CIPA Journal, October 2020 by CIPA Journal

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

October 2020 / Volume 49 / Number 10

Should the UK patent profession be larger?

China update: drug patents and the new patent law Toby Mak

Independence of the EPO Boards of Appeal Mike Snodin

Supporting IP-focused regulation Lord Chris Smith

Careers in Ideas Week: What’s happening? Andrea Brewster

Walter de Havilland – an Englishman in Meiji Japan Darren Smyth

UP FRONT

CIPA JOURNAL Editor Alasdair Poore Deputy Editors Jeremy Holmes Publications Committee Bill Jones (Chairman) Production Iain Ross, 020 3289 6445, and advertising sales@cipa.org.uk Design Neil Lampert Cover design Jonathan Briggs Contact editor@cipa.org.uk

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

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 Joel Briscoe; 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 22 7 & 13 UP FRONT 2

Focused regulation

Council Minutes – August

Chris Smith Lee Davies

18 18

hy isn’t the British patent W profession larger?

EDUCATION

patent in China

42 48

Patent Law

PERSONAL

Nicholas Fox 22 Pre-trial injunction for a drug Toby Mak 25 Amendments to China's

NEWS

Toby Mak 31 Walter de Havilland – an

Overseas update

Amanda R. Gladwin

ARTICLES 7 G 3/19: A need to improve the

perception of independence of the EPO Boards of Appeal?

Mike Snodin 13 G 3/19: Do flaws in the EBA’s

reasoning amplify concerns regarding the perception of independence of the EPO Boards of Appeal?

Englishman in Meiji Japan

Darren Smyth

DECISIONS 36 P atent decisions Beck Greener 40 I PO decisions David Pearce & Callum Docherty 41 E PO decisions Bristows 43 Trade marks Bird & Bird

CIPA Life Sciences webinars Webinars and seminars

48 Careers in Ideas Week 16-22 November 2020 Andrea Brewster 52 Obituaries Oliver Beswetherick, Stuart Lloyd Geary, Philip Grubb 52 Meet the team! CIPA staff profile: Bill Mische, IT Specialist 55 IP Inclusive update Andrea Brewster

THE PINKS 56

Courses; Recruitment; Support

Mike Snodin

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NEWS

210/20: Designs and Copyright Committee Council noted the report from the Designs and Copyright Committee. 211/20: International Liaison Committee Council noted the report from the International Liaison Committee. Neil Lampert informed Council that there had been three webinars delivered to the US Intellectual Property Owners Association. The webinars were very successful and the Committee hopes to rerun these next year. The Committee is in discussion with the Japanese Patent Attorney Association with the view to hosting an online event in the autumn. Council approved the appointment of Leythem Wall to the committee. 212/20: Membership Committee Council noted the report from the Membership Committee. Council approved the list of members whose membership is due to lapse for the failure to pay for their annual subscription. John Brown suggested that CIPA introduce a penalty for members who do not pay subscriptions in good time. Council asked the Membership Committee to consider this. 213/20: Patents Committee Council noted the report from the Patents Committee. Tim Jackson informed Council that the Committee is considering writing a letter to President Josefsson of the Boards of Appeal regarding the concerns about oral proceedings and potential travel restrictions. The Committee is also concerned about the limited number of accompanying persons permitted to attend oral proceedings and the short notice of change of venues. Tim agreed to produce a draft letter which can be sent on behalf of Richard Mair. Tim informed Council about the consultation regarding Chinese Patent Law (Second Amendment), which has been published. It was suggested that CIPA could ask the new IP Attaché in China to file a response on its behalf, but this would have to be translated 6

COUNCIL • OVERSEAS

into Chinese first. Gwilym Roberts said that he had spoken with Conor Murphy, who would support CIPA in filing a response, but that expectations would need to be managed due to the short notice and the difficulties faced in translating. Alasdair Poore said that he had forwarded a summary produced by Toby Mak. Charlotte Russell said that she would circulate this to Council, the Patents Committee and the Life Sciences Committee.

Item 10: Officers’ reports

214/20: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 215/20: Council noted the Chief Executive’s report.

Item 12: Any other business

216/20: Council agreed with a proposal from Lee Davies that his paper on the future operation of CIPA should be referred back to the Internal Governance Committee, following the Committee’s consideration or reopening the CIPA office. 217/20: Council considered the HM Treasury consultation on the Economic Crime Levy. Lee informed Council that this will be discussed at the next Regulatory Forum meeting between CIPA, CITMA and IPReg. Matt Dixon said that it looked as though the small business exemption would apply for most patent attorney firms. Matt added that this might be an opportunity to achieve a final resolution from the Treasury about the application of the Money Laundering and Terrorist Financing (Amendment) Regulations 2019 to the work of patent and trade mark attorneys.

Item 13: Date of next meeting 218/20: Wednesday 2 September 2020 (by videoconference).

