CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
November 2020 / Volume 49 / Number 11
UK SPC law in 2021
UK qualifying exams held successfully online
Review of CIPA in 2020; AGM report Lee Davies
Dyslexia, dyspraxia and the world of IP
Announcement regarding 2021 membership fees
Recent decisions Obituaries Yellow Sheet Letters
Contents 14 11
10
UP FRONT
ARTICLES
PERSONAL
3
14 Dyslexia, dyspraxia and the
32 Obituaries Norman Pattullo, Carol Greaves 32 Incorporated Benevolent
CIPA in 2020
138th Annual Report of Council 5 Annual General Meeting and
elections to Council
Lee Davies 6 Announcement regarding 7
membership fees Council Minutes – September
Lee Davies
NEWS 10
11
K qualifying exams held U successfully online
Neil Lampert
UK SPC law in 2021
Life Sciences Committee
world of IP Harnessing the benefits of neurodiversity in the workplace Caelia Bryn-Jacobsen,
Carolyn Pepper, Stephen Driver
DECISIONS 16 P atent decisions Beck Greener 22 I PO decisions David Pearce & Callum Docherty 23 Trade marks Bird & Bird
EDUCATION 36 CPD webinars
Association's AGM 33 William Farwell, former President, dies 34 IP Inclusive update
Andrea Brewster 35 Letters to the Editor Size of UK patent profession; CIPA podcast 37 Christmas Taskmaster Enjoy an evening of fun 38 Yellow Sheet Informals Committee 2020-21 42 Becoming an Italian 43
patent attorney
Giovanna Viganò
Two IPs in a Pod
Join the show
THE PINKS 44 Courses; Support
Volume 49, number 11
NOVEMBER 2020
CIPA JOURNAL
1
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.
Standards essential patents | FRAND licensing terms | Jurisdiction | Forum non conveniens | Injunction Unwired Planet and Another v Huawei Technologies (UK) and Another; Huawei Technologies and Another v Conversant Wireless Licensing SarL; ZTE Corporation and Another v Conversant Wireless Licensing SarL [2020] UKSC 37 • 26 August 2020 Lord Reed, Lord Hodge, Lady Black, Lord Briggs, and Lord Sales This Supreme Court decision relates to three appeals from two Court of Appeal decisions, Unwired Planet v Huawei ([2018] EWCA Civ 2344) and Huawei v Conversant ([2019] EWCA Civ 38), concerning standards essential patents (SEPs) and FRAND licensing. The Supreme Court decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 26 August 2020. The Court of Appeal decisions have been widely reported and were summarised on the IPKat blog on 23 April 2019. In the Unwired decision, the Court of Appeal upheld the decision of Birss J in finding a global licence to Unwired’s global SEPs portfolio to be FRAND (fair, reasonable and non-discriminatory) and finding that Unwired did not abuse its dominant position in seeking an injunction. In the Conversant case, the Court of Appeal confirmed that the English courts had jurisdiction to determine terms of a global FRAND licence. The Court of Appeal also agreed that an injunction was appropriate relief in the case when the alleged infringer (the ‘implementer’) refused to accept a FRAND licence when one had been offered. Before the Supreme Court, the appeals raised five issues: 1. Whether the UK courts have jurisdiction (without consent from the parties) to grant an injunction to restrain the infringement of a UK SEP unless the implementer enters into a global licence agreement, and to determine terms of a global FRAND licence. 2. Forum non conveniens. 3. FRAND and non-discrimination. 4. Whether the courts should refuse to grant an injunction on the ground that the owner of an SEP had breached EU 16
competition law by not complying with the guidance given in the CJEU decision in Huawei v ZTE (Case C-170/13). 