, 26 UK as an innovation gateway, 29 Economic impacts if UK were to leave the EPC, 30 Annexes A. Value of UK patent attorneys, and their international sales, 33 B. Unicorns in 2020, and their IP, 37
we therefore jointly commissioned an impact assessment from Mr Tony Clayton, formerly Chief Economist of the UK IPO. This independent report, reproduced across the following pages, shows that the UK government’s commitment to maintaining its membership of the EPC, a non-EU international treaty, is vitally important. The EPC is not only important for the UK economy but also for US companies, not least because US inventors working with UK patent attorneys are the biggest users of the EPC system. If the UK was required to change its law to comply with a US FTA, and if the change resulted in uncertainty about the UK’s continued participation under the EPC, all parties would lose, and new barriers to trade would be erected. This is one reason why we believe patent law harmonisation issues are best dealt with in multilateral fora, rather than in bilateral FTAs. This demonstrates unequivocally the hugely significant value to both the UK and the US of the UK’s continuing membership of the EPC, and why this should not be brought into question in the current FTA negotiations.
• common criteria across countries of what can be patented; • the European Patent Office (EPO), to examine applications and grant patents, to avoid duplication of effort in each country; • rules on how successful applicants can validate EPO granted patents in EPC states they designate, in the form of a ‘bundle’ of national patent rights; and • rights created by validated EPO grants regulated by national courts, not the Court of Justice of the European Union (CJEU). The economic benefits of the EPC to the UK include: • much lower costs to business in establishing patent rights across contracting states; • consistency of patent rights, and of legal precedents for enforcement, with London IP courts playing a major international role; • creation of an international market in technical and legal businesses services
in IP, in which the UK has a large and demonstrable competitive advantage, based on technical expertise and the English language; and • creation of a world-class technical and legal skills base supporting international companies which choose the UK as a base for innovation because they can conduct research and create IP here, and manage its international exploitation in one place. The EPC has 38 contracting member states, and its associated countries stretch from Morocco to Cambodia. It is vital to the innovation economy of Europe, and especially to the United Kingdom. Most English-speaking firms around the world use UK IP professionals to secure patent protection across Europe using [the EPC]. UK and international firms overwhelmingly see the EPC / EPO as the most effective and efficient choice to secure patent protection in the UK – 90% of patent rights created in the UK between 2000 and 2018 were grants by
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ECONOMY
EPC
Impacts can be summarised as follows: Direct GDP impacts
Every year
Loss of UK IP legal export services related to EPO links Increase in UK IP legal import services for EPO – UK firms Increase in UK IP legal import services with EPO – international
£746 million £35 million £56million
Total
£837 million loss
Direct cost Impacts, to business
Every year
Increase in business costs (mainly attorney fees) for innovators to secure UK patent rights of which: • Added costs to US-owned businesses in UK • Added costs to Japanese/German-owned businesses in UK • Added costs to UK-owned businesses
£560 +/- £120 million
Direct costs to government
Every year
Cost of extra patent examination and processing to retain control of patent decisions under UK jurisdiction
£640 +/- £110million
£170 million £204 million £ 51 million
Estimates of cost to business due to additional patent filing and prosecution are based on costs of straightforward applications taken through to grant. Additional costs to government would need to be recouped from businesses through patent filing, grant and renewal fees if the UK IPO remained a selffinancing trading fund.
Loss of UK IP services capacity
Early years impacts
Loss of jobs in technical / legal business services
3,500 jobs including 1,100 patent attorneys or more
Reduction in training for UK IP profession, and pro bono help for new innovators
Profession unable to fund professional development, or support for SMEs
Indirect impacts
Medium term
Relocation of UK IP management work in international firms
Many patent attorney posts in UK branches of international firms (up to 150 jobs – est.)
Potential relocation of suppliers / R&D by international firms
Engineering at risk Some aerospace and consumer products Threat to R&D surplus
Loss of growth by ‘gazelles / unicorns’, worth at least £22 billion in recent market valuations, via weaker IP support
Risks to jobs growth Weaker IP will reduce venture finance.
Loss of growth in the wider economy through weaker innovation
Productivity lower where R&D and value chains are cut.
the EPO, validated for UK. Less than 10% were granted by UK IPO. Of all EPO patents granted, inventors validate over 90% in UK. If the UK were to lose its role in the EPC,1 the economic impacts would include: Volume 49, number 7-8
• Direct loss of UK patent attorney service exports to firms from around the world using the UK IP profession to file, prosecute and manage patents at the EPO, because UK attorneys would lose rights to do this work. • Direct increase in UK imports of IP
services by firms operating in UK, from patent attorneys in other EPC contracting states who would have sole rights to work with the EPO. • An immediate increase in business costs for UK-based and international companies seeking to protect JULY-AUGUST 2020
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ECONOMY
EPC
Annex B – Analysis by Scott Roberts, BT.
UK Unicorns in 2020 and their IP The list of current UK businesses qualifying as “unicorns” and also some businesses that have exited “unicorn” status by way of acquisition, merger or business reshaping includes 24 current firms, and five which have changed. Using publicly available patent publication information (Espacenet), we can identify: • • • •
patent applications filed by these businesses; in which jurisdiction the applications were filed; who filed them (i.e. which patent attorney firms); and also an inference as to sequence of patent filing by IP office.
Not all patent applications that are filed are published, so these findings constitute a minimum number.
Company
Patent first filing jurisdiction
Inferred patent filing strategy
It is reasonable to identify the patent attorney firm engaged for the earliest patent applications for a unicorn as most likely to be the first primary patent advisor for the unicorn during its start-up. Thus we can infer the source of patent (and IP) advice for a unicorn based on the earliest patent filings. For the unicorns reviewed, there was consistency of firms employed across patent applications. The firms, and their patent activities, are set out in the spreadsheet below. Of the 24 current unicorns and five exited unicorns, 14 had patent filings that could be located publicly (the others generally relating to Fintech for which patents play a lesser role). Of these, all 14 (100%) have employed the services of UK patent attorneys to file their first patent applications. Also, in all cases, where subsequent filings have been made as PCT/EPO filings, all 14 (100%) have continued to use the services of UK patent attorneys.
Likely first patent service firm(s) based on agent for first filings
~Valuation (£bn)
Business Areas
Investors
CURRENT UNICORNS
GLOBAL SWITCH
no patents/applications identified
$11.08
Hardware
Aviation Industry Corporation of China, Essence Financial, Jiangsu Sha Steel Group
REVOLUT
no patents/applications identified
$5.50
Fintech
index Ventures, DST Global, Ribbit Capital
ARRIVAL
United Kingdom (>36 filings)
$3.91
Auto & transportation
Kia Motors Company, Hyundai Motor Company
GREENSILL
no patents/applications identified
$3.50
Fintech
SoftBank Group, General Atlantic
TR ANSFERWISE
no patents/applications identified
$3.50
Fintech
IA Ventures, Index, Ventures, SV Angel
THE HUT GROUP
no patents/applications identified
$3.25
E-commerce & direct-toconsumer
KKR, Old Mutual Global Investors, Artemis Investment Management
BGL GROUP
United Kingdom (at least 1 filing)
$3.00
Fintech
CPP Investment Board
MONZO
no patents/applications identified
$2.55
Fintech
Passion Capital, Thrive Capital, Orange Digital Ventures
OAKNORTH
no patents/applications identified
$2.30
Fintech
Clermont Group, Coltrane Asset Management, Toscafund Asset Management
GB then WO then EP/US/ors
Venner Shipley LLP
Waterfront Solicitors LLP
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ECONOMY
Impact on the UK IP system The scale of impact on UK IPO is highlighted by the income figures related to patents in its financial report to 2019, shown earlier in Table 1, and by the fact that it currently grants fewer than 10% of the rights created for the UK market. It is clear that the patent operation – and the wider office – is largely paid for by patent renewal fees granted by the EPO, for which the UK IPO has incurred little or no cost to grant. Assuming that a negotiated EPC withdrawal would give UK a breathing space, and a limited period in which it could replace these renewal fees as EPO granted patents run out, the UK IPO would need to scale up the number of UK patent grants by between 1,000% and 2,000%. To manage anything like the volume of patent applications to maintain UK rights, the UK IPO would need a huge increase in the number of patent examiners. Examiners take time to train and occupy some of the best paid jobs in the UK IPO. Costs of fully staffing up would run into hundreds of millions. These additional costs would need to be carried by the UK IPO without any additional short-term income apart from fees for filing, search and examination, which are significantly less than cost. It would take several years for renewal fees for new UK patents to kick in and provide the subsidy. The alternative to scaling up the UK’s patent capacity would be to accept EPO grants as evidence to grant in the UK. This could avoid tying up thousands of British science PhDs to carry out work duplicating examinations done at the EPO,
EPC
and adding cost to businesses without adding any real value. Indirect impacts Changed patenting behaviour by international firms deciding not to patent in the UK Having spoken to over a dozen patent managers in leading UK-based firms’ patent teams it is clear that they are as heterogeneous as the patent attorney firms. Their reactions to a change in the UK’s position in EPC would cover a very wide range. First, it is clear that pharmaceutical firms, wherever based, would continue to seek patent cover in every territory. They would mostly pay the increased cost of business, because they need patents to cover the whole of the markets they serve. Some ICT firms take a similar approach, willing to pay the additional costs of patenting most of their inventions across most of Europe and in the UK. They would generate additional patent applications for the UK IPO, but the work to do this may not be based in the UK. Others take a different approach, reasoning that it is possible, on low-margin highvolume products to protect their European market sales by patenting in a few key markets (which to date usually include Germany, UK and France). National patent applications could be the preferred route to this type of coverage. If the UK was not in the EPC, the UK market may not always be one of those selected for patenting some new inventions. UK IP teams would have a weaker role in future plans for IP management.