The President closed the meeting at 17:29. Lee Davies, Chief Executive

Overseas update – international treaties Locarno Agreement (International Classification of Industrial Designs) On 3 September 2020, the Government of the Kingdom of Saudi Arabia deposited its instrument of accession to the Locarno Agreement. The Agreement will enter into force, with respect to Saudi Arabia, on 3 December 2020 Vienna Agreement (International Classification of the Figurative Elements of Marks) On 3 September 2020, the Government of the Kingdom of Saudi Arabia deposited its instrument of accession to the Vienna Agreement. The instrument contained the declaration that in accordance with Article 16(2) of the Vienna Agreement, Saudi Arabia does not consider itself bound by the provisions of paragraph (1) of Article 16 relating to the settlement of any dispute before the International Court of Justice. The Agreement will enter into force, with respect to Saudi Arabia, on 3 December 2020. Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 17 September 2020, the Government of the Republic of CÔte d’Ivoire deposited its instrument of ratification of the Marrakesh Treaty. The Treaty will enter into force, with respect to CÔte d’Ivoire, on 17 December 2020. Dr Amanda R. Gladwin (Fellow), GSK

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G 3/19: A need to improve the perception of independence of the EPO Boards of Appeal? Mike Snodin (Fellow) discusses questions regarding the perceived independence of the Boards of Appeal (and the rule of law at the EPO) that have come into sharp focus in the light of G 3/19, and why these point to a need for a revision of the EPC to improve the perception of independence of the Boards.

n 14 May 2020, the EPO’s Enlarged Board of Appeal (EBA) issued its opinion in case G 3/19, thereby, at least as far as the EPO is concerned, bringing to a close a long-running controversy regarding the interpretation of Article 53(b) EPC. In view of the politically charged background to G 3/19, it was perhaps always to be expected that the EBA’s opinion on the questions referred would provoke yet more controversy. However, few will have predicted that, by rewriting the referral and adopting views expressed by the European Commission, Council and Parliament, representatives of some EPC Member States and the President of the EPO, the EBA would appear to rubber-stamp a rule crafted with the express intention of overturning the EBA’s prior interpretation of the EPC. The most striking outcome of the EBA’s opinion in G 3/19 is an apparent circumvention of a provision of the EPC (Article 164) that establishes the supremacy of the Convention over the Implementing Regulations. This seems to open the way to the Administrative Council (AC) making wholesale changes to the EPC itself without the need to call a Diplomatic Conference, contrary to the requirements of the Convention. Important gaps and flaws in the EBA’s opinion in G 3/19 are discussed in detail in the following article, as are aspects of the EBA’s opinion that give rise to problems regarding both the perception of independence of the EBA and the rule of law at the EPO. However, in this article the author discusses why structural weaknesses in the current set-up of the Boards of Appeal of the EPO mean that concerns regarding the perception of independence of the Boards can arise in cases, such as G 3/19, in which the actions of, including written statements submitted by,

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representatives of Contracting States to the EPC leave the EBA in no doubt as to the outcome desired by those representatives. This article also points to changes that could (and, in the author’s view, should) be made to the way in which the Boards of Appeal are set up to bolster their actual and perceived independence following on from past proposals for improvement.

Prior attempts to reform the establishment of the Boards of Appeal

In 2003, the EPO’s Administrative Council (AC) considered and effectively approved1 plans to lay the groundwork for a revision of the EPC that would have established the Boards of Appeal of the EPO as a third organ of the European Patent Organisation (to be known as the “European Court of Patent Appeals”), thereby providing the Boards with organisational autonomy. Whilst proposals for revising the EPC were duly prepared in 2004,2 plans for the Diplomatic Conference required to transpose those proposals into law were postponed,3 and then dropped, apparently in view of a lack of progress with contemporaneous plans for a Community Patent4. Key proposals from 2004 were capable of vastly improving the independence of the Boards of Appeal. For example, in addition to reconstituting the Boards of Appeal as a third organ of the EPO (that would have been financially and organisationally independent of the Office), one option for revising the EPC would have seen ordinary members of the Boards appointed for a non-renewable (e.g. life) term. Those key proposals were not picked up when the issue of reform of the Boards of Appeal was revisited in 2016. Thus, despite reforms implemented in 20165 that, amongst other things, reorganised the Boards as an OCTOBER 2020

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UPDATE

CHINA

of sufficient proper substantive evidence is also another major reason, which could be arbitrary in some cases.] • Hisun’s 2018 annual report, published on 31 January 2019, revealed losses of between RMB 520 million and RMB 620 million (£60 million – £70 million).

There was an emergency in this case

The Court’s ruling

• According to Hisun’s 2018 annual report, Hisun had made a loss. If the alleged infringement was established, Hisun might be unable to compensate the losses caused by the infringement. • The evidence showed that the alleged infringing product had been sold directly in some pharmacies, including Renhe Pharmacy Network Company. If a pre-trial injunction was not granted immediately, the scope of the infringement might be expanded, increasing Astella’s damages. • Since the alleged infringing product had a clear price advantage, Hisun’s action might cause Astellas’ relevant market share to decrease significantly, or reduce the price of Astellas’ product. Therefore, damage caused to Astellas was irreparable.

Patent ‘216 was stable and valid

Notwithstanding that ‘216 was in force and no validity challenge had been successful or filed at the time of the hearing, Hisun claimed that ‘216 was invalid due to obviousness, lack of support and ambiguity, and filed a “patent stability analysis report” (issued by Hisun’s Chinese patent attorney at the Beijing IP Court to support this claim). The Court refused this argument as the report had been commissioned by Hisun, and therefore this report alone was not sufficient to show that the patent was not stable.

