Oddfellow November 2021

J.A. McStea, Teemacs GmbH

Oddfellow 2021_3

Bubendorf 25 November 2021

Exams drive us up the wall                                                                                                                             What is the fairest test of all?

CIPA is seeking to transform its exams from a rite of passage/trial by fire into something actually meaningful in terms of real-life usefulness. To this end, it commissioned a review chaired by senior UK attorney Chris Mercer. The basic desire was to produce a qualification system that would not only more accurately reflect a real-life working environment, but that would also, among other things, encourage diversity and lead to a more inclusive profession, and create a level playing field for foundation level qualifications whilst retaining a diversity of qualification routes. The review was published in the September 2021 CIPA Journal. A CIPA webinar on the subject, with Chris Mercer and a student representative participating, demonstrated an impressive commitment to making the system better. Clearly there are a lot of bumps in the road ahead, but, as the old Chinese proverb says, a march of a thousand miles begins with the first step. The Review can be accessed here.

It was also the subject of one of CIPA’s amusing and informative web blogs “Two IPs in a pod”, which can be accessed here.

The exams have always been a particular interest of mine, largely because I have a distinguished record of patent attorney exam failure that is second to none. So much so that, when I finally passed, then-President Trevor Beadle rang me to say that they’d been thinking of establishing a prize for the most persistent candidate. I guess it was that legendary Irish stubbornness, the one that refuses to admit that it’s dead even after the tombstone is in place, and that has caused That Larger Island Next Door so many problems over the last 800-odd years. I was in that awkward position of being fine in a work situation (or, if I wasn’t, I have proved Phineas T. Barnum wrong, and it really is possible to fool all of the people all of the time), but hopeless in an exam room. So, something wrong with the system or something wrong with me? Probably a bit of the former and a lot of the latter. I have tried hard to fix me, and hopefully I have sort-of succeeded. I gather that the Australian examination system has also improved considerably.

It needed to do so. When I started back in the Pre-Cambrian, the sillybus more or less said “learn the Act, learn the decided cases”, full stop, end of story. There was one definite indication, “candidates shall not be expected to refer to sections by number”.  And then came a question that referred to a section (“how does Section xyz affect this?”). When one student had the temerity to point this out to tutor Malcolm Royal, he snapped back, “It’s a very small Act! You should know it off by heart!” (I’ll bet that Malcolm actually did).

My favourite patent exam story comes from Doug Freckleton, ICI Australia’s patent attorney and Australia’s first in-house attorney. Doug had started with what was then Edward Waters and Sons, but had then deserted to ICI Oz pre-qualification, and was generally regarded by the profession as something not quite kosher. And he wasn’t passing the exams. Then Walter Scott arrived. Walter was The Patent Agent of ICI in the UK, then the biggest filer of patent applications in Australia (occupying a multitude of pages of the annual compendium in the Official Journal), and it all went through one large firm. Walter had the grand imperial manner befitting the Company name and status; he swept majestically into the offices of the firm and the partnership all fell grovelling on the floor before him. And Walter let it be known that it would be great if Mr. Freckleton were to pass his exams – and guess what happened next time around… Doug told this story with a great chortle.

Things had changed by the time my old Dulux boss Don Berryman did Patent Attorney’s Practice. One of the questions involved advising a major new client on how to handle IP matters. Part of Don’s answer was “set up an internal IP department”. Now there could have been no doubt in the mind of the examiner as to the identity of the candidate, but Don passed.

On the subject of identifiable candidates, on one Interpretation exam day, the Dandenong line fell in a heap, and I arrived over an hour late. So, I asked for a supplementary exam, which was awarded. I was Candidate No. S1! “Had you seen that one before?” asked examiner Daryl Mischlewski, when we bumped into each other at some do. I said I hadn’t. “Good!” he said, “I didn’t have the time to come with a new one!” (In my usual inimitable style, I failed it anyway).

But back to the CIPA Review. It’s also considering permanent electronic format. This is one change that was forced on the profession by COVID, and it has been both popular and successful. This year’s CIPA exams were as successful as last year’s. The EQE, as mentioned previously, had its problems, but is working to overcome them. The Mercer Review did not actually come to a definitive conclusion as to whether electronic exams would supersede paper exams, whereas the EPO seems determined to press ahead with the eEQE.

This, in turn, brings up the closed book v. open book question. The EQEs are open book, the CIPA exams are not, which latter I always thought was silly, as nobody on the job tries to regurgitate it all from memory. Some CIPA folk think that closed book means that you have to absorb the information, not merely look it up.  I wonder whether these people are “grandfathers” who never did the EQE – in the EQE, you simply don’t have the time to look everything up. I have never felt under such time pressure as in the now-defunct Part A of Paper D (Legal) – 10 short questions in 2¼ hours (no, I have no idea why). I only know that my hand was ready to drop off at the end. In other words, you have to know it, you don’t have the time to look it up from scratch. And open book means that the Examiners can be even nastier. In the days of closed-book EQE, if there was case law on a point, you’d write “case law”, now the wretches want the actual case reference.

