Issuu

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

December 2020 / Volume 49 / Number 12

Diversity Practical steps to improve BAME representation in the IP sector

CRISPR priority – legal certainty at the EPO George Schlich

Changes to UK SPC law in 2021 Life Sciences Committee

Keeping your social life alive in lockdown Lindsay Pike

Oral proceedings via video at the EPO Consultation

Recent decisions Yellow Sheet Case reports Meet the team

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)

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.

Contents 20 8

UP FRONT

ARTICLES

PERSONAL

Council Minutes – October

Lee Davies

BAME representation in IP Practical steps to improve BAME representation in the IP sector

NEWS

Videoconferencing at the EPO

UK SPC law in 2021

Overseas update

Consultation response Life Sciences Committee Amanda R. Gladwin

EDUCATION 11 Screen breaks and time taken to upload documents Qualifying examinations 2020 PEB Governance Board

Andrea Brewster OBE

EPO: CRISPR priority dispute T844/18 confirms legal certainty

George Schlich

DECISIONS 24 P atent decisions Beck Greener 26 E PO decisions Bristows 28 Trade marks Bird & Bird

37 37 38 40 41

Jonathan’s Voice

CIPA staff profile

Lea Weir-Samuels, HR Officer

Announcements Yellow Sheet Keeping your social life alive in lockdown

Lindsay Pike

atents in the pandemic P Unsung heroes of vaccinology

Meg Murphy 45 Two IPs in a Pod Join the show 46 CPD webinars

and online events

Open-access webinars for 2021

THE PINKS 47

Volume 49, number 12

rotecting your mental P health and wellbeing

ourses; Support; C International; Recruitment

DECEMBER 2020

CIPA JOURNAL

NEWS

OVERSEAS

Overseas update: International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 1 October 2020, the UK government deposited its instrument of ratification of the Marrakesh Treaty. The treaty will enter into force, with respect to the UK, on 1 January 2021. On 15 October 2020, the Turkmenistan government deposited its instrument of accession to the Marrakesh Treaty. The treaty will enter into force, with respect to Turkmenistan, on 15 January 2021. On 15 October 2020, the government of the Democratic Republic of Sao Tome and Principe deposited its instrument of ratification of the Marrakesh Treaty. The treaty will enter into force, with respect to Sao Tome and Principe, on 15 January 2021. On 2 November 2020, the government of the Federal Democratic Republic of Ethiopia deposited its instrument of ratification of the Marrakesh Treaty. The treaty will enter into force, with respect to Ethiopia, on 2 February 2021. Paris Convention, Berne Convention (Protection of Literary and Artistic Works), Madrid Protocol (International Registration of Marks), Nice Agreement (Classification of Goods and Services) and the PCT On 1 October 2020, the UK government deposited declarations that the Paris Convention, Berne Convention, Nice Agreement (Classification of Goods and Services) and the PCT shall be extended to Gibraltar, and the Madrid Protocol shall be extended to Gibraltar and Guernsey. The respective declarations shall enter into force, with respect to the territories, on 1 January 2021. 12

Beijing Treaty (Audiovisual Performances) On 15 October 2020, the government of the Democratic Republic of Sao Tome and Principe deposited its instrument of ratification of the Beijing Treaty. The treaty will enter into force, with respect to Sao Tome and Principe, on 15 January 2021. On 13 November 2020, the government of the Republic of Costa Rica deposited its instrument of ratification of the Beijing Treaty. The treaty will enter into force, with respect to Costa Rica, on 13 February 2021. Budapest Treaty (Deposit of Microorganisms) On 16 October 2020, the government of the Kingdom of Saudi Arabia deposited its instrument of accession to the Budapest Treaty. The treaty will enter into force, with respect to Saudi Arabia, on 16 January 2021. Strasbourg Agreement (International Patent Classification) On 16 October 2020, the government of the Kingdom of Saudi Arabia deposited its instrument of accession to the Strasbourg Agreement. The treaty will enter into force, with respect to Saudi Arabia, on 16 January 2021. Madrid Protocol (International Registration of Marks) On 12 October 2020, the government of the Republic of Trinidad and Tobago deposited its instrument of accession to the Madrid protocol. The instrument contained the following declarations: • in accordance with Article 5(2)(b), the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under Article 5(2)(c),

