CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
April 2017 / Volume 46 / Number 4
Incentives for R&D Are second medical use patents enough to ensure life sciences companies develop new uses for existing medicines?
Professional development framework for CPAs
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PEB: increased qualifying examination fees Rob Taylor
US update: venue selection and missing parts Finnegan
Opting patent applications out of the UPC Hugh Dunlop
Six things we love about being an IP litigator Eibhlin Vardy
30/03/2017 16:42:33
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Contents 29 12
10
UP FRONT
ARTICLES
EDUCATION
3
22
56 59
Institute events UP and UPC webinars
Brian Cordery, Steven Willis
60
US: eligible subject-matter
US update: re-evaluating venue
65
Timothy P. McAnulty, Cara R. Lasswell
66
Black Wednesday
Alasdair Poore 4
Council Minutes
24
Lee Davies 29
NEWS 9
PEB examination fees
10
Professional development framework
32
Rob Taylor
Education & Professional Standards Committee
Arrow declarations
Hugh Dunlop
Early certainty from the EPO
Christopher Pike Wales meeting
Matthew Laffan 67
Filing design applications
Isobel Ferguson
China update
Toby Mak, Constance Rhebergen 40
Stephanie E. Stevenson-Smit
USPTO – Missing Parts
Erin M. Sommers, Kassandra M. Officer 35
Pippa Allen
Second medical use issues
The not-so-secret diary
PERSONAL
12
SPCs
14
Amicus curiae brief
18 19 20
Regulatory news Official news Overseas report
DECISIONS
63 64
Amanda R. Gladwin
43
20 20
President meets IP Minister Cambodia – EPO validation state
THE PINKS
Life Sciences Committee
Andrea Brewster 42
Six things I love...
Eibhlin Vardy
57 62
Patents Committee
Gladys Mirandah, Ang Chuan Heng 21
China – costs and sound marks
Toby Mak, Jie Zhang
Volume 46, number 4
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Announcements Going Remote
Heather Lane
IPO decisions
Barker Brettell 44
IP Inclusive scoops award Letter to the Editor
Trade marks and other IP
Bird & Bird
68 69 70
International Recruitment Courses and events
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NEWS
COMMITTEE
Amicus curiae brief – case G 1/16 (Disclaimers) Amicus curiae brief in case G 1/16 (Disclaimers). Prepared by CIPA's Patents Committee in conjunction with the Life Sciences Committee. Sent to the Enlarged Board of Appeal of the EPO, 1 March 2017.
T
he present referral seeks to clarify apparent contradictions between previous Enlarged Board decisions G1/03 and G2/10. The board in the current referring decision, T0437/14, considers that although at first glance the previous decisions appear to apply to different situations, it concluded that on further analysis G2/10 required Article 123(2) EPC to be applied to any amendment of a claim, without exception, and hence to disclaimers apparently permitted under G1/03 (inter alia, to deal with Article 54(3) issues and accidental anticipations under Article 54(2) EPC). The consequence of this, according to the referring board, is that any disclaimer excluding undisclosed subject-matter “almost by definition” contravenes Article 123(2) EPC because what remains cannot be regarded as having been explicitly or implicitly, but directly and unambiguously disclosed.
The questions referred: 1. Is the standard referred to in G2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers? 14
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2. If the answer to the first question is yes, is G1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1? 3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G1/03 apply in addition to the gold standard, may this standard be modified in view of these exceptions?
Proposed answers CIPA considers that the reference in question 1 to ‘undisclosed disclaimers’ is somewhat ambiguous. It would appear that the question concerns undisclosed disclaimers in all circumstances, and not only those limited circumstances in which G1/03 held undisclosed disclaimers to be allowable. Furthermore, the answer to question 1 depends at least in part on how the standard referred to in G2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC (i.e. whether the skilled person would, using common general knowledge, regard the subjectmatter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed) is interpreted and applied. In view of the ambiguities present in question 1 it is necessary to provide more than a simple ‘yes’ or ‘no’ answer. In CIPA’s view question 1 can be answered as follows: Insofar as an undisclosed disclaimer meets the strict criteria set out in G1/03, i.e.: •
It is introduced for the purposes of restoring novelty in respect of
•
•
•
document cited under Article 54(3) EPC or an accidental anticipation under Article 54(2) EPC, or is to remove subject-matter which is not eligible for patent protection e.g. under Article 53 EPC or Article 57 EPC. It does not remove more than necessary to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons. It does not become relevant for inventive step or sufficiency of disclosure. It meets the requirements of clarity and conciseness of Article 84 EPC; then it is not necessary additionally to consider the test referred to in G2/10.
