A patent is defined as a legal title conferred on a person for any invention that has technical character as long as it is a novelty, there is an inventive aspect inventive step taken and can be used in the industry. [1] The three conditions were emphasized in the case of Human Genome Science v Eli Lily[2]. Anyone can apply for patent protection, and it allows the patent owner a right to prevent others from using it for commercial purposes or using it without the consent of the owner. It can cover a product and a process. The World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in article 27 provides that patents should be present in all technology fields. In this essay, I will discuss the impacts of UK patents rights before and after exiting the European Union and its effects, highlights the differences between the Unitary Patent in the European Union, and compare it with European Patent Convention, and I will finally discuss The World Intellectual Property Organization (WIPO) and its impacts on development of patent law both in EU and worldwide.[3]
Since many countries worldwide are signatories of the World Trade Agreement on Trade-Related Aspects of Intellectual Property Rights and The World Intellectual Property Organization (WIPO). Therefore, states such as India, China, The UK and The United States of America, have similar regulations. For example, the maximum period for safeguarding of patents is twenty years.[4] The difference is that many countries have adopted their own statutes for example, in the UK, there is the UK Patent Act of 1977, which provides that the internal regulation on patents in the United Kingdom, such as the language used in making the application as it provides that a person filing for patent protection can file it in any language. Still, one must provide a translation to one of the official languages, this is also similar to the Japan statute on the regulation of patents.
The current legislation governing patents in The United Kingdom is The Patents Act 1977, which implements the EU Directive under the European Patent Convention (EPC). EPC is a multilateral treaty that has been ratified by 38 member states, together with all the 28 states that form the European Union and other ten non- European Union member states such as Turkey, Switzerland, and Norway.[5] This implies that a country should not be a member of the EU to be bound by the field. EPC in article 2 provides that once a patent is granted any contracting state, it shall have the same result as a patent granted nationally. As long as one has acquired patent rights in any signatory country to the EPC, the patent is already protected at the national level. The EPC in article 4 a establishes A European Patent Organization that establishes the European Patent Office whose major task is to grant patents that the European Patent Office shall implement.
There has been a major turnover in the UK patent rights since its exit from the European Union. Since the United Kingdom is a key player in patent protection. It has always had a great impact on intellectual property rights, even before Brexit. Some of the difference between the a establishes European Patent Office (EPO) and Intellectual Property Office (IPO) regards to filing of patents. Its difference is that many countries have adopted their own statutes for example, in the UK, there is the UK Patent Act of 1977, which provides that the internal regulation on patents in the United Kingdom, such as the language used in making the application as it provides that a person filing for patent protection can file it in any language. Still, one must provide a translation to one of the official languages, this is also similar to the Japan statute on the regulation of patents.[6] Many non-UK-based companies prefer to make an application for patents at the EPO over the IPO as the latter is more economically efficient.
Moreover, in UK applications, one can file 25 claims without incurring any excess claims, and the fee is only £20 for each claim that follows. The EPO, on the other hand, imposes fees of €245 for 16 to 50 claims and €610 for 51 claims and onwards. This means that filing claims in the IPO are way cheaper than in the EPO. Furthermore, the official patent office fees in the IPO are slightly lower than in the EPO. For instance, when one is doing the searches regarding the patent application, one should do a wholesome search in considering all the matters of interest which is cheaper in the IPO as one will have to pay additional charges in the EPO, which is particularly expensive, about eight times higher than in the UK.[7]
Applications to the IPO are subject to a compliance period of four and a half years, and at the conclusion of this period, the application will be refused. While in the EPO, there are no such time limitations, and some applications can still be pending even after ten years or more after filing. For instance, if you decide to use the UK national phase from a PCT application, the UK will always give a positive opinion regarding the International Searching Authority in the International phase. On the other hand, the EPO has to conduct a supplementary search to enter the European regional phase if the EPO was not the International Searching Authority, slowing the procedure in granting patent rights.[8]
Patentability of computer-implemented inventions in the UK is decided by ascertaining the inventive contributions as provided in the claims; after that, this contribution is assed to ascertain if it falls within the excluded subject matter, for example, if it is a business method. The final stage involves the assessment of the inventive contribution if its technical nature and acceptable in the EPO. At the same time, the EPO passes the claim as acceptable whenever there is at least one technical feature in the claim. However, at the EPO, novelty and inventive steps are only assessed concerning the technical features in the claim.[9]
However, in both the Patents Act of 1977 and The European Patent Convention, for a patent to be granted, it must be novel, have an inventive concept, and can be applied in the industry. There is a slight difference Between the Patents Act and the EPC regarding things that are not treated as inventions. As Section1(2) of The Patents Act provides, computer programs are not exhaustive to the extent that a patent relates to that object. While Article 52(2) of the EPC has a different list of things considered not to be inventions which include patents for computer programs but states that patentability is excluded only to the scope to which the European patent application relates to the subject matter or activity. Although the Patents Act differs significantly from Article 52 EPC in wording, the courts in the UK have held that the court should ignore any inconsistencies between the EPC and the Patents Act because Patents Act in section 1 is aimed to translate provisions of Article 52 EPC to UK law. As a result, a text of the EPC should be treated as final.
