IP Federation Review

It’s rarely a route to fame or fortune to say you’re a member of any committee, let alone a specialist one in the arcane field of intellectual property. So why do experts from innovative industry give up time from their very busy day jobs to participate in the IP Federation Patent Committee? Let’s see.

Under the able chairing of Rob Knight (supported in the background by his gently snoozing dog), the Patent Committee meets by videoconference three times a year. Each meeting attracts about fifteen experts who really know how the patent system works, and could work better, in practice. Collectively, they cover a wide range of technologies and so are able to take a cross-sectoral view.

But what’s the Patent Committee for? Well, it’s main purpose is to take a more detailed look at important patent issues than the Council has time for. It doesn’t have a decision-making role – that’s for Council – but it is well qualified to undertake analysis and give advice. A key benefit for its members comes from knowledge-sharing. It’s amazing how much people learn from one another in the course of the Committee’s discussions.

The Unified Patent Court (UPC) was at the forefront of the Patent Committee’s mind last year.

Ahead of the so-called sunrise period commencing on 1 March 2023, members were focused on how opting out patents from the new system and lodging representatives’ credentials with the UPC registry would work in practice. This included exchanging experiences in obtaining strong authentication for the UPC Case Management System (CMS). Concerns intensified when it appeared that the CMS couldn’t cope with the influx of opt-outs. Later in the year, after the court opened for business on 1 June 2023, the CMS was still hard to engage with, in spite of things being clear in the rules of procedure. Getting smart cards, which every representative needs, created another snag. Discussions in the Patent Committee gave members confidence in how best to engage successfully with the new system.

Other EU issues also featured in the Committee’s discussions. The EU Commission’s so-called “patent package” of Regulations on compulsory licensing of patents in crisis situations, the creation of a unitary supplementary protection certificate, and standard essential patents generated considerable concern. Although the intention was to create a more transparent, effective and futureproof intellectual property rights framework, the Committee saw substantial risks for innovative industry arising from the sweeping nature of some of the proposals, for example those on compulsory licensing.

The operation of the non-EU European Patent Office (EPO) was closely monitored by the Committee. For example, the EPO’s consultation on its examination guidelines was reviewed, and key cases, on entitlement to priority and the state of the art, under consideration by the Enlarged Board of Appeal were discussed. A joint meeting of the IP Federation Council and Patent Committee with senior management of the EPO in October was a highlight.

Closer to home, the Committee tracked the activities of the UK Intellectual Property Office (IPO), not least through the IP Federation’s representatives on the IPO’s Patent Practice Working Group. This has included engaging with the IPO on its “One IPO” transformation programme. The Committee was pleased that, as a result of the IP Federation’s representations (among others), the IPO was persuaded not to withdraw deposit accounts, at least in the short term, and to build a deposit account payment option into its new digital services. As with much of the Committee’s work, this will make a real difference for industry at a practical level.

One thing the Committee doesn’t have is a crystal ball. What it does have in abundance is patent expertise and experience. And you don’t need to consult Nostradamus to know that the UPC, the EPO, and the IPO will continue to feature heavily on the Committee’s agenda. The experts on the Patent Committee will be covering all the angles of those topics and others – for fame or fortune, or more probably not. If you’re interested in joining in, get in touch with the IP Federation Secretary, David England.



Tags

  • Patent Committee
  • UPC