Category: Patent Prosecution

UK IP Rights After Brexit

With the Brexit story continuing and no-one still yet knowing what the final outcome will be, I’m looking at what is likely to happen to UK intellectual property rights if, when and how the UK leaves the European Union (EU), particularly in the scenario of a no-deal Brexit.

Recently, the UK Intellectual Property Office (UKIPO) published new guidelines as to how IP rights will be handled in the event of a no-deal Brexit.

If your business has IP rights in the UK, how might you be affected?

 

Patents

There are currently two types of patent right available in the UK: a UK (GB) national patent filed with the UKIPO, and a UK-validated European patent filed with the European Patent Office (EPO).

If the UK leaves the EU without a Brexit deal then the impact upon these existing patent rights will be minimal.

UK patents granted by the UKIPO will largely be unaffected as the UKIPO is not an EU institution.  A few areas of UK patent law originate from EU law and regulation, and their implementation, and thus have the potential to be affected.  These include supplementary protection certificates (for pharmaceutical products and agrochemicals); biotechnology inventions; compulsory licensing; and clearance to conduct certain studies, trials and tests in relation to patented pharmaceuticals.  However, the relevant EU legislation (or its domestic implementation) will be retained in UK law under the EU Withdrawal Act 2018, and thus, after exit day, things will continue as they do now.

European patents prosecuted and granted by the EPO under the European Patent Convention (EPC) that designate the UK will also be unaffected.  Again, the EPO is not an EU institution.  Being a contracting state to the EPC is separate from being a member of the EU.

There is a third patent right currently being developed in Europe, the unitary patent, that is close to coming into effect.  This is a new pan-European patent and associated court system, intended to cover all EU member states.  Its jurisdiction will be the EU, and, at the time of writing, the unitary patent has not yet come into effect.

 

Trademarks

If the UK leaves the EU without a deal then the following IP rights will no longer be valid in the UK:

  • Protected trade mark registrations, granted by the EU Intellectual Property Office (EUIPO)
  • Protected international trade mark registrations, filed under the Madrid Protocol at the World Intellectual Property Organisation (WIPO), designating the EU

UK law is being revised such that, from exit day, comparable UK trade marks will be created for all EU registered trade marks, and for all international trade mark registrations (under the Madrid Protocol) that designate the EU, provided they are registered before exit day.

These new rights will be treated as if they had been applied for and registered under UK law.

For any pending applications, applicants will be able to apply to register a UK trade mark (subject to certain conditions) within nine months after exit day.

These changes will occur at no cost to the holder of the respective IP rights.  However, for pending applications, the standard UKIPO fee structure will apply as these will be considered a new application.

 

Designs

Similarly, if the UK leaves the EU without a deal then the following IP rights will cease to be valid in the UK:

  • Registered community designs (RCDs), granted by the EUIPO
  • Protected international design registrations, filed under the Hague Agreement at WIPO, designating the EU
  • Unregistered community designs (UCDs)

UK law is being revised such that, from exit day, comparable UK registered designs will be created for all EU registered community designs, and for all international design registrations (under the Hague Agreement) protected in the EU, provided they are registered before exit day.

These new rights will be treated as if they had been applied for and registered under UK law.

For any pending applications, applicants will be able to apply to register a UK registered design (subject to certain conditions) within nine months after exit day.

Unregistered community designs that protect a design in the UK will continue to provide protection in the form of a UK continuing unregistered design.  This will arise automatically and will continue for the remaining term of the relevant UCD.

These changes will occur at no cost to the holder of the respective IP rights.  However, for pending applications, the standard UKIPO fee structure will apply as these will be considered a new application.

 

Next Steps

There are further specifics, constraints and details for each type of right.  For further information and advice as to how this might affect your business, contact the UKIPO and / or a registered IP attorney.

Alistair Curson

 

References

Burnett-Hall, G. (2018). “Brexit & Patents”. Retrieved March 30, 2019, from: https://www.marks-clerk.com/MarksClerk/media/MCMediaLib/Reports/Brexit-series-Patents.pdf

European Patent Office. “Unitary Patent & Unified Patent Court”. Retrieved March 30, 2019, from: https://www.epo.org/mobile/law-practice/unitary.html

Marks & Clerk. “What countries will the Unitary Patent and Unified Patent Court cover?”. Retrieved March 30, 2019, from: https://www.marks-clerk.com/Direct-Access-Pages/What-countries-will-the-Unitary-Patent-and-Unif.aspx#.XJ62eJgzaHs

UKIPO. (2019, March 21). “Changes to trade mark law in the event of no deal from the European Union”. Retrieved March 30, 2019. from: https://www.gov.uk/government/publications/changes-to-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal/changes-to-trade-mark-law-in-the-event-of-no-deal-from-the-european-union

UKIPO. (2019, March 22). “Changes to registered design, design right and international design and trade mark law if the UK leaves the EU without a deal”. Retrieved March 30, 2019, from: https://www.gov.uk/government/publications/changes-to-design-and-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal/changes-to-registered-design-design-right-and-international-design-and-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal

UKIPO. (2019, March 22). “IP and Brexit”. Retrieved March 30, 2019, from: https://www.gov.uk/government/publications/ip-and-brexit-the-facts/ip-and-brexit

Patent Pendency and the Value of Strong IP Analytics

What is Pendency?