5. Whether it is appropriate for the courts to grant an injunction or to award damages. On the first question, the Supreme Court examined in detail the policies set out by the standards setting organisation, the ETSI, as it formed the backdrop of the disputes. The Supreme Court found that the guiding principle is to prevent owners of SEPs from ‘holding up’ the implementation of standards, balanced by the fair and adequate reward to the owner of the SEPs for the use of the patented technologies (i.e., to stop implementers from ‘holding out’). The Supreme Court recognised the practicalities of negotiations in the telecommunications industry, where owners of SEPs may hold portfolios of hundreds or thousands of patents and cannot feasibly test the validity and relevance of the portfolio on a patent-by-patent and country-by-country basis. The Supreme Court also recognised that in a typical SEP portfolio, some of the patents may be invalid and some of the patents may not be infringed, and that in negotiations, a balance must be struck in minimising such uncertainties and finding a practical solution: ‘Operators in the telecommunications industry or their assignees may hold portfolios of hundreds or thousands of patents which may be relevant to a standard. The parties accept that SEP owners and implementers cannot feasibly test the validity and infringement of all of the patents involved in a standard which are in a sizeable portfolio. An implementer has an interest in taking its product to the market as soon as reasonably possible after a standard has been established and to do so needs authorisation to use all patented technology which is comprised in the standard. The implementer does not know which patents are valid and infringed by using the standard but needs authority from the outset to use the technology covered by such patents. Similarly, the owner who declares a SEP or SEPs does not know at this time which, if any, of its alleged SEPs are valid and are or will be infringed by use pursuant to the developing standard. The practical solution therefore is for the SEP owner to offer to license its portfolio of declared SEPs. That is why it is common practice in the telecommunications industry for operators to agree global licences of a portfolio of patents, without knowing precisely how many of the licensed patents are valid or infringed. It is a sensible way of dealing
CIPA JOURNAL NOVEMBER 2020
www.cipa.org.uk
DECISIONS
with unavoidable uncertainty. It ought to be possible for operators in an industry to make allowance for the likelihood that any of the licensed patents are either invalid or not infringed, at least in calculating the total aggregate royalty burden in the “top down” method. By taking out a licence of an international portfolio of generally untested patents the implementer buys access to the new standard. It does so at a price which ought to reflect the untested nature of many patents in the portfolio; in so doing it purchases certainty. The IPR Policy was agreed against that background and the undertaking required from the SEP owner likewise needs to be interpreted against that background.’ On that basis, the Supreme Court agreed with the Court of Appeal and Birss J that a global licence is FRAND. On the specific issue of jurisdiction, Huawei advanced several lines of arguments. Most notably, Huawei argued that once foreign patents within a global portfolio are challenged, the English courts cannot compel an implementer to take a global licence and impose an injunction otherwise, because the disputed patents may not be valid at all. Huawei also argued that in taking on the task of determining terms of a global FRAND licence, English judges were setting up the English courts as ‘a de facto international or worldwide licensing tribunal for the telecommunications industry’, against the approach of other national courts. The Supreme Court recognised that national courts have exclusive jurisdiction to determine the validity and infringement of national patents. However, the Supreme Court disagreed with Huawei’s arguments: ‘…it is the result of the policies of the SSOs which various industries have established, which limit the national rights of a SEP owner if an implementer agrees to take a FRAND licence. Those policies, which either expressly or by implication provide for the possibility of FRAND worldwide licences when a SEP owner has a sufficiently large and geographically diverse portfolio and the implementer is active globally, do not provide for any international tribunal or forum to determine the terms of such licences. Absent such a tribunal it falls to national courts, before which the infringement of a national patent is asserted, to determine the terms of a FRAND licence. The participants in