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

Important developments for SPCs Carpmaels & Ransford

Elections for Council Lee Davies

Challenging patents in the US Courtney Bolin and Tim McAnulty

September 2020 / Volume 49 / Number 9

Address for Service at the UK IPO Consultation

Trainee patent attorneys and remote working Joel Briscoe

UP FRONT

CIPA JOURNAL Editor Deputy Editors Publications Committee Production and advertising Design Cover design Contact

Alasdair Poore Sean Gilday; Jeremy Holmes Bill Jones (Chairman) Iain Ross, 020 3289 6445, sales@cipa.org.uk Neil Lampert Jonathan Briggs editor@cipa.org.uk

Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third-party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions. © The Chartered Institute of Patent Attorneys 2020 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314

CIPA CONTACTS

Richard Mair President

Alicia Instone Vice-President

Julia Florence Immediate Past-President

Gwilym Roberts Honorary Secretary

Committee Chairs Business Practice Matt Dixon; Computer Technology Simon Davies; Congress Steering Julia Florence; Constitutional Alasdair Poore; Designs & Copyright Alicia Instone; Education Vicki Salmon; IP Commercialisation Catriona Hammer; IP Pro Bono Stephen Jones; Informals Carolyn Palmer; Internal Governance Catriona Hammer; International Liaison Tony Rollins; IP Paralegals Julia Tribe; Life Sciences Simon Wright; Litigation Matthew Critten; Media & Public Relations Jerry Bridge-Butler; PEB Michael Yates; Patents Tim Jackson; Protected Titles Lee Davies; Regulatory Affairs Chris Mercer; Textbooks & Publications Bill Jones; Trade Marks Keith Howick. Head of Membership Dwaine Hamilton Membership Officer Frances Bleach Events and Professional Development Officer Emma Spurrs Events Co-ordinators Grace Murray, Kathryn Espino Chief Executive Lee Davies Deputy Chief Executive Neil Lampert Executive Assistant Charlotte Russell Head of Qualifications Angelina Smith HR Officer Lea Weir-Samuels Communications Officer Amy Williams External Affairs Officer Lucy Wharton Admin Generalist Kereiss Isles General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

Contents 13 20

UP FRONT

ARTICLES

EDUCATION

Council Minutes – June

Elections for Council

33 50 35

Lee Davies Lee Davies

Council Minutes – July

Lee Davies

NEWS 9

EU Roadmap for IP Plan

Address for Service at the IPO

Overseas update

Indonesia’s TM Registry

Consultation response Consultation response Amanda R. Gladwin

New online filing system Denise Mirandah & R. Prista Devina 34 Extension of Singapore patents to Laos

enise Mirandah D & Ang Chuan Heng Shawn

Volume 49, number 9

Levelling the playing field on challenging patents

US update Courtney Bolin & Tim McAnulty

SPC Summer Review

The Debate: Working From Home

Part 2 Carpmaels & Ransford

Joel Briscoe & Jonathan Foster

DECISIONS 25

P atent decisions

Beck Greener 29 I PO decisions David Pearce, Callum Docherty, Mike Snodin 32 E PO decisions Bristows 35 Trade marks Bird & Bird

CIPA Life Sciences webinars Webinars and seminars Study Guide: Amendment of Specifications Paper (2020)

PERSONAL 52

IP Inclusive update

53 54

Letters to the Editor Yellow Sheet

Andrea Brewster

THE PINKS 57

ourses; International; C Recruitment; Support

SEPTEMBER 2020

CIPA JOURNAL

NEWS

OVERSEAS

Overseas update – international treaties Paris Convention On 13 August 2020, the Government of the United Kingdom of Great Britain and Northern Ireland deposited a declaration that in accordance with Article 24(1), the United Kingdom’s ratification of the Convention shall be extended to the territories of the Bailiwick of Guernsey and the Bailiwick of Jersey, for whose international relations the United Kingdom is responsible. The declaration shall enter into force, with respect to Guernsey and Jersey, on 13 November 2020.

Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 22 July 2020, the Government of the Republic of Belarus deposited its instrument of accession to the Marrakesh Treaty. The treaty will enter into force, with respect to Belarus, on 22 October 2020. On 19 August 2020, the Government of the Central African Republic deposited its instrument of ratification of the Marrakesh Treaty. The treaty will enter into force, with respect to

the Central African Republic, on 19 November 2020. Beijing Treaty (Audiovisual Performances) On 19 August 2020, the Government of the Central African Republic deposited its instrument of ratification of the Beijing Treaty. The treaty will enter into force, with respect to the Central African Republic, on 19 November 2020. Dr Amanda R. Gladwin (Fellow), GSK