In the light of this answer, it is clear that the answer to question 2 would be that G1/03 is not set aside. Where, however, an undisclosed disclaimer does not meet the criteria of G1/03 (for example because it is relevant to the determination of inventive step or sufficiency of disclosure), then it is necessary to consider whether the amendment contravenes Article 123(2). In this situation the correct test for added matter is the ‘gold standard’ as set out in G3/89. If it becomes necessary to answer question 3, we contend that in view of the above answers there is no need to modify the gold standard, but only to apply the test set out in G3/89 in the correct manner, namely to consider the technical content rather than the literal wording of the amended claim. www.cipa.org.uk
30/03/2017 21:25:59
NEWS
Undisclosed disclaimers should be permitted in the circumstances laid down in G1/03 G1/03 made a comprehensive review of the various situations where undisclosed disclaimers may be used and concluded that in the case of ‘undisclosed disclaimers’ i.e. where there was no basis in the application as filed for the disclaimed subject-matter, these could be permitted in very limited circumstances, namely for the purposes of restoring novelty in respect of a document cited under Article 54(3) EPC or an accidental anticipation under Article 54(2) EPC, or to remove subject-matter which is not eligible for patent protection e.g. under Article 53 or Article 57 EPC. Such disclaimers are important to enable an applicant to delimit an application from prior art which he or she was not (or was deemed not to be) in a position to know about at the time of preparing and filing their own application – namely a prior disclosure under Article 54(3) EPC or an accidental anticipation under Article 54(2) EPC – or to take account of different laws in different jurisdictions (Article 53 EPC and Article 57 EPC). This provides a fair outcome for the applicant as well as certainty for third parties, and enables the proper functioning of the patent system. If these disclaimers are considered to be ‘almost by definition’ in contravention of Article 123(2) EPC, as suggested in the current referring decision, it will result in an unfair outcome for many applicants. For example, in the case of a conflicting application under Article 54(3) EPC, if the later applicant is not able to disclaim the overlapping subject-matter without contravening Article 123(2) EPC (as considered by the referring decision) then he or she will lose protection for subjectmatter to which he or she is entitled. Even if the applicant is in a position to adopt a narrower fall-back position, it is likely that this will nevertheless result in exclusion of some subject-matter which is not anticipated by the earlier application, and which the later applicant should be entitled to claim. In coming to its conclusions in G1/03 Volume 46, number 4
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COMMITTEE
the Enlarged Board certainly did not ignore the effect of the disclaimer in relation to Article 123(2) EPC, but on the contrary considered whether specific types of disclaimer would contravene Article 123(2) EPC as will be discussed in more detail below. The Enlarged Board reasoned that in certain situations the disclaimer was made for a legal, or non-technical reason and thus has no bearing on the technical information in the application or does not contribute to the invention (Paragraphs 2.1.3 and 2.6.4 of the reasons). Hence it concluded that such disclaimers do not contravene Article 123(2) EPC. In considering the possibility of disclaimers making a technical contribution, G1/03 states: “In defining the situations in which a disclaimer may be allowed in order to overcome an objection as indicated in points 2.1, 2.2 and 2.4, care has been taken to make sure that the reason justifying a disclaimer is not related to the teaching of the invention.” (Paragraph 2.6 of the reasons) and “Only the approach restricting disclaimers to limitations not contributing to the invention and thereby taking the decisive criterion from Article 123 (2) EPC rather than Article 56 EPC complies with the Convention”. (Paragraph 2.6.1 of the reasons). Thus, G1/03 sets out clearly and with detailed reasoning, the circumstances in which undisclosed disclaimers should be allowed in accordance with Article 123(2) EPC and when they should not. The Enlarged Board in that case also set out clear guidance for the drafting of disclaimers, namely that they should not remove more than is necessary to restore novelty or to disclaim subjectmatter excluded from patentability for non-technical reasons (Order, 2.2). Furthermore, the decision made it
abundantly clear that the disclaimer may serve exclusively the purpose for which it is intended and nothing more, so that a disclaimer must not be relevant for the assessment of inventive step or sufficiency, noting that: “A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds matter contrary to Article 123(2) EPC.” (Order 2.3).