the relevant industry, which have pragmatically resolved many disputes over SEPs by the practice of agreeing worldwide or international licences, can devise methods by which the terms of a FRAND licence may be settled, either by amending the terms of the policies of the relevant SSOs to provide for an international tribunal or by identifying respected national IP courts or tribunals to which they agree to refer such a determination. In the final analysis, the implementers and the SEP owners in these appeals are inviting a national court under the current IPR Policy to rule upon and enforce the contracts into which the SEP owners have entered. If it is determined that the SEP owners have not breached the FRAND obligation in the irrevocable undertakings they have Volume 49, number 11
PATENTS: UK
given, they seek to enforce by obtaining the grant of injunctive relief in the usual way the patents which have been found to be valid and to be infringed. The English courts have jurisdiction to rule upon whether the UK patents in suit are valid and have been infringed, and also have jurisdiction to rule on the contractual defence relied upon by the implementers based upon the true meaning and effect of the irrevocable undertaking the SEP owners have given pursuant to the ETSI regime. In agreement with Birss J (para 793), we observe that Huawei is before this court without a licence in respect of infringed UK patents when it had the means of obtaining such a licence. Subject to the plea of forum non conveniens, to which we now turn, this court has no basis for declining jurisdiction.’ The Supreme Court also examined in detail a number of foreign judgments discussed in the two Court of Appeal decisions, from the US, Germany, Japan, and China, and found that: ‘In summary, the US case law shows (i) a recognition that the court in determining a FRAND licence in such cases is being asked to enforce a contractual obligation which limits the exercise of the patent owner’s IP rights including its IP rights under foreign law; (ii) a willingness in principle to grant an injunction against the infringement of a national patent which is a SEP, if an implementer refuses a licence on FRAND terms; (iii) a willingness in principle to determine the FRAND terms of a worldwide licence; (iv) a practice of looking to examples of real life commercial negotiation of licences by parties engaged in the relevant industry when fixing the FRAND terms of a licence; and (v) a recognition that the determination of a FRAND licence by one national court does not prevent an implementer from challenging foreign patents on the grounds of invalidity or non-infringement in other relevant national courts. Similarly, in Germany the developing case law shows (i) a recognition that a worldwide licence might be FRAND and an implementer’s counter-offer of a national licence confined to Germany might not be FRAND; (ii) a practice of having regard to the usual practices of parties in the relevant industry when the court determines the FRAND terms of a licence; and (iii) a willingness to grant an injunction against infringement of a national patent if the court holds that a SEP owner’s offer of a licence is FRAND and the implementer refuses to enter into it. The courts in China have not rejected the proposition that a worldwide licence might be FRAND, nor have the courts ruled that they do not have jurisdiction to determine the FRAND terms of a worldwide licence with the consent of the parties, although it remains a matter of speculation whether they would or would not accept jurisdiction. We therefore reject the submission that Birss J was out of line with the approach of courts in most significant jurisdictions.’ On the second question, Conversant argued in the main that the Chinese courts were the more appropriate forum. The Supreme Court noted that such an issue on forum non conveniens is usually NOVEMBER 2020
CIPA JOURNAL
17
DECISIONS
PATENTS: UK IPO
IPO decisions By David Pearce (Barker Brettell) and Callum Docherty (Withers & Rogers) Patent decisions of the comptroller can be found on the IPO website via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/opinion-requests.
