Category Archives: Legal policy

Unitary Patent – the UK removes the first veil

For the last year or more, talking to the UK government about Brexit and IP has been a one-way conversation. The UK IP professions have worked hard to agree common positions on what they would like the UK IP system to look like, after Brexit. An important part of the debate has been how far the UK will continue to participate in, or be aligned with, European IP systems. Papers have been written on this subject and supplied to government officials, and meetings have been held with those officials.

But – and IP Draughts doesn’t blame the officials for this, it reflects the political situation they have been in – the meetings have largely consisted of the professions explaining their positions, and government officials nodding wisely and refraining from making any comment whatsoever about how closely the UK wishes to be aligned with the EU. To do so has risked making political statements. For example, many models of alignment would involve the UK accepting the jurisdiction of the CJEU, and avoiding such jurisdiction has been one of Theresa May’s red lines.

Now, at last, with the publication of its White Paper, we are seeing some tantalising glimpses of the UK’s negotiating position on IP and other subjects, as the government starts its dance of the seven veils.

An area that is of particular interest to IP Draughts is the unitary patent, the unified patent court (UPC) and the UPC Agreement. The UK has ratified the UPC Agreement, and has taken out a lease on some rooms in an office block in central London, which will be the UK court. The UK government’s position has been that as long as the UK remains in the EU, it will continue to participate fully in the UPC. But the UK government has previously refused to state whether it wishes to continue as a participant in the system after Brexit or how this might be achieved. “That is a matter for future negotations” was about as much as anyone in government was prepared to say.

Last Autumn, IP Draughts coordinated a joint note from the IP professions to government on Brexit and IP. It was eventually sent to the IP minister and others in government in late December 2017. The note was brief and high-level, targetted at people outside the UK Intellectual Property Office. More detailed papers on IP topics had already been submitted to the UK IPO.

On the UPC, the note included the following recommendations:

…the Government should provide legal certainty regarding the UPC, and now do the following:
(a) confirm that it is the UK’s intention to stay in the UPC, and that the UK is prepared to abide by the terms of the UPC Agreement, following Brexit;
(b) work towards the coming into effect of the UPC as soon as reasonably practicable in collaboration with other UPC Member States; and
(c) work with other UPC Member States and EU institutions to ensure there are no legal or practical obstacles to UK participation in the UPC and the Unitary Patent, following Brexit, on equal terms with other Member States.

The objectives should be (i) continuation of the Court in London; (ii) continued involvement of UK national judges; and (iii) continued rights of participation of legal professionals qualified and based in the UK in all parts of the Court’s procedures on the same terms.

The part of the White Paper dealing with the UPC seems to be consistent with the above position, and this is to be welcomed. Paragraph 151 of the White Paper includes the following statements (colour added):

The UK has ratified the Unified Patent Court Agreement and intends to explore staying in the Court and unitary patent system after the UK leaves the EU. The Unified Patent Court has a unique structure as an international court that is a dispute forum for the EU’s unitary patent and for European patents, both of which will be administered by the European Patent Office. The UK will therefore work with other contracting states to make sure the Unified Patent Court Agreement can continue on a firm legal basis.

The bit in red is perhaps more tentative than one might wish to see (“intends to explore”), but at least it shows a good direction of travel.

The bit in blue we can ignore – it is directed to Eurosceptics who may be concerned about the residual jurisdiction of the CJEU, and seeks to divert attention from this point by making the legitimate point that for most practical purposes it will be the UPC court that decides matters.

The bit in green adds little to the bit in red, other than to say that the UK will be talking to other EU states about how the UPC Agreement can lawfully continue – in practice, an amendment to the text will be required if the UK is to continue to participate.

So, there is not much meat on how this miracle will be achieved, but at least the government is finally saying that it wants to achieve it. IP Draughts hopes that the UK IPO will now have a mandate to start, and actively pursue, negotiations with other member states and with the European Commission on these points.

According to IPKat, the a spokesman for the UK IPO has clarified what the IPO will be doing in light of the White Paper:

The UK intends to stay in the Unified Patent Court and unitary patent system after we leave the EU. The UPC and unitary patent project are an important means of simplifying the protection of innovative products throughout Europe. This Agreement sets the bar for the level of constructive cooperation that the UK seeks with European partners in the future.

UK participation in the UPC and Unitary Patent will extend the benefits of these systems to businesses operating in the UK.

