Oddfellow November 2020

J.A. McStea, Teemacs GmbH

Oddfellow 2020_03

27 November 2020

Off and running again (??)

The Never-Ending Story that is the UPC, that is. As you all know, the German Federal Constitutional Court held that the vote to ratify the UPC legislation was unconstitutional, as only 35 members of the Bundestag were present to vote in the wee small hours, as opposed to the two-thirds of the 630 members actually required. The bill has been given its first reading and has now been forwarded to the relevant Parliamentary Committees for further consideration. The Germans are hoping to ratify and have the UPC and the Unified Patent up and running by 2021. Given that further constitutional challenges can be expected, this may be optimistic. Ingve Stjerna is still there, saying that his other objections (i.e. those other than the lack of a quorum) have not been addressed. And a non-profit group, the Foundation for a Free Information Infrastructure, with a particular interest in preventing the patentability of computer software, has foreshadowed a constitutional challenge if its criticisms are not answered. Even some German supporters of the UPC think that the Bundestag is plunging recklessly into the unknown in its desire to get the show on the road.

The UK is of course out of the UPC, but is still proudly, loudly an EPC Contracting State. But for how long? Given that the British are apparently headed for a no-deal on trade with the EU (we shall fight them on the beaches, etc. etc.), they are keen to have one with the USA. Some of the details of this have leaked out, and apparently the Americans want British patent law to be more aligned with US patent law and practice. As I previously mentioned, this could put the UK in violation of the EPC and lead to its exclusion. CIPA has long loudly banged the EPC “we’re still in and we’re still wonderful” drum, and thus the drum-banging was replaced by alarm bells ringing.

As a result, CIPA and the IP Federation (the body representing the IP views of UK industry) jointly commissioned a study by the former Chief Economist of the UKIPO to assess the value of EPC membership to the UK. The study “The EPC and its impact on the UK economy and innovation”, appeared in the July-August 2020 edition of the CIPA Journal and concluded that the UK economy would be adversely affected by the UK’s leaving the EPC. Not to mention that it would be a disaster for the UK profession, much of whose work comes from EPO representation. The Prime Minister’s Europe adviser and Chief Negotiator has now advised that the UK Government “would ensure that the UK’s international trade agreements were consistent with the UK’s existing international obligations, including the EPC, and that there was no intention of leaving it”. Of course, as the old saying goes, the road to hell is paved with good intentions, and the Prime Minister in question is Boris Johnson, who famously said “f*** business”, and who probably can be trusted roughly as far as one can throw the Queen Mary.

Of course, the proposed trade deal now has even more problems, courtesy of the forthcoming change in US Administration. The Good Friday Agreement that brought peace to Northern Ireland was negotiated under the auspices of a Democratic President Bill Clinton, and a Biden Administration would not look kindly on the reimposition of a hard border between the two parts of Ireland, which is what the Johnson Government’s proposed violation of a signed agreement with the EU would do. House leader Nancy Pelosi has already said there’d be no deal if Boris went ahead. I suspect that Boris (like Trump, not big in the thinking department, apart from naked self-interest) was hoping for a Trump win, so that he could do a Trump and ride roughshod over agreements. An interesting December awaits.

The Madrid Agreement/Protocol is generally a wonderful thing for obtaining trade mark registrations internationally. As you will know, it is actually two parallel agreements with a common set of regulations. The Agreement is ancient, only slightly younger than the Paris Convention itself, and perhaps the whole thing shows it by being relatively inflexible. I found this out to my cost (literally) recently, when I was asked at very short notice (two weeks from the renewal date) to assume responsibility for a mark, renew it, and reduce both the number of classes and the number of countries. Getting my name on the record as representative took a week (Madrid doesn’t move that quickly), and a couple of days before the deadline, I submitted all the documentation and paid the fees, and that was that – or so I thought.

There was then this l-o-n-g silence of about a month – nothing had changed on the Register. So I prodded WIPO via the Madrid Contact link on the website. Back came a notice of an “irregularity”, which said that I had not entered the proprietor’s name correctly, and that therefore nothing could be done until this was corrected. Now what I had done was equivalent to having omitted the “Ltd” in a company name, so it was screamingly obvious that the proprietor of record and the one on the renewal documents were one and the same. But no, rules are rules. And, of course, this meant that (a) the classes to be cancelled hadn’t been cancelled and that the fees for these non-cancelled had to be paid in all of the countries, and (b) as the renewal hadn’t been made on time, a surcharge had to be paid. I finally got all of this done, and then wrote to WIPO, pointing out that it clearly had all been done on time, but for a minor and obvious error, and that a refund of the (substantial) extra fees was appropriate, as the punishment clearly did not fit the crime. But no, WIPO was very sympathetic, but no refund would be forthcoming, and so I had contributed handsomely to Madrid’s 2020 bottom line. Madrid has no equivalent of the PCT’s provision for correcting clerical errors or obvious mistakes. So, be careful with your Madrid renewals, particularly when close to the deadline.

