Publications

Total Documents: 210

 

A week in the life (of an in-house patent attorney)

Document No: PUB 21A/21 Posted: 22 December 2021
With apologies to Samuel Pepys and Helen Fielding, the extract below is fictional and intended to capture the variety and challenge of life working as part of an in-house IP department.

Monday

Early start today – I’m meeting with a project team to discuss their latest developments. We filed a priority patent application last year and are now reviewing recently generated data to determine claim scope before foreign filing. We spend a fascinating couple of hours digging into the results and technology, it’s a highly competitive area so I think there may be filings from third parties, we need to be careful to maintain priority and I draw some timelines for the project team to try to explain why that matters. The project team also has some creative thoughts around names for the technology. Spend the afternoon drafting my new claim set and sending to the project team as well as setting up a call for next week between them and our trade mark attorney to discuss the naming. I start think­ing about a presentation I’m doing for the tech department next week on “IP basics”, this morning’s discussion really helped set out where there may be gaps in understanding the nuances of patent law and why it’s relevant to their work. Unusually for a Monday I’m out this evening at a local IP networking event. We don’t have as many events as London based firms, so it’s important to make local connections wherever possible. We often get in external speakers who are specialist in a particular area of law to help upskill our internal attorneys and this is a great way to meet them.

Tuesday

I bump into Bob in the coffee queue – he’s super excited about a presentation he’s giving later this week. He looks a bit sheepish when I ask if he’s cleared it with a patent attorney – I promise to look at it today if he sends to me asap. Spend the rest of the morning reviewing the slide deck and prep­ping a quick draft to put on file before Thursday. Speak to Bob about scope and we discuss what he can (and can’t!) say in the Q&A section. He’s travelling to the conference tomorrow, so we agree to meet up next week to review the work in more detail and file a follow up priority case and discuss terms for a watching search. Departmental meeting this afternoon on case law developments in our area – great discussion on how a recent UK court of appeal judgement could impact the way we prosecute our cases. We discuss data that we could ask the scientists to generate to help. My boss is going to talk to the head of R&D about adding extra arms to some of their standard experiments – the additional results will really add support to our claims. We have a great relationship with the technical side of the com­pany, it’s important to understand the business direction and objectives when developing IP strategy. This works both ways too – we spend time educating our senior leaders about IP and why it’s relevant.

Wednesday

A prosecution day today! One of my key cases recently entered national phase and it’s handled externally so I’ve got office action draft responses from outside counsel to review for about ten different countries. It’s interesting to see how similar law can be applied so differently between for example China, India, Brazil and Europe. I have an overall strategy for the case but need to really tailor my claims for local requirements, making sure I don’t lose sight of the critical scope we need in each country. Luckily our outside counsel uses local agents who are super knowledgeable and there’s also a lot of experience in various jurisdictions within the department that I can draw on.

Thursday

I have an opposition hearing in a month or so where I am leading the advocacy and I get in to find that we just received some auxiliary requests from the patentee. Spend the morning working through the file and my notes with my opposition buddy, thinking about the amendments and how we can address them. Then this afternoon we both sat down with our internal technical expert to talk about how the amendments (if granted) could be relevant the work that we want to do on a key product. Had to remind her that it’s a first instance hearing so we’re some time away from a final result, but we’re hopeful we’ll be successful. (Note to self – remember to contact communications ahead of time to prepare a Q&A in case the media picks up on the hearing.)

Friday

Catch up day today – the corporate and departmental things have been building up a little. I take a couple of compulsory learning modules on “conflicts of interest” and “bribery and corruption” then I review progress against my performance and development objectives as next week is my monthly check in with my manager. It’s also my turn to present at the case-law meeting next week so I take a tour through the IP blogs and the recent CIPA journal for interesting cases. Finally, I review my watches for third party publications and grants relevant to the projects I support – spot one that I mark for a potential opposition and set up a discussion with that project team next week. Off to the pub! Susan Chiappinelli, GlaxoSmithKline plc

Diversity and Inclusion

Document No: PUB 21B/21 Posted: 22 December 2021
The Question of improving diversity and inclusion in the UK's IP profession remains a key commit­ment of this organisation. Last year we planted a flag committing the IP Federation to do more in this area, and now we are making good on that commitment. Last year in The IP Federation Review we pointed to the dangers of the Covid-19 pandemic worsening accessibility to the IP profession and having an adverse impact on the number of available jobs. The likelihood was that this would particularly affect black, Asian and ethnic minority people who were suffering more from the impact of the pandemic and who are disproportionately over-represented in the poorer communities. School closures and classroom restrictions have had a very serious impact on the education of a generation of children, but especially those from under-privileged areas where additional support, which has been available to the better off, has been sadly lacking. This means that in the coming years more is going to have to be done to ensure that the huge talent pool which exists in under-privileged communities is not lost to industry and the IP world. As one of its founding members, the IP Federation has a longstanding association with IP Inclusive – the organisation created by Andrea Brewster to promote the cause of diversity and inclusion in the IP professions. In 2021, members of the IP Inclusive Management Board (IPIM), including the IP Federation, agreed to a reconstitution of IPIM with individual rather than organisational members in order to give IP Inclusive greater autonomy to achieve its objectives. However, this change does not mean that the link between the IP Federation and IP Inclusive is now any less strong. The IP Federation continues to be a critical friend and to provide related support to IP Inclusive. The IP Federation has now also created an internal working group dedicated to the furtherance of diversity and inclusion initiatives amongst its members. The working group, chaired by Gordon Harris (IPIM and Gowling WLG), also comprises IP Federation President, Sonia Cooper, Vikki Townsend (Rolls-Royce), Ruth Wright (BT), Julie Browne (Shell), Julie Dunnett (policy advisor, IPIM and formerly GKN), and Suzanne Oliver (policy advisor and formerly Arm). Several of the working group's first members are either individual members of the reconstituted IPIM or the advisory board that has recently been created. The connection between the organisations therefore remains at the heart of the IP Federation's work in this area. Employees of IP Federation members are also involved in various IP Inclusive committees. The working group members who are active in IP Inclusive are going to be working towards creating a version of the IP Inclusive’s Charter that underpins its activities and which allows IP Federation mem­bers to be able to sign up with confidence. A key object in getting IP Federation members signed up to the IP Inclusive Charter, as well as encouraging strong diversity policies within our member companies, is to enable them to use their leverage with professional firms that they instruct to drive diversity and inclusion metrics across the whole of the IP profession. As instructors of IP professionals – patent attorneys, solicitors or barristers – IP Federation members are in a strong position to require positive diversity and inclusion policies in the firms they instruct and to require sight of key metrics to assess performance. The working group will develop this proposal and possible methods of implementation through the year. One of the projects run by IP Inclusive is called "Careers in Ideas" (https://careersinideas.org.uk/). The objective of Careers in Ideas is to use mentoring and encouragement to open up the possibilities for careers in IP to people at all stages of their educational development, from school-children to post-graduate students. The IP Federation is a keen supporter of the work of the Careers in Ideas initiative through provision of funding for specific projects and IP Federation members also being involved in the Careers in Ideas task force. There will be continued discussions between the two organisations about how IP professionals from within the membership of the IP Federation can continue to be involved in Careers in Ideas and provide an insight into the in-house IP role in industry. There is no such thing as "too early" when it comes to raising awareness of IP as a career path. In2scienceUK (https://in2scienceuk.org/) is an outreach organisation that aims to provide young people from low-income and disadvantaged backgrounds with an opportunity to gain practical insight into the STEM sector as well as the knowledge and confidence to progress to university. This year, the IP Federation has supported the excellent work of In2scienceUK not only through sponsorship of a number of students participating in the In2scienceUK STEM programme, but also by IP Federation members conducting a workshop on Intellectual Property and careers in IP called “Intellectual Property, what’s that got to do with me?” as part of In2scienceUK’s summer workshop program. Our working group will continue to explore what additional opportunities there may be for involvement with social mobility and STEM outreach bodies in the future. Of course, giving presentations and mentoring requires resources – it makes no sense to reinvent the wheel every time someone has an opportunity to present. We are looking at formal resource sharing arrangements with IP Inclusive to help create a bank of slides, props and other materials to support anyone getting involved in projects to encourage young people into the IP professions. When she was our President, Suzanne Oliver set out a series of objectives which the IP Federation wants to take forward, and this will be the task of the working group. It is worth restating those objectives (in an abbreviated form) here:
  • Improve the image that we project to people
  • Reach new people and places, widening the range of educational and training establishments we engage with, including targeting students before they make career-limiting choices.
  • Recruit more fairly, both on advertising/outreach and objective decision making.
  • Address financial barriers to entry and progression – finding ways to offer financial support.
  • Explore bold systemic changes to entry requirements, for example apprenticeship.
  • Collect data to help targeting outreach work.
  • Work together as a sector, including with government agencies, to make the measures we take more effective.
  • Work with outreach charities and organisations to enable us to reach the right people.
Those are inspiring goals, and it will be the objective of the D&I working group to use them as a guide for its work in this vitally important area. Gordon Harris, Gowling WLG (UK) LLP

The IP Federation’s activities

Document No: PUB 21C/21 Posted: 22 December 2021

The IP Federation’s campaigns

The IP Federa­tion has invested considerable time and resource in 2021 in support of its aim of improving the intellectual property (IP) framework to meet the needs of innovative industry. Here are some of our key successes.
  1. The IP Federation has engaged and continues to engage effectively with senior levels of Government on the seeking the best possible future free trade agreements (FTAs). A key concern has been the potential impact on the UK’s continued participation in the non-EU European Patent Conven­tion (EPC). A document (agreement in principle) was published reflecting what the UK and Australian negotiating teams jointly decided as of 16 June 2021 should be included in the agreement once it is finalised. This confirmed that there is no commitment to introduce a UK grace period or patent term adjustment in the UK–Australia FTA.
  2. On 22 June 2021, the Government announced that it recognises the im­portance and value of the UK’s partici­pation in the EPC and that it has no intention of leaving the EPC. It also indicated that this has not changed with the decision to accede to the Comprehen­sive and Progressive Agree­ment for Trans-Pacific Partnership (CPTPP). In CPTPP accession negoti­ations, the Government will ensure that the UK upholds its existing international obligations, including those of the EPC to which the UK is already party.
  3. The IP Federation has continued to have constructive discussions on various IP issues following the UK’s departure from the EU. Strong and effective relationships have been reinforced with the Department for International Trade (DIT), Department for Business, Energy & Industrial Strategy (BEIS) and Intellectual Property Office (IPO), and other key stakeholders. Topics have included trade policy, exhaustion of rights, UPC and supplementary protection certificates (SPCs).
  4. The IP Federation has directly contributed to the work of the Industry Trilateral in formulating a harmonisation proposal across key issues in patent harmonisation including: the definition of prior art; conflicting applications; grace period; prior user rights and defence of intervening user; and mandatory 18-month publication.
  5. The IP Federation has made a strong contribution to meetings of BusinessEurope’s Patents Working Group on behalf of the CBI, with whom we have a close working relationship.
One of the IP Federation’s chief lobbying tools is its policy papers. These are all available on the website at: www.ipfederation.com The policy papers on the website represent the views of the innovative and influen­tial com­panies that are members of the IP Federation. Members are con­sulted on their views and opinions and encouraged to debate and explore issues of policy, law and practice. Only after consensus is achieved are policy papers settled and published. The policy papers are sent as appropriate to key individuals and organisations, including Government Ministers and departments and judges. They may also be submitted to the:
  • European Patent Office (EPO) and its Standing Advisory Committee before the European Patent Office (SACEPO)
  • European Union Intellectual Property Office (EUIPO)
  • World Intellectual Property Organiza­tion (WIPO)
  • UK Intellectual Property Office (IPO), including the Patent Practice Working Group (PPWG)
  • European Commission
  • BusinessEurope

Policy papers 2021

Policy papers submitted in late 2020 and 2021 are as follows: PP 6/20 IP Federation position statement on the Unified Patent Court IP Federation position statement on the Unified Patent Court (UPC) PP 1/21 Review of EU Design Legislation – Inception Impact Assessment IP Federation feedback on Intellectual property – review of EU rules on industrial design (Design Directive) PP 2/21 Consultation on EPC and PCT-EPO Guidelines IP Federation submission on the Guidelines for Examination in the European Patent Office, March 2021 edition: Part F, Chapter IV – Claims (Art. 84 and formal requirements) PP 3/21 Court of Justice case C-44/21 (Phoenix Contact GmbH & Co. KG v HARTING Deutschland GmbH & Co. et al.) IP Federation comments on case C-44/21 (Phoenix Contact GmbH & Co. KG v HARTING Deutschland GmbH & Co. et al.) at the Court of Justice of the European Union PP 4/21 Amicus Curiae Brief on Enlarged Board of Appeal case G 1/21 Amicus curiae brief on Enlarged Board of Appeal case G 1/21 (European Patent Application 04758381.0) – Oral proceedings by videoconference

IP Federation and In2scienceUK partnership launch

In January 2021, we launched our 2021 partnership with In2­scienceUK providing six young people from dis­ad­van­taged backgrounds with a place­ment in the virtual learning programme into differ­ent STEM fields, kickstarting their high tech career. In2­scienceUK’s mission is to improve social mobility and diversity in science, technology, engineering and mathematics (STEM). They will work with over 700 young people from disadvantaged backgrounds in 2021, and we want to help them to expand since more than 2,000 young people apply to In2scienceUK each year. Check out their amazing work at https://in2scienceuk.org/

IP Federation President’s reception 9 July 2021

Sonia Cooper was elected as the new President of the IP Federation at our AGM on 9 July 2021. We were hoping to commemorate the handover by Scott Roberts, Immediate Past President, at an IP Federation Centenary President’s Reception but, as with last year, the Covid-19 pandemic meant that the whole event had to be done as an on-line meeting.

Archive of the IP Federation

The Bodleian Libraries in Oxford completed the cataloguing of the IP Federation Archive in July 2021, and the catalogue is now online. The navigation box on the right shows the sections into which the archive is arranged and each section can be expanded down to individual boxes. The IP Federation’s support the cataloguing project [something missing here?], and the Bodleian Libraries are also most grateful to Mike Jewess for all his work on the archive, and for compiling an index which formed the basis of the catalogue. The collection inventory comprises:
  • General papers, 1920–2012
  • General meetings, 1920–1990
  • Federation Council, 1920–1989 and 2010
  • Federation Council: Minutes, 1920–1989 and 2010
  • Federation Council: Documents, 1942–1989
  • Patents Committee, 1923–1989
  • Merchandise/Trade Marks Committee, 1913–1989
  • Licensing and Competition Law Committee, 1975–1989
  • Copyright and Designs Committee, 1987
  • Monthly Reports, 1952–1989 and 2020
  • Federation publications, 1943–2017
See also the Activities tab on the IP Federation website (under “Our Work”) for the latest news.

Benefits of being in the IP Federation

As set out on the IP Federation’s website, membership benefits include:
  • Authoritative representation at national and international level
  • Access to legislators and officials
  • A non-sectoral forum to exchange ideas and opinions on key intellectual property issues as they relate to IP
  • Excellent networking and learning opportunities for new and established IP attorneys
  • Advance notice of forthcoming legislative proposals and practice changes
  • Monitoring service for all consultations, both at national and at EU Commission level
  • Regular alerting service, newsletters and policy papers

Social networking

As well as having its own website, the Federation has web presence through social net­work­ing sites, with a page on Facebook, a profile on LinkedIn and a Twit­ter account – @ipfederation. Over the last year, we have once again increased the number of people who follow us on Twit­ter and now have a thousand followers, including some notable figures in the IP world. This is the easiest way to be notified of any new policy papers and other news items on our website. David England, IP Federation Secretary

The Unified Patent Court

Document No: PUB 21D/21 Posted: 22 December 2021
In last year’s IP Federation Review, it was reported that, despite 2020 being a turbulent year for the Unified Patent Court (UPC), progress appeared to have been made. This year, a much more positive statement can be made. Progress has definitely been made, with the Preparatory Committee estimating that the UPC will start operations around mid-2022. Whilst that may be a little optimistic, next year’s Review may be published as the doors of the UPC are finally opening. Looking back, the year did not start off positively. The German Federal Constitutional Court was again faced with constitutional objections to the UPC. Two applications for preliminary injunctions were filed in December 2020 against the draft bill enabling Germany to ratify the UPC Agreement (UPCA) and the Protocol on Provisional Application (PAP-Protocol). However, in July, the Court rejected both applications stating that they were inadmissible. This was quickly followed by the German Federal President signing the ratification bill in August and, in September, Germany deposited its ratification instrument for the PAP-Protocol. Most recently, in October, Slovenia deposited both its ratification instrument for the UPCA and the PAP-Protocol. However, despite this very considerable increase in pace, the starting gun has yet to be fired as there are two further steps that still need to be completed. Firstly, consent to the PAP-Protocol of just one more participating Member State is required before the start of the provisional application period (PAP), the final phase of the UPC’s set-up, can begin. Austria might be that one country, since it submitted a draft law for the ratification of the PAP-Protocol in July. The second step is for Germany to deposit its ratification instrument for the UPCA. One of the big undecided points is which, if any, city will replace London as the site of the central division seat dealing with chemistry and pharmaceutical cases. The Council of Ministers in Italy has officially proposed Milan, but there is no done-deal as yet, and cities in the Netherlands are also being discussed as possible candidates. So, when might the UPC open its doors? The Preparatory Committee has said that it might take from six to ten months to conclude all the work that needs to be done during the PAP, including recruit­ment of the judges. But, once the participating Member States are confident that the UPC can start in an orderly manner, Germany will deposit its instrument of ratification and the grand opening will take place on the first day of the fourth month following such deposit. As noted already, the Preparatory Committee has stated that the UPC could start operations around mid-2022. Even if this slips a bit to the end of next year, companies should be shaking the dust from their plans of four years ago and reminding themselves what they should be doing to prepare. Three of the key areas that companies should be considering are as follows:
  • Opt-outs of existing European patents (EPs), supplementary protection certificates (SPCs) and EP applications
Unless these rights are opted out of the system, both the UPC and the national courts of the Member States have jurisdiction over them. Opting out means that the UPC no longer does so and consequently a central invalidity attack cannot be launched before the UPC. However, it also means that an infringement action cannot then be brought before the UPC seeking an injunction covering all participating Member States (unless, that is, the opt-out is withdrawn). In 2017, a three-month sunrise period was being planned to allow companies to file their opt-out requests ahead of time. If the same period is allowed and the plan remains that the UPC opens in mid-2022, opt-outs could be filed as early as the end of Q1 2022. Opt-out requests will be filed through the UPC case management system which requires getting used to the system and putting in place the necessary mandates. More than that, however, an opt-out is only valid when it is performed by all the actual proprietors of the EPs and all holders of existing SPCs, not the proprietors according to the register, nor exclusive licensees. So not only will owners and licensees have to consider which EPs and SPCs to opt-out, if any, but work may also need to be done to identify the rights holder or, if different designations of the EP are owned by more than one person, the rights holders.
  • Opt-ins for EP applications
A request has to be made for unitary effect before a bundle of national EPs is effectively turned into a Unitary Patent (UP). Such request can only be made where there is a granted EP and it has to be filed one month after the date of publication of the mention of grant in the European Patent Bulletin. However, the European Patent Office was, in 2017, preparing its own sunrise period to allow patent applicants to file applications for unitary effect ahead of time so that they had the opportunity to designate their EPs as UPs as the UPCA came into effect. If the same system is proposed, patent applicants should consider which of their applications are nearing grant and whether they want them granted as EPs or UPs.
  • Licences
The UPCA provides that an exclusive licensee can bring an action before the Court under the same circumstances as the proprietor, provided that the proprietor is given prior notice and the licence agreement does not expressly preclude such action. However, the patent proprietor must be joined in any action where validity is contested. This rule applies to both UPs and EPs from the date the UPCA comes into effect. It would therefore be wise to review existing licence agreements and to bear in mind this provision for future licences. In practice, the UPC’s IT system and the way in which users are able to interact with it will be crucial. So far this has had only limited visibility, but the IP Federation is reaching out to those developing the software to ensure that users’ interests are taken into account as the systems are finalised. Of course, with the UK not participating in the Unitary Patent system, it is inevitably devalued. The UK is a large economy and its absence will have a huge impact both for rights-holders and third parties. Despite this, the fact that we are about to see this project at last coming to fruition is very exciting. Katharine Stephens Partner, Bird & Bird LLP

IP Federation archive made available to the public

Document No: PUB 21E/21 Posted: 22 December 2021
Legal scholars, business historians, and others now have access to a wealth of previously unavailable material showing how business reacted to and lobbied on IP law from 1920 to 1989. Until recently, the archive of the IP Federation was stored in a warehouse in Chatham, save for a few items retained in the IP Federation office. Operating under the IP Federation’s document retention and destruction policy, Council deemed the archive as suitable for donation to a scholarly library subject to a “30-year rule”. As a result, since mid-2021, this material has been publicly available in the Weston Library in Oxford, which houses the “special collections” of the Bodleian, the main research library of the University. Legal scholars and business historians have access to a wealth of material from the foundation of the Federation in 1920 up to the end of 1989. The IP Federation chose to approach Oxford University for various reasons, including because it has a longstanding Intellectual Property Rights Centre. Dev Gangjee, currently Professor of Intellectual Property Law at Oxford, supported the case for the acceptance of the archive by the Bodleian, and a senior archivist, Lucy McCann, worked with the IP Federation to organise the selection and receipt of the material. The material is sorted into 67 academic archive boxes, each approximately 7 cm deep, made of acid-free cardboard. There are boxes containing, from the early years of the Federation, wonderful well-preserved minute books with gold lettering on the spine and highly legible manuscript entries. Loose papers are grouped chronologically in acid-free cardboard folders within boxes. Coincidentally, the activities of the Federation since the end of 1989 have been written up and published professionally through approximately annual reviews, now all on the internet at https://www.ipfederation.com/ip-federation-review/. The first review was published in 1990 as REVIEW of trends and events under the Federation’s previous brand of “TMPDF” (standing for the contemporary legal name, “Trade Marks Patents and Designs Federation”). The present IP Federa­tion Review is the 29th in the series. Therefore, the Oxford archive joins up chrono­­logically with what was already publicly available, so that scholars have the opportunity of studying business’s views on IP matters from the foundation of the Federation in 1920 to the present day – although in principle a further donation in due course of post-1989 material would allow them to form a more complete view. The original Memorandum of Association of the Federation stated that its first “object” was, in IP matters, to promote the interests of “traders in the British Empire and Foreign Countries” – i.e., translated to the present day, national and international business. (It has never been the Federation’s role to represent the legal professions.) To achieve this object, the Federation has always taken a highly commercially-informed policy view of IP law, a focus that makes the Oxford archive of especial interest. The Federation Council and Committee minutes included in the archive were meticulously and informatively drafted, and supporting material was retained; so, the archive includes, for instance, official consultations and reports, correspond­ence with other representative organisations, and the final lobbying output of the Federation. It needs to be remembered that the archive was all created in pre-internet days, when a key service of the Federation to its members was to inform them of developments worldwide (regardless of whether these were within the scope of its lobbying). From 1952 to 1989, the Federation issued hard-copy monthly private newsletters based on material received from third parties. Not only the Federation documents in the archive but also many third-party docu­ments will be the only copies in the public domain – or even the only copies in existence. The user of the Oxford archive will be guided, first, by the library index https://archives.bodleian.ox.ac.uk/repositories/2/resources/9593. The listing of the contents of each box may merely be a general one specifying the range of dates of the material and identifying the IP issues of the time. In some cases it identifies particularly intriguing historical items such as – in 1943, “Pamphlet ... being a detailed report by the [Federation’s] patents committee on matters arising out of wartime emergency legislation;” and ca 1970-1, “ ‘Paper by T[imothy] W[ade] Roberts for CIPA informals’ discussing ‘peripheral’ vs ‘central’ claiming (a key issue in the runup to the European Patent Convention ...).” Often, the user of the archive will be greatly assisted by manual indexes assiduously created by past Federation secretaries and included in the boxes. Office computerisation began to resemble what we know today only around 1985. Therefore, manual indexing by topic was essential if the Secretary was to be able to retrieve any previous internal discussions of a particular topic, for instance when a new official consultation was started. By making this material available, the IP Federation and the University of Oxford have, we believe, done a considerable public service. Michael Jewess Honorary Fellow of the Federation

The SPC Year in Review – Politics rather than Litigation

Document No: PUB 21F/21 Posted: 22 December 2021
There have been no Court of Justice of the European Union (CJEU) referrals decided this year. The main activity on supplementary protection certificates (SPC) has been political with changes considered on a European Union level as part of the pharmaceutical legislation review and the much vaunted appearance of the Unified Patent Court (UPC) on the horizon at the end of the year. On a legislative level the last changes made to the SPC Regulation were to introduce a manufactur­ing waiver. This manufacturing waiver properly kicks in at the beginning of July 2022 and only a hand­ful of notifications (if that) have been made under the waiver at national patent offices. The pro­cess is fairly formalistic but initial experience is that generic manufacturers are not rushing ahead at the opportunities afforded to export European made generics. The only notification seen so far with details of an export market seeks to send product to Australia, another highly-advanced economy. The opportunity to stockpile before European launch seems likely to prove more interesting, though limiting the location of where product can be stored to the country of manufacture will dampen use of the system. That said, generics have long had processes in place to bring blockbuster products rapidly into major markets once exclusivities expire. In complying with the waiver generics would do well to use the registered address for service for an SPC to ensure notification actually occurs. The last extension of SPC rights occurred with the paediatric legislation providing the carrot of a six month extension to SPCs as a reward for completing a paediatric investigation plan. A requirement for the reward is that there is a marketing authorisation (MA) present in all EU member states. Early beneficiaries of the extension sometimes had to scramble to achieve this when a product was authorised under the mutual recognition procedure. Now that most products receive centralised authorisations it would be rare to be in a situation where there is not an MA in an EU state. The pharmaceutical legislation review is wide in scope in considering whether the rewards frame­work for orphan medicines and paediatric medicines is achieving desired outcomes. Whether the current SPC extension requirements are sufficient is being considered. Might there, perhaps, be a requirement that a product be actively marketed in each member state to obtain the reward? It is not clear how this might be demonstrated as evidence would be needed from each member state, considerably complicating a procedure that currently relies on centrally available and applicable documentation. By the time this column is written next year the Unified Patent Court might be in operation and the first Unitary Patents (UP) may have been granted. As a consequence the unavailability of unitary SPCs becomes acute. It is assumed that national SPCs may be obtained under a UP in the same way as under a European patent (EP) but such SPCs will fall within the inherent jurisdiction of the UPC by virtue of being based on a UP. The prosecution of those SPCs may also have varying outcomes, both as to grant and in terms of the product description. Whilst the UPC deals with European patents, all having the same wording in the claims, it seems unsatisfactory that any SPCs that fall within their jurisdiction are very likely to have differences in their product descriptions, however slight, as a result of the individual grant of these rights by each national patent office. European industry associations in the fields of pharmaceuticals, veterinary products and crop protection products are all in favour of setting up a virtual EU SPC office, perhaps attached to the European Patent Office (EPO), that would operate either on a Patent Cooperation Treaty (PCT) or European Patent Convention (EPC) model, and that this office could handle unitary SPC applications once appropriate legislation for them has been adopted. Under a PCT model the initial stage of national applications could be made, avoiding the wasteful duplication of supplying the same informa­tion to each national patent office. A non-binding opinion on allowability could be produced by examining divisions made up of national patent office examiners experienced in SPCs. An applica­tion would then convert into a bundle of national applications for grant or continued prosecution. Under an EPC model the office would grant the SPC which would then turn into a bundle of national SPCs. There would need to be a route for references to the CJEU if the office has authority to grant SPCs. This could be achieved either by a de novo appeal tribunal which can refer or a protocol on jurisdiction so that appeals from the office go to the courts of the country where the applicant is domiciled or, if that is outside the EU, to the country where the marketing authorisation holder is domiciled, since this will always be in the EU. The year ahead will contain considerable advocacy opportunities in order to ensure any legislative proposals are efficient and deliver benefits both to European industry and society as a whole. SPCs have become a key incentive for pharmaceutical development and it is important to maintain and enhance their benefits to ensure new medical treatments are developed for patients. James Horgan Chair of the IP Federation Unitary Patent and Unified Patent Court working group

Patent Harmonisation Activities

Document No: PUB 21G/21 Posted: 22 December 2021

1.                   Introduction

There have been two main areas of activity concerning attempts to harmonise and improve the patent system in 2021: Substantive patent law harmonisation (SPLH) in conjunction with the B+ group of WIPO nations and procedural harmonisation before the IP5 group of Patent Offices.

2.                   SPLH

In my article for the IP Federation Review last year, I summarised the major points contained in the “Policy and Elements for a Possible Substantive Patent Harmonisation Package” submission (the Elements Paper) made by the Industry Trilateral (IT3, comprising American Intellectual Property Association, BusinessEurope, Intellectual Property Owners Association, and the Japan Intellectual Property Association) to the B+ group of WIPO nations (which was established to promote and facilitate progress on SPLH) in September 2020. This resulted in a number of questions from the B+ which the IT3 replied to at a meeting in May 2021. In addition, the B+ had requested the IT3 to produce a set of objective criteria to assist in clarifying the scope of prior user rights and the IT3 has done significant work on this in 2021. Finally, the IT3 agreed that the B+ Patent Offices should be free to publish the Elements Paper to aid in consultation and discussion on this important topic even though there are still items yet to be agreed upon by the IT3. The questions from the B+ on the Elements Paper covered the major topics contained within it: grace period, conflicting applications and prior user rights (PUR). The major concerns were with the complexity of the paper and whether the Elements Paper provides sufficient safeguards to prevent the proposed system becoming a “first to publish system” (one of the stated objectives of the proposals put forward is that the new system should not become a first to publish one). The IT3 will consider the feedback from the B+ on these two issues further. The objective criteria are intended to assist in determining the scope of prior user rights once these have accrued and to provide greater certainty for patent holders and third parties on these rights. The discussions include three main activities: (i) changes in the volume of the product produced from that which the third party produced when it established its prior user right, (ii) changes or modifications to the original embodiment produced by the third party and (iii) changes in the category or type of infringing act, for example importing a product rather than manufacturing it. It is hoped that the IT3 can make progress on potential improvements to the Elements Paper and the objective criteria on the scope of PUR in the near future. The publication of the Elements Paper should also enable further feedback to be obtained from other stakeholders benefitting the process.

3.                   IP5 discussions on procedural harmonisation

(i)                  Introduction

In February 2021 there were joint meetings of the IP5 (the Chinese, European, Japanese, Korean and US Patent Offices) with the IP5 Industry group (the IT3 plus Patent Public Advisory Committee (PPAC) and Korea Intellectual Property Association (KINPA) concerning the Industry Consultation Group (in February), the Global Dossier Task Force (March) and a meeting with the IP5 Heads in June.

(ii)                IP5 Industry Consultation Group (ICG) meeting

Future IP5 Patent Harmonisation Expert Panel (PHEP) topics: IP5 Industry expressed its expectation for IP5 Offices to agree on electronic signature standards so that a global assignment form could be filed with electronic signatures. IP5 Industry also expressed their interest in the harmonisation of allowable features in drawings. Measures taken by each IP5 Office that are beneficial to users: IP5 Industry representatives drew attention to specific and helpful measures implemented by individual Offices. IP5 NET/AI Task Force: IP5 Offices provided an overview of the current status and next steps in the work of the IP5 NET/AI Task Force, highlighting that the Task Force members were currently evaluating possible project proposals from the IP5 Offices according to the Scoping Document, in order to develop an IP5 NET/AI roadmap for the endorsement by the IP5 Heads in June.

(iii)              Global Dossier Task Force (GDTF) meeting

Feedback on current Global Dossier services: IP5 Industry gave favourable feedback on their experiences with the existing Global Dossier services being provided by the IP5 Offices stressing the importance of completeness, timeliness and availability of Global Dossier. Prioritisation of five Global Dossier tasks: IP5 Industry suggested demand-based prioritisation for the five Global Dossier tasks, indicating that XMLization and Inter-office Document Sharing are seen as two top priorities. IP5 Industry also expects progress in relation to Alerting, Legal Status and Applicant Name Standardisation but these are seen as long-term initiatives. NET/AI Utilisation: Each IP5 Office provided an update of the AI tools used in their own procedures. IP5 Industry expressed its hope that AI tools, after being developed and applied in the IP5 Offices, would become accessible to users as well.

(iv)              IP5 Heads/IP5 Industry Meeting

The meeting was jointly chaired by JPO and JIPA. Introductory remarks referred to a WIPO Green Event in Japan and its relevance to the Strategic Topic on the agenda.
  • Agenda Items
  1. Patent Harmonization Expert Panel (PHEP) New Topics: It was announced by the Offices that the two topics, Global Assignment and Allowable Features in Drawings, were due to be approved at the formal closed Heads meeting the next day. KIPO and USPTO will take the lead on the Global Assignment project whilst the JPO will lead on the harmonisation of features in drawings.
  2. NET/AI: A Roadmap has been produced by the Offices that focuses on both legal and IT aspects (this has now been published on the IP5 website), the European Patent Office (EPO) indicated that this is the foundation for Offices to excel, Offices now have to put it into practice.
IP5 Industry reported that it is setting up its own task force to assist the Offices.
  • Strategic Topic
IP5 Cooperation in a post-pandemic era The IP5 Offices indicated that digitalisation transformation is key. Many Offices had introduced digital signatures during the pandemic but further work on this still needs to be done as well as introducing video interviews/hearings. All seemed to be in agreement that there should be more study and discussion of the benefits of IP to society.
  • Next Meeting
The next IP5 Heads meeting will be organised by the EPO in collaboration with BusinessEurope in Munich the week of June 6–10th 2022. The EPO mentioned that the meeting would cover access­ibility of IP system to users and generation of pro-IP culture as well as increasing IP visibility in general and how it can solve societal and economic issues. Tony Rollins, Policy Advisor

The IP Federation working with the EPO in 2021

Document No: PUB 21H/21 Posted: 22 December 2021
Over the last 12 months the European Patent Office (EPO) has accelerated its digital transformation consistent with its Strategic Plan 2023. It is fair to say that the EPO is now a primarily digital workspace at every level of the organisation. This increased digitalisation has presented new opportunities for engagement, collaboration and communication without the obstacle of geography. The IP Federation has embraced this opportunity and continues to work closely with the EPO at many levels to bring the user perspective to EPO initiatives as they emerge and develop. Changes abound at the EPO and continued advocacy for applicants and users remains the IP Federation’s priority. The use of videoconferencing facilities for oral proceedings was on the agenda at the EPO this year. The Boards of Appeal issued their decision in G 1/21 in July, in which it ruled that oral proceedings before the Boards of Appeal can, during a period of general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, be held by videoconference even without the consent of the parties. The status of mandatory oral proceedings at other procedural stages remains to be clarified. Meanwhile, the EPO announced an extension to the pilot for opposition oral proceedings by videoconference later in the year. The EPO’s ambition to process oppositions within a target period of 15 months put the topic of streamlining opposition proceedings on the agenda. Proposals for a streamlined opposition procedure were drawn up by the European Patent Institute (epi) and outlined to the Standing Advisory Committee of the EPO (SACEPO) in 2020. The proposals include strictly limiting the opportunities for written submissions by parties to discrete points in the procedure with fixed time limits (2 months in some cases). Wholesale revision of rules 79, 81 and 116 EPC are proposed, with submissions outside stipulated procedure being deemed prima facie inadmissible. The subject is still being considered by the EPO and SACEPO participants. More procedural changes are imminent with the closure of the EPO’s “CMS” online filing system and the introduction of a new “Online Filing 2.0” facility. A new central service for making and facilitating fee changes was announced in July, with the EPO embracing additional options for fee payment by credit card and bank transfer. Significant case law developments this year include G 1/19 on the patentability of computer implemented simulations. The Enlarged Board concluded that simulations can solve a technical problem and that the well-established COMVIK[1] approach to assessing the technicality criteria for patentability apply. Notably, it is not decisive whether the system or process being simulated is technical. What is relevant is whether the simulation of the system or process contributes to the solution of a technical problem. Industry and the professions are closely examining the decision to understand the implications for simulations and other computer implemented technology such as artificial intelligence. Also issued by the Enlarged Board is the decision in G 4/19 endorsing the EPO’s long-established practice for assessing double patenting. The Enlarged Board confirmed that a European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art. This is irrespective of whether the application was filed on the same date or earlier, is a divisional application, or claims the same priority date. The IP Federation engages frequently with the EPO including directly with President Campinos, through SACEPO, and through work with BusinessEurope. Existing relationships are routinely solidified and new relationships forged to ensure the perspective of the industry is appropriately represented. Scott Roberts, Immediate Past President, IP Federation [1] Decision T 0641/00 (Two identities/COMVIK)

International Trade and Intellectual Property

Document No: PUB 21I/21 Posted: 22 December 2021

A Vision in support of the UK Government’s Trade Strategy

With the world on the cusp of a 4th Industrial Revolution promising emerging technologies such as Internet of Things, autonomous vehicles, quantum computing, AI and genomics, it is critical to get the IP aspects of trade deals right. In view of the speed of progress, any obstacles to innovation and IP will damage the UK’s economy for decades. The profound global challenges posed by the Covid-19 pandemic make successful outcomes from trade negotiations even more important. The IP Federation’s vision is that the overarching UK strategy should actively promote trade, IP and innovation, and improve market competitiveness. The UK should aim to have an outward looking, prosperous and inclusive economy that actively promotes innovative business and sustainable jobs, and is strongly aligned with UK’s ambitions to be a science superpower and innovative powerhouse on the global stage. With the UK chairing the G7 and hosting the UN COP26 climate summit this year, there is a golden opportunity for the UK to lead on trade strategy for the global community.

IP Federation Trade Working Group (WG) and Stakeholder Engagement

IP provisions are almost universal in trade agreements and setting standards for IP rights directly reduces trade barriers. Recognising this and the UK Governments trade strategy has meant that  our Trade Working Group has been very active this year. We have been particularly active in engaging with the Department for International Trade (DIT) and UK Intellectual Property Office (UK IPO) in UK Government, formally and informally, to offer constructive ideas and comment based on our extensive knowledge of the role of the IP system in UK and overseas markets. We continue to support the UK Government’s aim of securing the best possible terms in free trade agreements (FTAs) with Australia, New Zealand, the US, Canada, and others and in acceding to the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP).

IP Federation Asks

It is essential that trade policy in general, and negotiating objectives with individual countries and regions in particular, are developed in close collaboration with industry. Corporates play a key role in supporting the growth of small innovative business and the network of our world class universities and academia. This vital contribution provided by large businesses should be recognised, celebrated and incentivised in the UK trade policy and its implementation. The IP Federation urges the UK Government to be ambitious in exporting the UK’s world class IP system in all its FTAs, recognising the crucial relationship between world-leading innovation and a system of IP rights which is robust, balanced, understood and enforceable. We welcome the Govern­ment’s explicit assurances in its published strategic approaches to various FTAs (Australia, New Zealand) and in regard to accession to the CPTPP, of its intention to secure patents, trade marks and designs provisions that are consistent with the UK’s existing international obligations, including continued membership of the non-EU European Patent Convention. We continue to encourage also that some issues are better dealt with in multilateral agreements than in bilateral FTAs, and we look forward to the UK taking an active role in the World Trade Organisation and the World Intellectual Property Organisation.

Update on Trade Agreements

In the last (centenary) IP Federation Review 2020, we reported the successful completion of the Japan–UK free trade agreement (heavily based on the Japan–EU one) with strong IP provisions. Since then, the EU–UK Trade and Cooperation agreement has been signed on 30 December 2020, with positive IP provisions. The Government continues to progress its trade negotiations with energy with many other nations and regions including the US, Australia, New Zealand, Canada, and the CPTPP.

UK–Australia Negotiations

These negotiations started from scratch. An agreement in principle (AIP) was reached in June 2021. We welcome the inclusion of strong IP and innovation chapters in the AIP, and we continue to monitor closely developments as a full text is finalised. Its agreed IP provisions will likely set an important precedent for other deals. The agreement is expected to be signed in the autumn. There­after, there will be Parliamentary scrutiny including under the Trade & Agriculture Committee and the Constitutional Reform and Governance Act 2010 (“CRAG”).

UK–New Zealand Negotiations

These negotiations are apparently at an advanced stage, with an expectation that an agreement will be reached by the end of this year. We are closely monitoring developments in this regard.

UK’s Accession to the CPTPP

The UK has applied to accede to the CPTPP, with an ambitious aim to reach a deal with the CPTPP member states by the end of next year (2022). UK’s application has been given the “green light”, and so, negotiations will follow. The Japan’s economy minister (Japan: Chair of the CPTPP) announced that the first meeting for UK’s CPTPP inclusion would be held soon. The interaction between UK–CPTPP (based on existing CPTPP text) and bilateral negotiations involving CPTPP member states covering different key areas such as intellectual property will be important.

UK–US Negotiations

Recently, there was a comment made by the UK Prime Minister in Washington D.C. that, while the ambition for a comprehensive UK–US FTA continues to be there, the US does not currently have capacity for it.

Other: Future Negotiations (Canada, Mexico, India)

IP Federation has responded recently to the call for input on trade with India, detailing specific issues and relevant provisions which a prospective UK–India FTA should contain to address them. Work is now being undertaken by the Government to develop a mandate based on stakeholder responses, by the end of November 2021. We continue to follow the developments on Canada, Mexico (amongst others). Through CBI, we have advocated that substantial benefits with these trading partners can be delivered from using IP in the trade context, without relinquishing critical aspects of the UK’s existing and highly rated IP framework including its existing Treaty obligations. In the field of criminal sanctions for trade secret misuse, we have further urged the UK Government to consult us if they are minded in negotiations with Canada, Mexico to adopt stronger criminal sanctions than those that currently exist in the UK.

Exhaustion

A separate IP Federation working group was established to respond to the recent UK IPO consultation in this complex, important area.

Final Remarks

The global trade IP world is fast changing, and we have a golden opportunity to engage and help shape it positively. That is what we are doing, and we are seeing positive results. The IP Federation looks forward to continuing to support the UK Government in achieving desired outcomes from current and future trade negotiations which will be so crucial for innovative British business, to help make the maximum contribution to the Government’s ambitions as a global hub for innovation and a science and technology superpower. Watch this space! Dr Bobby Mukherjee – Chair of the IP Federation Trade Working Group 27 September 2021

Exhaustion – phew!

Document No: PUB 21J/21 Posted: 22 December 2021

The UK’s future regime for the exhaustion of intellectual property rights

It is an old joke, and a truism, in the IP community that thinking through the exhaustion of intellectual property rights (IPRs) is, well, exhausting. This is because the subject itself is so complex, the implications so far-reaching, and perspectives so diverse, that analysis and discussion can too easily descend down a metaphorical rabbit hole. It is unsurprising, then, that considering and responding in August 2021 to the UK government’s consultation on the UK’s future regime for the exhaustion of IPRs took up a great deal of time, thought and energy. For new readers, who might be wondering what “exhaustion of IPRs” even means, the government’s consultation document[1] explains it in the following terms: “The right to take legal action against infringement is constrained by a system known as exhaustion of IP rights. Once a good has been placed on the market in a specific territory by, or with the consent of, the rights holder, the IP rights that protect this good are considered to be “exhausted”. This means that the right to take legal action against infringement has been lost.” Once the IPRs protecting good have been exhausted, they can legitimately be moved across territorial borders, in what is known as “parallel trade”. So far, so much jargon, you might think. But the regime that any nation implements to regulate this parallel trade can have huge impacts, positive or negative, for business and commerce of all sorts, for consumers, and for national economies as a whole. It’s a big deal, which is why getting it right is so important. The consultation document invited views on four possible exhaustion regimes. It is worth being clear that they only relate to the UK’s own exhaustion regime: none of them has any impact on the regimes which the UK’s trading partners choose to apply to parallel imports from the UK into their territories. Taking each in turn in the order they were presented in the consultation:

·      “Unilateral EEA or UK+ exhaustion”

This is the “do nothing” option and would maintain the current regime, which came into force on 1 January 2021. This means that parallel imports from the European Economic Area (EEA) into the UK would continue to be allowed, while parallel exports from the UK to the EEA could be prohibited. In discussion, IP Federation members noted that the UK+ system, by maintaining the status quo, entails the least disruption for business. We also recognised that under a UK+ regime, UK consumers and businesses would retain certain benefits they had while the UK was part of the EU. For example, UK consumers could benefit from prices that are as competitive as any in Europe. And UK manufacturers could take comfort that, should they need to, they could achieve supply chain resilience by sourcing their IP-protected input materials (e.g. IP-protected components) from parallel import channels around Europe. On the other hand, it was questioned whether, given the short time since the UK left the EU, the current position can truly be regarded as a status quo. On that view, if there is divergence in IP laws between the UK and the EU, there might be problems for rights owners in the future if a UK+ system is adopted.
  • “National exhaustion”
Under this regime, the IPRs in goods would be exhausted in the UK only if they were first put on the market in the UK. This means businesses would not be able to parallel import goods from outside the UK. IP Federation members saw how this could incentivise innovative and creative business in the UK. This is because national exhaustion is closely consistent with a strong IP system, which in turn provides the best incentive for value-adding, innovative and creative businesses, which in turn benefits con­sumers and the economy. This may be particularly true for “home grown” UK businesses, often SMEs, which must be permitted to protect and benefit from sales in their home market. A national exhaustion system would also enable IP rights owners to continue to ensure that only high-quality, genuine products are supplied to UK consumers. Members acknowledged, however, that any adoption of a national exhaustion regime would be subject to a potential issue under the Northern Ireland Protocol issue.
  • “International exhaustion”
In this case, the IPRs in goods would be exhausted in the UK once they had been legitimately put on the market anywhere in the world. Although the IP Federation has historically opposed international exhaustion, in discussion it was recognised that for companies that develop complex products with component parts that are subject to IP licensing arrange­ments, not all of which are owned by the manufacturers of the component parts, an international exhaustion regime may greatly simplify the ability to secure a supply chain to provide goods to consumers in the UK. An alternative view was that supply chain management can be ad­dressed through contractual arrangements, and that supply chain manage­ment should not prevail over the importance of strong IPRs for the UK. Further, there was an argument that any limitations on international supply chains (if that arises) would have the effect of stimulating domestic supply from within the UK, which would be to the benefit of the UK economy. It can also be argued that an international exhaustion regime would be damaging to the UK economy, in particular to UK-based businesses seeking to expand into or retain sales in foreign markets.
  • “Mixed regime”
This option would see different exhaustion regimes applied to different goods, sectors or IPRs. The IP Federation’s members generally felt this would not be a desirable approach, in view of the additional complexity it would entail. In its response to the consultation, the IP Federation noted that, given the very different options for exhaustion being considered by the government, the outcome of the consultation is extremely important to the IP landscape in the UK, and hence to the future health and prosperity of the UK economy. The response also made clear that there was a degree of divergence of view among IP Federation members. This might have militated against making a response at all. But one of the strengths of the IP Federation lies in its cross-sectoral membership, which can bring a wide range of perspectives; another is its ability to engage in open, evidence-based discussion, and agree con­structive ways forward, even when members’ views do differ. We also hope that by making a response, we will have helped the UK government make proposals which take better account of the needs of innovative British industry. And of course the IP Federation looks forward to commenting on those proposals in due course. Sean Dennehey, Consultant to the IP Federation [1] https://www.gov.uk/government/consultations/uks-future-exhaustion-of-intellectual-property-rights-regime/the-uks-future-regime-for-the-exhaustion-of-ip-rights
1 2 3 21