New online filing system at Indonesia’s Trade Mark Registry Since 2017, the Indonesia Directorate General of Intellectual Property (DGIP) implemented the use of online filing for all new trade mark applications, renewal applications, and other relevant submissions (hearing, opposition, etc.). However, the DGIP continued to accept all manual filings or relevant submissions at the registry counter should the applicant or its proxy encounter errors when accessing the online system. Manual filings or submissions were accepted as long as the official fees paid were according to the applicable government regulation concerning nontax state revenue. On 17 August 2019, DGIP introduced a new online filing system for trade mark applications in order to improve the quality of services rendered by the DGIP. All new trade mark applications must now only be filed online using the new portal. The old pre-August 2019 system was still used for post application filings, such as renewal applications and all submissions related to all applications filed before 17 August 2019. 12

The following information is required for the completion of the online application:

With Covid-19 being a major disruption requiring and bringing about swift and sweeping change, since 21 April 2020, the online filing system has further been updated and old records are continually being migrated to the new system, so that all trade mark-related submissions – including new applications, renewals, recordals, as well as further submissions for applications filed before 17 August 2019 – can now be made via the updated online filing system.

• General information regarding the billing code, the application type, the filing date, the payment date, the amount of proposed class. • Name, address and nationality of applicant. • Name, address, registration number of proxy (trade mark agent). • Details of priority, if applicable. • Information of the mark. • Proposed goods and services according to the specified class(es). • Scanned copies of power of attorney, certified priority document and sworn translation thereof. The updated and integrated online filing system is a much-needed and welcome improvement, particularly with remote working arrangements in place, allowing work to continue uninterrupted. Denise Mirandah and R. Prista Devina, mirandah asia (singapore) pte ltd

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US UPDATE

PATENTS

US update: Levelling the playing field on challenging patents?

In the US, the introduction of the inter-partes review (IPR) – permitting a third party to challenge the validity of a granted US patent before the USPTO – has been welcomed. It provides a mechanism for challenging patents in a less costly and potentially more rapid forum than through the US courts. However, it adds another possibility, together with ITC proceedings (and post-grant review) to the landscape of US patent litigation and for adding complexity and potential cost in the US. In their update on how increasingly the USPTO is denying “institution” of such proceedings (i.e., refusing to permit such proceedings to progress), Courtney Bolin and Tim McAnulty describe the key factors, identified in the recent decision in Apple v Fintiv, for denying institution of an IPR where there are parallel proceedings. These include the efficient use of judicial resources – a factor which is of wider interest, in other jurisdictions, and the discussion illustrates situations that may be relevant to the use of judicial resources. They also note some tactical considerations where such a challenge is being contemplated or proceedings under a US patent have been threatened. And as an interesting additional snippet are some figures on time to trial in different US jurisdictions, showing that not only can a party spend a considerable amount of money in such proceedings, but can do so on a relatively short timetable.

he Patent Trial and Appeal Board (PTAB or the Board) was created in 2013. It quickly became a popular forum to challenge patents and, despite some procedural challenges, it is here to stay.1 By far, the most common challenge before the Board is inter partes review (IPR), with well over 10,000 petitions filed to date.2 A majority of those challenges directly relate to a parallel district court or ITC litigation.3 IPRs are generally considered powerful tools for accused infringers because many claims have been cancelled and many district courts are willing to stay the litigation until the IPR concludes. Thus, depending on when petitions are filed and instituted, accused infringers might avoid the costs of litigation altogether. In an IPR, the Board makes two significant decisions: first, whether or not to institute the trial, and second, whether or not the petitioner met its burden to show the claims are unpatentable. More often than not, the Board ultimately finds claims unpatentable if it institutes a trial.4 Because of this, patent Volume 49, number 9

owners frequently seek to avoid trial altogether, arguing that the accused infringer’s petition should be denied outright. And denials are especially beneficial to patent owners because that decision is not appealable.5 The Board has discretion to deny institution in several scenarios. For example, the Board may deny institution when it believes that there is no “reasonable likelihood that the petitioner would prevail” in ultimately showing the challenged claims are unpatentable.6 This may occur when a petitioner fails to address all claim elements, has significant evidentiary problems (like status of prior art), or has a legal deficiency in its proposed grounds. The Board may also deny institution when the petitioner relies on “the same or substantially the same prior art arguments previously” considered by the USPTO.7 This may occur when a petitioner raises grounds that were already overcome during prosecution, reexamination, or another PTAB proceeding. SEPTEMBER 2020

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SPC

SPC Summer Review This is the second of a two-part series of articles, in which Carpmaels & Ransford summarises the major developments for supplementary protection certificates (SPCs) in Europe over the last year. In this part, we have two articles discussing the latest developments on the interpretation of the requirement for an SPC to be based on the “first authorisation”, including the CJEU’s recent decision in Santen – the latter decision being issued after the first article was written, and therefore providing an answer to a number of the questions discussed in the first article. The final article then provides an overview of how things currently stand for SPCs in a post-Brexit Europe. Daniel Wise (Fellow), Susan Hancock (Fellow)