when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and • in accordance with article 8(7)(a), the government of the Republic of Trinidad and Tobago, in connection with each international registration in which it is mentioned under article 3ter , and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee. The protocol will enter into force, with respect to Trinidad and Tobago, on 12 January 2021. WIPO Copyright Treaty On 9 November 2020, the government of the Islamic Republic of Afghanistan deposited its instrument of accession to the WIPO Copyright Treaty. The treaty will enter into force, with respect to Afghanistan, on 9 February 2021. WIPO Performances and Phonograms Treaty On 9 November 2020, the government of the Islamic Republic of Afghanistan deposited its instrument of accession to the WIPO Performances and Phonograms Treaty. The treaty will enter into force, with respect to Afghanistan, on 9 February 2021. Lisbon Agreement (Appellations of Origin and Geographical Indications) On 20 November 2020, the government of the Lao People’s Democratic Republic deposited its instrument of accession to the Geneva Act of the Lisbon Agreement. The Act will enter into force, with respect to the Lao People’s Democratic Republic, on 20 February 2021. Dr Amanda R. Gladwin (Fellow), GSK

CIPA JOURNAL DECEMBER 2020

www.cipa.org.uk

ARTICLE

DIVERSITY

BAME representation in IP In July 2020, IP Inclusive hosted a round table focusing on BAME representation in IP. The meeting's outcomes are set out below and can also be seen online at: https://ipinclusive.org.uk/newsandfeatures/and-were-off-positive-steps-towards-better-bame-representation

Practical steps we can take to improve BAME representation in the IP sector

The following is distilled from the discussions at our 29 July 2020 round table, attended by representatives of many IP sector organisations. It suggests practical commitments that those organisations could feasibly pursue. There are suggestions intended both for membership bodies in the IP sector (who in turn can encourage and support similar action from their own members) and for individuals and

organisations working in the sector. All can be supported in this by IP Inclusive (in particular IP & ME, its community for BAME IP professionals and their allies), and where appropriate by independent bodies such as the UK Intellectual Property Office and legal sector regulators. Senior-level ownership of these commitments will of course be crucial, to ensure that adequate resources are devoted to them and to maintain and focus the momentum gained at the July 2020 round table. We begin with a summary of the suggested commitments, followed by more detailed recommendations for their implementation.

Some context: Our commitment to change

The following statement was published on 4 August 2020. It sets out the underlying intentions of the 29 July 2020 round table delegates to create positive change in the IP sector, and provides context for the more detailed outcomes that follow. Over 50 IP professionals met on 29 July 2020 to discuss BAME representation levels in the UK’s IP sector. This virtual round table was led by IP & ME, IP Inclusive’s community for BAME professionals and their allies. It was attended by representatives from the membership bodies AIPPI UK, CIPA, CITMA, FICPI-UK, the IP Bar Society, the IP Federation, IPLA, the Law Society’s IP Law Committee and LES B&I; the IP sector regulator IPReg; the UK Intellectual Property Office; the five IP Inclusive communities (IP & ME, IP Ability, IP Futures, IP Out, and Women in IP) and its managing committee IPIM; and the outreach charities Generating Genius, Reach Society and Stemettes. Following words of encouragement from Tim Moss CBE, Comptroller General and CEO of the UK Intellectual Property Office, delegates explored ideas for (1) increasing BAME levels on recruitment into the sector; (2) improving BAME visibility within the sector; (3) supporting BAME IP professionals; (4) tackling unconscious bias; and (5) improving our evidence base to inform future work. We will now agree some commitments to action, which will be published shortly, and will work together to turn those commitments into positive change. We intend to reconvene Volume 49, number 12

DECEMBER 2020

CIPA JOURNAL

ARTICLE

in 12 months to evaluate progress and if necessary redefine the objectives. Those at the meeting also agreed the following statements of principle, by which it was felt the UK’s IP professions should stand together in support of racial and ethnic equality: • The UK IP professions are committed to providing equal opportunities for everyone within, and at the point of entry to, the UK’s IP sector. • We welcome people of all races and ethnicities. • We will treat our fellow IP professionals, and the people we work with in the wider community, with respect and consideration – whatever their race and ethnicity. • We will work together to eradicate racial and ethnic injustice, discrimination and prejudice within the UK’s IP sector.

