Response to UK IPO consultation on Substantive Patent Law Harmonisation

Substantive Patent Law Harmonisation has been under discussion for a long time, most recently in the Industry Trilateral (IT3) of groups representing businesses.

In autumn 2021, the IT3 released their draft working document ‘Policy and Elements for a Possible Substantive Patent Harmonization Package’ of September 2020.

National patent offices have been asked to collect user feedback. The UK IPO issued a consultation document and CIPA’s Patents Committee has formally responded.

Summary

CIPA supports Substantive Patent Law Harmonisation (SPLH). CIPA has monitored the progress of the IT3 discussions on SPLH, and the publication of the increasingly more refined versions of the Elements Paper arising from these, since the IT3 discussions started at the end of the Trilateral Offices Tegernsee process. The AIPPI and FICPI proposals also cover three of the Tegernsee topics: grace period, conflicting applications and prior user rights (PUR).

CIPA’s support for SPLH is based on the assumption that any harmonisation enacted would be to the benefit of the users of the system and to society as a whole. The Elements Paper is a package and one part should not be considered in isolation from the others. This is because there are parts that one regional/national group are bound not to like (preferring their own system) but are prepared to accept in the context of an overall agreement.

In this context, it should be noted that a significant number of CIPA members do not support a grace period, seeing it as contrary to a well-balanced and self-consistent system. That is why, if there is to be a grace period, it should only be accepted as part of a balanced, globally harmonised package.

It is also important that the system does not become a first-to-publish system. A first-to-publish system is one that encourages potential applicants routinely to publish first and then file patent applications later. Current US law has been described in that way. In this respect, there should be sufficient safeguards to discourage applicants publishing their invention first which could include: the ability of third parties who had been working independently to file patent applications, intervening publications being prior art and robust prior user rights. It is also important that legal certainty is maintained.

There are pressures on the present systems from inter-governmental discussions and particularly discussions on Free Trade Agreements (FTAs). FTA discussions with the EU or non-EU countries that are members of the EPC, such as the UK, often involve requests for the adoption of a substantive grace period. It is much better if proposals for such provisions come from those who have studied this issue in detail rather than through a compromise/trade off at the 11th hour in an FTA negotiation. There is also the real concern that rather than achieving harmonisation, provisions agreed through FTAs could lead to grace periods with different requirements in different parts of the world.

Date Published: 9 June 2022

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