How should Article 123(2) EPC be applied to claims including a disclaimer? According to Article 123(2) EPC: The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. EPO jurisprudence has determined that ‘subject-matter which extends beyond the content of the application as filed’ can be introduced not only by addition of features, but also by deleting features in such a way that the subject-matter remaining provides a new teaching, such as an intermediate generalisation of features that would not have been evident from the application as filed. In the referring decision, T0437/14 the Board is of the opinion that any disclaimer excluding ‘undisclosed’ subject-matter ‘almost by definition’ contravenes Article 123(2) EPC. They argue that: ‘If a whole is reduced by an undisclosed first part, the present board fails to see how the remaining second part could ever be regarded as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed.’ This would appear to be construing the amended claim in an extremely literal manner. The Board illustrated their point by reference to a bite taken out of an apple, concluding that ‘what remains is recognisably no longer the same apple APRIL 2017
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Second medical use issues – progress made and the road ahead
Litigation around the world concerning second medical use patents has gradually started to bring clarity for originators and generics companies alike as to the steps they need to take to enforce/avoid infringement of second medical use patents. However, a lot of work remains to be done to provide life sciences companies with sufficient incentives to undertake the necessary research and development on new uses for existing medicines. Furthermore, convincing the public that it is right that the same medicine for a new indication should cost more will be a challenge. By Brian Cordery (Associate) and Steven Willis.
T
he enforcement of second medical use patents is currently a very hot topic. The dispute concerning Warner-Lambert’s patent for the use of pregabalin to treat pain has been very active in Europe and elsewhere since 2014 and has clarified several issues in relation to the construction, infringement and validity of second medical use patents. Other cases involving pemetrexed and zoledronic acid have also provided useful clarification on several points. However, a number of issues remain unresolved. Stepping back, the issue of the grant and enforcement of second medical use patents is part of a larger issue for wider society – namely how to encourage life sciences companies to devote the necessary resources to investigating potential new uses for existing medicines. It is clear that: 1. investigating the potential of existing medicines for new uses is expensive and there is no guarantee of success; but 2. the last few decades have shown that sometimes a new and valuable use can be found for an existing medicine; and 3. bringing to market a medicine with an existing track record of clinical use should be less risky than a completely new medicine. Points 2. and 3. are of course beneficial to patients and those entrusted with their care. This article will consider briefly the pregabalin litigation and the lessons that can be learned from that saga. However, it will concentrate on the wider issue of how to encourage life sciences companies to expend the necessary resources to add new weapons to the physician’s armoury.
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www.cipa.org.uk
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ARTICLE
What is the goal? Ultimately it is to the benefit of society that new medicines are brought to market. If pharmaceutical products can keep individuals out of primary care and ideally in work (and thus paying taxes), this will invariably be less burdensome for society than having those individuals hospitalised or at home but unable to work. Of course it is also to the benefit and well-being of patients. To achieve this goal of finding new uses for existing drugs it is necessary to encourage pharmaceutical companies to invest in the research, development and bringing to market of new uses for existing medicines. This will almost inevitably mean providing the developer with a period of exclusivity for that use. However, it is equally important to ensure that this exclusivity should not restrict competition for other indications.
