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

August-September 2016 / Volume 45 / Number 8-9

The Chartered Institute of Patent Attorneys

SPCs Summer Review An eventful 12 months for Supplementary Protection Certificates in Europe

An interview with IPReg’s new Chair Caroline Corby

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Patent infringement proceedings in Pakistan

Chinese patent law – how it should be applied Toby Mak

UP and UPC: business as usual? Pippa Allen

The not-sosecret diary of a CIPA President Andrea Brewster

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CIPA CONTACTS

Editor Editorial Panel

Alasdair Poore David Barron, Paul Cole, Kristina Cornish, Tibor Gold, Alan White Publications Committee William Jones (Chairman) Production Iain Ross, 020 3289 6445 and advertising (iain@ross-limbe.co.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.

Tony Rollins President

Stephen Jones Vice-President

Andrea Brewster Immediate Past-President

Chris Mercer Honorary Secretary

Committee Chairs Administrators Vicky Maynard; Business Practice (joint with ITMA) Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs and Copyright David Musker; Education and Professional Standards Simone Ferrara; Exploitation Catriona Hammer; Informals Ben Charig; Internal Governance Bobby Mukherjee; International Liaison Richard Mair; Life Sciences Simon Wright; Litigation Vicki Salmon; PEB Rob Taylor; Patents Tim Jackson; Protected Titles Lee Davies; Media and Public Relations Jerry Bridge-Butler; Regulatory Affairs Chris Mercer; Textbooks & publications Bill Jones; Trade Marks Keith Howick. Chief Executive Lee Davies Head of Media and Public Affairs Neil Lampert Head of Education Georgina Sear Finance Manager Spurgeon Manuel Finance Administrator Andrew Hewitt Policy Officer Rebecca Gulbul Executive Assistant Gary McFly Communications Officer Isabelle Wilton Education Projects Co-ordinator: Angelina Smith Membership team: Dwaine Hamilton; Frances Bleach; Kirsty Burls; Charlotte Russell. General enquiries: 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents 21 26

UP FRONT

ARTICLES

EDUCATION

Editorial: UK votes for flat world

Alasdair Poore

Council Minutes

Navigating rocky waters

Lee Davies

NEWS

New opportunities for reforming the law

Law Commission

Naeema Sadaf, H. Zafar Iqbal.

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The not-so-secret diary of a CIPA President

Tony Rollins, Stephen Jones

Andrea Brewster

Patents Committee Litigation Report

Institute events Unitary Patent and Unified Patent Court: The Final Steps?

Pippa Allen 76

CIPA Congress 2016

Toby Mak

Meeting with the IPO

Tim Jackson

The West of England Meeting

Sean Gilday

Gwilym Roberts Patent litigation in China

Amendment of Specifications Paper

New study guide

Patent infringement proceedings in Pakistan Six things we love about being IP Conferences

The East Midlands Meeting

Julia Florence 48

Review of SPCs Carpmaels & Ransford

Chief Executive Report

Lee Davies 5

IPReg’s new Chair

Caroline Corby

DECISIONS

PERSONAL 45 46 47

ITMA Autumn Seminar 2016 Obituary Announcements

Gary McFly, Vicki Salmon 10

IPO patents customer visit programme

Patents

Eleanor Wade, Suzanne Gregson

IPO decisions

Use of English as an official EU language

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EPO decisions

Bristows

Overseas report

Amanda R. Gladwin 11

Barker Brettell LLP

Official news

PCT fee structure 11

Beck Greener

Trade marks and other IP

THE PINKS 58 60 62 72

Courses and training International Recruitment Support

Bird & Bird LLP

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ARTICLE

SPC REVIEW

SPCs – navigating rocky waters In the first of a two-part review, Carpmaels & Ransford report on an eventful 12 months for SPCs and consider the future of SPCs post Brexit.

