Policy interests group

18 January 2008, Harmsworth House

Action points

1. IP working group document to be issued to members, put on the website and an e-notice issued.

2. An updated UK-IPO contact list to be forward to members.

3. Concerns regarding the appointment to the SABIP board to be forwarded to the secretary.

4. Comments regarding IP and competition to be forwarded to colleagues in OFT

Discussion

1. Action points from the previous meeting

IPO to send documents on IP charter to the group

The IP Charter is a code of conduct for IP management which is being taken forward by the European Commission. It will be non-binding and much of it will draw upon existing UK guidance.

2. EPLA and Community Patent

The European Patent Court and the Community Patent are both proposed for discussion on the agenda of the Slovenian presidency. Discussions remain focussed on litigation. Nine IP working groups have been scheduled, with the next group being planned for 25 January. A working document will be issued to members, put on the website and an e-notice will be issued (Action point 1).

The Slovenian Presidency intend to make headway on the European patent court and Community patent proposal, with the aim that these could be agreed as a "package" under the French Presidency. But there are concerns as to whether this is deliverable. Many issues still remain to be agreed regarding COMPAT and there is still a lot of framework to be built. There are no specific discussions taking place on EPC accession for the EU but it is being discussed with other issues.

3. London Agreement Update

Although it has been agreed in parliament, and by Sarkozy, the French have not yet physically deposited the official instrument of ratification. This process can take a couple of months to complete. Once ratified other countries may follow. [Note: since the meeting France has ratified the London Agreement, which will come into effect on 1 May. UK IPO can provide further guidance on the UK implementation]

4. Address for Service

The UK has notified the Commission that we will make changes to our Rules on address for service. Changes will be made for trade marks as part of new consolidated Rules in October 2008. Patents and designs will be dealt with separately.

5. Designs - Hague Agreement/Spare Parts

The Geneva Act of the Hague Agreement came into force in the EU on 1 January 2008. It is expected that the US may announce plans to join in the future.

The European Parliament voted in favour of a "liberalised" approach to spare parts protection by registered designs, with a five year transition period. The UK supports this position and the Commission’s proposal. The proposal will return to the Council for further discussion. The Council remains divided, with a strong blocking minority against liberalisation.

6. Patent law harmonisation

Group B+ met in Geneva in September 2007 to discuss progress and further work. There has not been significant progress towards harmonisation in the last year. The main sticking points are the details of provisions relating to a grace period and disagreement over whether or not a clause should be included making publication of applications at 18 months mandatory in all countries. The chair of the Working group is looking at how to take forward this forward. There are no signs that the US have got further towards the adoption of their bill.

7. WHO Intergovernmental Working Group

IGWG - The second meeting of the group in November was not sufficiently focussed to reach any conclusions but there has been positive work on the bureaucratic discussions. The process should be clearer after the WHO executive board meeting in January but we continue to welcome stakeholder views.

8. TRIPS

There have been reports of movement in the press but little has changed regarding TRIPS and we are waiting for a statement.

9. WIPO - Assembly outcomes, new DG selection process

There has been substantive amendment to PCT and PLT as Korean and Portuguese are now official PCT application languages. Technical criteria for assessing the addition of future languages will need to be developed before more languages are considered, as adding extra languages may reduce the efficiency of the PCT system. Brazil and India met the technical criteria to become International Search and Preliminary Examination Authorities (ISAs/IPEAs) so were approved under PCT. A supplementary search system has been approved, but does not have to be offered by ISAs, and is not mandatory for applicants.

Discussions on the reduction of PCT fees were not concluded at the last WIPO Assembly. America and Japan argued for a 15% reduction, which was portrayed by WIPO Secretariat as unsustainable and was unacceptable to developing countries. European countries pushed for a compromise reduction of 5%, which the UK plans to take forward as the best achievable option when talks continue.

The Standing Committee on the law of Patents (SCP) will meet next year to discuss the present state of the global patent system. The mandate of IGC has been renewed. The next meeting takes place at the end of February. Documents are available on the WIPO site.

The process has started to select a new Director General, with 13 February being the closing date for nominations. The new DG will be approved by the September General Assembly and will start in October. The Program and Budget for 2008-9 has not been approved, so the organisation is presently operating on monthly divisions of the previous budget. Flexibilities in the financial regulations for the PCT and Madrid systems mean these are unlikely to be affected by this situation. We do not feel that approving the Program and Budget is justified at present, and that as has been done previously it would be better for this to be left until September to allow a new Director General to have an input.

45 proposals relating to a WIPO Development Agenda were agreed upon. Of these, 19 identified as having no resource implication for the organisation have been nominated for immediate implementation. The remaining 26 will be discussed in more detail in a new Committee for Development and IP (CDIP) which will have its first meeting in March.

10. IP Enforcement

Responsibility for IP enforcement policy remains with the Copyright and Enforcement Directorate (CED). Criminal sanctions are still part of the G8 agenda. We are trying to widen discussions in G8 to be IP in general not just enforcement. The annual enforcement report is due in the Autumn.

11. AOB

Office reorganisation - There has been a reorganisation within the UK IPO. A new Innovation Directorate has been established and two new Directors - a Director of Innovation and Director of Copyright - have been appointed.

New team members have also been appointed within the Directorate. An updated contact list will be forward to members. (Action point 2)

SABIP - Several members expressed concern regarding a lack of expertise on the SABIP board as they are not aware of any of the practitioners that have applied being successful. These concerns to will be forwarded to the chair. (Action point 3)

Non papers - The group discussed access to documents as delays in receiving papers can cause problems when attending meetings. It was explained that papers will be forwarded as soon as possible but can only be issued when they are formal documents.

Lord Triesman - The appointment of Lord Triesman as Chairman of the FA, had been confirmed. He has since been replaced by Baroness Morgan of Drefelin.

Competition - The group discussed the issue of competition and IP, and the different requirements for disclosure which apply to internal and external advice. It was felt that this affects how organisations behave in relation to the outsourcing of IP advice. These comments will be forwarded to colleagues at OFT. (Action point 4)

12. Date of next meeting

The next meeting should take place in April/May. Date to be confirmed (Action point 5)

Author: Claire Woodman
Date: March 2008