A response by CIPA to the UK IPO’s consultation on the future of patent harmonisation, submitted on
17 September 2014. Click here to see a PDF of the questions.
This response was submitted by the EPO Liaison Committee (EPLC), a sub-committee of the Patents Committee of CIPA. Members of the sub-committee are members of CIPA as well as other organisations including epi, SACEPO, IP Federation and IPI. The role of EPLC is to provide commentary on EPO-related issues. EPLC draws particularly upon the fact that its members are patent practitioners with a strong practical background.
We write with CIPA’s response in relation to the consultation on the future of patent harmonisation. We are grateful for the extended deadline to 17 September 2014. [See the original questions listed above.]
5(i) Most desirable
We believe that the most desirable combination would be 6E, 7 (none except for “abusive” disclosures), 8D
We believe that harmonisation of a subset of the issues or by a subset of potential states is not necessarily beneficial. In particular, whilst there remain discrepancies between the application of legal provisions in relation to different countries, parties will continue to have to behave as they do currently, which is to work to the “worst case scenario”. Additionally, and as reflected in the feedback from the Tegernsee consultation itself, there is no consensus that grace period is the only or most important provision that should be addressed.
In relation to the substantive details of the grace period (point 7) it is considered that a grace period for abusive/non-authorised disclosures should be retained (or indeed improved by reference to the priority date rather than the filing date).
5(ii) Minimum Acceptable
For the sake of harmonisation, CIPA would be willing to accept in descending order:
- 6C, 7C, 8A to D
- 6C, 7D, 8A to D
- 6C, 7E, 8A to D
Restricting signatory countries to any subset of all WIPO member states introduces the concerns raised above. Whilst the current discrepancies and treatment of conflicting applications is non-ideal, in practice we find that it is possible to handle these discrepancies in multi-national portfolio without excessive confusion. In relation to the substantive details of the grace period, calculating the grace period from the priority date is more manageable from an applicant perspective (as a single filing can provide basis for the grace period with a subsequent priority filing in multiple countries). We prefer the concept of a mandatory declaration and so option 7E is borderline unacceptable.
5(iii) Least desirable or unacceptable
Unacceptable options include 6A, 6B, 7A, 7B.
We believe these options would provide sub-optimal harmonisation either in terms of the small number of issues harmonised or the inconvenience/lack of certainty in the relevant grace period option.
- In the various scenarios it is assumed that publication would continue to be at 18 months from the priority date. We would appreciate consideration of the scenario in which there is a mandatory declaration of the grace period triggering the 18-month publication date (i.e. from the date of disclosure) in order to enhance certainty for third parties.
- CIPA has commented only on the scenarios offered – the scope for harmonisation includes all sort of undesirable combinations and “compromises” and CIPA’s response is not an endorsement of any particular formulation.
- No harmonisation at all would be preferable to sub-optimal harmonisation.
- We are grateful for the work done by the IPO
in putting together the various scenarios and confident that the IPO will continue to present a strong and considered view in the upcoming group B+ discussions.