REVIEW

SPCs for new applications of active ingredients

Just over a year ago, in March 2019, the CJEU issued its judgment in Abraxis1 (C-443/17), which is interpreted by many as precluding SPCs for new formulations of previously authorised active ingredients. In particular, the CJEU said that a marketing authorisation for a new formulation of an old active ingredient cannot be regarded as the ‘first’ authorisation under article 3(d) of the SPC Regulation.2 The Abraxis judgment has since been applied nationally in a number of cases. An example is a ruling from the Swedish Patent and Market Court of Appeal from December last year – Allergan Inc v Patent- och registreringsverket (PMÖÄ 2680-18). In that case, Allergan’s appeal against the Swedish Patent Office’s refusal of its SPC application for botulinum toxin type A was dismissed. The basic patent claimed botulinum toxin for use in the treatment of urge incontinence. This basic patent covered the newly authorised therapeutic indication for botulinum toxin, which related to urinary incontinence caused by idiopathic overactive urinary bladder. There was an earlier authorisation of the same active ingredient. This earlier authorisation related to urinary incontinence caused by neurogenic detrusor overactivity (a condition frequently observed in patients with multiple sclerosis and spinal cord injury). The Swedish court took the view that this earlier use also fell within the scope of Allergan’s basic patent and therefore the grant of an SPC based on that patent and the later marketing authorisation was precluded. The court therefore considered it crucial for the applicability of Neurim (C-130/11) (as interpreted in light of Abraxis) that claim 1 of the basic patent did not encompass within its scope of protection the earlier authorised therapeutic use of the same active ingredient. It was not sufficient that the therapeutic indications as defined in the earlier and the later marketing authorisations were distinct from each other. The court also decided that there was no need to refer questions on the interpretation of article 3(d) to the CJEU. When the Abraxis judgment issued, there was already another reference pending at the CJEU on the interpretation of article 3(d) – Santen3 (C-673/18). In that case the Paris Court of Appeal asked the CJEU for guidance on the criteria that must be fulfilled by the patent and the marketing authorisation in order to benefit from an SPC for a new application of a previously authorised active ingredient, in light of Neurim. The questions that were referred in that case were worded in very broad terms and essentially asked whether Neurim-type SPCs should continue to be available, and if so then under what circumstances. In the Santen case, the basic patent relates to a new formulation and not a new therapeutic indication, and the referring court’s opinion at least is that the therapeutic indication authorised in Santen’s marketing authorisation seems similar to one of the earlier authorised indications for the same active ingredient. The Santen case was assigned to the CJEU’s ‘Grand Chamber’, which typically hears only around 10% of all cases. This might indicate that the CJEU indeed regarded Santen

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as an opportunity to resolve the various questions surrounding Neurim once and for all, at least in theory. At an oral hearing in Luxembourg in November 2019 representatives of Santen, as well as those of the European Commission and the governments of France and The Netherlands, made submissions. This was followed by a number of questions from the Court. The Advocate General (AG) Pitruzzella issued his opinion on the matter in January, earlier this year, essentially proposing to the Court that the purposive interpretation of article 3(d) as developed in Neurim be abandoned in favour of a literal interpretation. In other words, only the first marketing authorisation of an active ingredient for human or veterinary use, irrespective of its application as specified in the marketing authorisation, qualifies as the ‘first’ authorisation under article 3(d). Only in the alternative did the AG propose that SPCs should continue to be available on the basis of Neurim. This would be if the marketing authorisation relied upon: “covers a new therapeutic indication of the active ingredient, or relates to a use of the active ingredient in which the active ingredient exerts a new pharmacological, immunological or metabolic action of its own”. The latter resembles the test proposed by the European Commission during the oral hearing in Santen, and indeed also during the oral hearing in the earlier Abraxis case. In fact, the test is based on the CJEU’s earlier judgment in Forsgren4 (C631/13), in which the CJEU further developed the interpretation of article 1(b) to refer to a substance that has “a pharmacological, immunological or metabolic action of its own”, that wording reflecting the definition of “active ingredient” in article 1 of Directive 2011/62/EU. One could speculate therefore that the AG in Santen was proposing that, where it can be shown that there is such a “new” action exerted by the active ingredient of its own, in the context of the new marketing authorisation, then an SPC may still be available, even if that authorisation does not relate to a new therapeutic indication. This is because the active ingredient as

Last time… The first part of this series was published in the JulyAugust 2020 issue of the CIPA Journal. It covered: the perennial favourite of what is required for a patent to “protect” an active ingredient; the recurrent question of whether an SPC can be based on a third party’s marketing authorisation; as well as 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.