Astellas had the possibility to win

Astellas provided the following evidence to the Court: 1. Hisun claimed their generic product as “the first generic in the country”; and claimed in Hisun 2018 semi-annual report that “More than ten species including micafungin sodium for injection are undergoing drug consistency evaluation in accordance with the ‘Technical requirements on consistency evaluation of chemical generic drug (injection) (consultation draft)’.” 2. Notarized purchase evidence of Hisun generic product in October 2018. 3. Evidence showing that Hisun generic product was offered in tenders and had already won some tenders. 4. An infringement analysis report prepared by Astellas’ Chinese patent attorney claiming that Hisun’s generic product fell within the scope of ‘216. Hisun argued specifically that Astellas had not proved that the amount of water in Hisun’s generic product fell within the scope of ‘216: claim 1 required water content of 3.4 % or less. The Court first determined that the issue of water content in Hisun’s generic product was the only contention; the remaining technical features in Hisun’s generic product fell within the scope of claim 1 of ‘216. Then, according to the inspection report from the Beijing Physical and Chemical Analysis and Testing Center filed by Astellas, the water content of the infringing product actually measured was 1.04%, that is, it was less than 3.4%. [The infringement analysis report presented by Astellas was not commented at all in the Court’s decision, which was consistent with the refusal of the acceptance of the patent stability analysis report issued by Hisun’s Chinese patent attorney.] At the same time, however, according to the quality standard issued by Renhe Pharmacy Network Company in respect of the alleged infringing product, the limit of detection of water content should be 1.5%.

The Court ruled that failure to take preservation measures may lead the respondent to continue to infringe the patent during the remaining protection period, further expanding the consequences of damage based on the following:

Damages to Astellas were higher than Hisun's

The Court ruled in favor of Astellas as the full-term expiry of ‘216 was 28 June 2020, about six months from the date of the hearing. If the pre-trial injunction was granted, Hisun only needed to suspend production and sales for six months, which could be recovered after the full-term expiry of ‘216, and the loss should be foreseeable.

The pre-trial injunction would not harm the public interest

The Court ruled that although Hisun would be prohibited from providing the alleged infringing product, consumers could still purchase Astellas’ product, and there were other drugs with similar therapeutic functions to choose from, which would not harm the public interest.

Astellas provided a bond

On 9 December 2019, Astellas provided the Court with a bond of RMB 15 million (£1.7 million).

Observations

My view is the following factors play an important role in the grant of the pre-trial injunction: • The Beijing Physical and Chemical Analysis and Testing Center filed by Astellas proving the infringement. [It is important to have your report issued by an official testing center.] • Hisun might be unable to compensate the losses caused by the infringement. [Your opponent’s annual report could be your friend.]

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UPDATE

• ‘216 would expire about six months from the date of the hearing. [Yes, and it took nine months for the case to be accepted by the court. Are patentees encouraged to file their request pre-trial injunction closer to the full-term expiry?] • There are other drugs with similar therapeutic functions. [This may mean that the chance of granting the pre-trial injunction may be reduced if there are few alternatives to the invention.] Although it is encouraging that the first pre-trial injunction has been granted in China, this may not be very exciting if

CHINA

this can only provide six months’ protection to the patentee, notwithstanding that Astellas had suffered from sales infringement for at least 14 months (which should be longer realistically) before the pre-trial injunction was granted, and took Astellas nine months to have the pre-trial injunction request accepted by the Court for hearing. Having said so, grant of pre-trial injunction is not a common practice around the world. Toby Mak (Overseas Member), Tee & Howe Intellectual Property Attorneys ©2020.

More moves forward? Amendments to China's Patent Law On 3 July 2020, the Chinese National People’s Congress (NPC) published the second deliberation draft of the fourth amendments to the Chinese Patent Law (the fourth amendments). Toby Mak outlines the changes with his own commentary, at the same time keeping attorneys aware of how the patent laws may still differ from ones they are more familiar with. There are still some striking contrasts – such as one exclusion from patentability, punitive damages, the short limitation period for proceedings and significant penalties for false marking, as well as potential changes in the pharma field reflecting US law (such as term extension and generic drug clearance). Proposed changes to In design law bring more international harmonisation, although the term is only proposed to be extended to 15 years. This article provides an overview of the changes to these fourth amendments for the last five years. While many of the changes in the second deliberation draft are heading in the right direction, some “timely” proposals appear not to have been well thought through, including: • Adding “first publication for public interest in state emergency or abnormal situation” as an exclusion of nonprejudicial disclosure. • Adding a complex US-style patent linkage system for drug approval, particularly in an article directed to exclusions from patent infringement.

n 3 July 2020, the Chinese National People’s Congress (NPC) published a further draft, for consultation, of amendments to the Chinese Patent Law. This is effectively the fourth draft (but described as the Second Deliberation Draft) of the fourth amendments to the Chinese Patent Law (the fourth amendments) soliciting public comments by the deadline 16 August 2020. Drafts of the fourth amendments were first proposed by CNIPA in April and December 2015. These were reported in my articles published in the May 2015 and March 2016 issues of the CIPA Journal. The second draft in December 2015 had already proposed many changes from the first draft in April 2015.