Summary of suggestions 1 General 1.1 Publish prominently, and promote, the outcomes of the 29 July 2020 round table, provide regular updates on our efforts to implement them, and encourage others to do the same. 1.2 Involve both BAME and non-BAME professionals, from a range of roles and career levels, in their implementation. 1.3 Recognise the value of involvement in this work, when evaluating and rewarding people’s performance and career development, and allow them the time and resources to do it. 1.4 Reach out to, and where possible collaborate with, BAMEfocused organisations in the wider legal sector, for example the Black Solicitors Network and the Society of Asian Lawyers. 2 Increasing BAME levels on recruitment into the sector 2.1 Work with IP Inclusive’s Careers in Ideas campaign to raise awareness of IP-related careers. 2.2 Work with Careers in Ideas and with relevant charities to engage potential BAME recruits. 2.3 Ensure our recruitment systems do not discriminate against BAME candidates. 2.4 Monitor, and continually seek to improve, our performance under 2.1 to 2.3. 3 Improving BAME visibility within the sector 3.1 Promote and amplify BAME role models within our organisations and elsewhere in the IP community, to foster a greater sense of belonging and attract more BAME people into the sector. 3.2 Adopt policies that incorporate “diversity by design”, where appropriate making use of affirmative action to improve ethnic and racial diversity. 14

DIVERSITY

3.3 Create a directory of BAME IP professionals who are willing to speak, write or serve on professional bodies, and their areas of IP expertise. 3.4 Actively promote the business case for diversity and inclusion, to incentivise increases in BAME representation levels. 4 Supporting BAME professionals 4.1 Educate ourselves about the challenges faced by BAME IP professionals and the support they need.

New measures to improve diversity and inclusion The Institute was delighted to be involved in IP Inclusive’s roundtable event addressing BAME representation in the IP professions. CIPA Council takes its responsibilities towards diversity and inclusion seriously and considered the outcomes of the round table in a Council session led by Andrea Brewster, Lead Executive Officer of IP Inclusive. Council decided that it could do more to address diversity and inclusion in the patent attorney profession by establishing a Diversity and Inclusion Committee. In addition, Council decided that it would like to measure future success and that this would be best achieved through gathering comprehensive data on the diversity of CIPA’s membership. Council also agreed to develop a mentoring and sponsorship programme for BAME members working in the patent attorney and IP paralegal professions. CIPA President, Richard Mair, said: “CIPA has come a long way in a short time, thanks to the work of IP Inclusive, the many CIPA members who actively support diversity and inclusion initiatives, and the CIPA staff who ensure CIPA is an inclusive membership association. But there is more we can do and I am pleased that CIPA Council has signalled that it is prepared to locate this important area of work within the governance of CIPA, through the establishment of a Diversity and Inclusion Committee, and to lead the way in gathering data and supporting BAME professionals.” Neil Lampert (CIPA,Deputy Chief Executive)

CIPA JOURNAL DECEMBER 2020

www.cipa.org.uk

ARTICLE

4.2 Establish a mentoring and sponsorship scheme for BAME IP professionals. 4.3 Ensure our performance review and career development systems do not discriminate against BAME employees. 4.4 Encourage the creation of, and participation in, peer support networks for BAME IP professionals, and associated activities such as networking events. 5 Tackling unconscious bias 5.1 Provide unconscious bias and/or allyship training for all our employees. 5.2 Implement systemic measures to mitigate the effects of unconscious bias in our organisations. 5.3 Monitor, and continually seek to improve, our performance under 5.1 and 5.2. 6 Improving our evidence base 6.1 Collaborate to improve the collection of relevant evidence within the IP sector. 6.2 Gather, report and use relevant data within our own organisations, and encourage and support our members and colleagues to do so. 7 Streamlining the work 7.1 Establish sector-wide working groups to progress the suggestions under headings 2 to 6. 7.2 Use the IP Inclusive EDI Charter scheme to incentivise improvements in BAME representation levels in the IP sector and eradication of racial and ethnic unfairness. 8 Monitoring and maintaining progress 8.1 Regularly evaluate our progress on, and if necessary update, the above commitments.