REVIEW

authorised in that marketing authorisation could essentially be regarded as a new active ingredient under article 1(b) of the SPC Regulation.5 Additionally, if the new marketing authorisation “covers a new therapeutic indication of the active ingredient”, then an SPC is available in any event. In the AG’s view, it would be irrelevant to that assessment whether the marketing authorisation is the first authorisation of the active ingredient in human use, i.e., it is irrelevant whether the earlier authorisation of the active ingredient likewise related to human use, or whether it related to veterinary use. Indeed, the AG’s position on this point (see, e.g., paragraphs 62 and 66 of the opinion) was robust. The AG also made a reference to the interpretation of article 4 of the SPC Regulation, suggesting that where the SPC relates to a different application of an old active ingredient, the scope of protection of an SPC does not extend beyond that new application of the active ingredient. This requirement would in any event be fulfilled if the SPC is based on a second medical use patent that relates to the new therapeutic application. However, the situation is arguably less clear for SPCs based on formulation patents, which in principle cover any use of the formulation that is authorised before expiry of the SPC, as provided by article 4. At the time of writing, it remained to be seen whether the Court would follow any of the AG’s proposed answers, and if so then what additional guidance the Court might provide. The Court has, since writing of this article, issued its judgment. As discussed in the next article, the Court has followed the AG’s primary position, thereby reverting to a literal interpretation of article 3(d). Readers will also be aware that another SPC reference is currently pending at the CJEU – Novartis (C-354/19). This case relates to the interpretation of article 3(c)6 of the SPC Regulation. In brief, the Swedish Patent and Market Court of Appeal has asked the CJEU whether, in a case such as the one before it, an SPC for a new therapeutic indication is available where the applicant has an earlier SPC for the same active ingredient. The Swedish SPC application underlying this reference is based on Novartis’s marketing authorisation for a medicinal product that contains the active ingredient canakinumab for the treatment of systemic juvenile idiopathic arthritis (SJIA). Novartis has an earlier granted SPC based on a separate patent and a marketing authorisation for canakinumab in the treatment of a different therapeutic indication, Cryopyrin-Associated Periodic Syndromes. Therefore, unlike in the cases discussed above, the basic patent that supports the SPC application at issue is a second medical use patent that specifically protects the new therapeutic indication, SJIA. Compliance with article 3(d) in light of the earlier marketing authorisation has therefore not been at issue in this case.7 The question is instead whether the SPC is available in light of the same applicant’s earlier SPC. The case remains pending at the CJEU and we will report when further developments occur.8 Author: Natalia Wegner-Cribbs

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not exist or has expired. The waiver also permits manufacturing for stockpiling during the six months leading up to SPC expiry, to facilitate launch of generic and biosimilar products immediately upon SPC expiry. The waiver is applicable with immediate effect from its 1 July 2019 enactment date only to SPCs based on applications filed after this date. For SPCs filed before 1 July 2019, but which come into force on or after that date, the manufacturing waiver will apply, but only from 2 July 2022. SPCs granted before 1 July 2019 are exempt. It is intended that the UK SPC provisions will retain the manufacturing waiver, although because the waiver came into force after the Patents Regulations 2019 were enacted, the final form of the corresponding UK legislation has not yet been finalised. Based on the draft legislation available to date, no significant changes are expected relative to the EU system.

Substantive matters and case law

No substantive changes to the SPC system have been announced. However, the interpretation of the UK SPC legislation will no longer be subject to the decisions of the CJEU. It remains to be seen whether and to what extent the UK courts will continue to apply CJEU decisions regarding the interpretation of the EU SPC Regulation to the equivalent UK legislation. For example, the recent Royalty Pharma13 decision from the CJEU (C650/17) appears to be at odds with the “core inventive advance” test proposed by the High Court of England and Wales for ascertaining whether a product is protected by a basic patent in the sense of article 3(a) of the SPC Regulation. The potential for the UK judiciary to re-shape the interpretation of the SPC legislation presents opportunities for SPC applicants to influence SPC law and practice under the new system.14

REVIEW

Impact for the remaining EU member states

The EU Regulations will not cease to apply to the UK until the end of the Transition Period, and in light of this, the European Commission has provided some guidance on the relevance to the EU SPC framework of UK marketing authorisations issued before and after the end of the transition period. Given that the first marketing authorisation to be granted in the EU determines both the term of the SPC under article 13 of Regulation 469/2009, and its fate if an earlier authorisation has been granted with effect in the EU in accordance with article 3(b), it is important to know which marketing authorisation is the “first authorisation” in the EU. The guidance from the European Commission indicates that any authorisation issued by a UK competent authority before the UK’s withdrawal date from the EU will be considered the “first authorisation” in the EU. In view of the Transition Period, any UK marketing authorisation granted up until 31 December 2020 will continue to be relevant for calculating the term of EU SPCs, and for deciding their fate. However, any authorisation granted by a UK competent authority after the end of the Transition Period will no longer be considered the “first authorisation” for the purposes of the EU SPC Regulation. Author: Emily Nikolić This information provides a summary of the subject matter only. It should not be acted on without first seeking professional advice. Any views expressed in this document do not necessarily reflect the views of Carpmaels & Ransford or its attorneys or clients. For more information, please contact: daniel.wise@carpmaels.com or susan.hancock@carpmaels.com. Copyright © Carpmaels & Ransford LLP 2020.