Success stories and missed opportunities There are dozens of instances of existing medicines being developed for new uses. For instance, finasteride was first marketed for the treatment of prostate disorders but was found to be effective in the treatment of androgenetic alopecia. Thalidomide was first developed for respiratory infections, then notoriously to relieve morning sickness in pregnant women. It was later found to be useful in the treatment of leprosy and much later for cancer. Daclizumab was first used in transplant rejection but has been found to be effective in treating certain types of multiple sclerosis. However, the fact is that for every success story, there are many examples of missed opportunities. For example, there are about a dozen bisphosphonate medicines used in the treatment of bone diseases. However, individual bisphosphonates tend to be used for restricted indications rather than for all the diseases that they would be likely to be effective in. Thus alendronate and risedronate are two very successful drugs in the treatment of osteoporosis but have never been properly developed for the treatment of bone cancers and other related indications.
SECOND MEDICAL USE
of medicines and provide a return to its shareholders. On average, originator pharmaceutical companies re-invest around 20% of their turnover into research and development which, on any analysis, is a considerable proportion of the revenue of a business. Developing and bringing to market a new use for a known medicine is inevitably less expensive than starting from scratch. However, it is still an expensive and time-consuming process. The Phase 3 clinical trials which will usually be required by the healthcare authorities to show that the medicine is safe and efficacious for the new use will likely cost hundreds of millions of dollars and take considerable time. The fact is that unless originators are given a period of exclusivity to make the outlay worthwhile, they are unlikely to expend the resource. The law makers have long been aware of the need to encourage the development of existing drugs for new uses and have, either directly or by virtue of a legal/judicial fudge, given some sort of protection to new uses through second medical use patents. However, the question remains whether second medical use patents are the right solution to this problem and, if they do not provide the complete answer, what other steps are necessary to provide sufficient incentives to originators?
Where are we now? The patent systems of most major countries provide for some sort of patent protection for new uses for existing medicines. There are four principal types of second medical use claim: •
•
•
Method of treatment claims – A method of treating Y comprising administering an effective amount of X (such claims are allowable in e.g. the US and Australia). “Swiss-type” claims – use of X in the manufacture of a medicament for the treatment of Y (such claims were permitted in the EPO and national patent offices in Europe (up to 2011) and are routinely granted in China, Japan and many other countries). “EPC-2000 claims” – X for use in the treatment of Y (permitted in the EPO and national patent offices in Europe since 2011). German second medical use claims – use of X in the treatment of Y (this type of claim seems to be idiosyncratic to Germany).
Why are opportunities being missed?
•
It seems that one of the principal reasons why opportunities to develop new uses for existing medicines are not being taken up is a question of economics. Although figures produced by industry bodies and their representatives vary quite widely, it is generally understood that it costs on average approximately US$1 billion to develop and market a new medicine from scratch. In return for this investment, the originator should expect to receive approximately 15 years of exclusivity in which time it can endeavour to make sufficient profit to invest in the research and development of the new generation
In Europe, there is a prohibition on method of treatment claims which was contained in Article 52(4) of the EPC 1973 and which was carried over into Article 53(c) of the EPC 2000. This exclusion was said to be necessary in order to preserve the freedom of medical practitioners to care for their patients. Bearing in mind this exclusion and also that, in general terms, novelty cannot be conferred on an existing product by ascribing a new use for that product, in 1984
Volume 46, number 4
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US UPDATE
USPTO
29 May 2000. This includes applications that are part of the program. PTA accrued is offset by any applicant delay where an applicant fails to reply to a notice within three months12. If a patent applicant, as part of this program, takes advantage of the full 12-month period to respond to a Notice to File Missing Parts, the application will automatically start in the hole for PTA by nine months. Stated differently, the USPTO has a nine-month buffer before any examination delays start to generate PTA. Because there is a significant amount of backlog at the USPTO, participating in this program, while giving a patent applicant breathing room upfront, may end up costing the patentee valuable protection down the road. This program was recently extended to 2 January 201813. In assessing whether to extend the Program, the USPTO requested comments on “whether the Extended Missing Parts Pilot Program offers sufficient benefits to the patent community for it to be made permanent or whether the USPTO should permit the [P]rogram to expire.14” Based on the “increase in the number of participants in the Program over the past five years,” the USPTO extended the Program15.