Patentability – section 1(2) Alcolizer Pty Ltd v Dragerwerk AG & Co KGaA BL O/417/20 • 3 September 2020 An opinion on validity was requested by Dragerwerk regarding Alcolizer’s patent relating to a breath-testing device. The opinion (17/19, issued 10 December 2019) found that the patent was invalid for lack of novelty over a device that was made available to the public before the patent’s priority date. Alcolizer requested a review of the opinion on the grounds that the examiner’s finding was clearly wrong and that the examiner made an error of principle in assessing the prior art, in line with the principles established in DLP Limited [2007] EWHC 2669. Alcolizer argued that the examiner was wrong to base the opinion, at least in part, on new evidence and submissions made by the requester that were not strictly observations in reply. The original request was based on a user manual for the device and internet URLs, including YouTube videos, showing the device. Observations by the patentee argued that the request had not proven that the device formed part of the state of the art. In reply, Dragerwerk submitted further URLs documenting the availability of the manual and the device. The examiner then considered that it was reasonable to conclude that the device was made available to the public before the priority date. Alcolizer argued that the examiner had made an error in coming to this conclusion because evidence of the device being offered for sale did not mean that the product was unconditionally available to the public at that time. Dragerwerk pointed out that two of the videos had been uploaded before the priority date, meaning that at least one person was given free and unrestricted access to the device. While actual evidence of sales was not provided, Dragerwerk had provided evidence that sales of the device has started before the priority date. The hearing officer found that the examiner had not made an error of principle in relying on this evidence in finding prior use. If the examiner had relied only on evidence of offers for sale, it would have been wrong to conclude that the device was in the public domain before the priority date and should instead have come to a qualified opinion. The examiner had, however, arrived at the opinion based on the totality
of evidence provided, which included evidence of sale and use. There was therefore no indication that the examiner had made an error of principle to what constituted a prior public disclosure and the conclusion drawn was not an unreasonable one to make. A further objection made by Alcolizer was that the examiner had impermissibly mosaiced different disclosures to arrive at the conclusion. The hearing officer considered, however, that the use in this case of multiple disclosures was not to make combinations but was to form a matrix of evidence that cumulatively supported the assertion that the device was sold and made available to the public before the priority date. The hearing officer found therefore that the examiner had not impermissibly mosaiced documents. Alcolizer also questioned whether the examiner’s reliance on a sample of the device provided with the request was correct, given that it was not proven that the sample corresponded with the device shown in the other evidence. The hearing officer considered that it was clear that the examiner had relied heavily on the specimen device in reaching the conclusion but did address the question of whether it corresponded to the devices shown in the videos and manual, finding that all the information provided was consistent. The examiner had formed a view of the operation of the device based on information produced after the priority date and had made a reasonable assumption based on the evidence provided that the device had not changed since it was first sold. The hearing office found no error of principle or a conclusion that was clearly wrong. The hearing officer concluded that the examiner did not make an error in principle or reach a conclusion that was clearly wrong and made no order to set the opinion aside. The hearing officer noted, however, that, since the evidence of an actual sale before the priority date was contested and had not been properly tested, it would not be appropriate to say that the patent was clearly invalid and should therefore be revoked under section 73(1A). Instead, the opinion offered no more than the examiner’s reasonable view of what the patent was understood to mean and what the evidence showed. There is no EPO report in this issue of the CIPA Journal.
22 CIPA JOURNAL NOVEMBER 2020
www.cipa.org.uk
DECISIONS
TRADE MARKS
Trade mark decisions This month’s editors are Katharine Stephens, Thomas Pugh, Ciara Hughes and Aaron Hetherington at Bird & Bird LLP. 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')
Ref no.
Application (and where applicable, earlier mark)
GC T-106/19 Abarca- Companhia de Seguros SA v EUIPO; Abanca Corporación Bancaria, SA 29 April 2020 Reg 2017/1001 Reported by: Katie Tyndall
GC