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The draft fourth amendments then stayed dormant for about three years. In January 2019, the NPC issued a “First Deliberation Draft” of the fourth amendments, and has now issued a further draft (the “Second Deliberation Draft”). This article consolidates the proposals in these two “Deliberation Drafts”, with comments on the proposals and changes. For ease of reference we have included key proposals in the earlier drafts even though these have not been changed. [The origin of the proposals is indicated: D1 and D2 refer to the first and second drafts of amendments; DD1 and DD2 to the first and second “deliberation drafts” (i.e. third and fourth drafts of amendments).] (My observations are highlighted.) OCTOBER 2020

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ENFORCEMENT Interim injunction • Removing provisions on requirements on handling pre-trial injunction. [These are now covered by the Civil Procedure Law amended in 2017, and relevant Supreme People’s Court’s -DD1 stipulation effective since 1 January 2019. See my article on the first pre-trial injunction granted in China on a drug patent published on page 22. CNIPA enforcement DD1

• Removing many provisions to empower CNIPA to enforce patents, while adding the following stipulations: 1. CNIPA could only handle patent infringement cases with significant nationwide influence; and 2. local intellectual property offices could combine cases involving the same patent, and requests superior department to handle cases involving the same patent and several administrative regions.

-DD1

• Removed CNIPA’s power to confiscate or destroy the infringing products as well as the components, tools, moulds, devices, and other means used to produce the infringing products or to carry out infringing methods. [This, and compulsory enforcement of administrative mediation, were heavily criticized in the first and second drafts, and were removed in the first deliberation draft.]

DD1, DD2

• CNIPA can only handle patent infringement cases with significant nationwide influence. [In my view, this is retained to save face for CNIPA, as the authority of CNIPA to handle patent infringement cases diminishes significantly from CNIPA’s first and second drafts, and in the NPC’s first deliberation draft. My understanding is that the idea of allowing CNIPA to handle patent infringement cases receives much criticisms. However, it is intriguing that CNIPA could handle patent infringement cases with significant nationwide influence at all, as these tend to be complex. I believe the court is a more appropriate authority to handle complex cases, and suggest that CNIPA should be allowed to handle only design patent infringement cases.]

CNIPA infringement +DD2

• Allowing CNIPA to take certain actions when handling patent infringement case (Article 69). [Notwithstanding that CNIPA could only handle patent infringement cases with significant nationwide influence (see above), this may be yet another face-saving measures. I maintain that this is a bad idea.]

MORTGAGES Mortgages -DD1

• Removed new provisions on patent mortgages. [Patent mortgage may become redundant, and could be dealt with by separate sets of regulations.]

TAKE DOWN Take down DD1

• In the first and second drafts, online services providers like Taobao were required to take down links once it receivined proof of infringement from the patentee. In the current third draft, online service providers are required to do so only after receiving a court decision, including mediation affirmed by the court.

+DD2

• Removed the article requiring online services providers like Taobao to take down links after receiving a court decision, including mediation affirmed by the court. [This may be removed to reduce redundancy and lobbying from the major online ecommerce platforms in China. In any event, I welcome this change.]

Observations

Many of the changes in the second deliberation draft are heading in the right direction, in particular: • reducing redundancy with other laws of regulations, like those on regulating patent attorneys, and • restricting the power of CNIPA on handling patent infringement cases, although some intriguing provisions remain. On the other hand, some “timely” proposals in the draft appear not to have been well considered, including the following:

• adding “first publication for public interest in state emergency or abnormal situation” as an exclusion of nonprejudice disclosure; and • adding US-style patent linkage system for drug approval, particularly in an article directed to exclusions from patent infringement. The fourth amendments have gone back and forth for almost five years, and there may be one more around of draft in light of the above. Let’s wait and see. Toby Mak (Overseas Member), Tee & Howe Intellectual Property Attorneys ©2020.

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Walter de Havilland An Englishman in Meiji Japan Walter de Havilland is better known as the father of two Hollywood stars, but he was also a Tokyo-based Foreign Member of CIPA. Darren Smyth (Fellow) investigates how an Englishman came to be practising as a Japanese patent attorney in Meiji Japan.

livia de Havilland very sadly passed away in Paris on 26 July 2020 at the impressive age of 104. She and her sister Joan Fontaine were stars of Hollywood’s Golden Age. Her obituaries, along with earlier accounts of her life, generally note that she and her sister were both born in Tokyo (in 1916 and 1917 respectively), where their father practised patent law.1 I had come across Walter de Havilland a couple of months earlier, and immediately wondered why he had ended up in Japan, and what had led to him taking up patents of all things? He features usually only parenthetically in pieces whose focus is not him, and they are largely unconcerned with his choice of profession. As I dug deeper into the story, I also wanted to establish what his formal qualification was, if any, for the role. Enquiries have proceeded slowly due to difficulties in accessing archives at present. Nevertheless, I have managed to piece together a narrative from fragmentary and often contradictory sources. This is the story as best as I can understand it. I will continue to make enquiries and update the account as more details become available.

