The grace period provisions of the CPTPP do not necessarily mean the UK will have to leave the EPO.
by Dr Coreena Brinck,
UK Chartered Patent Attorney, European Patent Attorney
An article based on this piece was published by IAM on 4th February 2021. You can find the article here: UK plan to join CPTPP raises questions about European Patent Organisation membership – IAM Media (Membership is required to view the full article on IAM)
The recent announcement that the UK is seeking to sign up to the Comprehensive and Permissive Trans Pacific Partnership (CPTPP) trade deal appears to have come as a surprise to many. The IP profession, however, has kept a watchful eye on this possibility since Brexit was announced. UK membership of the CPTPP would open up access to Pacific Rim markets worth around 13% of Global GDP. The UK has a long tradition of trading globally so it makes sense to grow trade with other CPTPP signatories: New Zealand, Australia, Chile, Peru, Mexico, Singapore, Malaysia, Viet Nam, Brunei Darussalam, and Japan. The potential here for UK trade post Brexit is vast but IP provisions set out in the CPTPP will require changes to existing UK patent law. In particular, the CPTPP grace period of 12 months for certain pre-filing disclosures (PFDs) to be non-prejudicial when assessing the novelty of a later filed patent application. This is significantly different from the current grace period provisions in the European Patent Convention (EPC) which mostly prevent patent rights from being sought after an inventor has disclosed their invention.
Following Brexit, could the UK’s proposed membership of the CPTPP herald another schism with its European neighbours
If the European Patent Organisation (EPO) member states support the UK remaining and presuming the UK wishes to, it may be possible. The UK is an active and deeply embedded member of the EPO but allowing the UK to remain after it has adopted a grace period will set a precedent. The EPO currently has two member states, Turkey and Estonia, who have retained 12 month grace periods for national patents which diverge from the EPC grace period provisions. Member states of the EPO are, however, expected to eventually harmonise their patent law with EPC provisions. UK patent law clearly diverges from the EPC if it adopts the CPTPP grace period.
So what are the implications of the UK enacting the CPTPP grace period provisions in UK patent Law?
Firstly, our standing within the EPO will be affected but whether this requires the UK to leave the EPO immediately is another matter. Continuing membership of the UK in the EPO may depend on the extent to which any changes to UK patent law result in courts differentiating between EP patents validated in the UK and national patents filed at the UK Intellectual Property Office (UKIPO). Case law takes time to develop and if, in the meantime, the EPO were to eventually adopt a similar grace period, the UK should be able to remain a member. The CPTPP grace periods could increase uncertainty for third parties and would complicate the patent system in the UK. Practical issues are available to reduce uncertainty such as accelerated publication in the event a grace period for a PFD is claimed for a patent filing, but what conditions any statement for claiming would have to comply with are currently unknown. The law will also have to consider defences for intervening users (DIUs) between the public disclosure and any later filed patent application. How will the UKIPO assess and distinguish prejudicial from non-prejudicial disclosures? What about prior art or conflicting applications filed by third parties? How will PCT applications be treated?
Is it likely the EPO eventually adopt a grace period consistent with the CPTPP?
It is possible that the adoption of a UK grace period in line with the CPTPP could motivate the EPO to adopt a similar provision in the EPC. However, it is likely that the grace period would need to be a “safety-net” and be internationally harmonised in the key global patent systems. If the US or China were to then join the CPTPP, the ground would be better paved for the EPO to adopt the same grace period provisions.
Has the EPO considered adopting a grace period before?
Yes, the issue of whether the EPO should adopt a grace period was addressed by the Tegernsee Process 2011-2015 which was composed of heads of delegations and representatives of Denmark, France, Germany, Japan, the UK, the USA, and the EPO, and their discussions can be found in the Report of the Discussions – EPO Symposium on Harmonisation: Tegernsee and Beyond. Following on from the work of this group, a Group B+ and B+ sub-group were set up. The B+ sub-group is composed of representatives from Australia, Canada, Denmark, Germany, Hungary, Japan, South Korea, Spain, Sweden, the UK, the USA and the EPO. Their Response Document (epo.org) to an earlier IT3: Elements Paper discusses in detail the benefits and challenges of using grace periods and covers many of the implications mentioned above.
Who will benefit from such a grace period being adopted by the UK?
Any entity that views the UK as an important manufacturing base, market or shipping destination may benefit. Whilst the use of a suitable safety-net type grace period is often stated to benefit SMEs seeking patent protection, this has to be balanced against the uncertainty such SMEs will face if they conduct a freedom to operate search. Larger organisations active in standards forums could benefit more from GB national patent filings if the CPTPP grace period was available as the time pressure to file a patent application prior to making any standards submission will be removed. Moreover, the patent application could be tailored to confirm with wording agreed for the standard after submissions are made.
The grace period provisions of the CPTPP do not necessarily mean the UK will have to leave the EPO. However, it requires political support from the UK and other member states to remain and, unless the EPC is amended to have a similar grace period, UK case law will diverge from European case law as regards the assessment of novelty destroying PFDs. Whether, following the departure of the UK from the Unitary Patent and Unified Patent Court after Brexit, the other member states will have the will to accommodate the UK remaining in the EPC remains to be seen.
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