– insurance agencies; insurance underwriting; banking insurance; administration of insurance business; insurance agency and brokerage; insurance and financial information and consultancy services; financial and monetary services and banking; real estate services (36) ABANCA – insurance services; finance services; monetary affairs; credit leasing; debt collection agencies: banking, information (financial); credit & debit card services (36)
T-800/19
AIR – Tobacco, cigarettes, cigars, smokers’ articles (34)
Austria Tabak GmbH v EUIPO; Mignot & De Block BV
Marks used by owner: MEMPHIS AIR BLUE MEMPHIS AIR BLUE 100
8 July 2020 Reg 2017/1001 Reported by: Lauren Kourie
Volume 49, number 11
Comment
The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC agreed with the BoA that the word ‘ABARCA’ was the visually dominant element of the mark applied for due to its size and positioning. But for one letter, the earlier mark was reproduced in the dominant element of the mark applied for, so the marks were visually similar to an average degree. The BoA had been correct in finding that the ‘ABARCA’ and ‘ABANCA’ elements of the marks would be pronounced almost exactly the same, resulting in an average degree of aural similarity. Noting that the BoA had carried out its assessment from the perspective of the Swedish-speaking and Danishspeaking parts of the relevant public, the GC confirmed that the marks had no conceptual meaning for this public and rejected Abarca’s argument that all EU consumers would identify the earlier mark as a translation of the word ‘bank’. In revocation proceedings, the GC upheld the BoA’s decision that that the variations of the mark used by the trade mark owner altered the distinctive character of the registered mark. The mark was therefore revoked pursuant to article 58(1)(a) on the basis that it had not been put to genuine use for a continuous period of five years. None of the evidence of use relied on by the owner showed AIR used in isolation nor clearly apart from the element BLUE or BLUE 100. Both AIR and BLUE always appeared close together, forming a unit, and possessed distinctive character in relation to the goods. BLUE was also as visually important as AIR. Further, AIR BLUE was always subordinated to the element MEMPHIS on the packaging of the goods, such that MEMPHIS gave a dominant overall impression. The relative position and distinctive and dominant character of the added elements therefore altered the distinctive character of the mark, meaning that the mark as used differed in more than insignificant respects from the registered mark. NOVEMBER 2020
CIPA JOURNAL
23
PERSONAL
OBITUARIES
Norman Pattullo 1948-2020
I
t was with much sadness that we learnt of the untimely passing of one of the original partners of Murgitroyd, Norman Pattullo, on Wednesday 16 September 2020 after a brief illness. Norman qualified in the profession in 1977 when working at Fitzpatricks in Glasgow. Shortly after qualifying he moved to work with Ian Murgitroyd, where he was soon joined by his friend Paolo Pacitti and together they established the Murgitroyd business. Norman was integral in the growth and success of Murgitroyd. Initially developing the chemical and life science practice, Norman went on to build Murgitroyd’s trade mark practice, where he led the team until retiring in 2005. Norman was a much-admired role model and mentor for many over the years, both for his professional knowledge and for the way he treated clients and colleagues. His reassuring, kind and gentle manner, his encouragement, and his sharp wit fostered a culture within Murgitroyd
valued by all of those who worked with him, which is part of his legacy. Memories of Norman’s laugh in the office, his time and patience with trainees, his enjoyment and participation on away days, and his skill and good humour on golf days will be treasured by many. A fitting tribute to Norman from Paolo is: ‘Norman had many qualities but three stand out in particular. The first is that he would always laugh heartily at your jokes no matter how often he had heard them. A genuine, sincere laugh – a mark of someone with a real “sense of humour”. Then – his great admiration for his family – not in a boastful way but in real love for and pride in Lin, his kids and grandkids. And thirdly, and most especially– Norman was a man “incapable of deceit”. In all his dealings both socially and professionally Norman had a profound sense of what was ethically
and morally correct – he always stood by these principles and was accordingly greatly respected by all who knew him.’ Our thoughts and prayers are with Norman’s family, and in particular with his wife Lin and his children Sally and Simon, at this time. Murgitroyd
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 32 CIPA JOURNAL NOVEMBER 2020
www.cipa.org.uk
PERSONAL
OBITUARIES
Carol Pauline Greaves 1956-2020
A