Early life

Walter was born in Lewisham in 18722 but grew up in Guernsey where his father, Rev Charles Richard de Havilland, was a vicar. Walter was the youngest son from his father’s second marriage to Margaret Letitia (Molesworth) following the death of his first wife Agnes Matilda (Molesworth). For those who associate the de Havilland name with aircraft, Geoffrey de Havilland, the aviation pioneer, was the son of Rev Charles de Havilland (Jr), who was Walter’s half-brother, being the son of Rev Charles Richard de Havilland and his first wife Agnes Matilda. Walter was educated at Elizabeth College, Guernsey and Harrow, and then went up to Cambridge in 1890. However, he did not attend any of the colleges, but matriculated from Ayerst Hostel, an institution that was mainly a residence for Roman Volume 49, number 10

Catholic theology students.3 Walter was reading theology and classics, and may indeed have been contemplating priesthood like his father and older half-brother, but he was certainly not Roman Catholic, and it is tempting to speculate that his attending a non-collegial institution resulted from lack of available funds for a junior member of the family. Graduating with his BA in 1893 (MA 1902), a life in the Church of England was clearly not for him, if indeed this had ever been an ambition. So what to do instead? Head off to Japan.

Move to Japan

While some outpost of the British Empire might have been a more usual destination in the 1890s for a younger son who did not know what to do with himself, there were factors commending Japan as a destination, albeit unusual. Following the Meiji Restoration in 1868, there had been Anglican missionary activity in Japan by the Church Missionary Society and the Society for Propagation of the Gospel, and an Anglican Church institution covering the whole of Japan – the Nippon Sei Ko Kai – had its first synod in 1887. It was to one of these Anglican foundations that Walter headed in 1893.4 And he was not alone: his older brother George Maitland de Havilland arrived in Japan slightly before him.5 The first destination was in Hokkaido, the northern island of Japan, where Walter stayed with Walter Andrews, Bishop of Hokkaido, who was responsible for St John’s Anglican Church, Hakodate, which had been founded in 1874. It is tempting to suppose that Bishop Andrews might have invited the brothers to come and assist with his mission, although Joan Fontaine in her autobiography, No Bed of Roses, recounts a more romantic version of the choice of destination: ‘My father placed the index finger of his left hand on the mouth of the Thames, his right index finger at the same latitude on the opposite side of the globe. He found that he was pointing to Hokkaido, a remote island in the Sea of Japan...’6 OCTOBER 2020

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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.

Supplementary protection certificate (SPC) | Meaning of ‘first marketing authorisation’ Santen SAS v Directeur général de l’Institut national de la propriété industrielle, C 673/18 • 9 July 2020 Court of Justice of the European Union This case of the CJEU was reported and discussed on The SPC Blog (https://thespcblog.blogspot.com) on 10 July 2020. It related to a case referred by the French court. An SPC was sought for an ophthalmic emulsion containing as its active ingredient the immunosuppressant ciclosporin for treatment of keratitis. An earlier marketing authorisation had been obtained for an oral solution of ciclosporin for treatment of uveitis and various other indications. The court held that: ‘Article 3(d) of Regulation No 469/2009 must be interpreted as meaning that an MA [marketing authorisation] cannot be considered to be the first MA, for the purpose of that provision, where it covers a new therapeutic application of an active ingredient, or of a combination of active ingredients, and that active ingredient or combination has already been the subject of an MA for a different therapeutic application.’ The decision was significant in that it overturned the decision in Neurim C 130/11. A first marketing authorisation for SPC purposes must be the first marketing authorisation in relation to that active ingredient, and cannot be a subsequent marketing authorisation for a new therapeutic application of that active ingredient.

Inventive step Mishan & Sons, Inc v (1) Hozelock Limited, (2) Blue Gentian LLC, and (3) Telebrands Corp [2020] EWCA Civ 871 • 8 July 2020 Floyd, Henderson and Arnold LLJ The decision relates to an appeal from the decision of Nugee J of 5 June 2019 – [2019 EWHC 991 (Pat), reported June [2019] CIPA 42 – to revoke United Kingdom Patent No. 2490276 and European Patent (UK) No. 2657585. The exclusive licensee

(Emson) appealed the decision. At first instance, the judge found that the patents were entitled to their priority date, were valid over public prior use by the inventor (although invalid for other reasons, see below) and if they were valid, they would have been infringed by the actions of Hozelock. Hozelock challenged those conclusions in a respondent’s notice. Arnold LJ gave the lead judgment with Floyd LJ dissenting. The patents related to expandable garden hoses. At first instance, the judge found the claims to be obvious over US Patent Application No. 2003/000530 (‘McDonald’). McDonald disclosed an expandable oxygen hose for an aviation crew oxygen mask. Emson’s argument on appeal was that the judge erred because he conducted an ex post facto hindsight-based analysis and that he had failed to take commercial success into account when assessing obviousness. Arnold LJ held that the judge at first instance was entitled to reach his conclusions of obviousness and that there was no evidence of the use of hindsight, concluding: ‘It inevitably follows that some patents turn out to be invalid because, unbeknownst to the inventor, or indeed other persons skilled in the relevant art, prior art emerges when sufficient searches are carried out which anticipates or renders obvious the claimed invention. The judge concluded that this was such a case so far as obviousness over McDonald was concerned, and I see no basis on which this Court is entitled to interfere with that conclusion.’ In relation to the argument of failure to take commercial success into account, he noted that there was no evidence that McDonald was known to anyone in the hose industry. The commercial success of the appellant’s product, the Xhose, could not as a matter of logic help to show that the invention was not obvious over McDonald. Therefore, Arnold LJ concluded the appeal should be dismissed. Henderson LJ agreed. Accordingly, the appeal was dismissed. Floyd LJ dissented in relation to the argument based on the use of hindsight. He considered that there was a difference in the teaching of a prior art document which had been implemented or was well known and documents which had not resulted in practical application. This second category (a ‘mere paper proposal’) should have less force in an obviousness argument.