Notes and references 1. http://curia.europa.eu/juris/celex.jsf?celex=62017CJ0443 2. A certificate shall be granted if, in the member state in which the application referred to in article 7 is submitted and at the date of that application: …[and] (d) the authorisation referred to in point (b) is the first authorisation to place the product on the market as a medicinal product. 3. http://curia.europa.eu/juris/celex.jsf?celex=62018CJ0673 4. http://curia.europa.eu/juris/celex.jsf?celex=62013CJ0631 5. (b) ‘product’ means the active ingredient or combination of active ingredients of a medicinal product 6. A certificate shall be granted if, in the member state in which the application referred to in article 7 is submitted and at the date of that application: …[and] (c) the product has not already been the subject of a certificate…; 7. Ed.: Although in the light of Santen the subject patent is no longer a relevant consideration in respect of the application of article 3(d) 8. Ed: However, the CJEU has probably effectively answered this question now in the Santen decision 9. http://curia.europa.eu/juris/celex.jsf?celex=62018CJ0673 10. http://curia.europa.eu/juris/celex.jsf?celex=62011CJ0130 11. http://curia.europa.eu/juris/liste.jsf?num=C-431/04 12. http://curia.europa.eu/juris/liste.jsf?language=en&jur=C,T,F&num=C-631/13&td=ALL 13. http://curia.europa.eu/juris/celex.jsf?celex=62017CJ0650 14. Ed.: It is worth noting the circumstance in which the UK judiciary can depart from existing EU law is the subject of a consultation which recently closed – https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/896830/retained-eu-case-law-consultation.pdf. The more generous proposal discussed in that consultation is that the High Court should be free to depart from previous CJEU case law but only in the same circumstances as the Supreme Court can currently depart from its own decisions.

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DECISIONS

PATENTS: UK

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

Sufficiency Regeneron Pharmaceuticals Inc v Kymab Ltd UKSC 27 [2020] • 24 June 2020 Lord Reed; Lord Hodge; Lady Black; Lord Briggs; Lord Sales This decision relates to an appeal from the decision of the Court of Appeal of 28 March 2018 ([2018] EWCA Civ 671, reported May [2018] CIPA 27). The lead judgment was given by Lord Briggs, with whom Lords Reed, Hodge and Sales agreed. Lady Black dissented. At first instance, the judgment of Carr J ([2016] EWHC 87 (Pat), reported April [2016] CIPA 50) was that European Patent (UK) Nos 1360287 and 2264163 were invalid for lack of sufficiency. Regeneron appealed the decision. The Court of Appeal overturned the first instance decision and found that the patents were adequately enabled across their breadth. Kymab appealed the decision to the Supreme Court. The issue to be resolved, as set out by Lord Briggs, was: “whether a product patent, the teaching of which enables the skilled person only to make some, but not all, of the types of product within the scope of the claim, passes the sufficiency test where the invention would contribute to the utility of all the products in the range, if and when they could be made.” It was common ground that the outcome for validity for all of the claims at issue turned on the validity of claim 1 of the 163 patent. All issues of construction had been resolved in the courts below and had not been subject to appeal. The lead judgment summarised the law in relation to the basic principles of sufficiency and enablement across the whole range of the claimed subject matter, looking at both decisions of the UK courts and the European Boards of Appeal. Lord Briggs summarised these decisions in the following principles: i. The requirement of sufficiency imposed by article 83 of the EPC exists to ensure that the extent of the monopoly conferred by the patent corresponds with the extent of the contribution which it makes to the art. ii. In the case of a product claim, the contribution to the art is the ability of the skilled person to make the product itself, rather than (if different) the invention. Volume 49, number 9

iii. Patentees are free to choose how widely to frame the range of products for which they claim protection. But they need to ensure that they make no broader claim than is enabled by their disclosure. iv. The disclosure required of the patentee is such as will, coupled with the common general knowledge existing as at the priority date, be sufficient to enable the skilled person to make substantially all the types or embodiments of products within the scope of the claim. That is what, in the context of a product claim, enablement means. v. A claim which seeks to protect products which cannot be made by the skilled person using the disclosure in the patent will, subject to de minimis or wholly irrelevant exceptions, be bound to exceed the contribution to the art made by the patent, measured as it must be at the priority date. vi. This does not mean that the patentee has to demonstrate in the disclosure that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled to be made. Patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range of products within the scope of the claim to be made. But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant, part of the claimed range to be made, as at the priority date. vii. Nor will a claim which in substance passes the sufficiency test be defeated by dividing the product claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse’s tail. The requirement to show enablement across the whole scope of the claim applies only across a relevant range. Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made. viii. Enablement across the scope of a product claim is not established merely by showing that all products within the relevant range will, if and when they can be made, deliver the same general benefit intended to be generated by the invention, regardless how valuable and ground-breaking that invention may prove to be. Lord Briggs concluded that the application of the principles to the present case showed that claim 1 of the 163 patent failed for SEPTEMBER 2020

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DECISIONS

The Board rejected the request for postponement on the basis that the communication from the respondent did not contain any specific reasoning as to why it or its representatives would be unable to attend. In its communication rejecting the request for postponement, the Board noted that although the respondent party was Japanese, its patent attorneys were based in Berlin, and there were no apparent travel restrictions preventing the respondent’s representatives from travelling from Berlin to Munich, following the easing of restrictions in Germany. The respondent did not present any further reasons, and replied stating only that it would not attend the oral proceedings and maintained its previous arguments and requests. The decision under appeal was set aside and the patent revoked following the oral proceedings.