Suggestions for improving BAME representation in the IP sector 1 General

1.1 Publish prominently, and promote, the outcomes of the 29 July 2020 round table, provide regular updates on our efforts to implement them, and encourage others to do the same. 1.2 Involve both BAME and non-BAME professionals, from a range of roles and career levels, in their implementation. 1.3 Recognise the value of involvement in this work, when evaluating and rewarding people’s performance and career development, and allow them the time and resources to do it. 1.4 Reach out to, and where possible collaborate with, BAMEfocused organisations in the wider legal sector, for example the Black Solicitors Network and the Society of Asian Lawyers. Volume 49, number 12

DIVERSITY

2 Increasing BAME levels on recruitment into the sector 2.1 Awareness-raising Work with IP Inclusive’s Careers in Ideas campaign to raise awareness of IP-related careers. a. Seek and exploit opportunities to speak about Careers in Ideas to schools, universities and other educational and training establishments. b. Include in this work the non-Russell Group universities, and establishments in under-privileged areas. c. Provide at least one awareness-raising activity or resource (for example a careers talk or workshop) every year, to an establishment that we have not previously engaged with. d. Promote Careers in Ideas on these occasions, and not merely our individual organisations. e. Ensure the people we engage with see BAME role models and understand the IP professions’ desire to welcome BAME people. f. Consult with outreach charities to enable us to target our awareness-raising to potential BAME recruits, in particular those from under-privileged backgrounds. 2.2 Outreach Work with Careers in Ideas and with relevant charities to engage potential BAME recruits. a. Participate, every year, in at least one outreach activity involving BAME students (for example an open day, training event, work experience scheme or student mentoring/sponsorship programme). b. Hold talks with at least one of the relevant charities (for example Generating Genius, In2scienceUK, Reach Society or Stemettes) to explore future collaborations and to help us understand the context of this work. c. Signpost suitable such charities to our members and colleagues, share information about the charities and their activities, and encourage involvement in their projects (for example Reach Society’s annual Easter Careers Conference or regional Employability Days). d. Promote and amplify BAME role models in our outreach and recruitment activities and associated communications, in particular in the ways suggested at 3.1 below. 2.3 Recruitment Ensure our recruitment systems do not discriminate against BAME candidates. a. Implement the measures referred to at 5 below to minimise the risk of unconscious bias in those systems. b. In particular: • Make our communications about career opportunities DECEMBER 2020

CIPA JOURNAL

DECISIONS

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 patent | Infringement | Validity | Added subject matter | Construction | New arguments on appeal Conversant Wireless Licensing Sarl v (1) Huawei Technologies Co. Limited, (2) Huawei Technologies (UK) Co. Limited, (3) ZTE Corporation, (4) ZTE (UK) Limited [2020] EWCA Civ 1292 • 8 October 2020 Floyd, Patten, and Newey LLJ This decision relates to an appeal from a decision of Arnold J (as he was then) in [2019] EWHC 1687 (Pat) (reported October [2019] CIPA 30). The dispute related to a claim of infringement by virtue of essentiality of European (UK) patent No. 1797959 (‘the patent’), owned by Conversant. At first instance, the judge dealt with a large number of issues, most of which had fallen away at appeal. The only issue that remained was that of added subject matter. Claim 1 of the patent as granted included a ‘transmitting check’, which was added during prosecution. This was amended at first instance, as a way of dealing with an added subject matter allegation, to a ‘transmitting check by way of an able-to-empty check’. Arnold J found that the patent, as granted and as sought to be amended, was invalid for added subject matter. On appeal, Conversant argued that the judge erred in his assessment of the disclosure of the original application. Conversant also advanced a new way of construing the term ‘transmitting’, arguing that this meant ‘being in an active state’ as opposed to its normal meaning of actually transmitting data, and that on this construction the subject matter of claim 1 did not extend beyond the disclosure of the original application. Floyd LJ agreed with the judge and found that the original application only disclosed an ‘able-to-empty check’ and did not disclose a ‘transmitting check’ or a link between the ‘able-to-empty check’ and a ‘transmitting check’. Floyd LJ also rejected the new construction of the term ‘transmitting’, with reference to the three criteria of Singh v Dass ([2019] EWCA Civ 360), finding that it was an entirely new line of argument not raised at all at first instance, not substantiated by evidence at trial, and would have necessitated new evidence at trial had it been raised. In conclusion, the appeal was dismissed.