upplementary Protection Certificates (SPCs) are one of the areas where EU law impinges directly on the scope of patent protection in Europe. The last year has been an interesting time for SPCs in Europe. There has been new case law from the Court of Justice of the European Union (CJEU) and several important decisions from the national courts and patent offices. This article reviews the key judgments since early 2015, placing them in the context of issues that have been exercising the SPC community for several years. These issues include how to get SPCs for combination medicinal products, whether new uses of old active ingredients can be the subject of SPCs, and what scope of protection is provided by an SPC. We also consider the extent to which SPCs are available for medical devices, whether patent holders can validly seek SPCs based on other parties’ products, and what the correct term of an SPC is. Looking ahead, ahead, in this area where the CJEU definitely has (and has had) a say in patent law, we consider what changes might be coming in 2017 and beyond: what effect the anticipated UP and UPC may have; and what might happen following the UK’s recent referendum on leaving the EU. Daniel Wise (Fellow)

Editor’s summary Supplementary Protection Certificates (SPCs) are a creature of EU law. A straightforward concept and a few simple words. Attorneys from Carpmaels & Ransford provide a straightforward explanation of some of the tangled issues about SPCs in a way which provides insights for non-pharma practitioners on how simple words can tax the courts – reminding us also of why practitioners were hesitant about CJEU guidance in the Unified Patent Court world.

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SPCs for combination products Exploring the meaning of a product ‘protected as such’ Actavis v Boehringer Ingelheim (“BI”) (C-577/13) sets out the CJEU’s most recent assessment of Article 3(c) (of Regulation (EC) 469/2009 concerning the supplementary protection certificate for medicinal products)1 in the context of combination SPCs, interpreted (as is increasingly the case) in a holistic manner in the light of Articles 1(c) and 3(a) of Regulation 469/2009. Leaving aside a separate post-grant amendment point for the purposes of this article, the facts of the combination issue will be familiar to many. BI had obtained a “mono” SPC (i.e. one for a single component) for an anti-hypertensive product containing the active ingredient, telmisartan. Following the grant of a later marketing authorisation (MA) for a combination therapy comprising telmisartan and hydrochlorothiazide (HCTZ), BI obtained a “combination” SPC, based on the same basic patent as its earlier mono SPC. Actavis wished to sell the combination product after the mono SPC had expired, but this would risk infringing the combination SPC, which still remained in force at that time. Actavis challenged the validity of the combination SPC on various grounds, including objections under Article 3(c), similar to those previously raised in Actavis v Sanofi (C-443/12) – an analogous case in which a mono SPC and a later combination SPC were based on the same basic patent but different MAs. To recap briefly, in Actavis v Sanofi the CJEU recalled that the basic objective of the SPC Regulation is to “compensate for the delay to the marketing of what constitutes the core inventive advance that is the subject of the basic patent”, namely the mono product. The CJEU nevertheless stated in paragraph 29 that it is possible, in principle, to obtain several SPCs for different products on the basis of the same patent, “provided, inter alia, that each of those products is ‘protected’ as such by that ‘basic patent’”. www.cipa.org.uk

