CIPA
judgment is expected later this year. Allied to this
Litigation
procedures, more parties will be interested in
is a framework for a European Community Patent, agreeing to use this procedure.
Some of the biggest changes in 2009 came in
which is providing a real step forward from the
litigation. The EPLA is certainly a change worth
Community Patent Convention. There are still
Finally on litigation, I should note that the House
waiting for.
some difficulties to be resolved, such as language
of Lords saw its last hearing in 2009 and has now
issues. However, there is considerable political
been replaced by the Supreme Court, in a different
The UK is privileged at the moment to have a
will in the EU to see it achieved this time.
building, but with the same judges.
large group of judges who specialise in intellectual
property litigation, including Justices Christopher
The EPO has seen another significant change
Floyd, Richard Arnold and David Kitchen, and
the Chartered Institute:
in 2009, with the confirmation that Alison
Lord Justice Robin Jacob, all of whom have years
international relations
Brimelow will not remain for a further term as
of experience in patents. The quality of decisions is
CIPA has been closely involved in many recent
president and the current deadlock in selecting a
generally regarded as very high, and practitioners
important developments, either making
new president.
feel that there has been a shift towards upholding
representations or in consultation, or in actively
patents more frequently than in the past.
Regulation
promoting changes. In addition, CIPA has enjoyed
contact with many colleagues and professional
Over the past 20 years, the UK patent attorney
Having judges who have previously been
organisations from other countries, and sees this
profession has significantly expanded its range of
practising IP lawyers has not, however, insulated
as a major role. Businesses in the UK have shown
practice. One such area is litigation, where patent
the profession from concerns about the cost of
increasing interest in the Asian economies—both
attorneys can appear in the Patents County Court
patent litigation and, in particular, the impact
in terms of business there and the flow of products
and, subject to further qualification, can also
that high costs of litigation have on whether small
and services from Asia to Europe. This has been
represent parties in the High Court.
and medium-sized businesses can enforce their
intellectual property rights.
a focus of attention for CIPA and its members,
During this period, government regulation
including constructive discussions with Chinese
first diminished and then recently increased.
2009 saw a major development, as the Intellectual and Korean patent attorney associations.
Meanwhile, CIPA has significantly enhanced its
Property Court User’s Committee—with support
professional conduct framework for members:
from all sides of the intellectual property
modernising the professional conduct rules
profession—developed proposals for streamlined
Alasdair Poore is vice president of the Chartered
and procedures, and introducing additional
litigation, which are likely to see costs of litigation
Institute of Patent Attorneys and head of intellectual
requirements such as continuing professional
in the Patents County Court ‘slashed’. A cap will
property at Mills & Reeve LLP. He can be contacted
development (CPD). CIPA has also supported
be imposed on recoverable costs of a fraction
at: alasdair.poore@mills-reeve.com
this CPD by providing frequent seminars by
of the typical current costs of patent litigation
and for its members. In 2008, over 50 percent of
in the High Court. The aim is that where
CIPA members attended at least one CIPA CPD
small and medium-sized businesses would be
seminar, and members see these seminars as a key
inhibited from enforcing their patent or other
component of their professional development.
intellectual property rights, they will be able to
bring proceedings in the Patents County Court,
The government has now implemented much under a similar procedure to that envisaged for
more comprehensive regulation. CIPA has been the European Patent Court. This has been of
appointed as the Approved Regulator for patent particular interest to CIPA, as CIPA fellows can
attorneys. The new regulatory arrangements appear in the Patents County Court, and the
took effect on January 1, 2010. Under these proposals are seen as an opportunity for clients to
arrangements, CIPA and the Institute of Trade enforce rights on a cost-effective basis, if desired,
Mark Attorneys have established a regulatory by using just a patent attorney as representative.
