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Trends and Events 2012

Document No: PUB 20/12
Posted: 14/02/2013

ISSN 2046-3049

Trends and Events is our annual publication in which the Federation reviews its previous twelve months’ activities. It provides an overview of those IP issues which engaged industry during that period and tries to look beyond current issues to identify future areas of interest, activity or controversy.

Additional Employee Inventor Compensation – A right too far?

Document No: PUB 20A/12
Posted: 08/03/2013

The issue of employee inventions and the extent to which employee inventors should be compensated has in recent times become a hot topic in the UK. Since the Patents Act 1977 there has been a statutory right for employees to be awarded additional compensation over and above their salary for patented inventions made by them during the course of their employment where "having regard among other things to the size and nature of the employers undertaking, the invention or the patent for it (or the combination of both) is of outstanding benefit to the employer; and, by reason of those facts it is just …" for an award to be made.

An Update on the America Invents Act (AIA) and Strategies to Consider

Document No: PUB 20B/12
Posted: 08/03/2013

The America Invents Act (AIA), the greatest change to American patent law in over 150 years, was enacted in September 2011, but many first-inventor-to-file (FITF) implementing rules were just recently proposed in July 2012, as the US patent system prepares to transition to a first-inventor-to-file (FITF) system on March 16, 2013. In anticipation of this 2013 transition, there are three helpful perspectives with which to view the implementation of the AIA’s FITF system: (1) the perspective of pre-AIA US patent filings before March 16, 2013; (2) the perspective of post-AIA US patent filings with “effective” filing dates on or after March 16, 2013; and (3) the perspective of transitional US patent filings filed in the US Patent and Trademark Office (USPTO) on or after March 16, 2013, but with an “effective” filing date before March 16, 2013. This third perspective takes into account: a US patent application filed on or after March 16, 2013 which claims a benefit of priority under the Paris Convention to an earlier filed non-US application; and/or a US patent application filed on or after March 16, 2013 as a National Stage application of a PCT (Patent Cooperation Treaty) application filed before March 16, 2013. Understanding the proper “perspective” which applies to each US patent application filing will be critical to building a strong US patent portfolio as the perspective will impact, for example, the scope of relevant prior art and attendant duty to disclose information to the USPTO, and an appropriate claim drafting strategy.

Proposal for Collaborative Search and Examination (CSE) in the PCT

Document No: PUB 20C/12
Posted: 08/03/2013

Collaborative search and examination (CSE) has been the subject of prolonged support by the Federation, beginning with a presentation by a Vice-President in June 2007 at an international Colloquium on Patent Quality in Amsterdam, and in 2012 involving contributions by the President at similar events in London and Warsaw. Since 2010, support for CSE has been given also by the International Chamber of Commerce (ICC), which has been valuable because of ICC’s relationship with WIPO.

In December 2011, the Government published proposals for implementing a number of the recommendations relating to copyright which it had accepted in its August 2011 response to the Hargreaves Review of IP and Growth. Simultaneously Baroness Wilcox, the IP minister at the time, launched a Government consultation seeking views on these proposals.

European Patent Office (EPO) Update

Document No: PUB 20E/12
Posted: 08/03/2013

Users welcomed a slowing of the pace of amendment of the European Patent Convention (EPC) itself, as the EPO digests the ramifications of previous changes. This did not mean that the EPO rested on its laurels in 2012 and in other areas it was active in ways that users welcome, such as the innovations in the area of machine translations.

EU Patent Reform

Document No: PUB 20F/12
Posted: 08/03/2013

In 2012, the Unitary Patent and Unified Patent Court (UPC) dossier has been among the Federation’s highest priorities, with major developments notwithstanding the breakdown of negotiations at the Competitiveness Council meeting in Warsaw in December 2011 over the location of the Central Division of the UPC.

IP Federation biographies

Document No: PUB 20G/12
Posted: 08/03/2013

Dr Bobby Mukherjee is a qualified UK and European Patent Attorney with over 16 years’ experience of IP work gained in private practice and at BAE Systems plc. He is currently the Chief Counsel – IP & Technology Law, BAE Systems. He has represented his current employer on the Patents Committee and Council of the IP Federation for some of those years.

Revision of the rules for the assessment of licensing agreements for the transfer of technology

Document No: PUB 20H/12
Posted: 08/03/2013

On 6 December 2011, the European Commission launched a public consultation for the revision of the current framework for the assessment of technology transfer agreements, including the Technology Transfer Block Exemption Regulation (TTBER) and its corresponding Notice, scheduled to expire in April 2014.

Patent Box – The Basics

Document No: PUB 20I/12
Posted: 08/03/2013

If you pay UK corporation tax and develop your own products but still haven’t taken a look at the Patent Box, you really should. From April 2013, companies which satisfy specific criteria will be able to claim an additional deduction against their taxable profits, effectively taking the tax rate applied to a proportion of their profits down to 10%. There will be some companies for whom the new Patent Box will make no difference at all but, equally, there will be some for whom it will offer a relatively easy way of reducing their tax burden.

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