PATENTS: UK

Infringement | Novelty | Obviousness | Added subject matter | Sufficiency Merck Sharp & Dohme Ltd v Wyeth LLC [2020] EWHC 2636 (Pat) • 15 October 2020 • Meade J This case relates to European patent (UK) No. 2676679, which is directed to a vaccine against Pneumococcus bacteria. Within a species of bacteria there are a number of variations or ‘serotypes’. More than 90 Pneumococcus serotypes have been identified to date. The claims of the patent refer to a vaccine containing 13 serotypes. The claimant (Merck) who had a vaccine with 15 serotypes, sought to revoke the patent, while Wyeth counterclaimed for infringement. The infringement issue pivoted on the construction of claim 1, and whether it was limited to vaccines having the exactly 13 listed serotypes or whether it covered vaccines with other serotypes as well as the 13 listed. Claim 1 required the following features: E. wherein the polysaccharide-protein conjugate comprises one or more pneumococcal polysaccharides. F. and wherein the one or more pneumococcal polysaccharides are a S. pneumoniae serotype 4 polysaccharide, a S. pneumoniae serotype 6B polysaccharide, a S. pneumoniae serotype 9V polysaccharide, a S. pneumoniae serotype 14 polysaccharide, a S. pneumoniae serotype 18C polysaccharide, a S. pneumoniae serotype 19F polysaccharide, a S. pneumoniae serotype 23F polysaccharide, a S. pneumoniae serotype 1 polysaccharide, a S. pneumoniae serotype 3 polysaccharide, a S. pneumoniae serotype 5 polysaccharide, a S. pneumoniae serotype 6A polysaccharide, a S. pneumoniae serotype 7F polysaccharide and a S. pneumoniae serotype 19A polysaccharide. Meade J held that integer F was a limitation on integer E and did not use the word ‘comprise’, but instead ‘are’. Meade J held that this was deliberate and the usual meaning of the word ‘are’ did not extend to ‘include’. He also considered the construction from a scientific point of view. It was known that the serotypes were selected as a balance between efficacy, cross-protection and ability to be manufactured. Adding an additional serotype would affect the balance, so would not be done arbitrarily. For these reasons claim 1 was construed as being limited to a vaccine containing only the precise 13 serotypes listed. In light of this construction, there was no infringement by Merck’s vaccine, which had 15 serotypes. The validity of the patent was then considered. Novelty of use claim 16 over WO2006/110381 was discussed. It was accepted that the document failed to disclose two of the features – namely that the syringe holding the formulation was siliconized, and the formulation was used to inhibit silicone-induced aggregation. It was argued that syringes are routinely siliconized (to lubricate the rubber closure), but as the document failed to disclose the use of a siliconized container the attack failed. Inventive step was discussed starting from two different

24 CIPA JOURNAL DECEMBER 2020

www.cipa.org.uk

DECISIONS

documents, de La Pena which discussed pneumococcal vaccines and Chiron, which related to formulation of vaccines. De la Pena described 9-, 11- and 13- serotype vaccines. To arrive at the claimed formulation the skilled person would have needed to select the 13 serotype vaccine for progression, as well as to make other changes which were conceded or determined to be obvious. The judge held that selecting the 13-serotype vaccine would have been obvious, noting that: ‘It might also have been obvious to progress the other (9v and 11v) vaccines mentioned, and probably would have been, but it is perfectly possible for a piece of prior art to render multiple possibilities obvious.’ Thus, the claims were considered obvious over de la Pena. The obviousness attack starting from Chiron failed. This document gave no guidance on the serotypes to use. An insufficiency (squeeze) argument that if the 13-serotype vaccine was not obvious then there it was not plausible that the vaccine would work was dismissed in view of the conclusion on obviousness. Two of the dependent claims which referred to the addition of a surfactant in general were also attacked for added subject matter. The patent contained a paragraph which referred to the use of only the specific surfactant Tween 80 in combination with the claimed formulation, so the use of a surfactant in general was asserted to be an intermediate generalisation. The judge dismissed this attack, noting that the skilled reader upon considering the whole application would appreciate that surfactants in general could be used. In summary, the patent was found to be not infringed; claim 1 was not novel and claim 16 was considered obvious. The insufficiency and added matter attacks failed.

