This Kat is lucky (or unlucky) to be "grounded" in his apartment in Shanghai due to the Coronavirus. But some of you may still be busy with your work. If you missed some of the amazing posts published last week in this blog, this Kat is now honoured to provide a summary.

Kan He looked into the decision of the Nanshan District Court of Guangdong Province in the Shenzhen Tencent v Yinxun case relating to an AI-generated work. The court held that the AI-generated work is protectable by copyright law since it is as a work of legal entities.

Eleonora Rosati discussed the decision of the UK Intellectual Property Enterprise Court in Response Clothing Ltd v The Edinburgh Woollen Mill Ltd case. The court, in the first UK decision to apply the CJEU Cofemel judgment, ruled that the fabric at issue is protected by copyright law. In so doing, it precluded any requirement of aesthetic appeal in assessing whether a work is to be protected under copyright law.

Chijioke Okorie discussed the South African Government's Communication to the WTO Council for TRIPS entitled: 'Intellectual Property and the Public Interest: The WTO TRIPS Agreement and the Copyright Three-Step Test'. This Communication was issued as a consultation with the WTO Member States (MS) on the flexibilities available for MS to craft copyright limitations and exceptions under the principles and objectives of the TRIPS agreement.

Riana Harvey considered the judgment of the General Court of the EU in the T-658/18 case concerning Hästens Sängar's trade mark application for its chequered figurative mark. The court agreed with he EUIPO that the mark applied for was devoid of any distinctive character for all of the goods and services applied for.

Eleonora Rosati reported on the eagerly awaited judgment of the CJEU in the Sky v Skykick case. The Court held that a trade mark cannot be declared wholly or partially invalid on the grounds of lack of clarity and precisions of its specifications.

Léon Dijkman separately shared his thoughts on this case concerning the issue of trade mark registrations suffering from a lack of clarity.

Rose Hughes summarised and reviewed the patent news, reports and commentaries on the Board of Appeal's decision in the CRISPR hearing (T-844/18).

Katfriend Gaëlle Béquet shared her thoughts on the CJEU's decision in the Generics v Competition and Markets Authority case (C-307/18), concerning the pay-for-delay agreement used in the pharmaceutical industry. Under such agreements, the patent holder pays generics to stay off the market or at least delay their entry. The Court held that such agreements are likely to violate competition law where reverse payments occur without justifiable explanation.

Tian Lu reviewed the book, 'The Future of Asian Trade Deals and IP', edited by Prof. Kung-Chung Liu and Prof. Julien Chaise. The book examines two important trade deals (CPTPP and RCEP), especially in light of their IP chapters.

Frantzeska Papadopoulou reviewed the book 'Research Handbook on Patent Law and Theory (second edition)', edited by Toshiko Takenaka, which offers a comparative approach by which salient issues of patent law are discussed from the principal vantage of three major jurisdictions: the US, Europe, and Japan.

Ieva Giedrimaite provided an overview of the guidelines of the UK Jurisdiction Taskforce on the enforceability of smart contracts.

Annsley Merelle Ward discussed the UKIPO's new guidelines, entitled "Intellectual Property and the Transition Period", concerning the application of EU IP after Brexit. In this transition period, the UK will remain part of the EU trade mark and the registered and unregistered Community design law systems.

Riana Harvey informed Kat readers in her Tuesday Thingies and Sunday Surprises of IP events and opportunities taking place around the world.

Neil Wilkof remembered his recently departed cat, Carmen, and pondered how we go about giving a name to our pets.