fter graduating with a FirstClass honours degree in Chemistry from Nottingham University, Carol became a patent attorney with a small firm in Middlesex. She was a bright and talented attorney, who was soon recruited by Beecham Pharmaceuticals, now GSK, where she worked for nearly five years in the pharmaceuticals field, including antibiotics, antivirals, animal health and genetic engineering. The world of patents is niche and in 1986 AstraZeneca, originally ICI and now Syngenta, recruited Carol and she worked for nearly ten years in their agrochemicals division. It was during this time that she met her husband Colville and in 1994 they moved to Somerset, where Carol had a relatively brief spell working as a patent attorney and European patent attorney for a firm in Bristol and then the MoD. Three years later in 1997, Carol set up her own firm so she could work on the job she loved, in the way she wanted to do it. The success of the firm was mainly due to the fact that Carol was an exceptionally hard worker, never afraid to confront a challenging situation and held the respect of former colleagues from whom referral and overspill work was obtained. The firm became a partnership in 2000 and Greaves Brewster LLP is still a thriving business, employing over 20 people. Carol left Greaves Brewster in 2011 to work
freelance and such was her reputation that until her retirement in 2018 quality work flowed to her. Many who worked with her during her career considered Carol to be the best patent attorney they had known. She knew the law well but had a sensible, straightforward approach; as a business woman herself she understood the need to focus on the practical issues that mattered. She set high standards for herself and met them. Carol was also extremely good at the pastoral aspects of management. The quality of the team around her mattered and so did their welfare. Throughout her busy professional career Carol was also a devoted wife, mother and grandmother to her three children, stepdaughter and three grandchildren. She spent many a cold and wet Sunday morning shouting encouragement from the side-lines of the rugby pitch, helping with school trips or building sandcastles. She also found time to help with village life; the lunch club for the elderly; the Michaelmas Fair and secretary for the Winscombe Contact Scheme. Carol loved reading, writing and cryptic crosswords as well as winetasting and dancing. She and Colville managed to master the jive but Scottish country dancing on Burns’ Night was a bit trickier, perhaps due to Colville’s lack of co-ordination and too much whisky and haggis. They enjoyed travelling, and experienced the beauty and drama of New
Zealand, the colour and atmosphere of India and the relaxed and gentleness of Tobago among many others. The diagnosis of terminal cancer was a shock, which Carol faced with stoicism, bravery and her no-nonsense humour. The patent attorney in her was intrigued to sample pregabalin, which she knew from the patent litigation surrounding it. During her illness she began writing her memoirs and spent what time she had left with family and close friends. Carol was a loving, generous and inspirational woman, with a great sense of humour and a wonderful laugh. She will be greatly missed. She died with her husband and children at her bedside. Written by Colville Greaves, with thanks to the contributions from Carol's former colleagues.
William Farwell, former President, dies We were deeply saddened to learn of the recent death of William Farwell, President of the Institute (1992-93). He was an inspirational figure who, among many other things, was instrumental in setting up and launching the student Informals. Fellow former Presidents paid tribute. Tibor Gold described him as ‘a very humane and very competent patent attorney and a good friend’. Alasdair Poore said he was ‘someone who inspired and helped many in the profession as well as colleagues across the World’. We will publish an obituary in the next issue. Volume 49, number 11
NOVEMBER 2020
CIPA JOURNAL
33
The must-have title CIPA Guide to the Patents Acts, First Supplement to the 9th Edition By the Chartered Institute of Patent Attorneys Editors: Paul Cole; Richard Davis The CIPA Guide to the Patents Acts 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. This essential guide gives you all the tools you need to protect the rights of your clients.
ISBN: 9780414078772 £100 Also available on Westlaw UK and as an eBook on Thomson Reuters Proview™
PLACE YOUR ORDER TODAY sweetandmaxwell.co.uk 0345 600 9355 (UK) +44 (0)1264 388560 (INTERNATIONAL)
© 2020 Thomson Reuters TR1208839/08-20
Decisions of fundamental significance have issued since publication of the 9th Edition and will be covered in the First Supplement – especially the Court of Justice decision Generics (UK) Ltd and Others v Competition and Markets Authority and the very recent UK Supreme Court decision on Unwired Planet. Also of particular note is that of the UK Supreme Court on classical insufficiency in Regeneron Pharmaceuticals Inc v Kymab; see also a decision of the Court of Appeal on terms of degree in Anan Kasei v Neo Chemicals. A number of significant further decisions of the Court of Appeal will also be covered, including Koninklijke Philips v Asustek on inventive step, Neurim v Generics and TQ Delta v ZyXEL on adequacy of damages and post-trial injunctions, and Teva v Gilead and Genentech v Master Data Center on supplementary protection certificates. EPO Appeal Board cases to be covered include G 3/19 Pepper on the patentability of plants and animals, and, hopefully, the currently pending case G1/19 concerning the patentability of inventions concerning computer simulations.