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ARTICLE

But what does ‘protected as such’ mean in practice? When the Actavis v BI case was subsequently heard by the CJEU, BI argued that, in order to be so protected, it is enough for the two active ingredients in question to be “specified in the wording of the claims” – adopting the earlier Medeva (C-322/10) test for Article 3(a), and having amended its basic patent post grant to include a new claim to the combination of telmisartan and HCTZ. However, the CJEU was more inclined to agree with Actavis’ position, stating that, in order for a patent to protect ‘as such’ an active ingredient within the meaning of Articles 1(c) and 3(a), that active ingredient must constitute the “subject-matter of the invention” covered by that patent. Reiterating its earlier comments in Actavis v Sanofi, the CJEU emphasised that the objective of the SPC Regulation is to compensate the patentee “at least in part” for the delay to the commercial exploitation of that invention because of the need to obtain regulatory approval before a medicinal product can be placed on the market. The objective is not to compensate the holder for the delay in marketing its invention in all its possible commercial forms, including in the form of combinations based on the same active ingredient. Balancing the competing interests at stake, a patentee cannot obtain a new SPC for potentially a longer period of protection each time he markets a product containing an active ingredient which is protected as such by that patent and constitutes the subject-matter of the invention, together with another substance which does not. The CJEU observed that BI had not contributed to the discovery of HCTZ (which was a well-known diuretic at the priority date) and that the claim relating to HCTZ does not constitute the subject-matter of the invention. Further, the judgment records as “common ground” the fact that telmisartan is the “innovative active ingredient” of the basic patent and the “sole subject-matter of the invention”. Accordingly, since BI had already obtained an SPC for telmisartan alone, it was precluded from obtaining a second SPC for the combination of telmisartan with HCTZ. Despite the deviations in the precise terminology used in each of the Actavis cases, consistent themes seem to emerge as to the correct interpretation of Articles 3(a) and 3(c) in circumstances where mono and combination SPCs concern common active ingredients and derive from the same basic patent. Indeed, in cross-referring to Actavis v Sanofi, the CJEU in Actavis v BI substituted the phrase “core inventive advance” for “subject-matter of the invention”, suggesting they are intended to convey one and the same meaning. Nevertheless, two significant questions remain in the minds of many practitioners: 1. In what circumstances can a combination product “constitute the subject-matter of the invention”? Arguably, it should be possible, in principle, for a combination product to satisfy this criteria in the right circumstances, even where both A and A + B, for example, are claimed in the Volume 45, number 8-9

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SPC REVIEW

same basic patent. This possibility seems to be recognised, for instance, in paragraph 29 of Actavis v Sanofi quoted above, and also in the earlier Georgetown University v Octrooicentrum Nederland (C-484/12) (“Georgetown II”) decision from the CJEU. In Georgetown II, Georgetown University’s combination vaccine product (comprising A + B + C + D, for simplicity) as well as C alone, were each held to be protected by the same basic patent within the meaning of Article 3(a), despite C being a common active ingredient in both products. Accordingly, Article 3(c) did not preclude the grant of a mono SPC (for C alone) in circumstances where a combination SPC (for A + B + C + D) was already in force. However, the CJEU made two interesting observations which distinguished the facts in Georgetown II from those in both Actavis cases. First, it appeared to be common ground in the main proceedings that the basic patent did protect both the combination and the mono product. Secondly, the CJEU recognised that, on the facts of the case, SPC protection for the mono and combination SPCs would expire at the same time, so no subsequent barrier to market entry would follow from the grant of the second SPC in any event. 2. Will national patent offices have enough information to assess whether combination products are ‘protected as such’? Both questions 1 and 2 were tackled head-on in a recent decision of the UK IPO in Merck Sharp & Dohme (“MSD”) (BL O/117/16; under appeal). The hearing officer (Dr Cullen) ultimately rejected MSD’s SPC application on the basis of a different objection under Article 3(b), which is discussed later in this review, but he nevertheless went on to consider the combination SPC issue in detail in case his conclusion on Article 3(b) was incorrect. The issue under Article 3(c) was whether an SPC could be granted for a combination product for treating hypercholesterolaemia, Atozet® (ezetimibe and atorvastatin), in circumstances where the same basic patent was the subject of an earlier granted SPC for ezetimibe alone. As the hearing officer noted, it was not enough that MSD’s basic patent included a claim which ‘specified’ (or ‘identified’) the combination of active ingredients, ezetimibe and atorvastatin, as this approach had already been proposed and rejected by the CJEU in Actavis v BI. Instead, the hearing officer conducted a more technical evaluation of what was known at the priority date, as against the patent, to assess whether the combination is ‘protected as such’. In particular, a witness statement filed on behalf of MSD stated that the combination was both novel and represented a significant technical advance. For example, the combination permitted a lower dosage of statin to be administered, resulting in comparable efficacy whilst reducing side effects. AUGUST-SEPTEMBER 2016