Alasdair Poore
body, IPReg, which manages regulation jointly This year will see these proposals implemented.
for the two institutes. Michael Heap remains
Alasdair Poore is a fellow of the Chartered
chairman of IPReg and Ann Wright has recently
The UK IPO has revised its tribunal procedures
Institute of Patent Attorneys and currently
been appointed chief executive.
in order to streamline these and to ensure that
vice president of CIPA, and a partner in the
substantive hearings take place within 12 months law firm, Mills & Reeve LLP. He qualified as
IPReg is required to act independently of CIPA of a counterstatement. The revised procedures a patent attorney while working with Shell
and the ITMA, and has already taken on the include early written preliminary evaluation of International and since 1986 has worked in
role of reviewing and consolidating professional the merits of a claim, very active case management
private practice specialising in intellectual
rules, requirements for continuing professional and target dates for hearings. Proceedings remain
property litigation, commercial agreements,
development and arrangements for client care. subject to the award of only nominal costs. The
and mergers and acquisitions. He is now
CIPA sees this as a significant development, in impact of these changes should be to make the
head of intellectual property at 400-lawyer
particular because it is clear that transparent UK IPO an attractive forum for resolving some
firm Mills & Reeve LLP, having been attracted
professional standards not only increase the disputes. Currently, these include revocation
in 1995 to the 'hot bed of hi-tech' and one
of the key technology clusters in Europe,
quality of service to clients, but also ensure that the proceedings and declarations of non-infringement
in Cambridge, to set up their intellectual
profession remains robust and vibrant, something (as well as ownership disputes), and infringement
property department.
which is particularly relevant with the increasing claims by agreement between the parties. Perhaps,
importance of intellectual property worldwide. in this adverse economic climate, with improved
www.worldipreview.com World Intellectual Property Review Digest 2009 21
Page 1  |  Page 2  |  Page 3  |  Page 4  |  Page 5  |  Page 6  |  Page 7  |  Page 8  |  Page 9  |  Page 10  |  Page 11  |  Page 12  |  Page 13  |  Page 14  |  Page 15  |  Page 16  |  Page 17  |  Page 18  |  Page 19  |  Page 20  |  Page 21  |  Page 22  |  Page 23  |  Page 24  |  Page 25  |  Page 26  |  Page 27  |  Page 28  |  Page 29  |  Page 30  |  Page 31  |  Page 32  |  Page 33  |  Page 34  |  Page 35  |  Page 36  |  Page 37  |  Page 38  |  Page 39  |  Page 40  |  Page 41  |  Page 42  |  Page 43  |  Page 44  |  Page 45  |  Page 46  |  Page 47  |  Page 48  |  Page 49  |  Page 50  |  Page 51  |  Page 52  |  Page 53  |  Page 54  |  Page 55  |  Page 56  |  Page 57  |  Page 58  |  Page 59  |  Page 60  |  Page 61  |  Page 62  |  Page 63  |  Page 64  |  Page 65  |  Page 66  |  Page 67  |  Page 68  |  Page 69  |  Page 70  |  Page 71  |  Page 72  |  Page 73  |  Page 74  |  Page 75  |  Page 76  |  Page 77  |  Page 78  |  Page 79  |  Page 80  |  Page 81  |  Page 82  |  Page 83  |  Page 84  |  Page 85  |  Page 86  |  Page 87  |  Page 88  |  Page 89  |  Page 90  |  Page 91  |  Page 92  |  Page 93  |  Page 94  |  Page 95  |  Page 96  |  Page 97  |  Page 98  |  Page 99  |  Page 100  |  Page 101  |  Page 102  |  Page 103  |  Page 104  |  Page 105  |  Page 106  |  Page 107  |  Page 108  |  Page 109  |  Page 110  |  Page 111  |  Page 112  |  Page 113  |  Page 114  |  Page 115  |  Page 116  |  Page 117  |  Page 118  |  Page 119  |  Page 120  |  Page 121  |  Page 122  |  Page 123  |  Page 124  |  Page 125  |  Page 126  |  Page 127  |  Page 128  |  Page 129  |  Page 130  |  Page 131  |  Page 132  |  Page 133  |  Page 134  |  Page 135  |  Page 136  |  Page 137  |  Page 138  |  Page 139  |  Page 140  |  Page 141  |  Page 142  |  Page 143  |  Page 144  |  Page 145  |  Page 146  |  Page 147  |  Page 148  |  Page 149  |  Page 150  |  Page 151  |  Page 152  |  Page 153  |  Page 154  |  Page 155  |  Page 156  |  Page 157  |  Page 158  |  Page 159  |  Page 160  |  Page 161  |  Page 162  |  Page 163  |  Page 164  |  Page 165  |  Page 166  |  Page 167  |  Page 168  |  Page 169  |  Page 170  |  Page 171  |  Page 172  |  Page 173