So, CIPA decided to proceed with its qualifying exams and to move them on-line. This was a courageous decision at a time when there was so much uncertainty and so many unknowns in the equation. As it turned out, they reportedly went remarkably well, so much so that there’s a substantial body of opinion that says that they should always be done this way. Invigilation seems to have presented no problems, and CIPA didn’t go to the extent of some professional bodies who required the participants to take their laptops with cameras to the toilet with then to make sure that they didn’t cheat. It also makes the case for open-book exams, which makes a lot more sense than trying to memorise everything – after all, how many of us try to answer all of a client’s complex problem from memory? And, from my experience with open-book EQEs, I can vouch for the fact that you simply don’t have the time to look everything up from scratch. So COVID has opened a new world.

I reported on losing one old friend last time; this time I can report on losing two, which Lady Bracknell would perhaps have characterised as carelessness. I guess that, as an Officially Certified Old Git, I have to expect that this will happen with increasing frequency, until one day I will read my own (“Oh…that’s me…when did that happen?”).

Philip Grubb, former Sandoz/Novartis legal “wise man”, star CEIPI tutor and author of one of the more engaging IP books Patents for Chemicals, Pharmaceuticals and Biotechnology, died suddenly on 21 September. He had been retired for 15 years at that point, but had never lost his interest in IP. We would routinely meet at the regular Basel IP Lecture series. Two replacement knees slowed him up, but only temporarily.

The book is a good read, shot through with the well-read and literate Philip’s typical wit (such as pointing out to a Sandoz colleague that his proposed claim “a physiologically-acceptable substance stabilised in an acidic medium” covered a jar of pickled onions). Proud of his Scottish ancestry, he and his wife were enthusiastic members of the Basel Scottish Country Dance Group. He was also a great raconteur and writer of rhyme, which made him much in demand at Basel Burns Night celebrations.  The rhyme proclivity occasionally caused nervous flutters in the Sandoz Patent Department, in case any of the work-related ones should come to light. When a lady from a US Southern state took Sandoz to task for the alleged side-effects of a drug, Philip couldn’t resist it:

Oh, I come from Alabama with my lawyer on my knee,

And Im going to litigation, I’ll sue Sandoz, just you see!

I’ll sue Sandoz, they will pay for me,                                                                                         

 For I’ve come from Alabama with my lawyer on my knee

The lady apparently prevailed, but the victory was pyrrhic:

I sued Sandoz, ten bucks was all I got,                                                                                       

Meanwhile my blasted lawyer has bought another yacht!  

The pièce de résistance was an entire patent application written in rhyme, but unfortunately never filed. It is preserved on p. 148 here:


Carol Greaves was only 64 when she passed away on 29 September after struggling with terminal cancer. Sadly, I never met Carol, in fact I don’t think we even ever spoke on the ‘phone, but she was at one end of the line between ICI Plant Protection (now Syngenta) at Jealott’s Hill, Berks and ICI Australia Research, Ascot Vale, and I was at the other. We built up a considerable rapport over time.

I was sad when she left to work at the UK’s Ministry of Defence. She was clearly also sad, because she didn’t last a year at the MoD, but left to form a one-woman patent attorney practice in the West Country. This became a two-woman practice when she was joined by Andrea Brewster, and the little firm of Greaves Brewster has since blossomed rather well – how could it do otherwise with two such splendid ladies at the helm? Andrea, noted for a marvellous sense of humour, which manifested itself in a series of CIPA articles replete with West Country straw, gin and free biscuits, went on to be CIPA President and was more recently awarded the OBE for her sterling efforts at IP inclusivity.

So here I sit in relative isolation in my little office in Baselland. I have made one pick-up at Zug, and I can’t see myself going back there for work this year. We seem to be managing fine with on-line conferences. Baselland, my local canton, had the lowest rate of COVID-19 infections of any of the Swiss cantons (compulsory mask wearing in public places arrived relatively late), but no longer. However, life for us has been pretty normal, except that I didn’t make my proposed trip to Ireland to see my mother, and that we haven’t seen the younger ladies since February. I’m not sure how we’re going to manage Christmas, when they traditionally come to us, if Megan’s flying schedule doesn’t get in the way.  But I’m sure we’ll think of something.

Pleased to hear that Downunder is making a good recovery from the virus. Being an island certainly has its advantages, and the virtual house arrest to which you were subjected seems to have done the trick.

Finally, I wish you and yours all the best for the not-quite-so-festive season and for a much less interesting and infinitely more healthy 2021.

Tony McStea

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