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

Mentors sought for FD1 and FD4 resitters Informals Committee

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25 May 2018 • Are you ready for the GDPR? Lee Davies

Singapore: Rectification of the Register Gladys Mirandah

March 2018 / Volume 47 / Number 3

US update: inter partes review M. David Weingarten

Going Remote returns – Malaysia Lucy Holloway

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CIPA JOURNAL Editor Deputy Editors Publications Committee Production and advertising Design Cover design Contact

Alasdair Poore Sean Gilday; Jeremy Holmes Bill Jones (Chairman) Iain Ross, 020 3289 6445, sales@cipa.org.uk Neil Lampert Jonathan Briggs 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.

CIPA CONTACTS

Stephen Jones President

Julia Florence Vice-President

Tony Rollins Immediate Past-President

Chris Mercer Honorary Secretary

Committee Chairs Administrators Vicky Maynard; Business Practice (joint with CITMA) Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs and Copyright David Musker; Education and Professional Standards Simone Ferrara; IP Commercialisation Catriona Hammer; Informals Harry Muttock; 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. Membership Team Leader Dwaine Hamilton Membership Officer Frances Bleach Events Co-ordinators Grace Murray, Emma Spurrs Chief Executive Lee Davies Head of Media and Public Affairs Neil Lampert Executive Assistant Charlotte Russell Communications Officer Kristina Grinkina Head of Education Georgina Sear Education Projects Co-ordinator Angelina Smith Head of Finance Spurgeon Manuel Finance Officer Paul Brown Office Supervisor Lea Weir-Samuels General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents 32 30

10-15

UP FRONT

ARTICLES

EDUCATION

34 48

Non-institute events Life Sciences Conference

Singapore update

Rectification of the Register Gladys Mirandah, Suhaimi Bin Lazim

Examination Registration and Results Dates 2018 Institute events

Chief Executive’s report

GDPR and the Apprenticeship Levy Lee Davies 4

Council Minutes

Bristows team 30

Lee Davies

NEWS 6

Review of UK patent cases in 2017

US update

Inter partes review M. David Weingarten

UK patents fee changes

Kate Selwyn

PERSONAL

IPO update 7

Salary survey

Dawn Ellmore Employment 7 8

DECISIONS

India update

Gladys Mirandah

Foundation Certificate syllabi and examination format

Informals Committee

PEB 9

Qualifying examinations

Timetable 2018 PEB

Volume 47, number 3

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43 44

EPO decisions

Andrea Brewster Going Remote: Malaysia

IP Inclusive update

Benevolent Association AGM

Lucy Holloway

Bristows Trade marks

Bird & Bird

Announcements The not-so-secret diary

Barker Brettell

Mentors for FD1 and FD4 resitters Foundation certificate examinations in Singapore

IPO decisions

Letter to the Editor

Quality at the EPO

Beck Greener

Georgina Sear 9

Patent decisions

Andrea Brewster S.J. Funnell

THE PINKS 54-56 Courses and Events 56-72 Recruitment

MARCH 2018

CIPA JOURNAL

02/03/2018 20:06:47

Review of UK patent cases in 2017 By the Bristows team – Brian Cordery, Dominic Adair, Naomi Hazenberg, Emma Muncey, Manuel Rey-Alvite Villar

s the reality of Brexit sunk in and the UK marched towards splendid isolation or trudged towards a financial cliff edge, depending on one’s point of view, 2017 will be remembered by UK patent practitioners as the year in which the law on construction and infringement changed dramatically. The authors make no apology for devoting a considerable part of this review to an analysis of the Supreme Court’s decision in Actavis v Eli Lilly1 and the handful of first instance and appeal judgments that have subsequently applied various aspects of this decision. Preparations for the Unified Patent Court (the “UPC”) continued in 2017, notwithstanding the uncertainty delivered by the Brexit vote in 2016. Just when it seemed that there could not be any more surprises, it was the turn of the Germans to deliver a curveball: a challenge to the legality of the UPC regime brought in the German constitutional court by local IP practitioner Dr Ingve Stjerna. Our UPC author, Alan Johnson, provides his personal reflections on this and other UPC issues in the final section of this review. Although Actavis dominated the patent landscape in 2017, there were several other interesting decisions both on procedure and on substantive law, including:  The granting of the first Arrow declaration by the English courts following a decision of the Court of Appeal opining that such declarations are possible in principle.  The first judgment on FRAND royalty rates and a later FRAND injunction decision.  Long-awaited analysis of the principles laid down in Mayne Pharma2 as to the obligations of disclosure on a party seeking to rely on experiments in litigation.  Further references to the CJEU in relation to the SPC Regulation.3 Will the question of the meaning of “protected by a basic patent in force”4 ever be resolved?