Inventive step, mixed technical and non-technical features – articles 52(2)(d) and 56 T 1091/17: Clinical statistics/PHILIPS TBA decision of 4 June 2020 Chair: A. Ritzka Members: E. Konak and D. Prietzel-Funk This was an appeal from a decision of the Examining Division to refuse an application to grant a patent (main request and four auxiliary requests) on the basis of lack of inventive step. The application related to an iterative method of searching medical images in a database whereby the user is presented with information and statistics following a search and the user then provides further input based on the statistics generated. One of the issues which fell to be decided was whether the distinguishing features of the claimed invention over the prior art were related to presentations of information – article 52(2) (d). The appellant applicant argued that they were not, on the basis that there is a distinction between what is and how it is presented; it being important in this case that presenting the statistics together with the similar cases as a result of the claimed method was a question of “how” rather than “what”. The TBA acknowledged that some decisions in the case law relied upon this distinction (namely T 1749/06, point 4.1.3, second sentence; T 651/12, page 16, first full sentence) but considered that these cases were exceptions and this approach was not the predominant view. Instead, the TBA considered that the predominant view from case law was that a wider approach should be taken where both what is presented and how it is presented are considered to be “presentations of information” (see T 1235/07). As such, the TBA did not follow the appellant’s line of argument that the distinguishing features do not relate to presentations of information. Nevertheless, in line with case law, the TBA went on to consider whether the presentation of information contributes some technical character to the invention (see T 1741/08, point 3.3, last paragraph). In so doing, they assessed whether the presentation of information credibly assists the user in

EPO

performing a technical task by means of a continued and guided human-machine interaction process (see e.g. T 336/14). Initially, in the context of the main request, the appellant argued that the presentation of the calculated statistics together with the set of similar cases assisted the user in performing the technical task of searching for a medical case more efficiently and reliably. The Board disagreed – such an argument ignored the fact that the chain of events comprising the task was broken by cognitive or semantic processing. However, even when the applicant framed the technical task in more specific terms, in each of the four auxiliary requests, the Board was not convinced, finding that the additional features in each case either did not contribute to any technical effect, were obvious or were disclosed in the closest prior art. The Board therefore did not consider that the main request or any of the auxiliary requests contained an inventive step. The appeal was dismissed accordingly.

Extension of Singapore patents to Lao People’s Democratic Republic (Laos) Following the signing of the Memorandum of Cooperation between the Intellectual Property Office of Singapore (IPOS) and Laos’ Department of IP (LDIP) in November 2019 at the side-lines of the 2nd ASEAN-Korea Heads of IP Offices Meeting held at Seoul, Korea, patent owners can now register their Singapore patents in Laos and enjoy the same protection conferred by the Laos IP law. This is the second such agreement IPOS has signed with an ASEAN country, the first being with Cambodia in 2015. The re-registration process is straightforward and worth considering for patent owners with an interest in the Laos’ market of about seven million people. To be eligible for re-registration at LDIP, the Singapore patent must be in force at the time of lodgment of the reregistration request and meet the Laotian requirements for patentability. The applicant should also have an address for service in Laos by appointing an agent to represent their interest before the LDIP. Denise Mirandah and Ang Chuan Heng Shawn

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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 Application (and where applicable, earlier mark)

Ref no. GC T‑341/19 T‑342/19 Martínez Albainox SL v EUIPO; Taser International, Inc. 28 May 2020 Reg 2017/1001 Reported by: Adeena Wells

– hand tools and implements (hand operated); cutlery; side arms; penknives, expressly not including shaving razors, shaving knives and shaving utensils (8) – goods of leather and imitations of leather; purses; umbrellas (18) – clothing, footwear, headgear (25) TASER – apparatus for recording video, video cameras; motion picture films; handheld devices; electronic modules for installation on or in weapons (9) – firearms; ammunition and projectiles, weapons, weapon apparatus and installations; non-lethal electronic weapons (13) – provision of training (41) – security services for the protection of property and individuals (45)

AMENDMENT OF SPECIFICATIONS PAPER

Comment

In two applications for declarations of invalidity under article 60(1)(a), read in conjunction with articles 8(1)(b) and 8(5), the GC upheld the BoA’s decisions that the later device mark registrations were invalid. The BoA correctly found that there was a likelihood of confusion on the part of law enforcement authorities and private security services, in relation to ‘side arms’ and ‘pen knives’, being non-explosive weapons worn on the body, and the goods in class 13 of the earlier mark. When considering reputation, the GC noted that the relevant public did not have to be comprised of those who were likely to use both sets of goods covered by the relevant marks: it was sufficient that the public might call to mind the earlier mark when they were presented with goods under the contested mark. The marks were highly similar. The earlier mark was also held to possess a high degree of distinctive character and a reputation going beyond its specialist public in light of numerous articles in the general press and dictionary definitions (which also indicated that the word was a registered trade mark). The requisite link was therefore established and the findings of invalidity, in respect of the remaining goods covered by the contested marks, were upheld.