Fees for Missing Parts
Although the general requirements of the program have remained unchanged since its inception in 2010, an executed oath or declaration for publication purposes is no longer required as the regulations relating to them have since changed. Instead, a patent applicant must submit either an executed oath or declaration or an application data sheet containing the information specified in 37 C.F.R. 1.63(b)16. This extended program has the potential to benefit patent applicants who are cash-strapped or need additional time to test the market for its invention. But the additional 12-month pause must be weighed against the potential downside to PTA. For an invention with big market potential where the later days of patent term are critical, the approximately $5,000 of EOT fees may seem like pocket change. Composed on this occasion by Erin M. Sommers and Kassandra M. Officer of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com.
Amount
Total
Filing fee
$280
Search fee
$600
Examination fee
$720
Surcharge
$140
One-month extension of time (EOT)
$200
$1,940
Two-month EOT
$600
$2,340
Three-month EOT
$1,400
$3,140
Four-month EOT
$2,200
$3,940
Five-month EOT
$3,000
$4,740
Notes and references 1. 37 C.F.R. §1.53(b). 2. 37 C.F.R. §1.53(f). 3. Submission of the inventor’s oath or declaration may be postponed until the application is otherwise in condition for allowance. 37 C.F.R. §1.53(f). 4. Pilot Program for Extended Time Period to Reply to a Notice to File Missing Parts of Non-provisional Application, 75 Fed. Reg. 76401 (Dec. 8, 2010).
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5. Pilot Program for Extended Time Period to Reply to a Notice to File Missing Parts of Non-provisional Application, 75 Fed. Reg. 76401 (8 December 2010). 6. Pilot Program for Extended Time Period to Reply to a Notice to File Missing Parts of Nonprovisional Application, 75 Fed. Reg. at 76402. 7. Id. at 76404. 8. Id. at 76402. 9. Id. 10. Id. at 76401-402.
$1,740
11. Id. 12. See 37 C.F.R. 1.704(b). 13. Id.; Extension of the Extended Missing Parts Pilot Program, 81 Fed. Reg. 93669 (21 December 2016). 14. Request for Comments on the Extended Missing Parts Pilot Program, 81 Fed. Reg. 61195 (6 September 2016). 15. Extension of the Extended Missing Parts Pilot Program, 81 Fed. Reg. at 93669. 16. Id. at 93670.
www.cipa.org.uk
30/03/2017 23:31:23
ARTICLE
CHINA UPDATE
Patent security interest in China Security interests over patents must be registered with the Chinese State Intellectual Property Office (SIPO). As a result, there are interesting statistics, including the very substantial value1, of Chinese patents used as security. As well as reviewing these statistics, Toby Mak and Constance Rhebergen look at the criteria for registration and the impact of registering a security interest with some interesting contrasts, and reminder of the conflicts with laws in other jurisdictions. Notably however, only six security interests in favour of foreign entities were registered over the relevant period.