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DECISIONS

Floyd LJ considered that the judge fell into error in treating McDonald as a real, practical machine and not a mere paper proposal. He also considered that some other parts of the judgment were ‘infected with hindsight’. He therefore concluded that the judgment should not stand.

Entitlement (1) Philip Price, (2) Supawall Limited, and (3) Supahome By Maple Limited v (1) Flitcraft Limited, (2) Flitcraft Timber Frame Limited, (3) Garry Flitcroft and (4) Thomas Flitcroft [2020] EWCA Civ 850 • 9 July 2020 Patten, Floyd, and Richards LLJ The decision relates to an appeal from the decision of Recorder Campbell QC granting summary judgment in favour of Supawall on the patent and copyright infringement claims. ([2019] EWHC 1965 (Pat), reported December [2019] CIPA 50). A request to appeal was granted to Flitcraft, as the judge should have held that Flitcraft had a real prospect of defending both the copyright and patent claims, and also they sought to have a new piece of evidence which was materially relevant admitted into proceedings. Supawall Limited/Supahome by Maple Limited (‘Supawall’) and Flitcraft/Flitcraft Timber frame Limited (‘Flitcraft’) were competing businesses in the timber-frame construction industry that operated from adjacent units in the same business park in Preston. Supawall initiated proceedings for patent infringement, copyright infringement and passing off. The only issue related to whether Supawall was entitled to sue. Flitcraft maintained that the title to the patent and copyright belonged to them by virtue of a series of assignments. In addition they argued that Supawall did not have title in any event. Supawall was the registered owner of United Kingdom Patent Nos 2415714 and 2436989 until 16 January 2012, when Mr Fred Bridge became the proprietor based on an assignment dated 28 March 2011. Supawall became the registered owner again from 26 January 2017 following a purported assignment from Mr Bridge dated 14 July 2016. Flitcraft failed to provide any evidence to support its alleged chain of title prior to the summary hearing. The judge assumed the lack of documentation was because the documents did not exist, and so the defendants had no prospect of successfully defending the case. Therefore, the summary judgment as handed down in favour of Supawall. During the appeal proceedings, Flitcraft also pleaded an alternative case for a different route to entitlement via a trustee in bankruptcy. An affidavit from the administrator of an intermediate owner was sought to be admitted. This new evidence gave rise to a significantly different case for the appellants. On balance, the new evidence was admitted as it gave rise to a triable defence. Permission was also granted for the defence to be amended, and the appeal allowed. Volume 49, number 10

PATENTS: UK

Validity | Excluded subject matter | Computer program as such | Business method as such Lenovo (Singapore) PTE Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat) • 9 July 2020 Birss J This decision relates to a successful appeal by Lenovo against the decision (O/754/19) by the Deputy Director of the IPO to refuse UK Patent Application No. 2536569. The patent application, entitled ‘Selecting a Contactless Payment Card’, related to a computer-implemented method whereby a transaction was automatically split across multiple payment accounts according to a user’s preferences when the user presented multiple payment devices (such as multiple credit cards) to a point of sales device. At first instance, the Deputy Director refused the application on the grounds that it related to a computer program and a business method as such. Following the Aerotel four-step test ([2006] EWCA Civ 1371) and the reformulated AT&T signposts ([2009] EWHC 343 (Pat) and [2013] EWCA 451), the Deputy Director found that identifying multiple payment account IDs from multiple payment devices was known in the prior art and the contribution of the invention of the application lay in the subsequent steps of automatically selecting a subset of the identified payment accounts according to the user’s preference and automatically splitting the transaction across those accounts. These, the Deputy Director found, related to a computer program as such and a business method as such. In particular, the Deputy Director was of the view that automating the steps did not change the physical interaction of the user and therefore did not have a technical effect outside of the computer (Signpost i). On appeal, Birss J held that the Deputy Director had erred in concluding what was the technical effect of the invention outside of the computer: ‘The key question in this case is whether the invention involves a different physical interaction with the world outside the computer, as compared to what had gone before. As I have said already, I would agree with [the Deputy Director] if the technical effect relied on resided in pressing a button in a computer system because that is a conventional feature of using conventional computer systems. Those features may be technical in a sense, but they cannot add technical character to make a computer program as such patentable. However, again as explained above, the point of this invention is the opposite. It is in [the prior art] that the user has to press a button to choose which card to use or to split the payment between two cards. In the Lenovo invention, this is handled automatically at the point of sale because the user’s preferences have already been acquired and stored elsewhere. The automatic nature of the process is recognised [by the Deputy Director]. As a result of this automatic feature, the card clash problem experienced with contactless payment cards is solved without the user having to take any extra physical step at the point they use their OCTOBER 2020

CIPA JOURNAL

CPD & EDUCATION

EVENTS

CPD 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 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.

recap some of the mitigating measures that the IPO has implemented in light of the Covid-19 pandemic.

