The UK recently held a consultation relating to the implementation of the Unified Patent Court Agreement and the two unitary patent regulations into UK law. One of the suggested changes was the addition of some new defences to patent infringement in section 60(5) of the Patents Act.

In particular, the following change to the legislation was suggested in the consultation (IPcopy’s emphasis added):

(4) In section 60 (meaning of infringement)—
(a) in subsection (5), after paragraph (i), insert—
“(j) it consists of the use of biological material for the purposes of breeding, or discovering and
developing, another plant variety;
(k) it consists of an act or use referred to in Article 27(k) of the Agreement on a Unified Patent Court.”;

Article 27 of the UPC Agreement in turn states:

Article 27

The rights conferred by a patent shall not extend to any of the following:

…

(k)  the acts and the use of the obtained information as allowed under Articles 5 and 6 of Directive 2009/24/EC, in particular, by its provisions on decompilation and interoperability;

The Directive that’s mentioned here is the computer programs directive.  Articles 5 and 6 of this Directive allow users of computer programs to perform certain acts without infringing copyright. Such acts include decompilation or making another program interoperable.

IPcopy understands* that at a recent UKIPO workshop to discuss the proposed changes to legislation to bring the unitary patent system into effect in the UK a universal consensus emerged that this proposed change to UK law was wrong. In particular, it was felt that no one was certain what this exception to patent infringement would actually mean in practice and potentially patents relating to innovations concerned with interoperability would effectively be invalid. For technical fields, such as the telecommunications field, where interoperability is important this could have a very serious and negative effect.

In their responses to the UK consultation, CIPA, the IP Federation and techUK all commented on this issue and extracts of their comments are noted below:

CIPA (see page 41)

The Art 27(k) exception from infringement will affect all proprietors of patents which might be covered by the exception. The enforceability of any patent with interoperability elements will become very uncertain, which is likely to make licensing difficult (or perhaps impossible). It should be pointed out that interoperable digital technology is not just used in the ICT and telecommunications areas but is an essential element of products and services in the automotive, healthcare, defence, and many consumer product industries.

IP Federation (see page 9)

Quite how this provision will apply to patent cases is extremely difficult to say. It is not even clear whether this gives rise to a new exception in the patent domain or not. If it is merely meant to preserve and shelter the existing copyright exception then it would seem redundant. Its inclusion therefore implies that it does provide a new exception for patent infringement, the scope of which is decidedly unclear. The IP Federation knows of no other country which has such a provision, or is intending to introduce one. …. In short, the voluntary extension of Article 27(k) to national patents without certainty as to its scope or impact is a step too far.

techUK (see page 14)

This proposal is the one that gives rise to most concern among tech UK members. In marked contrast with the plant breeders’ exception, the scope of this exception is far from clear. techUK is strongly against including this exception voluntarily in the Patents Act. To do so unilaterally risks introducing far-reaching and unintended consequences while at the same time removing the UK as a ‘safe haven’ for national applications, putting UK industry at a disadvantage over European industry.

It is impossible to predict how this curiously worded exception will apply. It is not even clear whether this gives rise to a new exception in the patent domain or not. If it is merely meant to preserve and shelter the existing copyright exception then it is redundant. Its inclusion is therefore more likely to be interpreted as a new exception for patent infringement, the scope of which is spectacularly unclear.

The UKIPO’s consultation is now closed and they are considering the responses received. As more news comes to light on this issue we’ll be sure to provide an update.

Mark Richardson 24 September 2014

*Many thanks to Nick Cunningham at Wragge Lawrence Graham & Co for filling IPcopy in on the details of the IPO workshops.