1. Editor: The effect of the requirement for registration is that statistics are visible (though whether they are complete is open to question). Of course, in practice, in, for example the UK, many patents and other intellectual property rights will be the subject of fixed or floating charges in favour of banks, which are not separately registered with the patent office (with further questions as to whether they are effective). Volume 46, number 4
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I
n China, intellectual property assets, including patents, have certain similarities to other property rights such as real estate and tangible property, and the owner is able to dispose of these assets in any legally allowable manner. Typical transactions involving real estate include buying and selling, renting, and mortgaging. Although patents are extensively the subject of buying and selling (assignment) and renting (licensing), mortgaging (granting a security interest or pledge) of patent rights is less common and often overlooked. Reasons contributing to this include the difficulty and expense in evaluation of security interest status of patents, uncertainty of the rights due to invalidation attacks, and the challenge of foreclosing on a security interest in IP rights to enable realization (whether the recovery of money or the transfer of the secured asset), particularly when compared with real estate. While intellectual property shares certain similarities with real estate and tangible property, the treatment of intellectual property differs in important aspects and is not intuitive. Therefore, expert advice regarding taking security over intellectual property should be included in the early stages of the development of any strategy to ensure optimization of rights and value, both for financial institutions offering financing and companies involved in transactions. Notably, while there are a large group of patent attorneys knowledgeable about patent prosecution, managing security interests in patents is not necessarily part of their training. Similarly, while corporate attorneys focus on security interests and financing, these specialist may be not be versed in the unique aspects of intellectual property. Identifying the right expert early in the process allows for structures and for drafting that will streamline efforts at a later date. The Chinese government has been actively promoting commercial uses of intellectual property including patents since 2008, and patent mortgage or security interests is one such use. Various governmental notices have been issued to regulate and promote these, see the panel on page 39. APRIL 2017
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CPD & EDUCATION
INSTITUTE EVENTS
Institute Events For more information and to book onto any event please see the CIPA website or email cpd@cipa.org.uk Thursday, 6 April 2017 Seminar
The York Meeting Time: 12.30–18.30pm Location: The Principal York, Station Road, York, YO24 1AA This year we will be holding the annual regional meeting in The Principal York Hotel; you can expect talks from Louise Edwards, Jane Lambert, David Bloom and an update from the IPO. Do not miss out on a fantastic opportunity to pick up three CPD points as well the chance to network with other IP professionals in the region. CPD: 3; Prices: £234 (members £156)
Monday, 10 April 2017 Webinar
Outside your comfort zone: software and patenting Time: 12.30–13.30pm
CPD: 1; Prices: £72 (members £48)
Tuesday, 25 April 2017 Webinar
IPO opinions service and revocation of patents Time: 12.30–13.30pm The IPO's patent opinions service allows parties to get an impartial opinion on matters relating to the infringement or validity of patent. The webinar will provide an update on how the service is being used and also provide advice to parties thinking
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CPD: 1; Prices: £72 (members £48)
APRIL 2017
Wednesday, 3 May 2017 Meeting
Bye-laws – Special Meeting Location: CIPA, 95 Chancery Lane, Holborn, London, London WC2A 1DT Notice of a Special Meeting to approve and adopt amendments to the Bye-laws, Wednesday 3 May, 2017 at CIPA Hall.
Wednesday, 26 April 2017 Webinar
EPO Oppositions and Appeals Time: 12.30–13.30pm Join Ilya Kazi, Mathys & Squire, for a lunchtime webinar covering opposition and appeal practice at the EPO with a focus on strategies for optimising the outcome for your client, whether you are acting for the patentee or opponent, and tips on effective interaction with the Opposition Division or Appeal Board. CPD: 1; Prices: £72 (members £48)
Michael Williams, partner at Cleveland, will present a talk about how the EPO treats applications in the software area. Michael will provide some examples and compare with the situation in the UK and the U.S, followed by some practice tips.
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of requesting an opinion or considering how and if to make observations. Phil Thorpe will also review recent changes to the service in particular the possibility now for the IPO to revoke patents after a patent opinion has been issued.