Never Too Late 250 [Week ending 26 Jan] Taking the measure of the prior art (T 1943/15) | New Year, New Feature! | Never Too Late: if you missed The IPKat last week | Tuesday Thingies | Book Review: Cambridge Handbook of Intellectual Property in Central and Eastern Europe | No Music Is "Free of Broadcasting Rights", French Court Rules | The right of the public to access documents v the right to confidentiality for marketing authorisation (MA) documents: Transparency wins out in yesterday's CJEU rulings | The Swedish Patent and Market Court issues its first dynamic blocking injunction | The United Kingdom will not transpose the DSM Directive | [Guest Post] IP Education Series #4 | Book review: The Innovation Society and Intellectual Property | AG Szpunar advises CJEU to rule that car leasing companies are not 'users' that provide a communication to the public

Never Too Late 249 [Week ending 19 Jan] Monday Miscellany | Do we need a referral to the Enlarged Board of Appeal on the novelty of selection inventions? | The Broad Institute's CRISPR patent hearing: Day 1, Setting the Stage | South Africa's Constitutional Court rules on whether patent validity can be used as both a sword (revocation action) and a shield (infringement action) in patent proceedings | An Infringement of IP Rights that is also a Breach of Contract is still an Infringement of IP Rights | Never Too Late: if you missed the IPKat last week | CRISPR hearing days 2-3: Board of Appeal poised to refer to the EBA? | The IPKat congratulates two new IP silks | A Creative Commons-Licensed Work Walks into a Copy Shop - Great Minds v. Office Depot | Katcall: Openings for InternKats! | Patent Injunctions Update: German Ministry of Justice publishes draft amendment to Patent Act and Hague Court of Appeal decides in further Philips FRAND cases | CRISPR hearing Day 4: Still a clear cut case of invalid priority, Broad Institute's appeal dismissed | Book Review: 3D Printing and Intellectual Property | Looking to catch up with the latest trade mark news? Here's the 2020 edition of Retromark

The lowering of the pass mark, and the less than sensitive way in which the "borderlining process" was announced (during EQE week), prompted considerable criticism (IPKat: BREAKING: 2018 FD4 (P6 - Infringement and Validity) Pass Mark Reduced). The strength of feeling against P6/FD4 was revealed by the hundreds of comments received here on IPKat. What was clear from these comments was not just the dissatisfaction with the way "Gantry-Gate" was handled, but the widespread frustration with P6/FD4 as an examination in general. In response to the backlash, the CIPA President announced that CIPA would be conducting a review of education and training (IPKat: Gantry-gate: CIPA releases statement on FD4/P6 (Infringement and Validity).

The review, christened the "Mercer Review of Training, Education and Assessment", was launched in December. CIPA members have been requested to submit their opinions to the Mercer Review by the 14 February 2020. The address for submitting responses is MercerReview@cipa.org.uk. The review is being chaired by Chris Mercer (Carpmaels and Ransford LLP). Details of the motivation behind the review can be read in January's edition of the CIPA journal. CIPA asks some very general questions, e.g. "Do you have any comments about the current knowledge, understanding and practice covered by the Final Diploma examination". Respondents are also encouraged to raised their own questions.

When beginning his review, Chris Mercer could do worse than taking a look at the IPKat comments (here and here). Readers who commented in March are encouraged to now submit their observations to the Mercer Review. As a starting point, here is a reminder of some of the main issues that were raised in the aftermath of Gantry-Gate.

The Middlesex Report

Many are frustrated that the previous review of patent attorney education, The Middlesex Report, was largely ignored by CIPA and the PEB. This previous and more narrow review identified serious failings in the examination system. Middlesex University was asked to look into the reasons for the low pass rate in the Final Diploma examinations (including P6/FD4). The report produced was damning. The papers were criticised for too much reliance on memorising obscure content, lack of relevance to professional work and inconsistent marking schemes.  However, little was done in the wake of the Middlesex Report to address these concerns.

Inadequate training and high fees

The training materials offered by PEB and CIPA are considered by many to be inadequate. The amount of training available to a candidates will be highly dependent on their employer, and whether the employer is prepared to pay for the expensive training courses. The provision of training is complicated by the fact that many patent attorneys who have scraped a pass in P6/FD4 consider themselves an expert in how to pass the exam. This leads to a Chinese whisper effect with respect to the correct exam technique. To this day, there are multiple (and contradictory) schools of thought with regards the "correct" way to approach P6/FD4 (do you construe every word? do you write an inventive step argument for every single claim? should you start writing after half an hour or two hours? how much time should you devote to DoE? do you get penalised for assessing inventive step by the problem-solution as opposed to Windsurfer/Pozzoli approach?).