Standards essential patent | Infringement | Validity | Obviousness Optis Cellular Technology LLC & Ors v Apple Retail UK Ltd & Ors [2020] EWHC 2746 (Pat) • 16 October 2020 • Birss J This decision relates to a claim of infringement by virtue of essentiality of European (UK) patent No. 1230818, owned by the claimants, Optis. The defendants, Apple, counterclaimed for revocation on the grounds of obviousness and insufficiency of the Biogen kind. It was common ground that if the patent was found essential then it was infringed. The patent was dealt with by the judge in another proceeding, [2016] EWHC 576 (Pat), which was one of the many cases that led to the recent Supreme Court decision, [2020] UKSC 37. Optis claimed that the patent was essential to a number of GSM standards relating to ‘handover’. The crux of the matter turned on features of claim 1 that specified the conversion of UMTS downlink measurements to GSM downlink measurements and sending the converted measurements to a control node if the exceed a certain threshold. The judge considered a large amount of technical analysis on the relevant standards, with the aid of expert opinions, and found Volume 49, number 12

PATENTS: UK

that the relevant standards fell within the scope of claim 1. On that basis, the judge found that the patent was essential and therefore infringed. On obviousness, Apple relied on two prior art documents and also on the ground of Agrevo obviousness, all of which the judge dismissed. In particular, the judge noted that: ‘… conversion has the result that the converted values have the two beneficial properties referred to above. I will not go over them again. These beneficial properties are shared by everything within the claim. In a case in which the beneficial properties exist across the full width of the claim, there is no reason based on Agrevo or anything else why the inventors should have limited their claim to particular instances of the taking advantage of those benefits.’ On the issue of Biogen insufficiency, the judge dismissed Apple’s arguments: ‘… it bears keeping in mind that the core objection is one of insufficiency, that the claim covers something which is not enabled by what is disclosed. I am not satisfied that this point is well founded either, given my conclusion on conversion. Claim 1 covers a case in which a converted measurement which passes the threshold is reported by the phone on a stealing channel like the FACCH and on an event driven basis. It is not limited to using a non-stealing channel. However if someone did set up a system which worked in that way, and assuming it did convert the UMTS measurements in the phone, compare them with a threshold, and then send the converted measurements on the FACCH, they would be doing something which is only enabled by the disclosure in the patent, owing to their use of converted values.’ In conclusion, the judge found that the patent was valid and essential.

Stay of proceedings Amgen Inc v Sanofi-Aventis Groupe SA [2020] EWHC 2818 (Pat) • 22 October 2020 • Mann J The parties had agreed to a stay of patent infringement and validity proceedings to await the outcome of an EPO appeal. The agreed terms of the stay under a Tomlin order allowed either party to apply to lift the stay if the EPO appeal decision was not issued by a particular date; if the decision was issued by that date it would be binding on the parties. The defendants applied to lift the stay some months after the relevant date, and just before an EPO appeal decision was expected. They argued that the stay could be lifted as of right. The claimants argued that it was for the judge to decide on the merits whether the stay could be lifted. The judge agreed that the stay could be lifted as of right, distinguishing this situation with agreed terms between the parties from a case management-type stay. DECEMBER 2020

CIPA JOURNAL

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')

Ref no.

Application (and where applicable, earlier mark)

GC T-5/19 Clatronic International GmbH v EUIPO 13 May 2020 Reg 2017/1001 Reported by: Louise O’Hara

– hand tools and implements (hand operated); hair-styling appliances; manicure and pedicure tools (8) – weighing apparatus and instruments; measuring apparatus and instruments (9) – medical apparatus and instruments; massage apparatus; ultrasonic cleaning instruments (10) – food and beverage cooking, heating, cooling and treatment equipment; hair dryers; tanning apparatus; saunas and spas (11) – brushes, brooms and other cleaning instruments; toothbrushes; combs; hairbrushes (21) – descorative articles for the hair (26)

GC T533/19 Artur Florêncio & Filhos, Affsports Lda v EUIPO; Anadeco Gestion, SA 8 July 2020 Reg 207/2009 Reported by: William Wortley

– flooring for sports and multi-use flooring, flooring for games and industrial flooring, manufactured from non-metallic materials (19) – carpets and floor coverings for sports, games and industry (27) – construction, application and maintenance of flooring (37) T-FLOORING – floor coverings (27) (Spanish registration)

Comment The GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and (c). The GC held that the BoA was correct to find that the mark would be understood by the relevant public as designating personal care products with the quality of professional tools. Further, the graphic element of the mark was not sufficient to divert the attention of the relevant public from the descriptive message conveyed by the word element. The GC also determined that the BoA’s general conclusion that the mark was descriptive in relation to all of the goods applied for, insofar as each of these were directly linked to personal care, should be considered in conjunction with the BoA’s specific reasoning in relation to each category of goods. As a result, the BoA was found to have given adequate reasons to support its conclusion.