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MARCH 2018

In terms of the number of decisions, 2017 was a little quieter than 2016, with several larger cases settling just ahead of trial. There were 62 substantive decisions in 2017, compared with 82 in 2016, and 78 in 2015. As with previous years, this review attempts to summarise the most important decisions on a topic-by-topic basis. The UK Patents Act 1977 is referred to as the “Act” and the European Patent Convention 2000 as the “EPC”. As ever, the authors have endeavoured to cover every important development that occurred during the course of the year. However, as this is a condensed summary, not every decision is mentioned.

Claim construction and infringement For a dozen years, the authors of this review have repeatedly stated that the law of construction of patent claims in the UK is governed by the single, “bedrock” question derived from the decision of the House of Lords in Kirin-Amgen, namely: what would the skilled person have understood the patentee to be using the language of the claim to mean?5 Furthermore, it was generally understood that this is all that needs to be assessed when considering infringement. Year after year we noted that, although they had never been formally disapproved or abandoned, the Improver6/Protocol7 questions belonged to a different era, and had, like the office fax machine, by and large fallen into disuse. In what was clearly the most important UK patent case of the year by a country mile, 2017 witnessed the renaissance of the Improver/Protocol questions, albeit in a modified form, in the decision of the Supreme Court in Actavis v Eli Lilly8 concerning pemetrexed. The facts of the case are well known. Put shortly, Lilly owned a patent claiming the use of pemetrexed disodium in combination with vitamin B12 to treat cancer. The background to the invention was that pemetrexed had been found to be an effective treatment for certain types of cancer but with significant www.cipa.org.uk

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UK PATENT CASES

Index Quotation of the year .................................................. 14 Claim construction and infringement Use of prosecution history as an aid to construction....14 Indirect infringement .............................................. 15 FRAND and competition defences .......................... 15 Validity Patentable subject-matter....................................... 16 Novelty ..................................................................... 16 Entitlement to priority and enablement.................. 17 Obviousness ............................................................ 18 Insufficiency ............................................................ 18 Added matter .......................................................... 19 Arrow declarations .................................................. 19 Supplementary protection certificates (SPCs) ........ 20 Damages Account of profits ................................................... 21 Employee compensation ......................................... 21 Tort of unlawful interference...................................22 Costs Indemnity basis .......................................................22 Procedural issues Jurisdiction ..............................................................22 Disclosure ............................................................... 23 Interim injunctions ................................................. 24 Stays ....................................................................... 24 Expedition............................................................... 25 Shorter Trials Scheme ............................................ 25 Public interest......................................................... 25

Issues from the IPEC .................................................. 25 Unitary Patent / Unified Patent Court ........................27 Looking ahead to 2018............................................... 29 The authors................................................................. 24

REVIEW OF 2015

side effects. The patent taught that administering pemetrexed together with vitamin B12 caused a noticeable reduction of those side effects. Actavis did not challenge the validity of the patent but sought a declaration of non-infringement (DNI) in respect of various other salts of pemetrexed, including pemetrexed dipotassium which will be used as the exemplar here. Actavis contended that the skilled person would understand very well the meaning of pemetrexed disodium and that, in contrast to terms such as “vertically”, the word on which Catnic9 turned, a clearly defined chemical substance did not allow for variance in interpretation. Actavis also sought a DNI in respect of certain other European designations of the patent. To the surprise of many practitioners, Arnold J chose to assess the issue of the construction and infringement using the Improver/Protocol questions10 and, having done so, found that there was no infringement, direct or indirect.11 On appeal, Floyd LJ, with whom the other judges agreed, held that there could be no direct infringement.12 Although he also used the Improver questions, Floyd LJ held that Lilly failed on questions 2 and 3 on the basis that, until he or she tested the dipotassium salt, the skilled person would not know if the salts worked in the same way and, besides, the skilled person would have understood that strict compliance with the term was an essential element of the invention. However, disagreeing with the trial judge, Floyd LJ held that sales of pemetrexed dipotassium would indirectly infringe the patent as the user was directed to reconstitute the lyophilised formulation in saline solution, which would inevitably lead to the presence of pemetrexed ions and sodium ions in solution. The Supreme Court hearing took place in early April 2017 and, like most Supreme Court hearings, was shown live on television. Although it may have failed to topple Strictly Come Dancing from the top of the ratings table, it was nonetheless interesting to observe, and evident from the debate, that change was afoot. The team of five judges, led by Lord Neuberger, was not going to deliver a judgment which simply stated that the current approach adopted by the lower courts was appropriate. The judgment was handed down on 12 July 2017. The immediate reaction of the profession was not unlike the tensecond silence that accompanied the largest explosion of 2017’s other big drama: Star Wars: The Last Jedi. Momentary shock and then mild disbelief. The Supreme Court had held that Lord Hoffmann’s approach to construction, as encapsulated in the bedrock question set out above, was out of step with article 69 EPC.13 Reflecting on the bedrock question, the Supreme Court held that, instead, a problem of infringement should be determined by addressing two issues through the eyes of the skilled person: 1. Does the product or process in question (“the variant”) fall within any of the claims as a matter of normal interpretation, i.e. applying the normal principles of interpretation of documents?