Amendment of Specifications Paper By Tim Allsop (2020)

CIPA FD3 STUDY GUIDE Tim Allsop

2020

The 2020 edition of the CIPA FD3 Study Guide for the Amendment of Specifications Paper has been updated from the 2017 version to take account of recent changes relevant to the response candidates must give. The book includes considerable new comment on technique and strategy derived from the author’s continued involvement in writing and marking UK final exams, as well as his experience gained through tutoring. There is also a comprehensive worked example of the method it suggests candidates apply against a recent FD3 paper. AVAIL ABLE FROM W W W.CIPA.ORG.UK /ESHOP

Volume 49, number 9

SEPTEMBER 2020

CIPA JOURNAL

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

Thursday 8 October 2020 Webinar

DYSLEXIA AND DYSPRAXIA DEMYSTIFIED

Thursday 15 October 2020 Webinar

COMPENSATION FOR EMPLOYEE INVENTIONS

Time: 12.00–13.00

Time: 12.30–13.30

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.

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, Germany’s Employee Inventions Act categorizes employee inventions, regulates the transfer of IPRs

Please note that this webinar will start at 12pm

CPD: 1; Prices: Free for CIPA members

between employers and employees, and provides a detailed formula to calculate adequate remuneration. 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: Ernst-Ulrich Wittmann (Withers & Rogers); CPD: 1; Prices: £73.20 | £49.20 members

IP PARALEGAL VIRTUAL CONFERENCE 2020 BOOK YOUR PLACE NOW! Find details for daily rates on our website

30 September – 2 October

Conference to include: » Updates on best practice and common pitfalls » the EPOs online filing (CMS) » Overseas formalities » Unitary Patent Court » Transition arrangements for Community Trade Marks and Designs » Chance to network via the online platform All access member rate: £150 inc. VAT

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CPD & EDUCATION

Thursday 22 October 2020 Webinar

COMMUNICATION & EMERGENCY PROVISIONS AT THE IPO

Time: 11.00-12.00

This seminar will detail the options available to customers and the Intellectual Property Office when problems arise, and recap some of the mitigating measures that the IPO has implemented in light of the Covid-19 pandemic. Speaker: Aquila Brandon-Salmon (IPO) CPD: 1; Prices: £73.20 | £49.20 members

Thursday 26 November 2020 Webinar

EXCLUDED MATTER AND PROGRAM INVENTIONS:

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

INSTITUTE EVENTS

16-20 November 2020 Conference

CIPA LIFE SCIENCES WEBINAR SERIES Also see page 33. It’s nearly Life Sciences Conference time again. But sadly, we can’t meet in the usual way, in person, in a lovely location, so the CIPA Life Sciences Committee has been working behind the scenes to try and identify the best way to deliver the annual conference. Traditionally, the conference is a favoured opportunity for patent and IP professionals active in the pharma, medical technology and biotechnology sectors to connect, discuss and be educated in a friendly environment and to get those allimportant CPD points. We want any alternative to accomplish the same goals and so we bring to you the 2020 Life Sciences Webinar Series. Over the course of the week a series of webinars will cover: • Updates on the latest case law in Europe, including implications of Covid-19 on prosecution and oral proceedings at the EPO. • Updates from the US, including a speaker from the USPTO. • Hot topics in the life sciences IP space. • Insights into inventorship considerations. • The recent Supreme Court decision on insufficiency. To allow some of the traditional networking spirit to be retained, we are offering a “room” booking option for individual sites. This is intended to allow a number of attendees to group together in person to attend a session (within the numbers permitted by government advice) and we hope that firms and companies will take advantage of this option to allow opportunities for face-to-face interaction. Please contact Sequence of Events if you wish to know more about this option – cipa@sequenceofevents.co.uk Individual prices (single webinar): £75+VAT | £50+VAT members Individual prices (full series): £300+VAT | £200+VAT members Member room (single webinar): £375+VAT | £250+VAT members Member room (full series): £1500+VAT | £1000+VAT members

Essential information for candidates for the 2020 PEB qualifying examinations

nprecedented circumstances have led to the Patent Examination Board’s decision that, to protect the interests of candidates, the 2020 examinations should be run in a different way. PEB also has a responsibility to put in place measures that will meet regulatory requirements and that will retain the profession’s confidence in the rigour and integrity of PEB qualifying examinations. The PEB has published online a document that sets out the requirements of candidates that are designed to ensure PEB can meet its responsibilities as well as a list of frequently asked questions.