The UK will work with our European Partners to ensure the Unitary Patent and Unified Patent Court continue on a firm legal basis. This will need to reflect the change in the UK’s status as we cease to be an EU Member State, which will require negotiations with our European Partners. We look forward to beginning those negotiations with our European Partners so as to ensure the continuing success of this new system.

So, things are moving at last. Let’s hope the IPO is able to negotiate a solution that enables the UK to participate fully after Brexit, and retain the life sciences part of the central division of the court in London.

 

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Chairing the IP Law Committee

Last week, IP Draughts attended his last meeting as chair of the IP Law Committee of the Law Society of England and Wales (the national bar association for English and Welsh solicitors). The appointment was for 3 years; he is now time-expired and ineligible for re-appointment as chair.

After last week’s meeting, we held our annual dinner. It was a pleasant affair, made more special for IP Draughts by the kind words he received from other members about his time as chair. Some of these words had been recorded in a framed poster – a kind of Wordle of quotes – that was presented to IP Draughts and now sits on his office wall. He is very grateful for the sentiments and for the poster.

He is also grateful for the support that he has received during the last 3 years, from both members of the committee and Law Society officials. Particular mention should be made of Lauren Rabaiotti, now our policy officer, but once our committee secretary. Her enthusiasm, diligence and aptitude have helped to make the chairing role a smooth one. She is increasingly taking the initiative in guiding the committee to actions – not an easy task in such a specialised area of practice.

He would also like to thank James Love and Michelle Blunt, who are retiring from the committee, for their expert and helpful contributions over several years.

Here are some brief thoughts on what works, in IP Draughts experience, when chairing a body of this kind.

  1. Enthusiasm. Leading by example, with enthusiasm and commitment helps to encourage everyone to give up their time to the cause.
  2. Tone. Left to their own devices, some IP lawyers can be rather critical. Setting the right tone, particularly at meetings, helps people to be relaxed and engaged, and willing to speak up. In IP Draughts’ view, a little irreverent humour is a positive contribution. Avoid having meetings that are like an appearance before a hostile judge.
  3. Balance speaking and listening. It is legitimate for the chair to start off debates by stating his or her views, but then he or she should actively listen to the other members, and encourage contributions, particularly from quieter members.
  4. Respect. The committee has some national, or even international, expert in their subjects. You don’t have to be the best at everything – let them take the lead, but within a framework that you help to set. Be respectful of their expertise and that of support staff, and patient but politely insistent in urging them to meet deadlines and deliver work product.
  5. Personal initiatives. While you don’t have to lead every initiative, leading on some where you have expertise helps to demonstrate commitment and set tone. You have an opportunity as chair to develop your own agenda; within reason, this is a good thing rather than an abuse of power.

IP Draughts stated, when he became chair, that he wanted to bring IP closer to the centre of the Law Society’s thinking. He believes he has had some success with this aim. The presence of the incoming President of the Law Society, Christina Blacklaws, at last week’s dinner, was an illustration of this success. He also thinks he has had some success in increasing cooperation among the various IP professional bodies in the UK, including those representing IP barristers, patent attorneys and trade mark attorneys. Our joint note on Brexit and IP, delivered to government last December, was an example of this cooperation.

An issue that he has noticed, but not yet found a complete solution to, is how to encourage new and younger members of the committee to speak up more and give their views. Law is still a hierarchical profession, and we have some very experienced and talented members on the committee. It can be a little daunting for younger members to give their views in such company, despite IP Draughts’ best efforts. Sometimes, members only really “come on stream” in their second 3-year term of office. This may be a symptom of a wider issue in the legal profession, rather than something that can easily be fixed within one committee, though this does not excuse us from trying to mitigate it where we can.

IP Draughts wishes the best of luck (not that she needs it) to his capable successor, Carolyn Pepper, and he looks forward to continuing on the committee, as a co-opted member, for a further (but final), and hopefully not too arduous, 12 months.

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Ratifying the Unified Patent Court Agreement

the thin red line

The UK government announced this week that it has, at last, ratified the 2013 Agreement on a Unified Patent Court. It had announced its intention to do so in November 2016, nearly 18 months and two IP Ministers ago.

The UK IP professions are generally in favour of such ratification. But they would like to see some concrete evidence of the government’s intention to negotiate for the UK’s continuing participation in the UPC and UPCA after Brexit. Some time ago, they obtained a QC’s opinion that provided a road-map to how the UK could participate after Brexit, but it would require the agreement of other EU countries and EU institutions. So far as IP Draughts can tell, industry and other EU countries are in favour of continued UK participation.