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considerable weight in the UK courts, perhaps mirroring the UK courts’ approach to considering the case law of the Boards of Appeal at the EPO. Answers from the EFTA court would likely be only advisory, leaving UK judges considerable discretion to decide the best course of action in any given case. If the UK instead takes the Swiss approach, it would join the EFTA but not the EEA. It seems likely that this would result in the UK enacting its own SPC legislation. The Swiss rules for SPCs are closely modelled on the EU legislation, but it seems likely that the UK parliament may suggest a variety of changes. These changes could range from addressing the uncertainties highlighted (and indeed sometimes introduced) by CJEU case law, to a wholesale rethink of the approach to SPC protection. While we would hope that any new legislation would be widely consulted on with stakeholders, it is hard to see how this process could be achieved in time for a speedy Brexit in just two or so years’ time. An added complication is the position of Scotland. While this article considers the effect of Brexit on the UK, Scotland may well vote for independence splitting the UK into two separate countries. In that case, it seems likely that existing UK SPCs would somehow be split into two, one covering Scotland and another covering the remainder of the UK. Given that Scotland seems keen to remain in the EU, Scottish SPCs would eventually follow the current system whereas the SPCs for the remainder of the UK would be subject to the various possibilities discussed above. Appetite for further change? Finally, there seems to be a new enthusiasm at the Commission for changing the SPC system. This year’s decisions from the CJEU have continued a long tradition of the Court taking a “teleological” view that can seem at odds with the literal

SPC REVIEW

interpretation of the statue. This has led to calls from many for the SPC regulations to be redrafted to bring clarity on key points, such as the level of “specificity” required for a patent to protect the product under Article 3(a). The Commission recently launched a research project suggesting it may be interested in some level of reform perhaps to answer these calls, as shown by the request for independent research from the Commission regarding a huge range of separate issues including: the uSPC, the ambiguities in both substantive and procedural law, SPCs for biologics, SPCs for medical devices, antibiotics, and “optimal” SPC term. Therefore, it seems almost nothing is off the table for discussion. While this adds to the current climate of uncertainty, it equally gives hope to those who wish to see the system made more predictable. The sole new change that seems well advanced is an “export waiver” allowing generic manufacturers based in the EU to make pharmaceuticals protected by an SPC provided they are solely for export (presumably to countries where patent and regulatory data protection has expired). Here, the Commission is clearly hoping to support generic manufacturers who are based in the EU and who at the moment are often last to the party and so lose market share to rivals elsewhere. So, not only do we have the UP, UPC and uSPCs to look forward to; the next few years could include a complete reimagining of the SPC regulations (and perhaps a new UK specific SPC). All players in the field of SPCs need, more than ever, to keep their strategies under constant review to stay ahead of these approaching developments. We look forward to reporting on further progress next year. David Holland (Fellow)

SPC SUMMER REVIEW For more information on Carpmaels & Ransford or the authors of these articles, please visit https://www.carpmaels.com/

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Daniel Wise Partner

AUGUST-SEPTEMBER 2016

Jennifer Antcliff Senior Associate

Matthew Georgiou Senior Associate

Susan Hancock Associate

David Holland Senior Associate

www.cipa.org.uk

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ARTICLE

PAKISTAN

Patent infringement proceedings in Pakistan A review of the latest developments in patent infringement proceedings in Pakistan. By Naeema Sadaf and H. Zafar Iqbal.