Patent pendency is a measure of the time elapsed between actions taken by the applicant for a patent and subsequent responses from the patent office at which the application was filed.

One measure of pendency often of interest to applicants is the time between first filing and the final decision (ideally leading to issuance or grant) of the subsequent patent.  For some purposes, however, pendency may also be measured according to other time points in the prosecution including requests for examination and first office actions.

Why Be Concerned About Pendency?

There can be many benefits to minimising the pendency of patent prosecution and securing the granted right as quickly as possible.

A patent is a legal right that permits the owner to stop others from working their invention.  The sooner a patent is granted, the sooner these rights can be enforced to protect an invention in the market.

Inventors and businesses working with fast-moving technologies, or those with short product life-cycles, will favour short pendency times in order to maximise the value of their IP through both sales and licensing.  Further, securing the patent rights puts the business in a stronger position to raise funding and further support its growth.

Extended pendency, however, is not necessarily something to be avoided, and can be strategically optimised.

In certain industries, such as the pharmaceutical sector or some emerging technologies for example, there may be additional regulatory delays in taking a product to market that are separate from the patent prosecution process.  Here, the minimisation of pendency may simply be viewed as less of a concern.  Nonetheless, the clock on the life of a patent is still ticking whether or not it has been granted.  Adopting good practice to streamline the prosecution process may still reduce costs and strengthen a business’s position by having a granted patent.

Extended pendency can also be a strategic tool.  Choosing a PCT filing approach over a national one can give the applicant some control over certain milestones and pendency measures.  Some decisions can be legitimately delayed to allow additional time to obtain necessary information of a commercial or competitive nature that ultimately strengthens the long-term position of the business whilst still capturing an early priority date for the patent right.

Factors Affecting Pendency

Some stages of the patent prosecution process and the time they take are governed by schedules set out in law and regulation.  Further to this, examiner capacity and PTO workload can affect pendency and be beyond the control of the applicant.

The technical scope and complexity of the claimed invention can also cause some patent applications to prosecute more slowly than others.  However, this doesn’t need to be a serious rate limiting factor and there are a number of ways an applicant can influence the pendency of their applications.

How Can the Applicant Influence Pendency?

Adopting good practice and engaging strong IP search and analytics early on in the process can enable applicants to streamline the prosecution of their applications.  It increases the likelihood of a successful outcome and being awarded the IP protection the business requires.  It also saves time, cost and resource minimising unnecessary correspondence and discussion with patent examiners, and can reduce the risk of subsequent successful challenges to the IP.

Having a clear understanding of one’s invention, business plan and the competitive landscape is essential to determining which IP right(s) and filing strategy(ies) would be best to adopt.  This ensures the most appropriate IP rights are pursued and the necessary protection secured as quickly as possible.

Submitting a high-quality application will also assist in minimising pendency times.  This starts with the quality and clarity of disclosures from the inventors.  The keeping of good records and the engagement of the inventors in drafting the application are important here.  A sound prior art search is also essential to understanding how the invention sits within the prior art base and will assist in drafting a strong application.  The higher the quality of the application, the greater the likelihood of a swift and successful passage through the application process as requests for amendments and additional examiner work can be minimised.

The correspondence that occurs between the applicant and the examiner can be smoothed by a well-written application to begin with.  It’s important to respond in a timely manner with well-thought through, clear answers.  Inventors also need to be aware that their involvement doesn’t end with the initial filing and that they may be required to assist the attorney with examiner questions.  The inventors’ timely and accurate responses here can also streamline the overall process.

Pendency at IPONZ

According to WIPO statistics, pendency at IPONZ, for both first office actions and final decisions, has improved significantly between 2011 and 2016. This is excellent news for applicants filing in New Zealand.  Nonetheless, applicants can still help themselves and their businesses by adopting some of the approaches discussed above.

Have a clear understanding of your invention and how it sits within your business.  Conduct IP research and analytics, and engage your inventors, to understand the landscape, draft strong applications and subsequently monetise your IP.  Respond promptly to office actions to streamline the prosecution of your applications.

Alistair Curson

 

References:

Eggers WD, Turley M, Kishnami P. (2018, June 19). “The Future of Regulation: Principles for Regulating Emerging Technologies”. Retrieved November 27, 2018, from: https://www2.deloitte.com/insights/us/en/industry/public-sector/future-of-regulation/regulating-emerging-technology.html

Henry M. (2017, September 21). “9 Factors Affecting the Cost of Patent Protection”. Retrieved November 23, 2018, from: https://www.henrypatentfirm.com/blog/9-factors-affecting-the-cost-of-patent-protection

Mitra-Kahn B, Marco A, Carley M, D’Agostino P, Evans P, Frey C, Sultan N. (2013, June 26). “Patent Backlogs, Inventories and Pendency: An International Framework”. Retrieved November 23, 2018, from: http://citeseerx.ist.psu.edu/viewdoc/download?doi=10.1.1.422.4248&rep=rep1&type=pdf

The Trilateral Co-Operation. “Glossary of patent related terms”. Retrieved November 22, 2018, from: https://www.trilateral.net/glossary.html#p

World Intellectual Property Organisation. (2017). “World Intellectual Property Indicators 2017”. Retrieved November 22, 2018, from: http://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2017.pdf