Speaker: Kalim Yasseen (IPO); CPD: 1; Prices: £73.20 | £49.20 members

Speaker: Aquila Brandon-Salmon (IPO) CPD: 1; Prices: £73.20 | £49.20 members

Wednesday 21 October 2020 CITMA Webinar

HOW TO ADAPT YOUR BUSINESS DEVELOPMENT IN A CONSTANTLY CHANGING WORLD?

Friday 23 October 2020 Webinar

SUPPORTING NEW ENTRANTS TO THE PROFESSION AND RETURNEES FROM FURLOUGH

Time: 12.30–13.30

Gain practical tips to help you adapt and generate more business opportunities in a virtual world. Covid-19 has forced us to adapt to a new reality in which we work from home, host client meetings over Zoom and attend webinars instead of face-toface events. But have you successfully adapted your business development strategy and stayed visible to your clients and contacts? Winning new clients and nurturing your existing clients is more important than ever in today’s climate, and adapting your business development strategy will help you stay ahead of the competition. Book you place here: www.citma.org.uk/ events-calendar/webinar-oct-20.html

This webinar is targeted at patent attorneys and paralegals who are in involved in training of colleagues returning to the profession and new entrants. Autumn is often a time when new entrants to the profession begin their new career. How can we make sure that new entrants are supported and made welcome as they embark on a new career during the current pandemic? How do we support people as they return from furlough particularly when processes have been changed by patent offices, and thus returnees will need to update their knowledge as they return? This will be a virtual round table discussion looking at the challenges and sharing ways of overcoming these challenges. Come along prepared to share your insights and to learn from others.

Speaker: Bernard Savage (Tenandahalf) CPD: 1

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

Speakers: Jonathan Hewett (Venner Shipley); Emily Dodgson (Abel + Imray); Debbie Slater (Prevayl Ltd). CPD: 1; Prices: £73.20 | £49.20 members

Reporters Needed – CIPA is looking for volunteers to report on CIPA events. If you are interested, please contact cpd@cipa.org.uk.

48 CIPA JOURNAL OCTOBER 2020

www.cipa.org.uk

CPD & EDUCATION

Thursday 29 October 2020 Webinar

PLAUSIBILITY IN THE UK AND EPO – RECENT DEVELOPMENTS

Time: 12.30–13.30

This webinar will review recent developments in the doctrine of plausibility, referring to decisions of the Boards of Appeal of the EPO and the UK courts. Speaker: Adrian Bradley (Cleveland Scott York). 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

EVENTS

16-20 November 2020 Conference

CIPA LIFE SCIENCES WEBINAR SERIES See more details online and on page 42. 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 latest case law in Europe, including implications of Covid-19 on prosecution and oral proceedings, • updates from the US, including a speaker from the USPTO • the 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

Incorporated Benevolent Association's AGM Thursday 10 December 2020, by videoconference Notice is hereby given that the 75th annual general meeting of the Association will be held by videoconference on Thursday 10 December 2019 at 10.00 am. Members of the Association wishing to participate in the meeting are asked to register interest with the Honorary Secretary by close of business on Monday 7 December 2020. The Trustees’ Report and Financial Statements for the year ended 5 April 2019 are publicly available on both the Companies House and the Charity Commission websites or from the Honorary Secretary. Attorneys interested in becoming trustees are asked to contact the secretary. S. J. Funnell, Honorary Secretary, secretary@cipabenevolent.org.uk

Volume 49, number 10

OCTOBER 2020

CIPA JOURNAL

PERSONAL

OBITUARIES

Oliver Henry James Beswetherick 1996-2020

t is with great sadness that we report the death of our trainee patent attorney, colleague and friend, Oliver Beswetherick, who died on 4 September 2020. Oliver, or Olly as he preferred to be called, joined GJE in September 2019 having graduated from University of Birmingham with a B.Sc. (Hons) Human Biology (1st class) and M.Sc. Molecular Biotechnology, obtained with Distinction. He made an immediate impression on everyone in the firm with his energy, infectious enthusiasm and willingness to learn. His approach was always to be friendly and supportive, with a desire to see the best in people, and he was therefore a very engaging person to work with. It was evident from early on that Olly had the attributes to make an excellent patent attorney. He combined a love of science with an ability to articulate complex ideas in a clear and understandable manner. His enthusiasm for his new profession also saw him wanting to

contribute to the firm in different ways, writing several articles to help with the firm’s business development initiatives and taking an active role in our Diversity and Inclusion group. Always happy to support colleagues and with a natural ability at giving presentations, he was able to turn dry subject matter (the preparation of sequence listings) into seminars that were informative but also highly

entertaining (usually with a theme of eating cake). Outside of work, Olly was dedicated to physical fitness. At university he worked part-time as a fitness trainer and established his own social media site to offer physical fitness guidance. He was also an extremely talented musician achieving Grade 8 on the piano and the clarinet and Grade 6 on the saxophone, all with Distinction. His wonderful recital of Yoko Shimomura’s Dearly Beloved can be listened to on YouTube. Olly was looking forward with typical enthusiasm to the next stage of his career, attending the Queen Mary Certificate course in September. It was therefore with profound shock and sadness that we learnt that Olly had taken his own life in the early hours of 4 September. Our thoughts and wishes go to his parents Stephen and Jane, their family and to his partner Adam. We know he will be missed sorely. John Jappy (Fellow)