he long-awaited decision in Pfizer Products Inc et al v Hilton Pharma (Pvt) Ltd1, involving Pfizer’s branded drug ‘Lyrica’, containing pregabalin, the Sindh High Court2 was called upon to decide: (i) whether proceedings for patent infringement can be instituted without awaiting sealing of the patent; and (ii) whether based on these proceedings, the plaintiff can seek perpetual injunctive relief (including interim injunction), restraining the defendant from acting in any manner that would infringe the patent, not yet sealed. While rejecting Pfizer’s arguments that “proviso to section 22 could not take away what was granted by the main provision itself ”3, the Court explained that: “… the proviso to section 22 does not render the applicant remediless and take away what is granted by the main part of the section. It simply defers the remedy. Once an applicant becomes the patentee, he is entitled to all remedies as were then available, in respect of any grievance that arose during the earlier period”. The Court recalled that the legal maxim “ubi jus ibi remedium” does not mean that the remedy should be such as the right holder deems most expedient or desirable or is to be available at the time of his choosing. It all depends on what the law says. The proviso to section 22 is clear on this point: the right is granted but the remedy is deferred. Comparing the patent position with the law relating to trade marks, the Court observed that it is the same4. The rights of a proprietor of a registered trade mark have effect from the date of registration (i.e. the date of application) but the proviso explicitly bars the proprietor/applicant from instituting any infringement proceedings from the date on which the trade mark is, in fact, registered. Volume 45, number 8-9

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Pfizer submitted that, if proceedings for a declaration as to non-infringement of rights conferred by the publication of a complete specification in relation to a patent application can be brought before the court under section 67(4) of the Patents Ordinance, 2000 (the 2000 Ordinance); read by analogy, proceedings for infringement of rights and privileges granted under section 22 can also be initiated. Rejecting Pfizer’s arguments, the Court stated that after amendments in section 22, sub-section 67(4) was now an anomaly and cannot be used to give the proviso to section 22 a meaning different from that which it clearly has. Basing its decision upon the House of Lords decision in Sevcon Ltd v Lucas CAV Ltd5; and reinforcing it with the New Zealand’s Court of Appeal decision in Pacific Coilcoaters Ltd v Interpress Associates Ltd6, the Court held that:

Editor’s summary Assessing infringement before a patent is finally granted has challenged courts in the UK, in relation to threats proceedings. In contrast to the EPC, Pakistan law has a pre-grant opposition procedure, with a specific proviso excluding proceedings before sealing the patent. Pfizer’s challenge, referring to a corresponding Pakistan law provision permitting justification of threats before sealing a patent, and of interest to a number of other pharma companies with similar infringement suits pending, referred to the UK threats cases but rejected any proceedings before sealing.

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PERSONAL

OBITUARY

Ivor Brown, 1937-2016

vor Brown, the former Head of Intellectual Property at Zeneca Agrochemicals (now Syngenta AG) died unexpectedly on 15 June, following complications arising during treatment for a recurrence of his earlier breast cancer. Ivor James Stewart Brown was born in Glasgow in February 1937 into a farming family from the Isle of Arran where his interest in things practical first developed. Much of his education was spent in mainland Scotland (where he lived with his uncle’s family), culminating in his achieving a B.Sc. and Ph.D. in chemistry at Glasgow University. He met his wife to be, Rosalind, in 1958 and they married in July 1962. He then spent two years of post-doctoral research with the National Research Council of Canada in Ottawa before in 1964 joining the research department of the then ICI Pharmaceuticals Division (now part of AstraZeneca plc) in Alderley Park, Cheshire, researching new anti-bacterial products. Like most chemists working on drug discovery at Alderley, he spent three weeks in the Patents Section as part of his general training. He obviously impressed whilst there and was subsequently invited to join the Section when a vacancy occurred in 1970 and thus start professional study and training anew as a patent agent. This required many hours of evening study after work, coinciding with the three-day week power cuts and the demands of an energetic young family. Because of power cuts he had at times to work by the light of candles and paraffin lamps, wearing earphones to keep out extraneous noise. Yet with the support and encouragement of his wife, Ivor managed to balance work, family and study commitments and qualified in the minimum three-year period in 1974, becoming a Fellow of the Institute in 1975. I first got to know him well around that time when he encouraged me during my own transition from pharma research

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to patents. He retained his practical experimental approach throughout and I well remember his personally trialling the use of a home-made, transition metal salt mouthwash to remove plaque from his teeth – evidently very effective but very unpleasant to taste! Ivor’s professional career developed quickly after qualification, with responsibility for drafting and prosecuting several important patents on anti-cancer and antibacterial candidate drugs. In 1985 he added management responsibility, moving to the North East to head the patent group at Billingham in ICI’s Agricultural Division. From there he went South to Jealott’s Hill in Berkshire, succeeding Tim Roberts as Manager of the Patent Department in ICI Agrochemicals: which then transitioned to Zeneca Agrochemicals with the demerger in 1993 of the ICI businesses into Zeneca and a new, smaller ICI. As a key member of the new Zeneca IP Executive team, Ivor helped ensure commonality of IP policy and robust underlying procedural systems across the Zeneca businesses. During his time at Jealott’s Hill, as well as recruiting and developing the talented team of patent attorneys, Ivor was a prime mover in the work by the European agrochemicals industry to get Supplementary Protection Certificates (SPCs) – already available from Jan 1993 for medicinal products – introduced for plant protection agents to compensate originators for loss of patent term resulting from delays inherent in obtaining the required regulatory approval before marketing. Ivor approached this with his customary diligence and attention to detail and SPCs for plant protection agents were introduced through European Regulation 1610/95 with effect from February 1997. Ivor’s personal contribution was later recognised by the award of a special medal by the European Crop Protection Association in 1995 “for outstanding

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achievement to the crop protection industry.” He was rightly very proud of this award but typically “matter-of-fact” when referring to it. Ivor was also a full member of the Jealott’s Hill Site senior management team where his practical common-sense approach to problem solving was much appreciated. In characteristically single-minded fashion, on his retirement in 1999 from Zeneca Agrochemicals, Ivor decided to retire completely from professional patent and other IP work and concentrate on his family and leisure activities. This gave him an opportunity to further develop his considerable golf ability which seemed remarkably unaffected by two replacement knees. He and Rosalind were also able to spend more time together on overseas holidays. Although a stickler for correct procedure and protocol, Ivor was able on occasions to let his hair down, illustrated at a Jealott’s Hill social event when, to the evident surprise of many of his colleagues, he gave an impromptu rendition of “I’m too sexy for my shirt” uncovering a striking shirt to match! Outside work, he was an avid and successful gardener and an accomplished DIY-er, continuing to clean out gutters and scramble over the conservatory roof until a few weeks ago. He had a wide taste in music ranging across classical, Portuguese ‘Fado’ folk-song, traditional www.cipa.org.uk

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EDUCATION

jazz to brass band. A proud expatriate Scot, he continued to be much in demand for his accomplished delivery of the Immortal Toast at Burns Suppers. In conclusion, just a few of the epithets contributed by some of Ivor’s many friends and colleagues: “A good bloke; a reliable and supportive colleague; a gentleman; capable of rising to most challenges; down-to-earth, single-minded, tenacious and determined; clear and direct in his opinions but persuaded by evidence; his wife and children were his bedrock; once you gained his trust, he was a staunch ally.”

INSTITUTE EVENTS

Always prepared to say things directly and how he saw them, Ivor has been a great help to me over the years. His death was a considerable shock: I count myself privileged to have known him and shall miss his continued friendship. He leaves his widow Rosalind, son Andrew and daughter Helen, of whom he was always very proud; we offer them all our sincere condolences and continuing support.

Announcement Cleveland IP is delighted to announce that Deborah Lowther (Fellow) has joined the firm as a senior associate. For more information on Cleveland IP and Deborah Lowther, please visit: http://cleveland-ip.com/.

Steve Smith (Fellow)* *With assistance from Tim Roberts (Fellow), Dr Peter Doyle and Ivor’s many colleagues in the patent world.

Letters for the Editor and announcements should be e-mailed to: editor@cipa.org.uk

The East Midlands Meeting Report of the The East Midlands Meeting, Nottingham on 16 June.

he East Midlands Meeting took place in Nottingham on 16 June, chaired by Catriona Hammer. Before the presentations, Catriona had the pleasure of presenting the Moss Prize, for the highest marks in FC1 and FC3 to Alexandra Chua-Short of Potter Clarkson.

