IP Federation Review

The IP Federation’s campaigns

  1. The IP Federation engaged and continues to engage effectively with senior levels of Government on the potential impact of future free trade agreements (FTAs), including on the UK’s continued participation in the non-EU European Patent Convention (EPC).
  2. The IP Federationcontinued to participate in 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 Business and Trade (DBT) and Department for Science, Innovation and Technology (DSIT) (and their predecessor departments), the Intellectual Property Office (IPO), and other key stakeholders. Topics have included trade policy, exhaustion of rights, Unified Patent Court (UPC) and supplementary protection certificates (SPCs). We met Viscount Camrose, Minister for AI and Intellectual Property, at a couple of roundtables in the summer of 2023.
  3. Most notably, the IP Federation has been heavily involved in advising on trade negotiations between the United Kingdom and a number of Commonwealth states, including Australia, Canada, India and New Zealand. We had previously opposed the introduction of a patents grace period in the UK–Australia FTA and UK–New Zealand FTA, thereby ensuring compatibility with the UK’s obligations under the EPC.
    In the context of the announcement on 31 March 2023 that the UK will be joining the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), we were pleased to have been able to support the Government extensively throughout the negotiations, in particular to its commitment to accede on terms which maintain the UK’s membership of the EPC. The result will preserve an efficient route for patent protection in the UK and Europe, and enable the continued success of the UK patent profession, both of which are key elements in delivering an environment for UK innovative companies, both small and large, to prosper.
  4. Our proactive continued engagement with Government on regulations relating to the exhaustion of rights of the holder of an intellectual property right has helped preserve stability. IP provisions are unchanged according to the Intellectual Property (Exhaustion of Rights) (Amendment) Regulations 2023 (SI 2023 Draft). This is the right outcome, until robust impact assessments, reasoning and evidence, together with proper stakeholder consultation, clearly support a change from this regime.
  5. We are seeing green shoots on positive IP reform in India. Following extensive input from IP Federation members, on 13 October 2023, the High Court of Delhi issued a landmark decision relating to Indian divisional practice, Syngenta Limited vs Controller Of Patents And Designs. This to a large extent overturns the earlier Boehringer decision and removes the obstacles to the filing of divisional applications in India that it created.
  6. Our immediate past president Matthew Hitching visited Korea in August 2023 to take part in an IP seminar mounted by KPAA, the Korean Patent Attorney Society, and to meet KINPA, the Korea Intellectual Property Association.
  7. The IP Federation 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. The IP Federation was represented at the 2023 plenary session of the B+ Group of nations and was able to outline its position on substantive patent law harmonisation (SPLH) at the meeting. The Industry Trilateral has accepted the IP Federation’s continued membership.
  8. For several years, the IP Federation contributed to the positive shaping of the UPC Rules of Procedure. The UPC opened for business on 1 June 2023, though the UK is not part of it. The Rules of Procedure which entered into force on 1 September 2022 have thus come into effect.
  9. A notable feature of the UPC is the opt-out, the ability to remove a European patent from the exclusive jurisdiction of the UPC that would otherwise apply to it after expiry of the seven-year transitional period. The IP Federation pushed hard successfully for the opt-out, as well as against the introduction of an opt-out fee, the benefits of which have been seen by many in 2023 with the commencement of the UPC.
    We have held educational webinars on the EU Regulation proposals on standard-essential patents (SEPs) and compulsory licensing, and the text and data mining (TDM) exception to copyright infringement in the
  10. UK. We also held an AI and IP roundtable with Kayleigh Nauman, the US IP attaché.
  11. In June 2023, the Boards of Appeal of the European Patent Office published for consultation draft proposed amendments to the Rules of Procedure of the Boards of Appeal (RPBA), including a proposal to reduce the period for response to the grounds of appeal from the present 4 months to 2 months. Members considered 2 months to be far too short, and so the IP Federation filed a response setting out arguments against the proposed change. On 9 November 2023, Carl Josefsson announced that, in view of the feedback received by users, he will no longer pursue the planned shortening of the period for replying to the grounds of appeal.
  12. The Patent Committee put in amicus brief on the referrals to the Enlarged Board of Appeal of the European Patent Office G 1/22 and G 2/22 (Entitlement to priority). The decision was issued on 10 October 2023, and referred to a point the IP Federation made referencing a French decision of 1962 (TGI Valence of 16 February 1962, Ann. 1963, 313-328). This earlier decision found that the priority right is not an independent right which can be assigned on its own, but a right that can only be assigned simultaneously with the right for the assignee to file a patent application in another country.
  13. We celebrate our diversity of thought in action through the work of the IP Federation Council, Governance Committee, and other committees and working groups – notably the Diversity, Equality and Inclusion working group. Our approach to consultations, e.g. exhaustion and standard essential patents (SEPs), shows that we are inclusive and encourage diversity of thought in our inputs.
  14. Our 2022 edition of the annual IP Federation Review received positive feedback, demonstrating excellent work from across the membership, including the various committees and working groups, especially the Trade Working Group.

CPTPP and EPC – the IP Federation’s vital role

The IP Federation warmly welcomed the announcement on 1 March 2023 that the UK will be joining the CPTPP, which we expect will benefit our member companies and the wider UK economy. We are pleased to have been able to support the Government extensively during the negotiations, and we particularly commend the Government for holding firm throughout the negotiations to its commitment to accede on terms which maintain the UK’s membership of the non-EU European Patent Convention. The result will preserve an efficient route for patent protection in the UK and Europe, and enable the continued success of the UK patent profession, both of which are key elements in delivering an environment for UK innovative companies, both small and large, to prosper.