On 23rd June 2016, the majority of the British voted for Britain to exit the European Union. This has had both positive and negative impacts regarding patent law. Since we have discussed above that the UK is a member state to the European Patent Convention (EPC) and ten members are not part of the European Union, UK exit from the EU does not make it a must for it also to exit the EPC. Since the legal basis of regulating the European, Patent system is the European Patents Convention and not the EU. Therefore, whether or not the UK is a member or not a member of the EU, it is still controlled by the European Patent Convention; hence the patents systems are not affected.
The UK is one of the founding members of the European Patent system. For more than 50 years, the European Union has experienced failures in trying to ensure that there is patent cooperation. Although there has always an agreement that there should be aa desirable patent in principle there has not always been an agreement on the details of what it should contain.[10] There was disagreements that prevented the establishment of an EU patent system especially with the litigation model and the substantive issues relating to patent rights were hardly disputed.[11] Therefore it needed to formulate a unitary patent system with a unitary effect intended to apply uniformly to all EU member states. However, the Unitary Patent and Unified Patent Court have not been approved in all EU countries such as Spain.
On the other hand, Brexit poses substantial challenges for an ambitious procedural reform aimed at simplifying and lowering the costs of patent implementation. The EU has attempted for decades to come up with a unitary EU patent that would allow application across the EU. If the unitary patent is implemented, the right holder will be able to implement a single patent across all EU member states with one patent court formed by an international consensus (and not the EU legislation). However, the court will belong to all member states that will answer questions of EU law that will come up to abide by a court’s judgment. If the UK holds on, it will not be subject to EU law, and the scheme would exclude the UK since it will be under EU law and the court of justice. The agreement was establishing this system required13 Member States with Germany, France and the UK to approve it for the system to commence its functions. So, UK’s coming out of EU means that the system will not go be applicable although remaining member states have ratified it. However, the UK ratified the Unified patent court agreement. [12]
There are some distinctions between the EPO and the European Unitary Patent. Under the EPO, an inventor has the option of protecting an invention through either a European Patent or a national patent. Applications to EPO save the cost for [parallel applications]; however, after the patents are granted, they must be verified and continue in the country where it is applicable, which is costly. At the same time, the validation process differs from country to country.[13] For example, the attorneys’ translation costs, validation fees, and representation costs. On the other hand, the unitary patents eliminate the use of complex and expensive national validation procedures. It allows for simple registration of a unitary patent.
With the unitary patent system, no fees will be required for filing and examination of an application request for unitary result or registering a unitary patent, there will be no post-grand translations after a 6-year transitional period, during this period the change shall only be necessary for only information and shall have no binding effect, a new compensation scheme for non-profit organizations EU based SMEs, higher learning institutions, and research institutions owned by the government. Will be used that should include the cost of translation of the filing of an application for patents if the application was made in an official EU language that is not English, French, or German and paid five hundred euros if there is registration of a unitary patent. [14]
The Unitary Patents shall not be applied to the EPO fragmentation of the renewal fee system. Since it will only be one course of action, currency, and deadline, it is not a must for a person to be represented. [15]The renewal fees are set at a challenging level and are only attractive for the first ten years. Still, the applicants will be able to save on the indirect costs. Under the Unitary Patents, all the post-grant administration shall be handled by the EPO, significantly lowering the costs and administrative workload.[16] However, the issue arises on whether UK will agree to apply EU law when interpreting the Unitary patent and in resolving of the disputes in court since its exit from the European Union implies that it no longer wants to be bound by EU law.
