Category Archives: Legal policy

Covid 19 – an open letter from the UK IP Minister

Well, perhaps. This article suggests that the UK’s Intellectual Property Minister, Amanda Solloway MP, should write an open letter on the subject of infringement of IP, in relation to developing and making urgently-needed products to deal with the Covid 19 pandemic. Draft text of a letter, written by IP Draughts for her consideration, appears below.

This article is prompted by several conversations and exchanges of emails that IP Draughts has had in recent days. It seems that many people (students, scientists, business people and others) have risen to the challenge of developing, making and distributing products that are urgently needed by the National Health Service and the nation. Examples that IP Draughts has been made aware of in recent days include:

  • oxygen concentrators
  • mechanical ventilators
  • 3D printing of facemasks and airflow dividers
  • apps to predict whether someone is infected
  • apps to track the development of the virus across the population
  • apps to provide reassurance to people in isolation

A concern that has been raised more than once is whether these activities may infringe the IP of others, and whether anything can be done at a national or international level to remove this risk. This concern has probably been stimulated partly by the news from Italy that someone has been making a ventilator valve using a 3D printer, for use in hospitals. Apparently they had asked the original manufacturer for design drawings and had been refused and threatened with an IP infringement suit.

The facts of this story have subsequently been disputed, but they raise an understandable concern. Some people in the IP community feel that reassurance needs to be given to people doing their best in a national emergency, that they are unlikely to be sued.

But any such reassurance is ultimately only someone’s opinion. No matter how unlikely you think it that a reputable company would trash their reputation by suing someone who is trying to save lives, there is nothing to stop them from doing so. Or is there?

There are provisions in UK IP legislation (and, IP Draughts suspects but doesn’t know, in the laws of other countries) that enable the UK government to override IP laws.

For example, section 55 of the Patents Act 1977 provides:

…any government department and any person authorised in writing by a government department may, for the services of the Crown and in accordance with this section, do any of the following acts in the United Kingdom in relation to a patented invention without the consent of the proprietor of the patent…

The section then lists various activities that would normally constitute patent infringement.

Section 59 of the same Act provides an alternative route. It includes the following provisions:

During any period of emergency within the meaning of this section the powers exercisable in relation to an invention by a government department or a person authorised by a government department under section 55 above shall include power to use the invention for any purpose which appears to the department necessary or expedient;

(a) for the efficient prosecution of any war in which Her Majesty may be engaged;

(b) for the maintenance of supplies and services essential to the life of the community;

(c) for securing a sufficiency of supplies and services essential to the well-being of the community; …

Similar provisions apply to certain other types of IP. For example, in relation to unregistered design right, section 240 of the Copyright, Designs and Patents Act 1988 includes the following provisions:

(1) A government department, or a person authorised in writing by a government department, may without the licence of the design right owner—

(a) do anything for the purpose of supplying articles for the services of the Crown, or

(b) dispose of articles no longer required for the services of the Crown;

and nothing done by virtue of this section infringes the design right.

(2) References in this Part to “the services of the Crown” are to—

(a) the defence of the realm,

(b) foreign defence purposes, and

(c) health service purposes…

On a slightly different topic, where IP has been generated under a contract with the government, the IP may be owned by the contractor but subject to a contractual equivalent to the Crown user provisions mentioned above, to allow the government to make use of the IP and authorise others to do so. For example, IP Draughts has seen funding agreements from the Department of Health that include such provisions.

To implement provisions of this kind, a government minister is required to take a formal decision, and in the case of section 59 of the Patents Act 1977 an Order in Council is required to declare a “period of emergency”.

Thus, the government has several levers of power to ensure that people responding to the Covid 19 pandemic are not sued for IP infringement.

With this in mind, and with a view to encouraging people to do what they can to help the NHS and the nation through the present crisis, IP Draughts proposes the following draft statement, or open letter, from the relevant government minister. Given that Amanda Solloway is both the IP Minister and the Minister for Science, Research and Innovation, she would seem ideally placed to issue such a statement.

For the avoidance of doubt, IP Draughts waives any IP rights that he may have in the following statement!

IP Draughts’ draft statement for the IP Minister to issue:

Covid 19 and the use of intellectual property (IP) for the public benefit

It has been inspirational to see the public responding so generously to appeals for help during the current pandemic. Within the science and technology communities, we have seen hundreds of initiatives to help solve shortages of vital equipment such as ventilators, face masks and hand sanitiser. There have also been initiatives to improve our understanding of the spread of the disease, including diagnostic tools and tracker apps. On behalf of the UK government, I would like to express our strong support and appreciation for initiatives of this kind.

Some of the people involved in these and similar initiatives have expressed concerns that they may be sued for infringement of third party intellectual property. For example, a scientific technique may be patented, or a product may make use of existing designs that are protected by design rights.

It would be extremely concerning if anyone who is trying to develop, make or supply products to help with the current emergency were to be threatened or actually sued for IP infringement.