As a direct result of the IP Federation’s diligent and sustained work over 5+ years, the UK is acceding to the CPTPP on terms which do not threaten EPC membership and which promote international harmonisation of patent laws, another long-standing IP Federation goal.
As long ago as late 2018, IP Federation members were among the first to become concerned that accession to the CPTPP could endanger the UK’s continued membership of the EPC.

  • As long ago as late 2018, IP Federation members were among the first to become concerned that accession to the CPTPP could endanger the UK’s continued membership of the EPC.
  • The IP Federation commissioned an opinion from a leading King’s Counsel (KC) and deployed the opinion to convince the Government and its trade negotiators of the risk and strengthen their resolve to explore solutions enabling the UK to accede safely.
  • The IP Federation also commissioned (jointly with CIPA) Tony Clayton, former Chief Economist at the Intellectual Property Office, to undertake an impact assessment of the EPC on the UK economy.
  • Supplementary impact assessments were also carried out to demonstrate the value to innovators etc. in other CPTPP countries.
    Over the following years, the IP Federation had countless calls and meetings with UK officials including the Chief Negotiator.
  • We also engaged directly with business and IP organisations and officials in Japan, Canada, Singapore and other CPTPP countries
  • The IP Federation worked shoulder-to-shoulder with CIPA to secure the right outcome, giving evidence to the influential House of Commons International Trade Select Committee.
  • A special panel took part in the CIPA Congress on 3 October 2023 to discuss how CIPA, the IP Federation and the international negotiating team from the Department for Business and Trade worked together to achieve this great result. Sarah Roberts-Favell of the Department for Business and Trade thanked CIPA and the IP Federation for our “early engagement and providing a body of evidence” that helped to make the case to ministers and the Prime Minister on CPTPP.

Did you know?

The UK has accepted an obligation to promote the CPTPP grace period and report annually. As a long-term proponent of international harmonisation of patent laws, the IP Federation is well-placed to assist the Government in the promotion.

Diversity, equity and inclusion (DEI)

Diversity, equity and inclusion (DEI) is central to the work of the IP Federation and its members. We are committed to making the intellectual property (IP) professions more inclusive for all those who have the necessary aptitude, regardless of their age, gender, race, sexual orientation, religion, physical ability, wealth or background.

Outreach projects supported by the IP Federation including In2scienceUK and IP Inclusive’s Careers in Ideas mentor programme. On 16 June 2023, we posted a separate webpage on our site setting out our policy and projects, comprising:

  • The IP Federation’s commitment to DEI
  • IP Federation DEI working group
  • IP Inclusive
  • IP Inclusive Charter and Senior Leaders’ Pledge
  • Outreach projects
  • Current Projects 2023
  • Diversity, equity and inclusion in the future

IP Federation President’s Reception 14 July 2023

Danny Keenan was elected as the new President of the IP Federation at our AGM on 14 July 2023. The handover by Matthew Hitching, Immediate Past President, was commemorated at the IP Federation President’s Reception held at WilmerHale.

European Commission consultation on Technology Transfer Block Exemption Regulation (TTBER)

The IP Federation submitted a response on 24 July 2023 to the European Commission’s public consultation in regard to the functioning of the current Technology Transfer Block Exemption Regulation (TTBER) and Guidelines, scheduled to expire on 30 April 2026. The closing date of the consultation was 24 July 2023.

The IP Federation remains broadly in favour of the Block Exemption Regulation and Guidelines as they stand. Providing legal certainty is a great advantage to business when entering into licensing arrangements. Certain aspects of it, in particular the Market Share test, could usefully be reviewed. Even so, we would urge caution before any changes are seriously considered or made to the Regulation which would undermine established business practice.

For full details, click HERE. To see all our policy papers, click HERE.

Online consultation on the proposed amendments to the Rules of Procedure of the Boards of Appeal

The IP Federation submitted a response on 7 September 2023 to the online consultation on the proposed amendments to the Rules of Procedure of the Boards of Appeal (RPBA). The deadline for submission of comments was 11 September 2023.

In our response , we explain why the IP Federation is opposed to the proposal to shorten the standard period for the respondent to file the written response to the grounds of appeal to two months (Article 12(1)(c)).

For full details, click HERE. To see all our policy papers, click HERE.

IPO transformation programme: second consultation

The IP Federation submitted a response on 30 October 2023 to the second consultation on proposed law changes for the IPO’s digital transformation programme closing on 31 October 2023. The consultation contains a series of proposals for legislative changes that will remove barriers and allow the IPO to be more innovative. Areas of interest comprise:

  • series marks
  • more mediation within tribunals
  • new online document inspection service
  • public inspection of documents and requests for confidentiality
  • supplementary protection certificate (SPC) fee payment periods
  • inventors’ addresses

 

For full details, click HERE. To see all our policy papers, click HERE.

 

Text and data mining (TDM) in the UK

The IP Federation contributed to a multi-organisation letter on 10 November 2023 urging the UK Government to ensure the UK is a favourable place to develop and use safe AI, by clarifying that public and legally accessed data is available for AI training and analysis in its code of practice. This relates to text and data mining (TDM).

For full details, click HERE. To see all our policy papers, click HERE.

 

 

IP Federation meeting with JBMIA

The IP Federation had a meeting to exchange opinions with the Japan Business Machine and Information System Industries Association (JBMIA) at the London offices of Canon Europe on 1 December 2023.

IP Federation member companies introduced their intellectual property activities to JBMIA, deepening the understanding of each organisation’s policies through the exchange of opinions. We are hoping that this will enable us cooperate closely in the future and develop further this international relationship.

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

See also the Activities tab on the IP Federation website (under “Our Work”) for the latest news.

Social networking

As well as having its own website, the Federation has web presence through social networking sites, including a profile on LinkedIn and an X (formerly Twitter) account – @ipfederation. We 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.



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