2020 PEB Information for Candidates This PDF contains essential information about the 2020 qualifying examinations. Candidates should read it and ensure they understand it. Candidates are advised to consider if their requests regarding the online examinations would be appropriate or allowed if they were taking their examinations at a physical PEB venue before sending their questions to the PEB. 2020 PEB Examination FAQs This 14-page document contains frequently asked questions to help candidates sitting their exams in 2020.

See the up-to-date document at www.cipa.org.uk/patent-examination-board/communications/covid-19-essential-information-for-candidates Volume 49, number 9

SEPTEMBER 2020

CIPA JOURNAL

The Yellow Sheet

convinced that we aren’t all in some “doing what we need to” phase to get through the now. When some form of new normality begins to return, old opinions and thoughts will creep back in as the ‘dinosaurs’ demand a return to the office. Anecdotally, this has happened to a friend of mine, she recently received an email from her employer (not in the IP industry) reminding her and all her colleagues that they are not employed with a working-from-home option, and as soon as possible a return to the office for all employees should be expected. The reasoning was a bit wishy washy – ‘better for team moral’, ‘better for professional development’, ‘more detailed feedback on work’, etc – but there was an undertone of a lack of trust. Of course, it is a bit harder to trust your employee when you don’t know what they’re up to, but in our industry we have billing targets, billed hours, internal hours, and various other key performance indices (a.k.a KPIs in the biz.), which all make it very easy to see what we’re doing.

Does being a trainee patent attorney and remote working, really work together? Jonathan Foster: I’d agree for the most part [with Joel’s comments above], except maybe the specific case of a trainee patent attorney has more to it. I think I would put a caveat that says work from home works, “unless you’re a 0-6 month trainee” – in which case, the face-to-face time early on (I believe) is invaluable. But – how does that affect the line managers and qualified patent attorneys who would be training the new starters? Does at least one person from a team need to be in to train a trainee? What if you don’t work in a team? It seems to me it would be really tough to properly train a trainee if you were their sole trainer and you worked from home four or five days a week. I offer no solutions, only more questions!

money); more time with the family (=better wellbeing and mental health); more sleep (=health);

I can certainly argue the pros to truly flexible working and working from home: freedom to choose when to work (=better work/life balance); reduction in physical office space for employer (=savings); no commute (=more time for you/=save

What’s your opinion? Do you want to work from home? The office? Or both? Do you think the old 9 to 5, Monday to Friday, is well and truly dead? Send in your comments to informalsyellowsheet@gmail.com

Jonathan Foster: Definitely agree, for me personally, in terms of wellbeing and mental health. I think a balance between seeing colleagues at work and having more time to do things at home is really beneficial. But I can see how this might not be the case, for example, with people who live on their own, people who can start to feel ‘trapped’ or ‘stuck’ if they don’t leave the house, people who simply cannot concentrate in a home environment – the list goes on. I think above all, people should have full flexibility to do what is best for them and their mental/physical health. Surely, there’s nothing more beneficial to a company than healthy, happy employees.

The Informals Committee If you have any questions and would like to get in contact with your local Informals secretary, then all the contact details are below: Honorary Secretary, Carolyn Palmer, cipainformalshonsec@gmail.com

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

London, Gregory Aroutiunian, GAroutiunian@jakemp.com

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

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

Northern Ireland, Helen Lavery, Helen.Lavery@murgitroyd.com

Yellow Sheet Editor, Jonathan Foster, Jonathan.Foster@appleyardlees.com

Immediate Past Hon. Sec, Matthew Veale, North East, Elliot Stephens, matthew.veale@wynne-jones.com estephens@hgf.com

Blog, Website & Social Media Editor, Joel David Briscoe, informalsyellowsheet@gmail.com

REGIONAL SECRETARIES:

Birmingham, Mark Kelly, Foundation Lecture Organiser, mkelly@hgf.com Jack Wheating, JWheating@marks-clerk.com Cambridge, Lindsay Pike, Tutorial and Mentoring Coordinator, lxp@dyoung.com Waseem Aldeek, W.Aldeek@csy-ip.com East Midlands, Helen Bartlett, Helen.Bartlett@potterclarkson.com

North West, Cassie Smith, csmith@hgf.com South West & Wales, Ozgur Aydin, Ozgur.Aydin@dyson.com Sheffield, Nick Jenkins, njenkins@hgf.com Yorkshire and Humber, Amelia Barton, amelia.barton@appleyardlees.com

56 CIPA JOURNAL SEPTEMBER 2020

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Where Intellectual Property and recruitment meet

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

+44 (0)20 7405 5039 • ip@dawnellmore.co.uk • www.dawnellmore.co.uk

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™

SWEET & MAXWELL