Connected to the issue of training are the complaints about the ever increasing exam fees. Many firms will not pay for candidates to resit exams multiple times, forcing candidates to pay for resits out of their own pocket.

Fit for purpose?

Many commentators argue that P6/FD4 is not fit for purpose. The exam is criticised for not assessing whether a candidate is a competent attorney because of the form of the exam and the subject-matter of the inventions. Furthermore, a large number of European Qualified attorneys with many years of experience are none-the-less persistently incapable of passing P6/FD4.

Chris Mercer

The subject matter of P6/FD4 is always a mechanical invention. The examination has therefore often been criticised for favouring candidates who work in the mechanical field. Data provided by CIPA (from the Middlesex Report), purportedly showing that pass rates between technical fields was equivalent, were criticised. Quite simply, the sample sizes for these data was too small to draw any meaningful conclusions. In any case, one of the issues with the 2018 Gantries paper was undoubtedly the difficulty many candidates had in understanding the subject matter [Merpel is still not clear that she properly understands what a gantry is...]. One suggestion for preventing such an issue happening again in the future is for the papers to be stress-tested by recently qualified candidates from different technical backgrounds.

With regards to the relevance of the exam, there can be no doubt that an attorney who spends their entire professional life dealing with, for example, pharmaceutical or software inventions will find P6/FD4 largely irrelevant to their daily practice. This, in combination with the low pass rate, means that P6/FD4 isolates swathes of the profession. The risk of the CIPA qualification increasing in irrelevant is heightened by the fact that many attorneys in the pharma and biotech field primarily (if not exclusively) interact with the EPO as opposed to the UK IPO. Many European Qualified candidates in these technical fields who repeatedly fail the UK exams probably begin to ask themselves why they even need the UK qualification.

Switch to a university style exam ?

Some have suggested that the Final Diploma could be replaced with a university course. However, others argue that a university style examination would not necessarily solve the problem that the exams are not fit for purpose. The PEB papers are at least drafted by patent attorneys. A university professor of IP would have limited, if any, experience of drafting, prosecuting or of carrying out a infringement and validity opinion. A university, it is argued, would therefore not be in the best position to judge fitness for practice. On the other hand, a university could of course employ patent attorneys to run the course and set the exam. The difference from the Diploma would be that training would be consistent. Another alternative to the 5 hour closed-book P6/FD4 exam would be for the assessment of infringement and validity to take the form of coursework.

An inadequate appeal process

Should a candidate be unsatisfied with their mark in an examination, PEB offers an appeal process: the "Enquiry about results (EaR) policy". However, this process is expensive and appears to require Examiners to take only a cursory review of candidates paper. There are three stages to the review process. Crucially, at no point in this process does the candidate receive a copy of their marked exam script. (It is none-the-less possible to obtain a copy of your exam paper using a Freedom of Information (FOI) request. Such requests can be revealing, particularly with regards to the different marks awarded by different examiners for the same paper.)

At Stage One of the EoR, a candidate may pay ~£120 to have PEB check that they have counted up the candidates marks correctly. In other words, £120 for the Examiner to check that the number of ticks on the paper correspond to the final mark. Crucially, candidates are only informed if there is a change in their mark if that change makes the difference between a pass and fail.

At Stage Two, a candidate may pay a further ~£400 for a PEB examiner who was not involved in the original marking of the candidate's paper to review their paper. The outcome from this review is often far from satisfactory. From a number of anonymous sources, this Kat has seen Stage Two reviews that consist of no more than a short paragraph containing typos and general statements such as "Marking scheme ultimately applied fairly by examiners".

At Stage Three, a candidate may pay a further £500 to check whether the procedure in marking and the EoR has been followed correctly. In other words, Stage Three does not involve any further assessment of the candidate's answer.

The appeal process for the UK exams can be compared to that which is available to EQE candidates. A dissatisfied candidate can file (an admittedly expensive) appeal to the Disciplinary Appeal Board. They can then argue their case at oral proceedings, and receive a fully reasoned and written decision by a body independent from the Examination Board (see for example: IPKat: EQEs - don't speculate beyond the content of the paper (D 11/18)).

