CIPA is also concerned that an obligation to include a designation of origin will, in short order, create a future liability of some sort under the CBD or under the Access and Benefit Sharing Arrangements under Nagoya. Such a liability is completely unquantified and will reduce the incentive to invest in biotechnology. Further, there is the concern the additional burdens will be introduced in future agreements to the greater detriment of researchers and therefore of the common good.
CIPA notes with particular concern the possible penalties under article 6. In particular and notwithstanding article 6.3, which provides that:
“Subject to article 6.4, no Contracting Party shall revoke or render unenforceable a patent solely on the basis of an applicant’s failure to disclose the information specified in article 3 of this instrument”.
There is provision in article 6.2 that “Each Contracting Party shall provide an applicant an opportunity to rectify a failure to include the minimum information detailed in article 3 before implementing sanctions or directing remedies”, which clearly implies that penalties will be exacted for failure, presumably even if such failure is inadvertent or compliance was not possible or was impractical.
Of greater concern is the provision of article 6.4,
“Each Contracting Party may provide for post-grant sanctions or remedies where there has been fraudulent intent in regard to the disclosure requirement in article 3 of this instrument, in accordance with its national law.”
The presence of such a provision will inevitably mean that in very many cases, perhaps every case, the objection will be raised that there has been “fraudulent intent in regard to the disclosure requirement”. While strictly under English law “He who alleges must prove” there must be a real risk that a low level of proof will be required. The mere fact of error, inadvertent or otherwise, may be enough. For a patentee to prove that there has not been fraudulent intent will be difficult, if not impossible. In any event, it will expand the scope of any litigation hugely. Patent litigation is already complicated and far reaching enough, and accordingly expensive. All efforts should be made to limit such expense, not to encourage it. In countries where the standard of legal proceedings are less stringent, it may be yet more difficult to overcome the allegation of “fraudulent intent”.
These obligations and requirements in article 6 do not fit with the note 2 to article 3 indicating the need for light-touch regulation.
Additionally, the provisions of article 3 itself are open to manifold interpretations. They will inevitably lead to divergent approaches by different patent offices further complicating the applications for patents. In particular, who is “the applicant”? The inventor, as in the US? The company named on the application? The group of companies of which the applicant is a member? To find relevant information, perhaps deeply buried in the knowledge of the company, or worse of the group, of which the applicant is unaware will impose an impossible burden on the applicant, while failure to do so may lead to penalties in some unascertained future.
In support of a number of our concerns set out above, we refer in particular to: the US paper, The Economic Impact of Patent Delays and Uncertainty: US Concerns About Proposals for New Patent Disclosure Requirements; and the report from CropLife and FPMA.
The object of the patent system is the promotion of invention. Anything which conflicts with that objective should be resisted strenuously. To do otherwise will discourage invention. We are particularly concerned that the current proposals are directed at the biotechnology industry, an area of endeavour of which the UK is proud and which it is keen to promote as a future source of commercial success. Many of the inventors and developers in the biotechnology industry are small companies, universities or university spin-outs. They all have very limited funds and have great difficulty in raising sufficient funds to fully develop their ideas.
The effect of these proposals will be:
- to delay the grant of patents;
- to oblige applicants to spend further monies in getting their patents granted;
- to increase the uncertainties as to the validity of the patents when granted;
- to create a potential and unquantifiable future liability; and
- to increase the expense of defending patents.
All this will make the getting of funds more difficult by discouraging investment into the industry, so reducing the opportunities for inventions to be developed and turned into commercial products, to the detriment of UK plc.
We believe that the proposal should be strongly resisted.
Prepared by CIPA Life Sciences Committee
Date Published: 02 March 2020