Volume 46, number 3

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MARCH 2018

CIPA JOURNAL

03/03/2018 01:12:55

US update Inter partes review time-bar determinations appealable. By M. David Weingarten

nter partes review (IPR) is a trial proceeding before the US Patent and Trademark Office (USPTO) intended to be a cost-effective alternative to litigation for challenging the patentability of one or more claims of a patent on certain prior art bases. IPR was introduced by the America Invents Act (AIA), replacing the former inter partes reexamination, and applies to any patent regardless of when it issued. However, AIA prohibits the Director of the USPTO (Director) from instituting IPR if the petition requesting the review is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging patent infringement.1 The AIA also provides that decisions of the Director on whether to institute IPR proceedings are final and not subject to appeal.2 Early this year, in Wi-Fi One LLC v Broadcom Corp, the US Court of Appeals for the Federal Circuit, sitting en banc, determined in a split decision that decisions by the Director to institute IPR validity challenges may be appealed to the Federal Circuit when such decisions relate to the timing of the petitions, rather than on the substantive merits.3

Background Broadcom filed petitions requesting inter partes review of patents owned by Wi-Fi One, LLC (“Wi-Fi”).4 Wi-Fi sought to avoid institution by arguing that the Director lacked authority to institute IPR by showing that Broadcom was in privity with defendants accused of infringement by the previous owner of the patents more than one year before Broadcom filed the petitions. Wi-Fi alleged the IPR petitions were therefore time-barred under §315(b). The Patent Trial and Appeal Board (Board) instituted IPR and issued final written decisions finding the challenged claims unpatentable.5 The Board also determined that Wi-Fi had not shown that Broadcom, the IPR petitioner, was in privity with the defendants in the infringement action, and, therefore, the IPR petitions were not time-barred.6 Wi-Fi appealed the final written decisions, arguing that the Federal Circuit should reverse or vacate the Board’s time-bar 32 CIPA JOURNAL

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ruling. A three-judge panel of the Federal Circuit rejected WiFi’s arguments as settled by Achates Reference Publishing, Inc. v Apple, Inc.’s,7 which held that such rulings cannot be appealed, and dismissed Wi-Fi’s appeal for lack of jurisdiction.8 Wi-Fi petitioned for rehearing en banc.

The Wi-Fi One decision In the en banc decision, Judge Reyna, writing for the majority and joined by Chief Judge Prost and Judges Newman, Moore, O’Malley, Wallach, Taranto, Chen, and Stoll, explained that there is a “strong presumption” favoring judicial review that will be abdicated only when “Congress provides a ‘clear and convincing’ indication that it intends to prohibit review.”9 Viewing the statutory language of the AIA, the legislative history, and the statutory scheme as a whole, the court found no clear and convincing indication to bar judicial review of time-bar determinations.10 The parties did not cite, nor was the court aware of, any specific legislative history that ‘clearly and convincingly’ indicates congressional intent to bar judicial review of the Director’s time-bar determination. In addition, the court found the natural reading of §314(d), which provides that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and non-appealable,” limits the reach of §314(d) to determination by the Director as set forth in §314.11 The only subsection under this section addressing the issues that are part of the Director’s determination is subsection (a), which identifies “a threshold requirement for institution” and as the Supreme Court recognized in Cuozzo,12 “grants the Director discretion not to institute even when the threshold is met.”13 Section 314(a) reads: (a) Threshold. The Director may not authorize an inter partes review to be instituted unless the Director determines that the information present in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. www.cipa.org.uk

03/03/2018 07:26:49

US UPDATE

In other words, the court explained, §314(d) is limited to “determinations that are focused on the patentability merits of particular claims.”14 In contrast, the court found that the §315(b) time bar is unrelated to the “Director’s preliminary patentability assessment or the Director’s discretion not to initiate an IPR.”15 Rather, the “time bar involves only the time of service of a complaint alleging infringement of the patent.”16 Section 315(b) reads: (b) Patent Owner’s Action. An inter partes review may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). The majority further stated that this reading of the overall statutory scheme is consistent with the directive laid out in the Supreme Court’s Cuozzo decision, which stated that §314(d) bars judicial review when “a patent holder merely challenged the Patent Office’s determin[ation] that the information presented in the petition… shows that there is a reasonable likelihood of success with respect to at least one of the claims challenged” or when “a patent holder grounds its claim in a statute closely related to that decision to institute.”17 Thus, the Supreme Court’s statement “strongly points toward

Notes and references

IPR

unreviewability being limited to the Director’s determinations closely related to the preliminary patentabilty determination or the exercise of discretion not to institute.”18 The majority found that whether a petitioner complied with §315(b) is not such a determination “as it has nothing to do with the patentability merits or discretion not to institute.”19 Further, the court held that time-bar determinations under §315(b) are fundamentally different from the procedural requirements stated in §§311-313, which relate to the Director’s ability to make an informed preliminary patentabilty determination, and are not “closely related” to the institution decision addressed in §314(a).20 Instead, the time-bar determinations are a “condition precedent to the Director’s authority to act.”21 The court, therefore, held that time-bar determinations under §315(b) are reviewable on appeal, breaking from the court’s prior practice and overruling Achates’s contrary conclusion.22 Judge O’Malley filed a separate concurrence because in her view “the issue presented for en banc rehearing ‘is much simpler than the majority’s analysis implies’.”23 Section 315(b)’s time bar “has nothing to do with the substantive adequacy of the petition and is directed, instead, to the Director’s authority to act.”24 Specifically, it “places a limit on the USPTO’s authority to institute IPRs that is based on a comparison of two or more dates” and is an “important procedural right” provided to patent owners by Congress.25 Therefore, she states that “allowing judicial review of erroneous determinations by the [USPTO] as to whether the §315(b) time bar applies would prevent the agency from ‘acting

IPR2013-00636, 2015 WL 1263010, at *4 (P.T.A.B. Mar. 6, 2015).

21. Id. 22. Id. at 21.

1. 35 U.S.C. §315(b).

7. 803 F.3d 652, 658 (Fed. Cir. 2015).

23. Slip op. at 3 (O’Malley, J., concurring)

2. Id. §314(d).

8. Id. at 659.

24. Id.

3. Slip op. at 21.

9. Slip op. at 15; see also Cuozzo Speed Technologies, LLC v Lee, 136 S. Ct. at 2140; see Lindahl v Office of Pers. Mgmt., 470 U.S. 768, 778 (1985); Block, 467 U.S. at 349–50; Return Mail, Inc. v U.S. Postal Serv., 868 F.3d 1350, 1357 (Fed. Cir. 2017)

4. The patents were owned by Telefonaktiebolaget LM Ericsson when Broadcom filed the IPR petitions. During the pendency of the IPRs, Ericsson transferred ownership of the patents to Wi-Fi. 5. The Director has delegated the authority to institute IPR to the Board. 37 C.F.R. §2.4(a), 42.108. This delegation of authority has been held constitutionally and statutorily permissible. See Ethicon Endo-Surgery, Inc. v Covidien LP, 812 F.3d 1023, 1033 (Fed. Cir. 2016). 6. Broadcom Corp. v Wi-Fi One, LLC, No. IPR2013-00601, 2015 WL 1263008, at *4–5 (P.T.A.B. Mar. 6, 2015); Broadcom Corp. v Wi-Fi One, LLC, No. IPR2013-00602, 2015 WL 1263009, at *4 (P.T.A.B. Mar. 6, 2015); Broadcom Corp. v Wi-Fi One, LLC, No.

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25. Id. at 6. 26. Id. at 7. 27. Slip op. at 4 (Hughes, J., dissenting). 28. Id. 29. Id.

10. Slip op. at 15.

30. Id.

11. Id. at 15-16.

14. Id.

31. Id. at 8-9; see also 35 U.S.C. §303(c) (“[a] determination by the Director . . . that no substantial new question of patentability has been raised will be final and nonappealable.”).

15. Id. at 17.

32. Slip op. at 9.

12. S. Ct. 2131, 2140 (2016). 13. Slip op. at 16.

16. Id.

33. Id. at 8.

17. Id. at 18.

34. Id.

18. Id.

35. Id.

19. Id. at 19-20.

36. Id. at 5.

20. Id.

37. Id. at 10.

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