A potential difficulty with this idea is that the UPC/UPCA is subject to the supervisory jurisdiction of the Court of Justice of the European Union (CJEU), and the UK government has declared that CJEU jurisdiction is one of its “red lines” in the negotiation of the UK’s future trading relationship with the EU. This was, no doubt, what led then-MP Douglas Carswell to put down an early-day motion in the previous Parliament, calling for it not to be ratified. Fortunately (in IP Draughts’ view) no other MP was prepared to second this motion, which consequently did not proceed.

Back in November 2016, the government’s press release was at pains to distance the UPC from the European Union. It included the following “note to editors”:

The UPC itself is not an EU institution, it is an international patent court. The judiciary appointed include UK judges.

At the time, IP Draughts thought this was as much a note to the Brexiteer wing of the Tory Party as it was to editors.

But the official government line on continued participation has always been that this will be a matter for the Brexit negotiations. The UK government has not been willing to show its hand and say in terms that it wants the UK to participate in the UPC/UPCA post-Brexit. A fortiori, it has not been willing to say whether the limited CJEU jurisdiction required for participation is so marginal, and in such a non-political arena, that it might be allowed to slip over the thin red line that has been set for other areas of trade policy.

Observers have been left to read the runes of statements coming from government, to see if they can detect at least a direction of travel, even if a policy statement is currently thought to be politically impossible. If you stare long and hard enough at the comments from ministers and civil servants, do they start to levitate?

In this context, it is interesting to look at the latest press release about ratification, and see what it says about the future. It includes the following statements:

The unique nature of the proposed court means that the UK’s future relationship with the Unified Patent Court will be subject to negotiation with European partners as we leave the EU.

Ratification of the UPCA will keep the UK at the forefront of influencing the international system.

Should we read these statements as a hint that the UK government thinks we should be in the UPCA for the long haul, and not just until the end of the transition period implementation period?

 

 

 

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University spin-outs: our research report

There is much to celebrate within the UK’s university spinout sector. But could it do more?

It is a timely question, given that the start of April marked the official launch of UK Research and Innovation (UKRI), an amalgamation of the seven research councils, Innovate UK and Research England. With this, UK universities’ ability to turn research into innovation is once again under the spotlight.

In many ways, spinouts are a real success story. Since the mid-1980s, UK universities have been allowed to commercialise the results of their research. Over the last 30 years, many universities have gained experience of managing their knowledge transfer activities, either in-house or through a subsidiary company, or in some cases in partnership with external companies. An important part of this activity has been setting up spinout companies and securing initial funding for their activities. Some highly-successful UK and international companies can trace their origins to UK university research.

In 2014, the commercialisation of university research received a further boost when the Research Excellence Framework (REF) introduced a requirement that university research should show “impact”.

However, just four years later, research funding is facing a crossroads. Uncertainty over Brexit has left the future of many funding streams far from secure. At the same time, the government’s industrial strategy recognises the need for UKRI to benchmark how well universities commercialise the results of their research.

The time feels right, then, for scrutiny of how the university spinouts system works, In particular, the relationship between the sources of funding for academic research, and successful commercialisation of the research. It is somewhat surprising that nobody has really done this before.

So, a few months ago, Anderson Law commissioned research into precisely this. The findings, summarised in our newly published report, mark the first real insight into how innovation from UK universities is being funded and how this leads to the creation of spinouts.

Overall, it’s a positive picture. Spinouts from UK universities are thriving; nine out of ten spinouts which have received private investment between 2011 and 2015 have survived. Among start-ups on the whole, only two in ten survive beyond their fifth year.

We also found that the number of spinouts from UK universities is on the increase and, with this, so is the amount of investment into them from private investors. But we believe more should be done.

As UKRI begins its work, we expect that the commercialisation of research from UK universities will be a priority. We also think the government has a role to play too, giving Universities a clear policy steer on their role as innovators, as part of a national strategy for the commercialisation of research from UK universities.

A better-defined strategy for commercialising university research will also go a long way towards demonstrating the value of universities to the UK, and the economic and societal impact they can have. But there is a real need to get this right, now. The uncertainty over Brexit adds extra urgency. If the UK is to remain competitive on the international stage over the next decade, it is essential we understand what we are good at, where we are helping ideas develop into successful entities, and back those systems.

If we do not, the ultimate price could be a UK struggling to produce world-beating start-ups and SMEs ten years from now – which would have real consequences for our economic prospects.

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