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2 December 2019PatentsSaman Javed

UK-US trade leak shows UK government ‘stood up’ for GI owners

Leaked US-UK trade documents show that the UK government “has stood up to the US” by committing to a geographical indication (GI) registration system despite pressure to drop the system, says the Chartered Institute of Trademark Attorneys Brexit negotiator.

Kate O’Rourke, who is also a trademark attorney at Mewburn Ellis, said, “I don’t want to say the US lost this battle, but I suspect it did.”

O’Rourke said it was “not surprising” that there had been specific conversations in relation to GIs because the protection of GIs has “always been a source of contention” between European countries and the US.

In a general election conference on Wednesday, November 27, Jeremy Corbyn announced the Labour Party had obtained confidential documents, which reveal the US position regarding several IP provisions.

As part of the negotiations, the US made a number of suggestions for the UK to consider, including that GIs are “officially examined”, like patents and trademarks, informed through “international norms/standards” on examination processes.

O’Rourke said the US believes such goods should be protected by a certification mark and go onto a trademark registration system.

“Over the past few years, we were being told that there was a hesitancy with GIs post-Brexit partly because there was no national GI system and UK needed to create one, but we weren’t told it was due to US trade negotiations,” O’Rourke said.

“By looking at those papers we can see, in fact, the US trade negotiations were playing a part in the hesitancy to devise a new GI system,” she added.

Since the negotiations took place, the UK has now committed to a new GI system post-Brexit.

“We have so many fabulous UK GIs that are protected and we don’t want to endanger those,” she said.

Patents

Speaking last week, Corbyn said the documents show that the UK and the US have discussed lengthening patents for medicines, with US officials having “pushed hard” for longer patents for US drug companies.

In the document dated July 10-11, 2018, the UK said that “as expected the US Trade Representative and US Patent and Trademark Office pushed hard on Grace Periods, Patent Term Extension and Adjustment”.

Julia Florence, president of the Chartered Institute of Patent Attorneys, said that although the discussions included the respective patent term extension provisions, “there appears to be no suggestion to further lengthen these periods”.

“Our understanding from reading the IP-related parts of the leaked documents is that there has been a very early stage discussion to gain an understanding of the US and UK patent systems,” Florence said.

Grace period provision: ‘disastrous’

Efforts by the US to push for the adoption of a grace period is also a contentious topic. In the US, a grace period of 12 months exists for the disclosure of inventions before a patent application is filed.

These grace periods allow industries to publish findings in academic conferences without losing the chance of patenting.

Matthew Hoyles, a patent attorney at GJE, said that because a grace period is incompatible with the European Patent Convention (EPC), the UK would either be forced to leave the EPC or need to review its own terms.

Matthew Howell, a partner at Haseltine Lake Kempner, said the likelihood of the EPC reviewing its terms was slim.

“Any change to the EPC would need to be agreed by all of the EPC member states, which isn’t likely to happen anytime soon, however hard the US pushes,” Howell said.

On the other hand, Hoyles said it is hard to identify the implications of the UK leaving the EPC as it is not at all clear what would replace it.

“Hypothetically the UK leaving the EPC could be disastrous for patent attorneys as most patent attorneys are sustained by filings at the EPO from abroad.

“Arguably however the UK leaving the EPC could also be disastrous for the EPC and so if the UK chooses to take the nuclear option (incredibly unlikely) then there is an opportunity for reactive patent attorneys to exploit whatever system replaces the EPC for protecting ideas across Europe,” Hoyles said.

Heather Scott, a patent attorney also at GJE, described the US’ provision as an outlier, and that shifting to a system with a grace period would put the UK “out of step” with the vast majority of countries.

Haseltine Lake Kempner’s Howell said this could add an “extra level of complexity to an already complicated system” since two different sets of rules would apply to public disclosures.

“At best, applicants seeking protection by way of EU patent applications would just ignore the UK grace period and file at the EPO prior to any public disclosure, but some applicants may mistakenly rely on a UK grace period and end up having their European application refused for lack of novelty,” he said.

According to a 2015 UKIPO report, the office is broadly in favour of grace periods, but UK multinationals and IP professionals are not.

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More on this story

Patents
27 November 2019   The Labour Party has obtained confidential documents from trade negotiations between the UK government and the US, which detail the US position regarding IP provisions.
Trademarks
18 June 2020   The EU’s chief negotiator Michel Barnier has rebuked the UK government, after it attempted to reopen an agreement to protect geographical indications, such as champagne and parma ham.
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7 August 2020   ‘Gruyere’ is too generic to function as a trademark for cheese, according to the US Trademark Trial and Appeal Board.