The GC annulled the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). On an overall assessment of the evidence, the GC held that Anadeco Gestion had failed to prove genuine use of the earlier mark. In particular, no evidence of use had been furnished in relation to floor coverings; much of the evidence of sales in relation to parts for ‘floor coverings’ fell outside the relevant period, so the only sales appeared to take place during a period of eight months; and it was unclear whether catalogues dating from the relevant period had in fact been distributed to the public. As a result, the frequency and consistency of the evidence of use was insufficient to offset the low volume of sales under the earlier mark such as to dispel the doubts as to its genuineness (following HIPOVITON, T-353/07).

28 CIPA JOURNAL DECEMBER 2020

www.cipa.org.uk

DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T‑557/19 Seven SpA v EUIPO 23 September 2020 Reg 2017/1001

– woven and knitted clothing and underwear, boots, shoes and slippers, headgear (25)

Reported by: Robert Milligan

GC T-738/19 Clouds Sky GmbH v EUIPO; The Cloud Networks Ltd 23 September 2020 Reg 207/2009 Reported by: Stephen Allen

Volume 49, number 12

– electronic, electrical apparatus and instruments for the input, storage, processing and transmission of data (9) – gambling apparatus and instruments (28) – telecommunications, communications, satellite and digital communications services (38) – entertainment services (41)

TRADE MARKS

Comment The GC upheld the decision of the BoA to reject an application for restitutio in integrum made under article 104 by Seven (the licensee of the registration). Instead, it confirmed the cancellation of the registration of the mark pursuant to article 53(2). The GC agreed with the BoA that the proprietor of the registration had only granted express authorisation to Seven to renew the registration after the renewal period had expired. Therefore, Seven were not a party to the proceedings within the meaning of article 104. Consequently, Seven could not remedy the failure of the proprietor to renew the registration unless it was shown that such a failure had occurred in spite of the proprietor having exercised all due care. The GC agreed with the BoA that the proprietor had not done so, with the result that Seven, as the licensee, could not apply to have its rights re-established to renew the registration. In the context of invalidity proceedings, the GC upheld the BoA’s decision that the mark had not been descriptive at the time of filing, and therefore did not lack distinctive character, pursuant to articles 7(1)(b) and 7(1)(c). The BoA was correct to find that it had not been proven that the element ‘The Cloud’ was descriptive of cloud computing at the time of filing. Clouds Sky had tried to rely on a single piece of evidence, a Wikipedia page entry, to show that ‘The Cloud’ was a common expression that had been used to refer to cloud computing since the 1970s. Since this was the only evidence submitted, it did not confirm or corroborate other sources (e.g. scientific studies). It was also dated five years after the filing date of the application, and so did not prove descriptiveness at the time of filing. Additionally, although Clouds Sky submitted that each element of the mark was individually descriptive, they did not explain how the relevant public would perceive the mark, taken as a whole, as describing the goods or services. Nor did Clouds Sky specify which of the goods or services the mark described. Since the mark was not descriptive, Clouds Sky’s arguments under article 7(1)(b) also failed.

DECEMBER 2020

CIPA JOURNAL

TRIED. TESTED. TRUSTED. IP RENEWALS: NOW IN THE UK PAVIS – a NovumIP company – founded by German patent attorneys over 40 years ago, has a long tradition of serving the IP community. Today, with close to 1 million IP rights under management and over 600 IP law firm clients, PAVIS provides innovative solutions to IP professionals worldwide in both industry and private practice with a focus on Patent Annuities & Trademark Renewals. WHAT MAKES THE DIFFERENCE? ■ With our roots in IP law firms, we understand your business ■ Highest client retention rate in the industry ■ Expert IP Services with a human face ■ Stability and reliability in automated IT solutions ■ Cost transparency completely assured ■ Officially approved financially regulated payment service provider Visit our website pavis.com or contact us at UKsales@pavis.com PAVIS is working with IP Pragmatics, our strategic authorised UK partner, to extend our services to UK clients