#AIPPI2014 Canada joins the 21st Century

I am writing this at an airport boarding gate on my way to Toronto for the AIPPI conference. I am mainly thinking trade mark issues as I contributed to the UK response on Madrid system central attack Question 239. You can find all the national Group reports here.

Although Canada is hosting the conference it is one of the few territories that does not use WIPO's Nice Classification or belong to the Madrid Protocol,  but it seems that is all set to change now that the Canadian government has passed its Budget Implementation Act which included the necessary amendments to Canadan law to allow Canada to join Nice, Madrid and the Singapore Trade Mark Treaty. The changes do not include abolition of relative grounds examination or the three year use period. So it's not surprising that the Canadian group support the basic mark requirement in Madrid, but like the idea that dependency should shrink to three rather than five years.

With a five year dependency, late starting Canadian businesses would otherwise have a greater vulnerability to central attacks on their International registrations, than their counterparts in European countries, for example, that require five years to pass before their national marks can be challenged for non-use.  It would be interesting to know how many central attacks have been made on non- use in territories where this could happen now. I can only think of China. Their group report does suggest it may be a concern as they note:

The Madrid filing might focus on worldwide use instead of national use, then non-
use cancellation against basic registration may bring risk of central attack, which
woud be unreasonable to the trademark registrant.

The UK Group also discussed that a three year dependency would be sufficient.

One interesting aspect of many reports s that central attack is little used. This seems odd as in my practice, which is necessarily modest I see several cases a year where it is under consideration. It would be useful if central attackss were required to be notified to WIPO while they are in progress rather than just when they succeed.

I hope I will b able to discuss these and other issues with fellow travelers when you arrive in Toronto

Grace as a Safety Net

Tegernsee where the IPOs met

Yesterday I attended a roundtable meeting organised by the UK IPO to discuss how or indeed whether they should take forward proposals for the introduction of a grace period following the research carried out by a group of national patent offices under the romantic name of the Tegernsee user consultation. The report is here.

As we introduced ourselves around the table (an extraordinarily long and rectangular one to be construed as "round") I mentioned that I blogged. As a result, when the introductions were complete, someone suggested that the meeting should be confidential. It was conceded that Chatham House rules would apply so that you shall never know who attempted to suppress blogging freedom. Now of course I feel obliged to report extensively on the prospective delights of the grace period.

You may have noted that I find the idea attractive and was very encouraged by the adoption by AIPPI of support for a no declaration grace period in October 2013.

Those around the table included a large number representing CIPA (whose response to the Tegernsee query is here and an undated paper in opposition to grace periods is here)  and some other professional or trade bodies as well as some industry representatives and other practitioners including active patent litigators. I represent no one except the world as I see it informed by my contact with entrepreneurial clients not all of whom are micro-entities as many assume.

The USA and Japan already have grace periods. Most of us are familiar with the US law but there seemed to be some disagreement around the table whether the requirement for an information disclosure statement was the equivalent of a mandatory declaration. The Japanese law is more complex (this 2007 article by a respected friend may help) and does require a declaration at the time of filing. The enthusiasm of the Japanese patent office to make their grace period effective is measured by the fact that they sent a delegate to this roundtable and are organising an event in Tokyo which will be attended by the UK IPO on 10 July (registration closes tomorrow).

Hotly disputed issues included

• Whether an invention was saved by being patented after a graced disclosure or set free the world to enjoy at an earlier date. Pragmatically this seems to depend on whether you manage a pharmaceutical company (saved) or a university inventor who would prefer a Nobel Prize.
• Whether the introduction of a grace period would lead to changes in corporate behaviour. For example would companies deliberately make graced publications in order to create novelty destroying prior art against their competitor's application while allowing their own to proceed. There may be some logical flaws in this particular idea but it is certainly worth trying to dream up possible abuses before the legislation is put in place.
• Whether you need a detailed declaration, a tick box or nothing at all to benefit.
• Whether an application made using the grace provisions be published immediately.

There did however seem to be a degree of consensus that any grace period should be before the priority date and the more countries that had harmonised legislation the better. In principle, any reasonable amount of harmonisation requires an amendment to the EPC which would necessarily flow through to unified patents, but is nevertheless perceived by all as a monumental obstacle. Let us hope we are proved wrong. Even so, the Japanese approach of looking after their own might be something that the UK government should look at.

What does seem apparent to this commentator is that industry voices (for this read pharma and others who have the ear of the PM and were vociferous at even this table) will have the most influence and the views of open innovators who prefer to eschew the patent system, or indeed start-up companies who need a little more freedom to evaluate their ideas in situations that might be confidential and then again might not be, before deciding whether a patent application is justified, will struggle to be heard.

If you want to make your views known, you are at liberty to contact Sean Dennhey in the IPO

I shall also look forward to hearing what the CIPA policy on grace periods is or is going to be if we are able to create any consensus now that we are led by pharma. 

This is only the briefest of notes and many other roundtablers would probably have a completely different perspective. I would be the first to admit that my reporting is coloured by my position that harmonising with the US grace period (no declaration) would lead to significant benefits for the entrepreneurial culture of the United Kingdom and not necessarily more patents. If your views differ or you are good at crystal ball gazing to envisage potential abuse or other consequences, you are very welcome to comment and advocate your position here.

PS the EPO representative did learn that her organisation's attitude to added subject matter created much disharmony.

Let there be Grace for Inventors

This post is about the desirability of a grace period in the patent system. A grace period "forgives" an inventor
who has made a disclosure within the grace period before filing his patent application, by excluding from the "prior art" that disclosure and ones derived from it.

There is a grace period in effect for registered design protection at both UK and Community level and in the USA. 

I belong to the British Group of AIPPI.  It is an excellent organisation. It is part of an International organisation. Each year every national group is invited to provide answers to the same questions of interest in Intellectual Property Law. Then all of the papers are considered in a closed caucus at an International meeting and Resolutions are forthcoming. Don't bother going to the expensive International meetings because you can't get into the closed caucus so its all rather frustrating, but they do publish the Resolutions of the "important" people who are allowed in.

This year one of the questions, Question 233 concerned Grace Periods for patents. I and another SOLO James Peel were  part of the group. Initially the group was very much in favour of maintaining the legal certainty that the existing UK system provides. However I managed to make some points that remained in the final UK report, in particular the submissions says

There is some suggestion that SMEs would find an economic benefit from a wider grace period. This is primarily said to be due to the grace period providing a review period between disclosing the invention and filing a patent which may allow the SME to seek investors and/or assess the likely commercial success of the patented product before incurring the professional fees associated with filing a patent. It may also avoid the risk of SMEs making decisions about patent filings before carrying out effective market research and testing in order to ascertain whether the patent would be of value to them.

In any event, over in Helsinki the Resolution was passed in favour of an Internationally harmonised one year grace period without a requirement to make a declaration that the inventor is relying on the grace period.

How, though, are we to convince Vince Cable to put some political force behind the idea? The Unitary Patent Regulation does not provide for a grace period and implementing that and its associated Tribunal against the majority will of the professions, is absorbing all the patent related enthusiasm of the government. Still it would be nice if the grace period were not forgotten. Who else supports it?