Stuart Lloyd Geary 1962-2020

t is with regret that we learnt of the passing of Stuart Geary BEng CPA EPA on 12 September 2020, age 58. Stuart was a partner of Venner Shipley LLP until he left due to ill health towards the end of 2005. Stuart was the first technical assistant of Matthew Read who has fond memories of working with him. Thanks goes to the Incorporated Benevolent Association of the Chartered Institute of Patent Attorneys who helpfully supported Stuart in the early days of his illness. Venner Shipley LLP

52 CIPA JOURNAL OCTOBER 2020

www.cipa.org.uk

PERSONAL

OBITUARIES

Dr Philip Grubb 1940-2020

r Philip Grubb, long the legal ‘wise man’ of the Sandoz (later Novartis) patent department in Basel and textbook author, died suddenly on 21 September. Philip William Grubb was born in Manchester to Scottish parents. The pride in this Scottish ancestry was to remain a part of him for the rest of his life. He graduated D.Phil. in chemistry from Oxford in 1964 and after a year’s post-doc at the University of Wisconsin, worked as a research chemist, first at DuPont in the USA, then at ICI in the UK. It was at ICI that, while reviewing his options for the future, he first became aware of the patent profession as a possibility. Slightly hesitantly, he joined the ICI patent department in 1970, and found that he had a natural aptitude for the work. He qualified as a Chartered Patent Agent in 1974. This was also the year in which he joined the patent department of Sandoz in Basel. He arrived in Switzerland in the aftermath of one of its periodic ‘too many foreigners’ tantrums (the most recent of which is very recent indeed). An attempt to limit the number of foreign workers in Switzerland to 10% of the population (the rest would simply be told to pack their bags and go home) was defeated in a referendum, when 54% of men (it was only men in those days) voted against it. However, it did give rise to stricter quotas and harderto-get work permits for foreign workers. As a result, Sandoz had most of the foreigners in its patent department work in Lörrach in Germany, and Philip and Kay Grubb, with their young family, settled in Inzlingen, right on the border with the Basel suburb of Riehen, where, if it weren’t for the customs post, it would be impossible to tell where one ended and the other began. When things calmed down in Switzerland, the Sandoz Foreign Legion was expected to go back there. However, the Grubb children were now in the local school in Inzlingen, and Philip and Kay didn’t want to move. The Inzlingen authorities were initially not keen on this, but they eventually gave in, and there the Grubbs stayed. The Sandoz Patent Department that Philip joined was a highly business-orientated, cost-effective mixture of Chartered Patent Attorneys and patent professionals of other nationalities. Philip started with the chemicals group, but later moved to the pharma group, where he became deputy head, responsible for licensing in the pharmaceutical and biotechnological fields.

Volume 49, number 10

When the EPO arrived in 1979, Philip was an enthusiastic adapter and early on he became an EQE examiner, and later a CEIPI tutor. With his broad knowledge (he had become the ‘go-to’ man for all legal questions related to the EPC), communication skills and lively wit, he became a star tutor at the Sandoz CEIPI course. Those who attended those sessions profited enormously. In 1996, the sky fell, or at any rate something almost equally improbable happened – mortal enemies Sandoz and Ciba-Geigy, who glared at each other from opposite banks of the Rhine, merged to form a new giant, Novartis, focussed on life sciences. Philip found a natural place in the new IP organisation as intellectual property counsel. He remained in this position, continuing to advise, write and lecture, until he retired. Philip will probably best be remembered for writing one of the more engaging books on IP, Patents for Chemicals, Pharmaceuticals and Biotechnology. This is full of wisdom, enlivened by typical Grubb wit (it includes the tale of a Sandoz colleague suggesting a claim ‘a physiologically-acceptable substance stabilised in an acidic medium’, only for Philip to point out that this covered a jar of pickled onions). In retirement, he did some private work, but eventually gave this up to enjoy his grandchildren, his skiing holidays and playing bridge with old Sandoz colleague (and former epi president) Jan D’haemer and their wives. But he never lost his interest in IP – he was a regular attender at the Roche-sponsored Basel Intellectual Property Lecture series. The replacement of both knees slowed him down, but only temporarily. They say all work and no play makes Jack a dull boy, but Philip, literate and well read, was never a dull boy. Kay and he were keen members of the Basel Gilbert & Sullivan Society and the Basel Scottish Country Dance Group. He was also a popular turn at Basel Burns Nights celebrations, where his intelligent and humorous speeches often used his gift for rhyme. This latter proclivity occasionally caused nervous flutters in the Sandoz patent department, in case any of the work-related ones should come to light. When a lady from a US southern state took Sandoz to task for the alleged side-effects of a drug, Philip couldn’t resist it:

OCTOBER 2020

CIPA JOURNAL

O UT NOW

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