However, UK withdrawing from EU does not necessarily mean the EPC does not bind it. The Vienna Convention on the Law of treaties under artiicle54-64 governs withdrawal of a nation from a treaty. The Unitary Patent system does not have a specific exit clause; hence, Vienna Convention’s provisions on treaty law will apply. If the UK wishes to withdraw from the treaty, it must notify the other parties.[17] A party may also opt out from a treaty if the state enforcement of the treaty obligations has become impossible.[18] However, in this case, the UK can still perform its obligations. The Vienna Convention on the Law of Treaties, in article 62, also provides that a necessary change in the situation of a state may allow a state to exit from the treaty. Indeed as Art. 2 (c), 22, and article 84 of UPCA demonstrate, the UPCA is predicated in the presumption that all parties bound by the treaty are also Member States of EU. As a result, UK leaving UK would represent a significant transition in the state of affairs the parties had not anticipated. However, the VCLT in article 62, even a fundamental transition in the state of affairs may only be used as a basis for it there is a change in the state of affairs can be used as a base for its withdrawal if (a)the parties agree to be linked by the treaty, and if its impact is to alter the scope of obligations to be fulfilled drastically.[19] Hence we can conclude that the UK can still be a member of The UPC or the Unitary Patent system.
Furthermore, we should also note that the UK is still a member of the Paris convention based on Intellectual Property Rights around the world. Hence, applicants who have filed for patent protection in the UK may still claim priority in other countries.[20] Regarding the registered EU Community Design, at the end of the period for transition regarding the UK’s exit from the EU ended on 1st January 2021; hence the EU designs will not be applicable. Registered and community designs that are not registered were no longer legal in the UK.[21] Moreover, if one wants to protect the EU design in the UK, the person needs to submit a different application to the UK patent office.
The Brexit has affected the EU trademark system since it will not be binding to the UK. Therefore, UK law relating to trademarks has been amended to ensure that the existing statute granting protection of these rights was preserved to allow the UK law to continue to perform its functions smoothly. It was also important to amend most of the current reference to the European Economic Areas and the Member States that had become redundant.[22] The impacts of unitary patentsUnitary patents may be increased to covert the UK after its withdrawal from the EU has taken place. It may be achieved by agreement, permitted in article 142 of the EPC. EU law is extended to third states for instance EEA states and Switzerland.
The World Intellectual Property Organization (WIPO) was a uniting factor in regulating Intellectual Property Rights. Since before the last quarter of the 19th Century, the different nations had their national regulations to ensure there is protection of IPs. However, during the 1860s to 1870s, the different nations started adopting the idea to protect Intellectual Property Rights across borders started to be universally accepted by companies, governments, and policymakers of the increasingly industrialized countries. The Paris Convention for the Protection of Industrial property of 1883 and the Berne Convention. The different countries had their means of regulation of intellectual property rights Convention of 1866 to protect. Literary and Artistic works were established after a few negotiations. The conventions provided for establishing the International Bureau, which was united in 1970 to form WIPO.
WIPO has two main objectives: to enhance the protection of intellectual property worldwide and to allow cooperation among the intellectual property units formed by the treaties administered by WIPO.[23] Any state can be a member of WIPO as long as it is a member of the UN, a member of the statute of the International Court of Justice(iii) The general assembly of WIPO has invited the state to become a party to the Convention. [24] The European Union Member States have ratified the WIPO treaties hence members of WIPO, and the UK is still a member of WIPO even after Brexit hence bound by it.[25]
The WIPO coordinates with stakeholders to develop platforms, tools, services, and standards that will ensure the Intellectual Property Rights institutions endure they work efficiently and ensure high-quality service. WIPO’s activities include capacity building and networking by Technology Innovation Support Centers (TISCs). Platforms for e-data exchange among Intellectual Property Rights Organization tools, standards, and technical agreements. And patent information services, including the legal status of patents and providing a forum to exchange lessons and experience learned.[26] The WIPO Academy provides training that ensures the application of intellectual property rights for growth and development according to the changing IP rights. The programs include professional development, partnership programs, and distance learning programs.[27]
In conclusion, the UK Patent Act and the European Patent Convention are interconnected. And the UK exiting the UK will not affect the application of EPC in the UK. Moreover, the EU member states may extend the effect of unitary patents to apply in the UK even after its withdrawal from the EU. The extension may be done by agreement permitted by article 142 of the EPC since EU law has extended to non-European States such as Swaziland. Or rather, the EU and the UK could make a decision that the UPR could be extended to two countries, or EU may decide to permit the EU member states that are taking part in the UPR to agree with the UK.[28]
REFERENCES
Treaties, Conventions and Statutes
Berne Convention
European Patent Convention
The Patents Act 1977
World Intellectual Property Organization
Vienna Convention on The Law of Treaties
Case Law
Human Genome of Science v Eli Lily (2012) R.P.C.6
Books
Arnold, Richard, Lionel AF Bently, Estelle Derclaye, and Graeme B. Dinwoodie. “The Legal Consequences of Brexit through the Lens of IP Law.” Judicature 101, no. 2 (2017).