The government would like to remind IP owners that it has statutory powers known as Crown user provisions, that enable the government to use, and authorise others to use, IP in the national interest. The government will not hesitate to implement those powers where appropriate.

However, the government hopes that it will not be necessary to devote time and national resources to implementing such laws. It trusts that IP owners will voluntarily cooperate to ensure that urgent needs are met (e.g. by voluntarily supplying designs and blue prints of their products where required), and refrain from asserting IP rights against those who are trying to meet those needs.

 

6 Comments

Filed under Intellectual Property, Legal policy

Short-term politics override IP national interest

What can’t be cured must be endured.

The UK government announced yesterday that it would not be seeking UK involvement in the Unified Patent Convention (UPC). This news is dismaying to many IP professionals in the UK. The issue seems likely to be CJEU jurisdiction.

There is a residual CJEU jurisdiction under the proposed convention, very limited but nevertheless there. It is no greater, and probably considerably less than, the involvement of the CJEU as contemplated by the Withdrawal Agreement and the Political Declaration on the UK’s future relationship with the EU, which were agreed by a recent Conservative UK government.

The only issue the present government seems to care about is establishing the principles on which it is prepared to cooperate with the EU. Those principles reject outright any CJEU involvement. Obscure arrangements over international patent law are treated as minor collateral damage. F*** business, Boris Johnson said memorably during the Brexit process, and this decision confirms that he meant it.

It counts for nothing that:

  • the UPC took decades to agree
  • the UK led much of the work done to achieve it, and has also led much of the work in selecting and training its judges
  • participating in it is in the UK’s national interest
  • a former conservative Prime Minister, David Cameron, negotiated to get part of the court to be located in Britain, and the government signed a lease of premises for the court in central London
  • the CJEU issue has been known for several years. In 2017, Douglas Carswell, then the UK Independence Party’s sole MP, tabled an Early Day Motion urging the government not to ratify the UPCA. The motion attracted just one signatory, Carswell himself
  • despite the CJEU issue, a conservative UK government ratified the Unified Patent Court Agreement less than two years ago; the instrument of ratification was signed by one Boris Johnson as Foreign Secretary
  • at the time of ratification, the UK government declared that “The Agreement on the Unified Patent Court (UPC) is an international treaty. The international court will have jurisdiction over patent disputes across its contracting states” and “Ratification of the UPCA will keep the UK at the forefront of influencing the international system”

But all of this counts for nought because the UK electorate recently voted in a government determined to “get Brexit done”.

IP Draughts is not suggesting that the UPC or the UK’s participation in it was otherwise a done deal. There are problems, including the case before the German constitutional court, and whether and how the UK as a non-EU member, would be allowed to participate. But the hopes were that these issues could be resolved in due course.

This issue, like many in the field of IP law, has been on hold while the UK government decided what it wanted to do. Back in 2017, IP Draughts led the preparation of a short note to government on priorities for IP following Brexit, which was signed jointly by the leaders of various IP professions in the UK. The note can be found here, and it was discussed on this blog at the time, here. The note identified 5 priorities; item 2 was continuing UK participation in the UPC.

Since then, there has largely been radio silence from the UK government on its IP priorities, though it did recently say that it would not be following the EU Directive on copyright in the digital single market.

The latest news about the UPC is sickening. IP Draughts has done a quick search to see if Keir Starmer has expressed any views on IP policy, but was unable to find anything.

 

2 Comments

Filed under Intellectual Property, Legal policy

UK Labour Party policy on patent licensing

IP Draughts was very interested to hear comments from Jeremy Corbyn, leader of the UK Labour Party, at yesterday’s annual Labour Party Conference. The comments indicated that the Labour Party had a new policy on patent licensing – wow!

To be more specific, he was talking about measures to reduce the price of pharmaceutical drugs, including compulsory licensing. The comments appeared to reflect proposals in this policy paper. The paper throws out lots of ideas; it is not clear how close any of them is to a final party policy. They include:

  • increased use of Crown Use provisions in the Patents Act 1977, with the suggestion that compensation may not be paid to the patent owner for such use.
  • moving away from EU data exclusivity laws and protection for SPCs, after Brexit.
  • requiring an access strategy to be agreed with recipients of public funding (e.g. research grants) to either waive IP rights or allow open licensing, or invest (e.g. via royalties) in future public activities
  • reducing the exclusivity period of patents
  • setting up publicly owned pharmaceutical companies

What Jeremy Corbyn actually said in his speech yesterday on these topics was more limited:

…[people] are being denied life-saving medicines by a system that puts profits for shareholders before people’s lives.

Labour will tackle this. We will redesign the system to serve public health – not private wealth – using compulsory licensing to secure generic versions of patented medicines. We’ll tell the drugs companies that if they want public research funding then they’ll have to make their drugs affordable for all. And we will create a new publicly owned generic drugs manufacturer to supply cheaper medicines to our NHS saving our health service money and saving lives.

