Home » General Interest » Grace period conflict – Can the UK join the CPTPP and stay in the EPC?

Grace period conflict – Can the UK join the CPTPP and stay in the EPC?

Keltie LLP

K2 IP Limited

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New Zealand 2

Is the UK on the road to the CPTPP?

Back in June this year, the UK announced its intention to start negotiations to join the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). For a country that is separated from continental Europe by a mere 21 miles, joining the CPTPP might raise the odd eyebrow. The purpose of this article however is to look at the possible impact that joining the CPTPP might have on the UK’s patent system.

As explained in more detail in this post on the Keltie website, the CPTPP expects signatories to the agreement to provide for a 12-month grace period for patents. The UK is also a signatory of the European Patent Convention which does not provide for a grace period of this nature. On the face of it there appears to be some conflict between the provisions of the CPTPP and the EPC.

There seem, to IPcopy, to be a number of ways that this conflict could play out if the UK continues its quest to redefine the word “Pacific”:

1) The UK joins the CPTPP and introduces a 12-month grace period and seeks to stay in the EPC;

2) The UK joins the CPTPP and introduces a 12-month grace period and leaves the EPC;

3) Having introduced a 12-month grace period, the UK seeks to get the EPC amended to bring in a 12-month grace period;

4) The UK joins the CPTPP but doesn’t implement a grace period (either by means of a negotiated carve out from the provisions that apply to the UK or just by not implementing it and hoping no-one notices/cares).

From the UK patent industry’s point of view option (2) would seem to be the clear front runner in terms of bad outcomes. The House of Lords International Agreements Committee appears to agree and, in a letter to the Department for International Trade, has suggested that a loss of EPC membership could have an impact on GDP of over £800 million per annum. Given that joining the CPTPP doesn’t appear to offer a particularly large boost to GDP (see table 5, page 46 of the strategic approach document) one would hope that this conflict and how to resolve it would actually get considered in detail during the negotiations.

Whether staying in the EPC under option (1) would be possible seems unclear at present though it is noted that some EPC member states (e.g. Turkey and Estonia) do operate a patent grace period. From a patent system user’s perspective this option might cause confusion, with a grace period being available for patents filed directly with the UK Intellectual Property Office but not for patent applications filed via the EPC.

The UK government’s strategic approach document indicates (see para 2.8.2) that they will not do anything which “is inconsistent with the UK’s obligations under the EPC”. With the government’s track record over the last 5 years that statement doesn’t reassure me as much as it might have done in the past.

The UK has indicated that it is aiming to complete negotiations by the end of 2022 and IPcopy will be watching the negotiations with interest…

Mark Richardson 9 September 2021


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