Tax and the IP Journey Louise Edwards, a tax adviser with Mazars gave an interesting and enlightening presentation: Tax and the IP Journey. Louise discussed various tax aspects of IP in relation to investment, innovation, exploitation and also stakeholder return, with a practical and commercial focus, noting that it is important not to let the tax tail wag the commercial dog. Choice of structure is important – tax reliefs generally favour using a company – and Louise cautioned that joint ventures should be set up with an exit strategy in mind. The pros and cons of different share based incentives were reviewed: the Enterprise Investment Scheme, Entrepreneur’s Relief, and New Investment Relief. Tax reliefs are also available for R&D innovation even if this does not result in IP ownerVolume 45, number 8-9

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ship. Software developments may also be eligible for R&D tax reliefs if written to meet a specific technological development. HMRC can advise in relation to smaller claims. IP is an intangible asset, subject to recent changes in accounting for intangibles, including the new requirement to revisit the amortisation rate each year. There is no tax relief for acquired unregistered IP which could result in a large tax bill on recently acquired IP. The presentation also looked at the recent changes to the Patent Box rules which come into effect for patents filed after 30 June 2016. Louise concluded by discussing tax in relation to licensing and sale of assets, noting that UK has low rates of corporation tax compared with many other countries, and thus royalties incurred in such countries may be subject to withholding tax at higher rates.

Portfolio Strategy Catriona Hammer continued the strategic theme, focusing on Portfolio Strategy for Start-Ups, Spin-Outs and Other Small Businesses. Catriona stressed the importance of asking many AUGUST-SEPTEMBER 2016

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EVENTS

INSTITUTE EVENTS

Institute Events For more information and to book onto any event please see the CIPA website or email cpd@cipa.org.uk

Monday, 5 September 2016 Webinar

IP Enforcement; Can we afford to vs Can we not afford to?

investigations; successes in enforcement despite these challenges.

Speaker: Huw Watkins, IPO CPD: 1 hour; Prices: £72 (Members £48)

Time: 12.30-13.30pm Co-ordinated enforcement against criminal abuse of copyright and trade marks in difficult financial times – how can we possibly do more with less? Huw Watkins from the IPO will cover the following: challenges faced by law enforcement when considering IPR enforcement against conflicting priorities; resource cuts and their impact on the ability to conduct

Tuesday, 6 September 2016 Webinar

Australian Patent Oppositions Time: 8.00-9.00 am UK and EPO qualified attorneys Steve Gledhill and Toby Thompson of Australian firm FB Rice will give an explanatory overview of Australian patent opposition

practice. A review of legal, procedural and practical aspects of Australian patent oppositions, highlighting differences between the Australian and European systems. Following the bedding in of the “Raising the Bar” Act, the impact of those changes to Australian opposition practice will also be discussed, including the role of expert evidence, the new “support” requirements and new procedural timing rules. Tips will be provided and traps highlighted to put you in the best position to navigate Australian oppositions.

CPD: 1 hour Prices: £72 (Members £48)

Why, when and how to perform prior art searching, and how to get the best out of a UK IPO search The seminar may be particularly useful for IP managers and patent searchers based in startups and SMEs, as well as individuals working in technology transfer.

Date: Tuesday, 27 September 2016 Time: 16:00-19:30pm Location: Mills & Reeve LLP, Botanic House, 100 Hills Road, Cambridge, CB2 1PH Speakers: Barbara Fleck, Crescendo Biologics; Nicola Baker-Munton, Stratagem IPM; Jane List, Extract Information Ltd; Eleanor Wade, UK IPO

In this seminar, we explore reasons why prior art searching and freedom to operate (FTO) searching can be useful, and how to perform these searches. A UK IPO examiner will also provide valuable insight into how examiners perform patentability searches. This seminar is followed by an opportunity to network with other IP professionals over drinks.