Have your say

IPKat understands that the problems with P6/FD4 is an emotive issue. The Mercer Review is hopefully an attempt by CIPA to acknowledge that there is a problem. The Review also attempts to address the issue of patent attorney education more broadly. Let's take this opportunity to provide constructive feedback and suggestions to CIPA, in the hope that CIPA are prepared to consider meaningful reform. Send your comments to MercerReview@cipa.org.uk. Those who wish to submit comments anonymously may also contact the CIPA Informals: informalsyellowsheet@gmail.com. The Informals have offered to collate submissions.

Update (7 Feb 2020): Many thanks to a Katfriend for providing a copy of the Middlesex Report! The full report can be read here. [If the link doesn't work, try a different browser]

Finally, here is one of this Kat's favourite comments from last year, provided by IPKat reader "Ron". Ron takes us on a tour of "P6 through the ages", reminding us that the problems with P6/FD4 go back a long way. Over to Ron:

"Since retiring, examinations are now only of academic interest: however, I have some sympathy with P6 candidates, having passed on my 11th attempt! I sat the very first P6 exam (the one where candidates were supplied with actual examples of the prior art paper clips etc.) and got 47%. I found that my paper clip exhibited no barbing action whatsoever, and noted the fact in my script; however I later heard through the grapevine that anyone not considering that the paper clip exhibited barbing action, would not pass. On testing various paper clips in the office, while some did exhibit a definite barbing action, others did not. Ironically, it is possible that, had I had a "barbing" paper clip (as the examiner presumably did), I might well have passed on my first attempt.

In subsequent years my P6 marks exhibited an almost perfect negative correlation between my increasing experience in real-life infringement and validity issues and my P6 marks. Part of my problem lay with the fact that my trainers taught the techniques they had successfully used when they had qualified, and fashions had changed.

One always used the "Table" method, where the answer could consist mainly of a table. Another used the method of breaking long claims into lettered sub-paragraphs for easier referencing of features. The year I tried this, examiners' comments said that this approach was calculated to annoy the examiner. Another year a fellow I was working with who had set and marked several of the pre-JEB I&V papers corresponding to P6, gave me a tutorial. His approach, which was indeed used by our Inns Of Court counsel, was to identify 5 or 6 key features and concentrate on them, only briefly addressing the minor points. I think I got 19% that year.

Then there was the oil seal question with its physically-impossible Escher-like drawings, one side of one figure showing upstanding ridges, the other side showing recessed valleys, with the lines depicting the peaks of the ridges of one side mysteriously turning into the valleys of the other side. I don't think the examiners liked my comment that the omnibus claim (covering the invention as shown in that figure of the drawings) couldn't possibly be infringed as it related to something that it was impossible to construct. That year my supervising attorney did complain to the JEB, but it transpired that the exam scripts had been destroyed by a secretary who needed the space. At least it did prompt them to institute an appeal procedure, having belatedly realised that none actually existed. The JEB could see nothing wrong with the drawings, which from my viewpoint as a professional engineer well versed in the production and reading of mechanical engineering drawings, was somewhat alarming. I did knock up from Plasticene in 10 minutes the two different configurations and two sets of drawings, one of which depicted what the JEB said was impossible to create using engineering drawing conventions. Quis custodiet ipsos custodes?

Then there was the brick question. The set of drawings in the copy of the question with examiner's comments that appeared in CIPA, differed from the drawings supplied to candidates, giving rise to doubt as to which set the examiners had based their marking on.

In the mid-1990's I attended the CIPA panel meeting to discuss P6 with students. The report in CIPA did not mention the disagreement between the panel as to the appropriate form of answer. One said that brief notes were all that was required, whereas another said that such notes should only be the basis for a more fully written-out answer. Attendees were left none the wiser as to what was required.

I passed when tutorials were organised, hosted by those actually doing the marking, so you could find out what style of answer was in fashion that year and give them what they wanted.

Back numbers of CIPA show that there was much criticism of the pre-JEB exams in the 1970's. Plus ça change, plus c'est la même chose."