Ohly, Ansgar, and Rudolf Streinz. “Can the UK stay in the UPC system after Brexit?” Available at SSRN 2982305 (2017).
Websites
Changes to EU and international designs trademark Protection, (2020) <https://www.gov.uk/guidance/changes-to-eu-and-international-designs-and-trade-mark-protection
Sally Shorthose, 12th January 2021 Brexit: English Intellectual Property Law Implications< https://www.twobirds.com/en/insights/2016/uk/brexit-english-intellectual-property-law-implications
https://www.wipo.int/members/en/details.jsp?
Unitary Patent https://www.epo.org/law-practice/unitary/unitary-patent.html
https://www.epo.org/law-practice/unitary/unitary-patent.html
Patent Protection in The EU <https://www.ec.europa.eu/growth/industry/strategy/intellectual-property/patent-protection < Accessed on 25th March 2022.[1] [2012] R. P.C.6
Vivek Maurya, Time Taken to Grant Patents in Different Countries<https://www.blog.ipleaders.in/time-taken-to-grant-a-patent-in-different-countries-a-comparative-analysis< Accessed on 25th March 2022
European Patent Convention, https://www.franksco.com/services/patents/european-patent-convention
[1] Patent Protection in The EU <https://www.ec.europa.eu/growth/industry/strategy/intellectual-property/patent-protection < Accessed on 25th March 2022.
[2] [2012] R. P.C.6
[3] Ibid (n-1)
[4] Vivek Maurya, Time Taken to Grant Patents in Different Countries<https://blog.ipleaders.in/time-taken-to-grant-a-patent-in-different-countries-a-comparative-analysis< Accessed on 25th March 2022
[5] European Patent Convention, https://www.franksco.com/services/patents/european-patent-convention/
[6] ibid
[7] David Keston, UK VS EUROPEAN PATENTS <https://creationip.com/wp-content/uploads/2020/09/CIP_UK_EU_PATENT_Guide_v20200925.pdf
[8] ibid
[9] ibid
[10] Thomas Jauger, The Unitary Patent System Post-Brexit (2017)
[11] ibid
[12] Arnold, Richard, Lionel AF Bently, Estelle Derclaye, and Graeme B. Dinwoodie. “The Legal Consequences of Brexit through the Lens of IP Law.” Judicature 101, no. 2 (2017).
[13] Unitary Patent https://www.epo.org/law-practice/unitary/unitary-patent.html
[14] https://www.epo.org/law-practice/unitary/unitary-patent.html
[15] ibid
[16] ibid
[17] Article 65 of The Vienna Convention on The Law of Treaties
[18] Article 61 of The Vienna Convention on The Law of Treaties
[19] Ohly, Ansgar, and Rudolf Streinz. “Can the UK stay in the UPC system after Brexit?” Available at SSRN 2982305 (2017).
[20] Sally Shorthose, 12th January 2021 Brexit: English Intellectual Property Law Implications https://www.twobirds.com/en/insights/2016/uk/brexit-english-intellectual-property-law-implications
[21] Changes to EU and international designs trademark Protection, 3rd December 2020https://www.gov.uk/guidance/changes-to-eu-and-international-designs-and-trade-mark-protection
[22] ibid
[23]. May, Christopher. “The world intellectual property organization.” New political economy 11, no. 3 (2006): 435-445.
[24] ibid
[25] https://www.wipo.int/members/en/details.jsp?
[26] World Intellectual Property Organization
[27] World Intellectual Property Organization
[28]Ohly, Ansgar, and Rudolf Streinz. “Can the UK stay in the UPC system after Brexit?” Available at SSRN 2982305 (2017).
write