Of course, it remains to be seen whether these policies will find their way into the Labour Party’s Manifesto at the next General Election, and whether the Labour Party will win a majority of seats in Parliament.

Still, this is interesting for anyone involved in advising on IP and contracts in the pharmaceutical sector.

Leave a comment

Filed under Intellectual Property, Legal policy

IP policy advisers: a good use of public money?

An advert on Twitter caught IP Draughts’ attention. It is for a Senior Executive Officer with the UK Intellectual Property Office. The salary is around £40,000 per annum. The job title is “Oxfordshire Growth Hub IP Policy Advisor”. The role is to work at least partly within the Oxfordshire Local Enterprise Partnership (LEP). Applications close tomorrow.

There are 37 LEPs within the UK. They are vehicles for identifying the investment needs of their regions, working up plans and obtaining government funding. The Oxfordshire LEP covers the county and city of Oxford.

Given the fact that government money is being spent in Oxfordshire in support of the local economy, and given the importance of innovative businesses to that economy, IP Draughts can see the point of including an IP specialist within the policy team.

So far, so good. What puzzles IP Draughts is the list of the main duties of the IP policy adviser (or “advisor”; the IPO seems to prefer US spelling). These are listed in the job advert as:

• Support the delivery of the Local Industrial Strategy as the LEP aspires to be ‘one of the top three global innovation ecosystems’. This will involve:
o Including IP in the drafting of the LEP’s Investment Prospectus that will underpin the LIS, recognising the region has world-leading knowledge assets and IP whose value can be maximised;
o Focusing on the activities in Pillar 2 of the LIS (A Powerhouse for Commercialising Transformative Technologies) to ensure IP’s role in unlocking growth potential and commercialisation is realised;
o Developing interventions to support the proposed Oxfordshire Finance Hub to enable businesses to accelerate IP adoption and investment in R&D, considering where IP can help to de-risk breakthrough businesses.

• Embed support and raise IP capability in the Growth Hub to enhance the offer to both breakthrough and cornerstone businesses. Both the internal Growth Hub team but also Advisors who are working across all Oxfordshire ERDF funded business support programmes with a particular focus on ISfB and eScalate

• Provide 121 support to programme clients where appropriate. This external element is vital to accelerate IP adoption

• Work with the LEP and local partners to include IP in European Regional Development Fund (or UK Shared Prosperity Fund) programmes, representing IPO and the LEP on technical assistance groups and embedding the IPO offer into the Innovation Support for Business Programme;

• Collaborate with LEP partners to consider the role of IP in knowledge exchange, skills for entrepreneurship and access to finance, working across the Innovation Directorate’s policy teams to provide insight and evaluation;

• Ensure IPO is represented in wider Government initiatives in the region including the Cambridge-Oxford Arc, and working with the Cities and Local Growth Unit, British Business Bank, DIT and Innovate UK to meet objectives;

• Work between IPO’s International Policy Directorate, Department for International Trade and the LEP to develop capability of OxLEP’s global hubs and international clusters based in science and technology parks – providing a conduit to IPO attaches support in major overseas markets;

• Develop evaluation processes to measure the impact of policy interventions and local actions to identify best practice and impact IP capability plays in adding value to regional innovation support initiatives;

• Advise Ministers and IPO senior managers on IPO business support policy;

• To actively contribute to the Business Support Policy’s team objectives and to the wider ID objectives.

And all this for £40,000 per annum!

In IP Draughts’ mind, the above description is opaque, wordy, and jargon-filled. It is task-oriented, focussing on specific initiatives with fancy names, rather than goal-oriented, explaining what value the role brings. Is this deliberate – to make it difficult for anyone to criticise the value of the role or to judge whether the incumbent has performed well – or does it simply reflect the vagueness of the overall objective?

Boiled down, the role seems to comprise the following elements:

  • ensuring IP is thought about and included in regional investment policy documents
  • raising awareness of IP issues within the teams involved in developing and implementing such policies
  • providing a source of IP expertise within those teams
  • liaising with other parts of government including overseas IP Attaches
  • advising and informing government ministers and the senior management of the IPO about their work

It must be difficult to establish useful metrics on whether activities of this kind contribute beneficially to the Oxfordshire economy. But at one level, if government is investing hundreds of millions of pounds in the local economy, should taxpayers care too much about the size or composition of the civil service team that administers that investment?

The niggle that runs through IP Draughts’ head in relation to this role, and the IPO’s policy activities more generally, is whether awareness-raising on IP issues is a useful government activity. He doesn’t doubt that it is well-intentioned and in response to political direction, but is it ultimately productive and good value for money? He would love to receive reassurance from someone whose judgment he trusts that his worries are unfounded.

Leave a comment

Filed under Intellectual Property, Legal policy