As with any disclosure, the disclosure of a drawing used in a novelty attack should be clearly and unambiguously derivable. In order to assess whether a measurement in a drawing is clear and unambiguous, it is necessary to assess what technical teaching a skilled person could be said to derive from the drawing (T 204/83). Consequently, dimensions derived solely by measuring a patent drawing (and not complemented by the description) are not considered part of the disclosure of a patent.

What about relative measurements? Are these disclosed by a patent drawing? In a previous decision of the Boards of Appeal, the relative size of two components deduced solely from the drawings in a patent were not considered part of the patent's disclosure (T 1664/06). Several other decisions, based on different facts, have reached the opposite conclusion. In one decision, the relative thickness of two drawing components were considered disclosed, as the relative thickness of the components was identified in the specification as an essential component of the invention (T 748/91). Practical technical teaching could thus be said to be derivable from measurement of the drawings. In other decisions, the drawing in a patent were considered “quite” precise (T 1200/05) or akin to construction drawings (T 422/95). Measurement of the drawings could therefore again be said to confer practical teaching.

Drawing

Is this latest Board of Appeal decision in line with all those of the previous Boards? A 2007 decision cited by the Board itself considered a measurement from the drawings of a patent as prior art for the purposes of an inventive step attack. These drawings were considered "precise", but the quality of the drawings compared to construction drawings was not considered. However, as highlighted throughout the case law on this issue, establishing rules for assessing the disclosure of drawings is difficult. As a general principle however, relying on measurements from drawings either for basis or a novelty attack can be an uphill battle. A picture may speak a thousand words, but words are clearer. 

In a dramatic development this morning, it seems that the Board of Appeal (3.3.08) were poised to seek clarification from the EBA on each of the three strands of the patentee's argument. The Board of Appeal indicated that the referral would be justified on the grounds that the points of law in question were of fundamental importance (Article 112 EPC). Thus, the Board of Appeal announced that it was their intention to refer questions on the issue of priority to the EBA. A break ensued to allow parties to consider their response. IP Magazine's twitter account reported that a referral had in fact been made. These reports turned out to be false [Merpel: Fake News!].
After the break, strong objections against a referral were raised by the Opponents. The Opponents argued that the questions should only be referred if the Board of Appeal believed the current EPO approach was incorrect. Particular, the referral could not even be contemplated unless the Board of Appeal intended to decide the case contrary to the established EPO case law on priority. As the Opponent's have pointed out, even a one off contradictory decision by a Board of Appeal does not necessarily justify a referral.

Following a heated debate, the Opponents succeeded in preventing a referral to the EBA today. The Board agreed that all three strands of the Patentee's arguments on priority should be discussed before a decision could be made on a referral. After lunch, discussion therefore moved on to the arguments concerning whether the EPO was competent to decide on the issue of entitlement to priority. The Board has also yet to consider the final strand of the argument, i.e. whether US law should govern priority entitlement in this case.

We are therefore holding our breath to see whether the Board will persist with their view that a referral to the EBA is necessary. 

Can a referral to the EBA be justified? 

The Board of Appeal has indicated that they would contemplate a referral on the ground that the issues at stake are of fundamental importance. The criteria for what constitutes an "issue of fundamental importance" was supplied by the EBA in G 1/12: "a point of law is...to be regarded as of fundamental importance if its impact extends beyond the case in hand. Such importance is established if it could be relevant to a large number of similar cases". As Opponent 1 pointed out, the "large number" of cases to which the issue could be said to be relevant in this case, are all cases of the Patentee that claim priority from the same US provisional...

If there were to be a referral from the Board of Appeal, this would arguably not seem to be keeping with the norms of EPO legal practice. It is hard to argue that there is not uniform application of the law of priority across the Boards. It is also difficult to see how their can be said to be an issue of fundamental importance (except to the Patentee). To refer the issue to the EBA would be extraordinary. In this Kat's view, if the technology to which the patent relates wasn't so valuable, and if the case wasn't so high profile, it seems highly unlikely that a Board of Appeal would even contemplate a referral.

Stay tuned to IPKat for Day 4 as the hearing continues.

Day 1: The Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage