IPPro Issue 002

Brexit Update
With more certainty for patent attorneys than others in the IP
profession over their rights post-Brexit, what are the pressing
issues for patent attorneys and firms in the Brexit negotiations?
CIPA has worked with colleagues inside and outside government to
progress the ratification of the Unified Patent Court (UPC) Agreement.
The government has now completed all the necessary legislative
steps and CIPA hopes that formal deposit of ratification of the UPC
Agreement by the UK will happen soon.
Ratification by Germany will still be needed for the agreement to
come into force.
The UPC will be a better and more attractive system with the full
participation of the UK, including as the base for the life sciences
branch of the central division of the UPC. Another issue that requires
attention is the Nagoya Protocol to the Convention on Biological
Diversity (CBD) which obstructs important research on genetic
resources, leading to delay or complete abandonment of crucial work
in areas such as human health and food security.
The protocol needs to be interpreted and enforced in a way which
gives proper weight to all the objectives of the CBD, as well as to
other important public policy objectives.
The EU regulation that applies it fails to do this.
Cards on the table
CIPA has a strong preference for the UK to participate in the unitary
patent and UPC system and for this to continue after Brexit. This
will be best for the UK, for the users of the system, and for the other
member states.
CIPA has published papers and lobbied the government to propose
a sensible and practical framework for interpreting and applying the
Nagoya Protocol in the UK, and urges that the regulation must not be
transposed unchanged into UK law upon Brexit.
Confusion over rights of representation post-Brexit has left some
wondering how patent attorneys will be affected. Stephen Jones, president
of the Chartered Institute of Patent Attorneys, sheds light on the situation
Barney Dixon reports
Rights of representation is a key issue for trademark attorneys in
the Brexit negotiations. Where do patent attorneys stand?
Because the European Patent Convention is not EU legislation
and the European Patent Office (EPO) is not an EU institution, the
European patent system will not be affected by Brexit.
The UK’s 2,300 European qualified patent attorneys will continue to
represent their clients at the EPO after the UK leaves the EU. It will
be business as usual.
This is good news for the UK because the UK’s patent attorneys
contribute up to £1 billion every year to the British economy. The
majority of this comes in fee income from foreign companies choosing
to use British representation.
Of the 40,000 European patent applications filed every year by the
UK’s European patent attorneys, a large proportion are for overseas
clients showing the high regard the rest of the world has for the UK
patent attorney profession. We punch above our weight in Europe,
filing one third of all European patent applications.
Unlike European patents, trade marks in Europe are granted by an EU
institution—the EU Intellectual Property Office, and there is a concern
that UK trade mark attorneys may lose their rights of representation
upon the UK leaving the EU.
The Chartered Institute of Patent Attorneys (CIPA) believes this would
be seriously detrimental to users of the system and disproportionately
so for SMEs as well as smaller professional firms. Along with all
other UK representative bodies CIPA continues to press the UK
Government for clarity on this issue.
What are the common misconceptions around this?
CIPA has devoted considerable time and resources to promoting this
‘business as usual’ message.
The EPO has helped publicise this message, issuing unequivocal
statements on its website.
Despite this, we continue to receive both first hand and anecdotal
evidence that this key message is still poorly understood. This is
perhaps not surprising.
Europe has many meanings in different contexts and it is easy
to be confused, especially for those living and working outside
of Europe.
CIPA has led delegations to our key international markets and
explained the situation to sister patent attorney organisations,
industry groups and the UK government’s global IP attaché network,
relying on these valued friends and colleagues to spread the message
that they can confidently continue to use UK based patent attorneys
for their EPO work and that European patents will still be granted for
the UK before and after Brexit.
What is wrong with the EU regulation that applies to the
Nagoya Protocol? Why is it important that this is not
transposed into UK law?
The Nagoya Protocol is currently enforced throughout the EU
by EU Regulation 511/143, which is so dauntingly complex and
legally onerous that it discourages important medical research
using non-human genetic resources such as animals, leaves
or microbes. There is evidence that some biotech companies
are simply avoiding using biological material obtained after the
protocol came into force, 12 October 2015, because it is simply
too complicated to do so.
As a result, potentially life-saving research into treatments for
disease outbreaks may be abandoned—or not started at all. Also,
important UK research could migrate to the USA, which has not
ratified the protocol. Brexit provides an opportunity to improve
this flawed legislation.
The regulation is over-prescriptive in two respects:
First, it fails to balance the third objective of the Convention
on Biological Diversity—benefit-sharing—with the other two
objectives: to promote its sustainable use and to share equitably
the benefits resulting from such use. Making research more
difficult frustrates the development of new uses for genetic
resources. Fewer new uses mean fewer benefits to share.
Secondly, it disregards all other important objectives of public
policy. These include research freedom in general, and in particular
easing research on vital objectives such as human health and food
security. Even to the extent of not being able to monitor or treat
infectious disease.
A further worry is the suggestion that the protocol should extend
to mere information, for example details of the structure of
biological material in a document, and that a similar protocol be
introduced to cover access and benefit sharing in areas beyond
national jurisdiction, namely the oceans. Given the stifling effect of
the current law it seems inappropriate to extend it further.
What sort of framework does CIPA suggest to replace this?
What the UK should seek to do—as a long term aim—is to
establish a sensible and practicable framework for interpreting
and applying Nagoya. This should recognise the rights of provider
countries to control their genetic resources (that is to say, samples
of resources for which they are the country of origin) while those
samples are within their boundaries. Sovereignty applies within
national boundaries, not worldwide. Once such material was
outside these boundaries, the rights of provider countries would
be limited to enforcing contractual terms against parties with
whom they had made access agreements.
To introduce a new law in the UK conforming with such notions
would require new legislation, drafted with some care. But relaxing
the grip of regulation 511/14 on UK research is too urgent to wait.
On Brexit, the Regulation could be transposed into UK law in the
Great Repeal Bill, but with specific exceptions.
Article 4.8 (imposing special requirements on pathogen research)
could be omitted, and preferably also Article 7.1, so that any
obligation to show ‘due diligence’ would be deferred until a
product was ready for launch. This could be combined with
instructing the enforcing agency to concentrate on ensuring
that any genetic resources sample collecting in Nagoya provider
countries was conducted in accordance with local laws.
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