Thursday, 27 April 2017 Webinar
The CIPA UP/UPC Series: getting practical EP1
Wednesday, 10 May 2017 Webinar
The CIPA UP/UPC Series: getting practical EP2 Time: 12.30–13.30pm Getting Practical: managing the knowns and unknowns of the "opt-out". Welcome to Episode 2 of Getting Practical. Please note – as this is a CORE webinar, access to this will be FREE for members. This second ultra practical webinar uses the timeline of webinar EP1 to get to grips with the "optout" and “request for unitary effect”. Speaker: Pippa Allen (CIPA Litigation Committee, consultant Appleyard Lees) CPD: 1; Prices: £72 (members £48)
Time: 12.30–13.30pm Getting practical: what do I need to do, when and how? Welcome to the first edition of The CIPA UP/UPC Series. Please note – as this is a CORE webinar, access to this will be FREE for members. European Patent Strategy is adapting in the lead up to arrival of the UPC jurisdiction. The first of two ultra practical webinars presents patent attorneys with clear and simple actions and associated due dates Please look out for the 2nd Episode, Getting Practical: Managing the knowns and unknowns of the opt-out CPD: 1; Prices: £72 (members £48)
Tuesday, 16 May 2017 Webinar
Outside your comfort zone: patent searching Time: 12.30–13.30pm Highlighting some key free sources, such as Espacenet (EPO), PatentScope (WIPO) and Google Patents, this webinar will help you better understand the structured nature of the information within a patent document and how it relates to the patent search process, as well as provide awareness and tips to enable you to carry out effective and efficient patent searches and gain an insight into patents, held by other www.cipa.org.uk
30/03/2017 22:11:54
CPD & EDUCATION
INSTITUTE EVENTS
parties and their legal status, in support of your patentability, clearance and validity assessments. CPD: 1; Prices: £72 (members £48)
Thursday, 18 May 2017 Seminar
The Scotland Meeting 2017 Time: 12.30–18.30pm Location: Hilton Glasgow Grosvenor, 1-9 Grosvenor Terrace, Glasgow, G12 0TA This year we will be holding the annual regional meeting in Hilton Glasgow Grosvenor; you can expect talks from Pippa Allen of Appleyard Lees on the UPC and Unitary Patent, amongst others. Do not miss out on a fantastic opportunity to pick up three CPD points as well the chance to network with other IP professionals in the region. CPD: 3; Prices: £234 (members £156)
Friday, 26 May 2017 Webinar
UK & EU Competition Law Time: 12.30–13.30pm This webinar will give a brief introduction to the interrelationship of patent law and competition law and the legal framework for the latter. It will then give a round-up of the recent case law before the competition authorities and courts, including on licensing and nochallenge provisions (Genentech – Court of Justice), exclusive patent licensing terms (Qualcomm investigations) and patent settlement agreements (e.g. Citalopram – General Court; Paroxetine – Competition and Markets Authority), amongst others. In each case, the webinar will focus on practical issues for practitioners, and will seek to raise awareness of when competition law intervention may be a risk.
Friday, 1 September 2017
W/C 4 September 2017
Litigation Skills Course Location: venue to be confirmed
Introductory Patent Administrators’ Course
Registration for this course opens on Monday 31 July and closes on Monday 21 August. The online course opens on Friday, 1 September and the faceto-face course takes place on 4 and 5 November. The examinations will take place in London as follows: the written examination on 16 November and the oral examinations w/c 13 November.
Registration for this course opens on Monday 15 May and closes on Monday 3 July. The mock examination will take place between 4 December 2017 and 12 January 2018 with final examinations taking place on Thursday 25 January 2018 at 2.00pm. Results are issued by email on Monday 5 March 2018.
To register go to www.cipa.org.uk/patent-examination-board
Monday, 19 June 2017 Seminar
EPO Oral Proceedings 2017 Time: 08.00–17.00pm Location: Hallam Conference Centre, 44 Hallam Street, London, W1W 6JJ Our course is in two parts. The first is a remote learning module, in the form of pre-recorded webinars and an accompanying printed training manual. This part can be completed any time within a two-month window, at the student’s convenience. The second part is a one-day workshop which will take place in London on Monday, 19 June 2017. The workshop includes two mock hearings, one before an “examining division” and one before an “opposition division”. Contact cpd@cipa.org.uk.
Tuesday, 20 June 2017 Webinar
How to liaise with in-house attorneys: life on the inside Time: 12.30–13.30pm Book onto our webinar to listen to David Galaun from Cisco Systems who will be informing us what it is like to work as an in-house attorney at a large tech company. CPD: 1; Prices: £72 (members £48)
Thursday, 22 June 2017 Seminar
East Midlands Meeting 2017 Time: 12.30–18.30pm Location: Marriott Breadsall Priory, Marriott Breadsall Priory, Moor Road, Morley, DE7 6DL
Price: £468 Do not miss out on a opportunity to pick up CPD points as well the chance to network with other IP professionals in the region. CPD: 3.5; Prices: £234 (members £156)
CPD: 1; Prices: £72 (members £48) Volume 46, number 4
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