Notes and references 1 UK negotiating objectives are to secure outcomes which ‘are consistent with the UK’s existing international obligations, including the European Patent Convention (EPC), to which the UK is party’. The analysis in this report aims to identify the economic benefits of achieving this objective. 2 Filing and country data from two independent sources, Patstat and Questel, from independent analysts, have been used for the analyses in this section. Although data treatments differ, the main conclusions are consistent and underpin the arguments set out in the analysis. 3 Data in this section comes from a survey of UK patent attorney firms accounting for 429 patent attorneys, of incomes and exports. Data from an independent search of reports and accounts data on leading IP firms, with another 479 attorneys have been incorporated; see Annex A
Volume 49, number 7-8
Engineering and consumer goods have the most diverse responses. Some were keen to stay using the UK IPO as the first place to file, then approach the EPO via PCT applications at WIPO. Those which already have research centres in UK or elsewhere in EPC countries, would be able to manage their IP work between them and patent as appropriate. However, their overall number of patents – especially in UK – would reduce to stay within IP management cost limits. But others were concerned that exposing their innovation and their supply chains to a situation where IP regimes could deteriorate or diverge under them has real risks. Joint development with suppliers was one concern, especially where collaboration requires sharing IP across borders. There could be pressure to develop new activities, and new European supply relationships, within the EPC countries. For companies which can make choices between international partners the costs of doing this could be lower than the risks of continuing ‘business as usual’ in a country where their IP position is more risky. Relocating IP management Patent managers in UK-based IP teams would lose their rights to file or represent at EPO, and so changes would be immediate. The number of companies which would consider moving their IP management away from the UK may initially be small – but they would be significant international players. Several have indicated that they would need to move at least some of their internal patent attorney work, in addition to having to buy more external IP services from European attorneys. This would further reduce the demand for IP services in Britain, weakening the profession in a downward spiral. The economic impact of a 20% relocation in industry patent attorneys would be small, but if development work and value added in sourcing for supply chains followed, the impact on GDP would run into billions. The most vulnerable areas appear to be transport, engineering and consumer products, where there is significant JULY-AUGUST 2020
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PEB
EXAMINATIONS
Progression through the PEB exams The PEB offers a flexible way to achieve the foundation and final qualifications mandated by IPReg. Do candidates make use of this flexibility and does it impact on their performance? Are candidates that take the PEB foundation certificate more successful than those who choose other routes? Julia Gwilt (Fellow) and Michael Yates have analysed a snapshot of examination data from 2017 to 2019 to identify emerging patterns. Summary
PEB is an examination agency which is accredited by IPReg to run both foundation and final examinations. For ease of reference, the titles of each examination are set out in the table below. Candidates are able to take the five foundation examinations in any order and in any combination. Furthermore, a candidate only needs to pass FC1 to eligible to take any of the final diploma examinations. The data for the 208 different candidates who sat at least one foundation certificate examination between 2017 and 2019 has been analysed to see if there are emerging patterns and it is clear that the candidates make use of the flexibility. In the snapshot of data from 2017 to 2019, approximately half of the candidates sat each of the five foundation examinations at least once – 76 candidates successfully completed
the qualification in this time with 40 managing this in a single sitting. Although several candidates each year sit all five papers, the most common number of papers to be sat each year is three, closely followed by two. All combinations were popular except sitting four papers. The most popular split appears to be to take FC1, FC2 and FC3 in one year and FC4 and FC5 another year. Additionally, 47 candidates took a combination of foundation certificate and final diploma examinations in a single sitting. The most popular final diploma examinations to combine with foundation certificate examinations were FD1 and FD3.
General trends
As shown in Figure 1, from 2015 to 2019 the numbers of candidates sitting each of the foundation certificate examinations have grown, with increases ranging from 18% to 50%. FC3 and FC5 have seen uplifts
Number Foundation Certificate
Number Final Diploma
FC1
UK Patent Law
FD1
Advanced IP Law and Practice
FC2
English Law
FD2
Drafting of Specifications
FC3
International Patent Law
FD3
Amendment of Specifications
FC4
Design & Copyright Law FD4
FC5
Trade Mark Law
Infringement and Validity
in candidate numbers of 40% and 50% respectively. The smallest increase of just 18% is for FC4. In 2019, it is also notable that the highest number of candidates (approximately 70) sat each of FC1, FC2 and FC3. As explained below, this is a popular combination of foundation certificate papers at the first sitting. The number of candidates sitting the EQE pre-examination is also shown. Over the same period, there has been a 55% increase in numbers. This suggests that the number of trainees recruited into the profession has increased significantly. Candidates must complete a minimum of two years’ training before sitting the EQE pre-examination but typically sit FC1 one-year into the profession. On this basis, it appears that approximately onethird of candidates sitting the EQE preexamination follow the PEB foundation certificate to qualification.
Combination of foundation certificate examinations
Candidates are able to take the five foundation examinations in any order and in any combination. The data from 2017 to 2019 has been analysed in more detail to see if there are any preferred combinations of examinations. There were 208 different candidates who sat at least one foundation certificate examination between 2017 and 2019. Figure 2 shows how many papers were sat together each year by each candidate from 2017 to 2019. The most popular
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PEB
Combination of foundation certificate and final diploma examinations
Candidates need to have passed FC1 to be eligible to sit final diploma examinations and between 2017 and 2019, 47 candidates sat a mixture of foundation certificate and final diploma examinations. Figure 5 shows that most candidates sat a single final diploma examination when sitting any remaining foundation certificate examinations. Most of these candidates sat only one or two foundation certificate examinations. Figure 6 shows 24 of the 47 candidates selected FD1 and FD3. Regrettably, the pass rate for these candidates is lower than the normal pass rates at just 17%, 27%, 58% and 23% for each of FD1, FD2, FD3 and FD4 respectively. The highest pass rate is for FD3 and this is comparable to the overall pass rate for this examination
Pass rates at foundation certificate
During 2017 to 2019, 88 of the 208 candidates attempted all five examinations at least once and 64 candidates (73%) completed the foundation certificate by passing all five examinations; 40 of these successful candidates passed all five examinations in a single sitting. Generally, the pass rates for each foundation Volume 49, number 7-8
Figure 1 – Number of candidates for foundation papers Figure 1 - Number of candidates for foundation papers
180 160 140
Number of candidates
number of papers to sit in an individual year is three, closely followed by two. Very few candidates choose to sit four papers. Of the 64 candidates sitting all five papers together in one year, 28 candidates passed them all. Nearly half of the 51 candidates sitting just one paper were sitting only FC4 and this may be explained by the relatively large number of candidates needing to resit this paper. Figures 3 and 4 show the most popular combinations of papers when siting three or two papers. The most popular combination of three papers is FC1, FC2 and FC3 which was chosen by 46 candidates. Not surprisingly, the most popular combination of two papers is FC4 and FC5. Another popular split is to do FC1, FC2 and FC4 followed by FC3 and FC5.
