Despite the seeming incompatibility between EPO and CPTPP provisions on the grace period, the UK government may finally have found an area where its Cakeism approach to international affairs bears fruit

The UK has no intention of withdrawing from the European Patent Organisation (EPO) despite its plans to accede to the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) agreement, a UK IP Office spokesperson has told IAM. This follows our publication last week of an article by Zacco partner Dr Coreena Brinck, which pointed out the apparent incompatibility between grace period provisions in the European Patent Convention (EPC) and the CPTPP.

“There may be trade gains for the UK in joining the CPTPP, but IP provisions set out in the agreement will require changes to existing UK patent law,” Brinck wrote. “In particular, this applies to the CPTPP grace period of 12 months for certain pre-filing disclosures 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 which mostly prevent patent rights from being sought after an inventor has disclosed their invention.”

However, the UKIPO spokesperson stated that the UK “will only accede to CPTPP on terms compatible with the UK’s broader interests and domestic priorities”, continuing: “The UK will ensure that accession negotiations with CPTPP are consistent with the UK’s interests and the Government’s policies and priorities, and with the UK’s existing international obligations, including the European Patent Convention.”

The spokesperson acknowledged that the UK’s membership of the EPO delivers significant benefits, and that “the EPC is hugely important to both applicants and the patent attorney profession”, concluding: “The UK takes its international obligations seriously, any future trade deal negotiated by the UK will seek to be consistent with the UK’s membership of the EPC and other international intellectual property conventions that we are party to.” The full statement from the UKIPO is printed at the bottom of this article.

Today’s news will reassure many in the British patent community and beyond concerned that in the wake of the government’s decision to rule out membership of the Unified Patent Court and unitary patent system, the UK’s commitment to its EPO membership might have been threatened by a desire to join the CPTPP. Leaving the organisation would put the EPO prosecution and opposition work done by UK patent attorneys under direct threat, while also forcing patent owners to fundamentally rethink their strategic approaches.

However, some may note the use of the word “seek” in the statement and remember that it was current UK Prime Minister Boris Johnson who, as foreign secretary, originally signed the UK’s instruments of accession to the UPC, before changing his mind. Meanwhile, others might recall that the UK government previously promised the country’s businesses full and tariff-free access to the Single Market post-Brexit and no customs border between the British mainland and Northern Ireland. None of this has turned out to be the case.

To put it delicately, the UK government sometimes says stuff that does not turn out to be entirely accurate. However, a big difference here is that the EPO is not an EU body and the EPC is an international agreement. It does not pose the same issues of sovereignty as the UPC, which gives a role to the Court of Justice of the European Union under certain circumstances, while there is no trade aspect to the EPC – it is all about patents.

Furthermore, while the convention envisages a country giving notice to withdraw from the EPO, there does not appear to be any clear mechanism by which a member state can be expelled. So, if the UK were to introduce a grace period into its national law in order to comply with CPTPP requirements, there may not be much other EPO member states could do about it except launch a formal complaints procedure that would ultimately end up in front of the International Court of Justice. That would be a long and painstaking process with no guarantee of securing an enforceable decision. In short, this may be one situation in which the Cakeism approach to international obligations so beloved of the current UK government might actually be tenable.

However, that is jumping way ahead of where things are now. The UK has yet to even submit a formal application to join the CPTPP and it has gone on the record today to say that any such move will be consistent with the country’s current international treaty obligations. As an EPO member state, the UK is committed to not introducing a grace period, so that should be the end of it. Time will tell whether it is.

Today’s statement from the UKIPO released to IAM

On Monday 1st February, we submitted our notification of intent to begin the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) accession process. This is the first formal step towards accession before formal negotiations start later in in the year. We will publish our negotiation objectives, scoping analysis, and consultation response in advance of the start of formal negotiations. In accordance with the guidelines set out by the CPTPP membership, we would expect this to take place in April 2021. We will only accede to CPTPP on terms compatible with the UK’s broader interests and domestic priorities.

The UK will ensure that accession negotiations with CPTPP are consistent with the UK’s interests and the Government’s policies and priorities, and with the UK’s existing international obligations, including the European Patent Convention (EPC). We understand that the EPC is hugely important to both applicants and the patent attorney profession. The Government also notes that there are clear benefits for countries seeking a trade agreement with the UK to have access to patent protection in the UK and the other 38 EPC members through the European Patent Organisation (EPO). The UK takes its international obligations seriously, any future trade deal negotiated by the UK will seek to be consistent with the UK’s membership of the EPC and other international intellectual property conventions that we are party to.

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