So, one ratification to go before the UPC ball starts rolling in earnest. The one ratification needed is for the Protocol on the Provisional Application (PPA) of the Unified Patent Court Agreement (UPCA). Once done, this will kick off the provisional phase. This will involve the adoption of the secondary legislation and the Court’s budget, the completion of the electronic case management system including stress testing, and the process to select and appoint the judges of the Court. The legislation is currently proceeding through the Austrian Parliament. The Austrian Research, Innovation and Digitisation Committee has unanimously approved the bill, which now returns to the National Council for its second and third readings, and, if passed, will be considered adopted and Austria would be able to ratify the PPA. This is, of course, assuming that there’ll be anyone left alive in Austria to close the deal (see below).

The one possible fly in the ointment is the place (or rather absence) of London as the chemical/pharmaceutical court of the central division. The UPC Agreement’s Section 7(2) reads:

The central division shall have its seat in Paris, with sections in London and Munich. The cases before the central division shall be distributed in accordance with Annex II, which shall form an integral part of this Agreement.

Alexander Ramsay, the Deputy Director of the Swedish Ministry of Justice, who has been involved in the UPC project since 2008, is non-committal – he says simply that this is a matter for the State Parties to the Agreement. However, he is conscious of pressure from European industry for a swift entry into force of the UPC, and he is confident that a pragmatic solution will be found.

As previously mentioned, some German commentators argue that, as the UK is no longer an EU member, this is null and void, and Paris and Munich can do the work that would have been London’s until a venue is selected. Milan appears to be in pole position, but there is apparently interest from some other countries, including the Netherlands.  An interesting further possibility is Ireland. Ireland’s strong life sciences sector, coupled with its position as a common law, English-speaking country (55-60% of EP applications are in English), make it potentially a strong contender. However, Ireland has not yet ratified the UPC (a referendum to permit an appropriate Constitutional amendment is required), so it needs to get moving.

One of the great problems of the pharmaceutical and agrochemical industries is that you have to file before you know whether the thing actually works. Meaningful data generally only emerges long after filing. The question is, can this later-generated data be used to confirm inventiveness? The question arose in the case T116/18 in which Syngenta opposed Sumitomo, arguing that the claimed synergy was not made plausible in the EP application as filed, and that the experimental evidence could not be taken into consideration. The Board referred the following questions to the Enlarged Board:

“If for acknowledgement of inventive step the patent proprietor relies on a technical effect and has submitted evidence, such as experimental data, to prove such an effect, this evidence not having been public before the filing date of the patent in suit and having been filed after that date (post-published evidence):

  1. Should an exception to the principle of free evaluation of evidence … be accepted in that post-published evidence must be disregarded on the ground that the proof of the effect rests exclusively on the post-published evidence?
  2. If the answer is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have considered the effect plausible (ab initio plausibility)?
  3. If the answer to the first question is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have seen no reason to consider the effect implausible (ab initio implausibility)?”

It is pending as G2/21. Watch This Space…

Remember the business from last time, when the BASF group of companies sued Carpmaels & Ransford for a $US 1.2 billion loss of earnings as a result of C&R’s failure to file a notice of appeal on time? The UK High Court decided that BASF was entitled only to nominal damages (to be decided). Why? First of all, the judge rejected the claims of the secondary claimants (the BASF companies that would have actually sold the product, as opposed to the main company that owned the patent rights), meaning that only the main claimant was considered. BASF maintained that rival Johnson Matthey would have had to pay them licence fees to use the technology. The judge was not persuaded that the existence of the patent would have led to the vehicle manufacturers and/or JM making any different procurement decisions, observing that (a) JM’s products were preferred by automotive manufacturers, and (b) JM would have paid little attention to the patent, as such monopolies are rarely, if ever, exploited in the industry. So, C&R can probably afford a Christmas party after all.

I’m pleased to see that you’re making a recovery from COVID. Of course, you have the advantage of going into summer, whereas we’re going into winter. Things are so catastrophic in Austria that the Government has ordered a lockdown and compulsory vaccination, and Germany isn’t doing so brilliantly, as you can read from this article in Der Spiegel. As Switzerland is in danger of following these Germanic examples, we shall keep ourselves tucked away in the Waldenburg valley.

Which valley is currently one big construction site, from one end to the other. Endless numbers of very large machines digging endless numbers of very large holes and then filling them in again (I guess there’s more to it than that). The one just north of our village is so big that I wondered whether there was going to be a branch line to Melbourne. However, it appears that they’re not only replacing a 75 cm gauge railway line with a metre-gauge one, but also redoing the local associated infrastructure in a big way. As a result, my bike route to the Teemacs office changes regularly, as the builders find something new to dig up.  Still, it will all be over by Christmas – 2022. One more year of chaos to go…

So, my best wishes to all for Christmas and for a much healthier 2022.

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