EXAMINATIONS
FC1 (P1)
120
FC2 (Law) 100
FC3 (P5) FC4 (D&C)
80
FC5 (P7) EQE Pre-exam
60 40 20 0
2015
2016
2017
2018
2019
Figure 2 - Number of papers sat each
Figure 2 – Number of papers sat each year by each candidate year each candidate from 2017-2019 from by 2017-2019
51
64
Sat 1 Sat 2 Sat 3
11
Sat 4 79
Sat 5
88
Figure 3 – Three combinations Figurepaper 3 - Three paper 2017-2019 combinations 2017-2019
Figure 4 – Two paper combinations Figure2017-2019 4 - Two paper combinations 2017-2019
FC1, FC2, FC3
5 4 4 5
8 3
8
6
FC1, FC3, FC5 46
11
FC1, FC2
FC1, FC2, FC4 FC1, FC4, FC5 FC2, FC3, FC4 FC2, FC4, FC5
FC1, FC3 9
FC2, FC4 7
29
5 12
FC3, FC4 FC3, FC5 FC4, FC5 Other
FC3, FC4, FC5 Other
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SPC
SPC Summer Review There have been a number of important developments for supplementary protection certificates (SPCs) in Europe over the past 12 months, including new case law from the Court of Justice of the European Union (CJEU) and significant national court decisions. In this two-part series, we distil these recent events into broader topics that continue to keep SPC practitioners on their toes. This first part looks at the perennial favourite of what is required for a patent to “protect” an active ingredient. Next, the recurrent question of whether an SPC can be based on a third party’s marketing authorisation is discussed. We conclude with a discussion of the latest national court decisions that have applied the test set out in the CJEU’s Teva (C-121/17) decision to SPCs for combination products where the claims of the basic patent do expressly mention both active ingredients. The second part of this series will be published in the September 2020 issue of the CIPA Journal. We will cover the latest developments on the interpretation of the requirement for an SPC to be based on the “first authorisation”, and an overview of how things currently stand for SPCs in a post-Brexit Europe. Daniel Wise (Fellow), Susan Hancock (Fellow)
REVIEW
Article 3(a): Two steps forward, one step back? For the first time in years, there are (at the time of writing) no pending CJEU references relating to the meaning of “protected by a basic patent” within the meaning of article 3(a) of the Regulation (EC) No. 469/2009 (the “SPC Regulation”). This unusual situation may be a sign of increasing clarity as to how the law should be applied since the CJEU’s judgment in Teva (C-121/17) was handed down in mid-2018. That judgment established a two-step test (the “Teva test”) for determining whether a combination of active ingredients not expressly mentioned in the claims of a basic patent is “protected” within the meaning of article 3(a). The first step involves determining, from the point of view of a person skilled in the art and on the basis of the prior art at the filing date or priority date of the basic patent, whether the combination of active ingredients “necessarily falls under the invention” covered by that patent. The second involves determining whether each of the active ingredients is “specifically identifiable” in the light of all the information disclosed by that patent. The Teva test has now had almost two years to embed itself in the minds of practitioners, patentees and national tribunals alike, and as time goes on, we continue to see it being applied to different situations and to different types of claims. Combination claims: Teva v Gilead and related national litigation The Teva test arose during pan-European litigation related to Gilead’s SPC for Truvada®, which contains a combination of tenofovir disoproxil and emtricitabine. Teva had challenged the validity of the SPC under article 3(a) on the grounds that the basic patent did not mention the name or structure of emtricitabine and therefore did not protect the combination product. Due to a lack of clarity in the law, the High Court of England and Wales referred the case to the CJEU for guidance – Teva & Ors v Gilead Sciences Inc. [2017] EWHC 13 (Pat). After the case returned to the High Court following the CJEU’s judgment in Teva, Arnold J (as he then was) held that the Truvada SPC was invalid – Teva & Ors v Gilead Sciences Inc [2018] EWHC 2416 (Pat). According to Arnold J, the combination of tenofovir disoproxil and emtricitabine does not “fall under the invention” covered by Gilead’s patent and emtricitabine is not “specifically identifiable” in that patent, because the patent does not mention emtricitabine, and says nothing about the possibility that tenofovir disoproxil and emtricitabine may be combined to treat HIV.
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SPC
Gilead’s subsequent appeal was unsuccessful – the Court of Appeal held that the Truvada SPC failed the first limb of the Teva test (Teva & Ors v Gilead Sciences Inc. [2019] EWCA Civ 2272). According to the Court, that first limb examines whether each component of a combination product is “required” by the claim of the basic patent in question. That test was not deemed to be met in the case of the Truvada SPC because the presence of another therapeutic ingredient was expressly “optional” in the claims of Gilead’s patent. National courts elsewhere in Europe, for example in Ireland and Spain, have reached similar conclusions when applying the Teva test to Gilead’s Truvada SPC during revocation and preliminary injunction proceedings. Do we now have an article 3(a) test that can be implemented consistently, at least for combination SPCs? Perhaps, although some national courts are arguably pushing the Teva test beyond its intended limits. As explored in detail in a later article in this review, the Irish courts seem to have taken the unusual step of applying the Teva test in situations where the claims of the underlying patent expressly mention both active ingredients in a combination (Merck Sharp and Dohme v Clonmel [2019] IEHC 814), with unfortunate consequences for Merck’s Inegy SPC. Markush claims and functional claims: Royalty Pharma (C-650/17) and Sandoz v Searle (C 114/18) Although the CJEU’s ruling in Teva is explicitly limited to combination product SPCs, the impact of that decision has spread to single active ingredient SPCs, in particular those based on patents with functional claims and Markush claims. Functionally worded claims and Markush claims are often vital to provide adequate patent protection for inventions in the pharmaceutical field, as they are capable of protecting a large number of related compounds linked by a common function or structural motif. However, the breadth of these types of claims has led national courts to raise questions about whether they can legitimately “protect” a product under article 3(a). The fact that these sorts of claims are typically used to obtain SPCs for products that were not developed until after the filing date of the underlying patent has also given national courts cause for concern. The concerns of national courts culminated in two CJEU references addressing claims with functional wording or Markush formulae – Royalty Pharma relating to an SPC for sitagliptin based on functionally worded claims and Sandoz v Searle relating to an SPC for darunavir based on Markush claims. In Royalty Pharma, the CJEU had been called upon by the German Federal Patent Court to provide guidance as to whether an active ingredient which is neither expressly mentioned in the claims nor provided as a concrete embodiment in the patent, but which is covered by a functional definition in the claims of that patent, is “protected” within the meaning of article 3(a), even if that product was developed only after the filing date of the patent. The facts of the case related to Royalty Pharma’s SPC Volume 49, number 7-8
REVIEW
application for sitagliptin based on its patent claiming uses of dipeptidyl peptidase IV (DPP-IV) inhibitors for lowering blood glucose levels. Sitagliptin is a DPP-IV inhibitor and falls under the functional definition of the claims, but is not individualised in the basic patent as it was not developed until after the patent’s filing date. The CJEU issued a decision in Royalty Pharma in April 2020. In a judgment with potentially far-reaching ramifications, the CJEU killed off the “core inventive advance” test for compliance with article 3(a) – favoured by English courts – once and for all, and appeared to confirm that the two-step Teva test applies to single active ingredient products as well as combination products. The CJEU also held that products falling under a functional definition in a patent claim but developed only after the filing date of that patent, after an “independent inventive step”, are arguably not “protected” by that patent within the meaning of article 3(a). While some will welcome the clarification that the Teva test applies universally as a step forward, further guidance from the CJEU may be needed before the second limb of that test (that the product is “specifically identifiable”) can be applied fairly and consistently in practice to different types of claims and to the vast array of different products covered by the SPC Regulation – from simple small molecules on the one hand to complex biological products such as vaccines and cell therapies on the other. Potentially more problematic is the additional “independent inventive step” hurdle. This new element of the article 3(a) test is likely to cause further headaches for patent offices and national courts, which may now need to examine not only whether a product is the subject of a later inventive step but also whether that inventive step was “independent”. In practice, this new hurdle may restrict the choice of patentees deciding which patents to rely on to obtain SPCs for new products, and as discussed in the following article in this review, has possible implications that extend to article 3(c) and the issue of so-called “third party SPCs”. It remains unclear how article 3(a) should be assessed for Markush claims. Unfortunately, however, we will not obtain clarification in the near future on this point given that the parties in Sandoz v Searle settled before the CJEU issued its judgment. Conclusion While the CJEU’s guidance on article 3(a) is often helpful to settle specific SPC disputes with known facts, the judgments in Teva and Royalty Pharma were no exception to the general rule that CJEU decisions on article 3(a) tend to raise more questions than they answer. How should Markush claims be assessed under article 3(a)? And how should the “independent inventive step” test from Royalty Pharma be applied? We will, no doubt, see further CJEU references relating to these questions, and others, in the near future. Paul Kaufman (Fellow) JULY-AUGUST 2020
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EPC
Dynamic interpretation Is the Enlarged Board immune to political pressure? In G 03/19, the Board has shown that it is prepared to defer to the majority vote of the Administrative Council when determining the scope of the European Patent Convention (EPC). By Alice Wales (Fellow)
W
ho has the authority to adjust the scope of the European Patent Convention (EPC)? Changes to the wording of EPC Articles can only be made by unanimous agreement of the Contracting States. However, the Enlarged Board of Appeal has now ruled that the scope of an Article can be expanded by way of a “dynamic interpretation”, to conform to a “clear legislative intent” expressed by a majority vote of the Administrative Council. Whilst such a shift will undoubtedly make it easier to adapt the law to deal with changing circumstances, could it open the door for changes to the EPC to be effected at the whim of political imperatives which are not shared by all the Contracting States?
G 03/19 – the Enlarged Board rules on the meaning of Article 53(b) EPC
G 03/19
to pass Rules mandating a specific interpretation of Articles of the EPC, even where this interpretation conflicts with settled case law of the Enlarged Board; and suggests that the Enlarged Board may then be open to following the political lead of the Administrative Council in conforming to the new Rules. This may raise uncomfortable questions around the judicial independence of those determining the meaning and application of the EPC, and the power of the Administrative Council to secure changes to the scope of the EPC on a less-than-unanimous vote.
Background: the legislation and case law
Article 53(b) EPC excludes from patentability “plant or animal varieties or essentially biological processes for the production of plants or animals… [other than] microbiological processes or the products thereof ”. In joint decisions G 02/12 (Tomatoes II) and G 02/13 (Broccoli II), the Enlarged Board of Appeal considered whether the exclusion of “essentially biological processes for the production of plants” should extend to the products of such processes. The Enlarged Board considered the grammatical meaning of the words, the context of the Article in the statute, the teleological purpose of the exclusion having regard to the Biotech Directive3, and the original intentions of the legislators. The Enlarged Board found no reason to conclude that Article 53(b) excludes the products of an essentially biological process from patentability, and no justification for extending the interpretation of the exclusion to embrace such products. The Enlarged Board explicitly dismissed the option of applying a “dynamic interpretation” to Article 53(b) in light of recent scientific and political developments, noting that such developments had not led the legislators of the EPC to make any amendment to the EPC.
In this recently published Opinion, the Enlarged Board has decided to abandon1 its reasoned and endorsed interpretation of Article 53(b) EPC, in favour of a contradictory interpretation, which was introduced by the Administrative Council on a majority vote through an amendment to the Implementing Regulations. The Enlarged Board’s Opinion breaks a stalemate at the EPO concerning the patentability of plant and animal products under Article 53(b). This was occasioned by a direct conflict between the case law of the Boards of Appeal and the provisions of new Rule 28(2). The Enlarged Board has restored harmony and clarity by revising its interpretation of Article 53(b) to conform to the new Rule. Subject to narrow transitional provisions, plants, plant materials and animals exclusively obtained by an essentially biological process are now excluded from patentability under the EPC. The Opinion restores legal certainty to this area of practice, but is controversial. The Enlarged Board made clear that its revised interpretation was adopted purely in order to conform with Rule 28(2), and not for any other substantive or interpretative reason. The Opinion therefore confirms the authority of the Administrative Council, on a three-quarters majority vote2, 50 CIPA JOURNAL JULY-AUGUST 2020
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G 03/19
Political response to Tomatoes II and Broccoli II
ruling of the Enlarged Board of Appeal. The asserted basis for changing the Rules – an alleged need to bring the EPC into line with the Biotech Directive – was also in doubt, as the Biotech Directive does not itself explicitly rule out the patenting of plants and animals produced by an essentially biological process, and the CJEU has made no ruling on this point. In December 2018, the matter was brought to the Technical Board of Appeal in T1063/18, where a patent application claiming a pepper plant had been refused under Rule 28(2) EPC. The TBA found that Rule 28(2) was in direct conflict with the Enlarged Board’s interpretation of Article 53(b) as expressed in Tomatoes II/Broccoli II. The Rule could not be reconciled with the Enlarged Board’s judgement. The TBA considered itself de facto bound9 to follow the judgement of the Enlarged Board, unless there were reasons to refer the matter back to the Enlarged Board. No such reasons were found. The TBA concluded that, for now, the interpretation of Article 53(b) EPC had been settled by the Enlarged Board. Under Article 164 EPC, a Rule cannot take precedence over an Article of the EPC. Hence, in the absence of a fresh ruling from the Enlarged Board, new Rule 28(2) EPC was found by the TBA to be in practice unenforceable.
The EPO changes its practice – introduction of new Rule 28(2)
Stalemate
That decision provoked some consternation, with concerns that widespread patenting of fruits, vegetables, and animals might have a seriously detrimental effect on food security and efforts to tackle climate change. Some argued that the Enlarged Board’s ruling frustrated the legislated exclusion of “essentially biological processes” from patent protection – since a patent for a plant produced by an essentially biological process provides de facto protection for that (essentially biological) production method. Others noted a conflict with the national patent laws of various EPC contracting states, including Germany, Italy and the Netherlands, which already precluded the patenting of plants and animals produced by an essentially biological process. In December 2015, the European Parliament passed a Resolution4 on patents and plant breeders’ rights, expressing concern and calling on the Commission to take action. In November 2016, the Commission issued a Notice5 asserting that the original clear intention behind the Biotech Directive had been to exclude plants and animals produced by means of essentially biological processes from patentability. Although the CJEU had provided no ruling on the point, the Commission argued that this imputed meaning should be read as an explicit provision of the Directive.
The President of the EPO responded to the Commission Notice by suspending all proceedings before EPO examining divisions and opposition divisions in cases relating to plants or animals obtained by an essentially biological process, with effect from 24 November 2016. In March 2017, the Council of the EU issued a statement6 urging EU member states to call on the EPO to align its practice with the conclusions reached by the Commission. At a meeting in April 2017, the EPO Committee on Patent Law accordingly agreed with a proposal to amend Rules 27 and 28 EPC in line with the Commission’s interpretation, and this was communicated by the EPO President to the Administrative Council in June 20177. At a meeting of the Administrative Council later that month, a vote was held and the proposal was approved8. New Rule 28(2) EPC, introduced by the Administrative Council, stipulates that: “Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.” A corresponding change was made to Rule 27(b) EPC. The new Rules came into effect on 1 July 2017, and prosecution of stayed cases was resumed. It was announced that the new Rules would apply with immediate effect to all pending applications and granted patents.
Can Rule 28(2) be enforced? T1063/18 (Pepper)
Whilst the new Rules were welcomed by some, others questioned the action taken by the Administrative Council. The new Rules introduced by the Council were directly in conflict with an existing Volume 49, number 7-8
The Pepper decision created a crisis at the EPO. Should examiners apply Rule 28(2), or not? A further stay of relevant proceedings was inevitable. In April 2019, the President of the EPO announced that all pending cases containing claims directed towards plants or animals exclusively obtained by means of an essentially biological process would be immediately suspended. Questions concerning the interpretation of Article 53(b) EPC were referred by the President back to the Enlarged Board of Appeal.
Resolution: the Enlarged Board adopts a “dynamic interpretation” of Article 53(b)
The Enlarged Board issued its Opinion just over a year after the referral, in May 2020. Political pressure on the EPO and the Enlarged Board did not abate during the deliberation period. In September 2019, the European Parliament issued a Resolution10 calling on the Enlarged Board to “restore, without delay, legal certainty by affirmatively answering the questions that have been referred to it by the President of the EPO in the interest of breeders, farmers and the public”; and enjoining EU member states and the Commission to “do everything in their power to obtain legal clarity regarding the prohibition of the patentability of products obtained from essentially biological processes by the EPO”. In these circumstances, the outcome of the referral was perhaps unsurprising. The Enlarged Board decided that products obtained from essentially biological processes are indeed unpatentable, on a new “dynamic interpretation” of Article 53(b). Rule 28(2) EPC was upheld, subject to narrow transition provisions to protect the legitimate interests of patent proprietors and applicants.11 JULY-AUGUST 2020
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DECISIONS
TRADE MARKS
Trade mark decisions This month’s editors are Katharine Stephens, Thomas Pugh, Ciara Hughes and Aaron Hetherington at Bird & Bird LLP. and the CJ and GC decisions can be found at https://curia.europa.eu/jcms/jcms/j_6/en/ Cases marked * can be found at www.bailii.org
Decisions of the General Court ('GC') and the CJEU
Ref no. GC T‑284/19 Wonder Line SL v EUIPO; De Longhi Benelux, SA 13 May 2020 Reg 2017/1001 Reported by: Lucy Wiles
Application (and where applicable, earlier mark)
Comment
KENWELL – mills and crushing machines; mixing machines; can-opening machines (7) – measuring instruments (9) – smoke cooking units; cooking appliances; kitchen machines (11)
The GC upheld the BoA’s decision that there was a likelihood of confusion under article 8(1)(b). The GC agreed with the BoA’s decision that, for the English-speaking public, the marks were similar to an average degree based on their visual and phonetic comparison. The word elements of both marks were unusual in their structure and had no overall meaning when perceived as a whole, and therefore no conclusions could be drawn from their conceptual comparison. The GC upheld the BoA’s finding of a likelihood of confusion. There were insufficient differences between the marks to offset the identity and similarity of the goods. The BoA had provided satisfactory reasoning for departing from previous decisions allowing marks that included the element “KEN” in the relevant classes.
KENWOOD – machines for mixing (7) – electric kettles; kitchen weighing scales (9) – apparatus and applicance for lighting, heating, cooking, refrigerating, drying and ventilating (11)
GC T-532/19 EC Brand Comércio, Importação e Exportação de Vestuário em Geral Ltda ('EC Brand') v EUIPO 13 May 2020 Reg 2017/1001 Reported by: Tom Hooper
– sanitary towels; hygienic panties; hygienic pants (5) – liners made of layers of fabric for underwear; women’s underwear; women’s lingerie (25) – online retail trade services of women’s underwear, lingerie, underwear and sanitary products (35)
The GC upheld the BoA’s decision that the mark was devoid of distinctive character and was descriptive under article 7(1)(b) and 7(1)(c). The GC confirmed the BoA’s finding that, as the mark applied for was a misspelling of the English word ‘panties’ meaning women’s underwear, the mark was weakly distinctive and descriptive of all the goods and services at issue. EC Brand argued that the term ‘pantys’ does not appear in English dictionaries and is not used in everyday language as a descriptive indication of all the goods and services at issue. These arguments were dismissed by the GC since the word ‘pantys’ does not differ from everyday language in such a way that the relevant public would regard it as more than a mere misspelling of the English word ‘panties’. It was also phonetically identical to the correct spelling. The GC rejected the applicant’s argument that that mark had acquired distinctive character through use within the meaning of article 7(3), agreeing with the BoA that it was not possible to conclude on the basis of the evidence submitted that the mark had become distinctive from the perspective of the relevant public on the date on which the application was filed.
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Ref no.
Application (and where applicable, earlier mark)
CJ C-736/18 P Gugler France SA v EUIPO; Alexander Gugler 23 April 2020 Reg 40/94 Reported by: Theo Cooper
– various goods and services in classes 6, 17, 19, 22, 37, 39 and 42 GUGLER FRANCE SA (The intervener’s company name. The company is registered in Besançon (France) and its articles of association state that its objects are ‘purchasing, trade in, selling and fitting building-closing devices, by any and all means or processes’.)
TRADE MARKS
Comment In respect of a declaration of invalidity under article 52(1)(c) of Regulation 40/49, read in conjunction with articles 8(1)(b) and 8(4), the CJ upheld the GC’s decision to the effect that, at the time the trade mark application was filed, there was an economic link between Gugler France and Gugler GmbH (Alexander Gugler’s predecessor in title) which precluded any finding of a likelihood of confusion. The GC found that the goods covered by the contested mark were manufactured by Gugler GmbH and Gugler France was the distributor of those goods. Therefore, the fact that the consumer might believe that the goods and services in question came from economically-linked undertakings did not constitute an error as to their origin. Further, where there was an economic link, it was unnecessary in order to prove the likelihood of confusion that the consumer had to be aware of that link. On appeal, Gugler France submitted that the assessment of the economic link must be based on the undertaking having priority rights (here Gugler France) to the proprietor of the contested mark (Gugler Germany). Since it had no control over the goods manufactured by Gugler Germany, there was no guarantee of a single undertaking accountable for their quality. The CJ held that the concept of an economic link was a substantive criterion, which did not presuppose a particular order between the undertakings concerned, and was not confined to situations in which the goods in question were put into circulation by a parent, subsidiary, licensee or exclusive distributor. It was sufficient that there was a single point of control within a group of operators in respect of the goods manufactured by one of them and distributed by another, thus ruling out any likelihood of confusion as to origin. The CJ also dismissed Gugler France’s claim that the GC had distorted the relations Gugler France had with Gugler GmbH.
London IP clinics continue with new dates During the ongoing disruption of the Covid-19 outbreak, our London IP clinics will be continuing. However, all appointments will be hosted remotely by staff via video and teleconference. Clinics will take place on Monday evenings instead of Tuesdays. There will, however, be one Tuesday a month (dates decided on a month-by-month basis) available for clients and clinicians who are unavailable on Mondays. If you can spare a little time in the evening and would like to volunteer your expertise to help those seeking free intellectual property advice, we would love to hear from you. The growth and success of this important, free service to the public could not happen without our members volunteering their time. For more information on any of the above, please email clinics@cipa.org.uk.
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CPD & EDUCATION
INSTITUTE EVENTS
CIPA webinars and online conferences 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 17 July 2020 Webinar
EXTENSIONS OF TIME AND COMMON ERRORS
Time: 12.30–13.30
This webinar will detail the common errors that should be avoided when filing applications, forms and requests with the Intellectual Property Office and detail the various extension provisions available to extend deadlines. Speakers: Aquila Brandon-Salmon (IPO), Vicky Maynard (Vice Chair of CIPA IP Paralegal Committee / Openshaw & Co) CPD: 1; Prices: £73.20 | £49.20 members
Thursday 23 July 2020 Webinar
EFFECTIVE RESULTS THROUGH REMOTE TRAINING
Time: 12.30–13.30
Working remotely presents us with a number of challenges because of technology issues, the difficulty in reading people’s reactions, unexpected interruptions and knowing messages have been received. This is exacerbated when training someone on a one to one basis, particularly when difficult issues need to be addressed such as performance or capability. This one-hour webinar explores the challenges of being a trainer and provides the tools and techniques to improve training interaction and engagement to produce measurable learning outcomes. The session looks at the role and the skills of the trainer, how we learn, how we give and receive feedback and how to produce effective training results. Speakers: Jane Michel and Becky Boston CPD: 1; Prices: Free for CIPA 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 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
Thursday 3 September 2020 Webinar
LEGAL REMEDIES AND SAFEGUARDS UNDER THE EPC: What to do in case of a loss of rights and emergency situations Time: 12.30–13.30
The aim of this webinar is to provide an overview of EPC standard legal remedies allowing the overcoming
of a loss of rights and provisions offering safeguards in the case of nonobservance of a time limit as a result of an exceptional occurrence. The webinar will in particular cover on further processing, re-establishment of rights and the exceptional situations governed by Rule 134 EPC. During the webinar a clear picture of the legal requirements governing all those procedural options will be given. This should help participants to identify the key issues and parameters that need to be taken into account to ensure a positive outcome. Speaker: Laurence Brüning-Petit (Directorate Patent Law, EPO); CPD: 1; Prices: £73.20 | £49.20 members
Friday 4 September 2020 Webinar
TOP TIPS FOR STUDYING UNDER PRESSURE
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 (CEO Lawcare) CPD: 1; Prices: Free for CIPA members
14-17 September 2020 Conference
CIPA CONGRESS
See more details online and on page 69. CPD: 6 full conference; 1.5 per day Prices (access all): £230 | £195 members Single days: £115 | £80 members
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30 September – 2 October 2020 Conference
IP PARALEGAL CONFERENCE
You will appreciate that in these uncertain times, planning future events has been challenging to say the least. There is no firm prediction as to when social distancing measures will be relaxed or lifted, but it seems certain that large physical gatherings will not be possible for the rest of the year. We are, however, delighted to bring you the first ever Virtual IP Paralegal Conference 2020! To avoid Zoom fatigue we have spread the sessions over three days 30 September – 2 October on alternate mornings and afternoons. The Conference will be accessed via our virtual events platform, details of which will be launched shortly. This will contain details of sessions, speakers and sponsors and will enable delegates to communicate and network online. The Committee is hard at work to ensure the Conference delivers topics relevant to paralegals in their day-today work, such as updates on best practice and common pitfalls; the EPO’s online filing (CMS); overseas formalities (Including China, India and the US and foreign filing licence requirements); UPC, and – dare we mention it – Brexit!. We are currently arranging for high-quality speakers from the UK IPO, EPO, WIPO and the profession to deliver these sessions. CIPA is committed to providing excellent CPD at an affordable cost, and in view of the unusual circumstances we are offering special daily and weekly rates, with the members’ weekly rate being just £150. I do hope that you will feel inspired to join us – and this year, distance is no
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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INSTITUTE EVENTS
barrier! We very much look forward to welcoming you to the Virtual IP Paralegal Conference 2020. Julia Tribe, Chair, IP Paralegals Committee See more details on page 55
Thursday 8 October 2020 Webinar
DYSLEXIA AND DYSPRAXIA DEMYSTIFIED
Time: 12.00–13.00
Please note that this webinar will start at 12pm Dyslexia and dyspraxia are forms of neurodiversity that are very often misunderstood. Each affects approximately 10% of the population and neither has any effect on intelligence. It is very likely that you will already be working with someone with one or both of these characteristics. In this session we aim to debunk some common myths and to help employers and employees alike understand how to enable existing and potential colleagues with dyslexia and/ or dyspraxia to work to their full potential, and embrace their neurodiversity. CPD: 1; Prices: Free for CIPA members
Thursday 15 October 2020 Webinar
COMPENSATION FOR EMPLOYEE INVENTIONS
Time: 12.30–13.30
Innovation and an intensive patent portfolio strategy are the strong foundations of competitive businesses. Dedicated acts on employee inventions regulate employee inventions particularly in Germany and in a handful of other European countries. In the remaining countries provisions are taken from patent law and laws regulating employment relationships. In the UK, for example, only a short section of the Patent Act is concerned with employee inventions, leaving, as the 13-year-long Shanks v Unilever saga has shown, a lot of room for interpretation.
In contrast, the Employee Inventions Act in Germany categorizes employee inventions, regulates the transfer of intellectual property rights between the employer and the employees, and provides a detailed formula to calculate adequate remuneration. The Employee Inventions act in Germany is the most elaborated, and a reference of its own for many countries adopting legal strategies when ruling about rights of employee inventors. As the global market shapes the presence of individual companies to span across several countries, a need for a harmonized way to deal with rights regarding employee inventions and remuneration issues has arisen. Seeking a solution to this harmonization need has revealed the inadequacy of existing provisions to account fairly for employee inventions produced by employees across different countries, who are employed by the same company. We provide a brief overview of the existing provisions in Europe, with emphasis on Germany, and present possible options on the basis of emerging trends in the field. Speaker: Kalim Yasseen (IPO); CPD: 1; Prices: £73.20 | £49.20 members
Thursday 26 November 2020 Webinar
EXCLUDED MATTER AND PROGRAM INVENTIONS: The Application of the Aerotel/ Macrossan approach at the IPO Time: 12.30–13.30
An introduction to the Aerotel/ Macrossan approach and its 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. Speaker: Kalim Yasseen (IPO); CPD: 1; Prices: £73.20 | £49.20 members
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PERSONAL
OBITUARY
Donald Vincent 1921-2020
D
onald Vincent was born in Leeds on 31 December 1921. His education started in the local elementary school where at ten years old, and in the form a year below the one in which the exam was normally taken, he won a scholarship to the City of Leeds School. He took the science side, matriculated at 14 and at 17 won a county major scholarship to university. He entered the University of Leeds a few days after the outbreak of WW2 – there was no gap year at that time – and qualified with an Honours degree in Chemistry in 1942. Starting work immediately in the Explosives Division of ICI – at a salary of £275 per annum – he was given six-months training and then joined an ICI team sent to start-up and run a new Ministry of Supply (MoS) explosives factory at Girvan on the coast of Ayrshire. There, as a shift superintendent, he was, out of normal daytime office hours, responsible for the explosives plant at the age of 21. At university Donald had been a keen member of the Training Corps and at Girvan, as an alternative to the usual conscription into the Home Guard, he took charge of the local Army Cadet Force, a group of about 40 youngsters with its own pipe band. Also, in his second year at university Donald had become strongly attracted to a young lady who had come to work on the opposite side of his laboratory bench. The friendship had continued and when she, Hazel, graduated in 1943 she took a job in the Ministry of Supply in Girvan. They married in September 1944. At the end of the war the MoS factory was shut down and Donald moved to the ICI Paints Division in Slough. At the end of a boring year making paint he was about to leave when he saw there was a vacancy in the Patent Section. This
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looked interesting so he took the job, a decision he never regretted. At that time there were only two Chartered Patent Agents in ICI but at the urging of Walter Scott, one of those CPAs, the Company Solicitor offered professional training and qualification to all members of Division patent departments. Surprisingly, Donald was the only one to put himself forward. Under the tuition of Walter he passed the Inter in 1950 and was transferred to the head office legal department in 1952. He failed the drafting paper in the Final in 1953 and an arrangement was made for him to spend two years with Carpmaels & Ransford to gain further experience outside the chemical field. He spent that time sitting in Maurice Carpmael’s room and passed the Final in 1954. The pass rate in that Final and in the 1950 Inter was 20%. He always said it was a most pleasant and instructive two years in which he learned much more about life than just patenting. On return to head office legal department he became involved with
the patent interests of several divisions, one of them being the newly-formed Fibres Division where there was much activity in patenting and litigation in the developing polyester fibre field. However, in 1962 he was asked to return to the Paints Division where important breakthroughs were being made in paint technology and industrial paint application. This developed into what Donald considered to be an ideal job since in addition to the patent work he was involved in the planning of research at the front end so to speak and dealt with technical licence agreements at the other end. His office was an old prefab but it was next to the Research Department and he refused to move when new executive offices were built across the road. He said that the most interesting parts of a patent agent’s work could arise when someone in a research laboratory murmured ‘That’s funny!’. He also promoted coordination of research work with other overseas parts of the paints group. All this involved some pleasant overseas travelling. On the retirement of Walter Scott in 1970, Donald was appointed company patent agent and returned to the head office legal department in London. Although all the patent work of ICI was still channelled through this office the nature of the work there had changed. This was because when Donald had qualified in 1954 more interest in qualification was aroused and other young members of Division patent departments came forward for training. Several of these were similarly ‘farmed out’ to private practice but finally the demand was such that head office set up an internal training scheme involving a senior agent from private practice and a barrister. The result of this was that in the mid-1970s
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there were over 50 qualified agents in the ICI Group. Donald got agreement to spend up to 25% of his time on ‘external affairs’ and took an active part in professional organisations such as the Chartered Institute, the Union of European Patent Practitioners, AIPPI and later the European Patent Institute (epi). He was elected to their councils and in the Institute, the Union and epi became chairman of their Professional Conduct Committees. He was an ardent proponent of the European Patent Convention and spoke for the profession at the Diplomatic Conference at which the Convention was adopted. During these years he attended several meetings on revision of the Paris Convention organised by the World Intellectual Property Organisation (WIPO) and over the years worked his way from sitting at the back of the conference hall as a representative of an NGO, through the centre as an adviser to the UK delegation and on to the platform as advisor to WIPO in which capacity he drafted a small part of the revised Convention. But at head office Donald was missing the pleasure he used to find in what he called real patent agents work, i.e. contact with inventors, drafting, prosecuting and oppositions. To liven things up he occasionally took an opposition himself and once represented ICI before Mr Justice LloydJacob sitting in the Lord Chancellor’s Court as the Patents Appeal Court. Finally tiring of administration and organising he took early retirement in 1978 and, declining an offer of a partnership in a well-established patent firm, he set up his own one-man practice in which he could choose the work he liked to do. Further, at that time the presidency of the Institute traditionally passed to the next most senior member of Council and when Donald’s turn came around, he, not wanting to have to ‘run things’ again, respectfully declined to take it on. Volume 49, number 7-8
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However, he retained his international activities and at the request of WIPO gave courses of lectures in several developing countries and in China which at that time was introducing its own patent law and establishing a patent office under the auspices of the China Council for Promotion of International Trade (CCPIT). He was particularly involved in this and paid several visits to China giving a series of lectures in Beijing and Shanghai. There he had meetings with Li Peng who later became Premier of the People’s Republic and Ren Jianxin who later became President of the Supreme People’s Court. On the introduction of the Patent Law, Donald on two occasions took a party of Chinese agents and patent office officials from CCPIT round the major cities of Europe to introduce their new system to the profession. On some of these visits to China he was accompanied by Hazel who had been born in and lived for eight years in Shanghai. It was interesting to find that the building that housed the British Consulate where her father registered her birth was now the Shanghai branch of the Chinese Patent Office. A keen photographer, Donald took with him copies of photographs of old Peking with the idea of finding the exact spot from which they had been taken 60 or more years earlier. With the enthusiastic help of Chinese friends, he found many and re-photographed the view which in some cases had greatly changed over the intervening years. At the end of these visits Donald mentioned to a friend in CCPIT that he was now planning a further visit to China to take more photographs. The friend asked him where he had in mind to go and a couple of weeks later Donald received a detailed itinerary covering all those sights and more together with an invitation from CCPIT for him and Hazel to take the completely organised and escorted three-week tour. In these years he was elected
president of the British Group of AIPPI and was appointed Executive President of AIPPI, chairing the Bureau, the Council of Presidents, the Executive Committee and finally the triennial Congress held in London. All this, with visits to developing countries to promote industrial property and with talks to local organisations in the USA, Brazil, Japan and Australia, again involved much overseas travel during which many long-term friendships were made. In 1990 or thereabouts, Donald finally retired. He and Hazel had since 1947 lived in a 17th century house in a small rural village in Buckinghamshire. They had a very large garden in which they loved to work; though in his later years Donald had to watch in frustration when his two sons took over the heavier work he could no longer do. They were much involved in village activities and Donald served for 50 years as a parish councillor. For this they were invited to a garden party at Buckingham Palace where they were fortunate enough to be ‘ferreted out’ for introduction to the Queen. Also, for many years Donald was a trustee of two local charities. He had always been a keen photographer and had recorded many aspects of village life. He had also delved into the history of Shell House and in retirement he was able to put much of all this onto DVDs. At some time in 2011 Hazel had told a friend that because of the war they could not have the church bells rung at their wedding, that being the signal of invasion. The friend secretly arranged a reception at the local church when the bells were rung on their 67th wedding anniversary. Sadly, Hazel died a month later, a few days before publication of the University Alumni magazine that featured their long romance of 71 years, which had started over a laboratory bench. Donald Vincent is survived by three children, six grandchildren and 11 great grandchildren. JULY-AUGUST 2020
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in2scienceUK
Joining forces: step up to STEM for disadvantaged young people Introducing In2scienceUK’s innovative Covid-19 response – allowing young people across the country to gain essential skills, role models and knowledge on STEM skills and careers.
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ovid-19 has had a drastic effect on communities across the United Kingdom. The outbreak has shown both the importance of qualified and dedicated healthcare and medical professionals and also the sacrifice given by many front line key workers. Therefore, it has never been more important to ensure a pipeline of STEM professionals needed to guarantee institutions, such as the NHS, are fully staffed for the future generations. At the heart of this has always been successfully engaging and inspiring younger generations to recognise the diverse and fulfilling experience a career in STEM can afford. But there is perhaps an even bigger challenge to consider. Beyond this deficit of STEM skilled workers is an overlooked generation that may hold the key to unlocking the UK’s potential to remain at the forefront of STEM-based industries; young people from lowincome backgrounds. Young people from low-income and ethnic-minority backgrounds have suffered significantly from the social effects of Covid-19. With school, colleges and youth education centres closed and limited for the considerable future, many are now losing the only positive influence in their lives. Furthermore, many young people supported by In2scienceUK are struggling with mounting stress, often due to the constraints of living in multigenerational households with limited access to green
Aaliyah Boreland (right) with her volunteer STEM professional mentor
space and rely on one working family member to support the household. The Covid-19 outbreak is contributing to an ever increasing social crisis with young people left without adequate access to opportunities, support or education. In2scienceUK has been supporting young people from low-income backgrounds that are recipients of free school meals, have parents with no higher education experience and live in areas in which progression to higher education is low since 2011. The in2scienceUK work-placement programme offers these young people high-quality placements enabling participants to undertake real research and experiments with STEM professionals. The programme also includes workshops and skills days giving high-quality information and guidance on CV writing, interview and application skills, which are of vital importance to the lives of all young people. The current situation concerning the outbreak of Covid-19 has resulted in in2scienceUK transforming their programme to an online platform so they can continue to provide support to young people remotely. In2scienceUK is working
tirelessly to ensure the new digital platform is as impactful, positive and effective as its traditional face-to-face programme. The new In2scienceUK virtual programme will enable STEM professionals to work with young people on the programme and provide them with essential mentoring to all them to gain core STEM skills and competencies. Currently, it costs £300 to recruit, train and provide materials for each essential mentor taking part in the In2scienceUK virtual programme. This also covers additional costs relating to the development of digital mentoring webinars, meetings and online workshops. This year thousands of young people have applied to take part and we are keen to help as many as we can to access the support they require. We need dedicated STEM professional mentors more than ever to meet the increase in demand for our award-winning programme. With your support, we will be able to make a positive difference in the lives of young people regardless of the significant challenges they face. If you would like to sponsor a mentor for £300 and make a positive contribution to the development of young people whose lives are currently on hold due to the lockdown, please email In2scienceUK’s dedicated Development Officer luke@in2scienceuk.org Together we can ensure more young people can overcome the challenges they face and reach a brighter future. Luke McKelvey, Development Officer, in2scienceUK. See more details at www.in2scienceuk.org; follow the #getin2science on Twitter
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STAFF PROFILE
Meet the team! CIPA staff profile: Angelina Smith, Head of Qualifications What are your present duties at CIPA? Head of PEB Qualifications responsible for managing the operational delivery of PEB Qualifying Examinations and Intermediate Certificate in Patent Administration examinations in accordance with IPReg requirements, PEB Constitution/Terms of Reference and best practice in assessment. When did you join the Institute? July 2014 What do you like most and least about the job? CIPA is a good place to work and there is a good balance of work and fun activities for staff to enjoy. I love applying my skills and experience gained in the assessment world to my job. I also like the fact that my job is very busy and can be quite challenging. Each day is different and I find myself having to adapt very quickly to changing circumstances, which is good in a way, because it keeps me on my toes. What do I like least about the job? I would rather not say. What is the state of your desk at this moment? Well, my desk at work must currently be enjoying a nice rest as I am working at home! However, my home desk is stacked with work papers, two screens and situated in my bedroom. My son has fully taken over the sitting room with multiple computer screens on a big desk he needs for work. *sigh* Kids! How do you like to spend your time outside work? I teach a children’s choir from the ages of 8-14 and having to coordinate them online, twice a week, has been an interesting challenge! I also find time to volunteer for a charity, which provides food and clothes for the homeless. When I have a bit of time on my hands, I like to write short stories and play Scrabble with my friends, who try to win the game by putting together weird three to seven-letter words I do not know! Thank God for the Oxford English Dictionary which I use to promptly ban the words from the Scrabble board! Volume 49, number 7-8
What is your favourite food? I like and enjoy different types of cuisine from all over the world. However, I have a particular fondness for West African chicken curry and rice. The hotter the curry the better! What is your favourite drink? Usually, I try to keep away from alcohol and drink loads of water and healthy fruit teas. Although sometimes, I do indulge in a glass of red wine or a shot of brandy and coke. What is your favourite place you’ve visited? Believe it or not, it is America! There are many opportunities to shop for clothes that are a perfect fit for me, especially in New York. You can’t beat a good day of shopping so I would recommend retail therapy to anyone over and over again. What place would you most like to visit? I would like to go to Jerusalem and it was one of the places I planned to go this year when the Covid-19 crisis hit! It has now become a plan for another year, when things settle down. The person you most admire or would like to meet, and why? There are quite a few… I admire my parents who lived and studied in the UK in the 1950s and 1960s. Through sheer resilience, they managed to make a success of their lives and decided to have me and my other two siblings (not necessarily in that order)! I also admire the simple ordinary people who have strived to make changes through adversity to make the world a better place. Meeting any one of these people and being able to ask what motivated them to make such a change would make my day. What is the best piece of advice you’ve ever been given? The best advice I have been given was from a member of my family when I was about ten years old. They said, ‘Be yourself, try everything and do your best.’ Over the years I have lived by this advice but had to ignore the middle bit of it because the idea of ‘trying
everything’ is a bit too much to handle and practically impossible! What would you do if you won the Lottery? Yeah right! I would have to play first and if I did and won, it depends on how much… I would think about how to spend the money for a few days and take care of my family first and foremost along with a few friends who have been with me for a long time. The next thing on the list would be to travel all over the world. I would eventually buy an island and live there permanently till I grow old and grey. What would you do if you became Prime Minister? Hmm, I wish! I really never thought about it but I would have to leave CIPA for a start and move home to number Ten (ha, ha!). On a serious note, I would try to make positive contributions with a view to create a peaceful environment and provide better opportunities for all. Trust me, people will definitely remember me post-position. What is a book, film or piece of music you’ve enjoyed recently? I have recently taken a liking to James Patterson books. The one I am reading at the moment is The President is Missing. I am a keen Jazz fan and have recently been enjoying various selections of Jazz music. Ella Fitzgerald is great! What are three words you’d use to describe yourself? Confident, innovative, conscientious Where would you like to be in five years? Hopefully in a hot country somewhere with my grandchildren, at the top of my game and healthy with all my senses and other body functions working perfectly! JULY-AUGUST 2020
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LETTERS TO THE EDITOR
Foundation and final examinations Letters for the Editor and announcements can be e-mailed to: editor@cipa.org.uk
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s Chief Examiner, my responsibilities with the Patent Examination Board (PEB) lie with setting, marking and awarding foundation and final examinations. However, I have strong feelings about the sitting of the examinations this year. The comments below are my own and are designed to provide some illumination on how I see things, which I hope are of some help and solace. The PEB is very much on the side of the candidates and is doing absolutely everything it can to offer UK foundation and final exams in 2020 in a fair and reasonable way. I see this from the sheer amount of work that is required to make these exams happen. Not everything can be sorted and finalised at the snap of fingers and so patience is needed while ducks are gradually lined up. The PEB has spent a huge amount of time since the beginning of lockdown working hard to make the exams happen – it was touch and go for a few weeks when it looked like the decision would be not to hold the exams this year. Like the EQEs, this is the easiest option. However, the PEB Governance Board (PEB GB) has decided to do what it feels is in the best interests for candidates, which is to offer an online exam in the best possible way that it can. I am pleased with the decision and am offering as much support and information to the PEB GB as I am able, not being a member of the Board. I have been taking QM-UL and Nottingham trade mark exams online and so I have a some insight into the uncertainty of the situation. The machine of the PEB is ridiculously under-staffed and overstretched. It is also human. In addition, this is a new and very testing situation for everyone. New rules are having to
be written, creative ways of doing things need to be found and, in fact, new ways of doing things need to be found. Whatever is offered by the PEB will be researched and tested but please do not assume it will be perfect. Things rarely are first time around. Positive input is always appreciated and I sincerely hope that this is the beginning of the exams in a new format. From experience I can say it is far nicer to take an exam in a familiar space rather than being surrounded by nervous, sniffly and noisy people. Typing answers should be much quicker than handwriting and there has been a call for facilities to type for a number of years. It will certainly make my marking job so much easier than having to interpret poor handwriting. For both QM-UL and Nottingham, a portal was opened at 9am for the downloading of the paper. The Nottingham exams were sat to time and, after the clock stopped, the answer paper was uploaded to the portal. Provided the paper was uploaded by 5pm, the exam could be taken at any time within the 9-5 time period. I do not know what the PEB is thinking or even considering but it would make sense for downloading, scanning and uploading to happen outside of the time allocated to write an answer. I am sure there will be some contingency for internet disruption.
Again, there was with QM-UL and Nottingham. I am receiving a lot of queries about sitting the exam at home vs in a firm setting. I encourage candidates from small firms who cannot provide suitable facilities to approach the larger firms who may be able to find extra space. We are all in this together and so need to help one-another. As we do every year, we will be comparing results of candidates from different settings to ensure than no one group is adversely affected by their situation. Please look on this as a learning curve for all of us and one that should be taken positively. After all, it does provide an opportunity to resolve some requests that have been around for a while and, who knows, perhaps open book might be next on the list while the process continues to evolve to bring the PEB exams into the modern world. Please also remember that everyone is experiencing difficult times. Please do not berate the PEB or the marking examiners. Sarcastic comments do not help either. We are all trying to do our best, which is even more trying in the current circumstances. We are human. Whatever the PEB offers will be a great step forward, as well as an amazing achievement – these systems take years to put together and evolve but the PEB has only six months. Don't forget, the EQEs have yet to be sorted out online and the PEB system is being watched with interest. The EQE system could be worse than what is offered by PEB, no-one knows yet. At the end of the day, if the situation feels simply too unpleasant for you, the exams will be offered again next year. Dr Sarah Boxall (Fellow)
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CROSSWORD
Unconventional No.9
by Edgar Wunder
Edgar has not bothered to clue the perimeter of the crossword which consists of six members of an elite group, said group being defined by the central column of the grid (also unclued). Across 5. 6. 7. 9.
Florid auburn pens crude painting (4) Sleep with assistant for soft leather (5) Mine here is featured! (4) No cousin is driven round the bend without harm! (9) 13. See the highest points from east to west (4) 14. City doctor is a sweet and gentle person (4) 15. Type of suit, back to front, features at Passover (6) 16. Space made for the return of one such as Iago (4) 18. Hesitation about girl returning after love for religious initiate (7) 20. Provide an attorney with weapon? A threat for Elizabeth (6) 24. Plants firmly in English county – I am first (6) 25. Foreigner explains to Scot why he wasn’t in fight, perhaps (7) 27. Oaf could cause off-road crash with this kind of car (4) 28. Found painting on Christmas card, perhaps, revolutionary (6) 30. Dead centre of milky beverage missing (4) 31. Place found in the near east (4) 33. Support in ailing comeback from foodstuff (9) 34. Watch over almost a shilling (4) 35. Count is one thing sportsmen play for (5) 36. Idle, for example, in part of America (4)
Down 1. 2. 3. 4.
Kind of cake cooked in round tube (5) Move slowly using part of a foot (4) Given a bit of a roasting in oven (4) Mud flow interrupts antipodean meal in the desert (8) 7. Coating made with cut pastry finished with little bit of milk (4) 8. It’s funny to be shy about the sea (6) 10. Close to third part of concerto delivered by organ (4)
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11. Rhesus monkey about? Needed to show the way (6) 12. Compound extracted from shiraz I decanted (5) 17. Part of royal regalia comrade returns (3) 19. Newcomer travelled in London, from south to north, before finding insect (8) 20. Appreciation shown in a choice of vowels, coming straight from the heart (6) 21. Sounds like an unimportant flyer (5) 22. Spit – perhaps I’ve seen a ghost? (6) 23. To an extent, manage to head off trouble (3) 26. No river runs north in this period (4)
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27. Charge old pence for input material (4) 29. Tweet “Switzerland” and wave gently (5) 31. Minutes of proceedings said to be by somebody familiar with the boards (4) 32. Close, perhaps, from the sound of it, in valley (4) Please e-mail your entries to editor@cipa.org.uk by Monday 24 August. A prize for the first correct entry drawn. This crossword can also be downloaded from the CIPA website.
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