CPD: 2 hours  Price: £54 For details and booking visit http://www.cipa.org.uk/whats-on/events

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EVENTS

INSTITUTE EVENTS

Monday, 12 September 2016 and 20-22 October 2016

Wednesday, 7 September 2016 Social

Thursday, 22 September 2016 One-day Conference

September Happy Hour

Course

CIPA Congress

Time: 18.00-19.30pm Location: Grand Union Chancery lane, Rolls Passage, EC4A 1HL

IPEC – Use your rights! And learn skills for the UPC

Time: 8.00am-6.30pm (reception until 7.30pm) Location: Royal Institute of British Architects (RIBA), 66 Portland Place, London, W1B 1AD

Locations: London then Missenden Abbey, Chiltern Hills

Join us for an opportunity to network with other IP professionals over drinks. Please note, booking is mandatory and drinks tokens will be distributed on arrival. FREE for CIPA members, register at www.cipa.org.uk/whats-on/events/

Thursday, 8 September 2016 Webinar

Successful Negotiation of Claim Eligibility in United States IT & Software Cases Time: 16:00-17:00pm Achieving grant for US patent applications in IT-related fields, just on the basis of eligible subject-matter, never has been more challenging. In the face of decisions like Alice and SmartGene, ambiguous printed “Guidance” from the USPTO, and with no shortage of contentious examiners, even claims that are plainly technologically “tied” can seem hopeless. With rates of allowance in some examining units as low as between 3% and 10%, what can applicants do to maximize the chance of success? This talk will explore practical drafting strategies for new cases, claim recitations and amendments, interview techniques, and lines of written argument that appear best positioned to lead to success. A checklist of issues and considerations will be provided and reviewed. Attendees are presumed to be generally familiar with US eligible subjectmatter issues and the Alice decision.

Speaker: Chris Palermo, Hickman Palermo Becker Bingham Intellectual Property Law CPD: 1 hour Prices: £72 (Members £48)

The aim of this course is to provide experienced patent attorneys (3+ years PQE) with an understanding of the procedures of IPEC and the skills required to run litigation (transferrable to the UPC) by running a patent case study from issue to trial. This course, which was run successfully in 2011, 2012 and 2015, will give you the tools to conduct proceedings in IPEC, either alone or with a barrister, and skills for the UPC – or at the very least give you the confidence to look after your client through the litigation process. For those interested, we can organise direct experience of IPEC in action by arranging for at least some attendees to act as marshals in the court after they complete the course. Session 1 (non-residential) Monday 12 September 2016 – CIPA, London Introductory day: Reading into the case study. Plenary sessions on getting started. Preparation of initial statements of case. Session 2 (residential) Thursday 20 to Saturday 22 October 2016 – Missenden Abbey, Buckinghamshire: Preparation for the case management conference. Plenary sessions on getting the case to trial, including disclosure and evidence. Preparation of skeleton arguments. Trial (including crossexamination of expert witnesses). Judgment. The course is limited to 30 delegates, to ensure that everyone gets the opportunity for hands-on learning.

Prices: £2160 (Members £1740) Volume 45, number 8-9

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See more details on page 76.

Thursday, 22 September 2016 One-day Conference

CIPA Administrators Conference 2016 Time: 8.30-18.30 Location: RIBA, 66 Portland Place, London, W1B 1AD An administrators conference running alongside CIPA Congress.

Prices: Early Bird £270 (Member £240) Tuesday, 27 September 2016 Seminar

Cambridge Patent Searching Seminar CIPA’s East of England representative, Parminder Lally (TLIP Ltd) has organised a seminar on patent searching for members and non-members in the region. See details opposite. Tuesday 11 October 2016 Webinar and seminar

UK Patent Practice Time: 15:00 - 17:00 (seminar, Munich) 14:00 - 15:30 (webinar, BST) UK Patent Practice, particularly for patent attorneys more used to EPO procedures.

Speakers: See full details online. CPD: 1.5; Prices: £108 (members £72) 14 & 15 November 2016 Two-day Conference

CIPA Life Science Conference See full details on page 58. Location: The Grand, Brighton AUGUST-SEPTEMBER 2016

CIPA JOURNAL

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