Exceptions to patent infringement in the UK to be extended to align with new unitary patent regime

The Intellectual Property Office (IPO) has opened a consultation of extending existing exceptions to infringement to patents (44-page / 501KB PDF) that relate to the development of plant varieties and computer programs.

"The government would like to extend the existing exceptions to patent infringement to align with those set out in the UPC Agreement," the IPO said in an impact assessment (10-page / 265KB PDF) that accompanies its consultation. "This will reduce uncertainty and transaction costs for firms because it will mean that all patents valid in the UK will subject to the same exception to infringement and are thus on an equal footing no matter whether the patent is enforced through the national courts or the UPC (unified patent court)."

As a result of the changes, some patent holders "may find that their inventions may be used in instances where previously licenses may have been required, resulting in loss of income", the IPO said.

The new patent infringement exception on 'plant breeding' that is proposed would apply to "the use of biological material for the purposes of breeding, or discovering and developing, another plant variety". The draft 'computer program' exception would enable lawful users of computer programs to make back up copies, or engage in limited decompilation, restricted copying and adaptation of those programs without infringing patent rights.

"Currently the exceptions to patent infringement in UK patent law do not completely agree with those in the Unified Patent Court (UPC) Agreement," the IPO said. "UK exceptions do not extend as far as those provided by some other member states and are more limited than outlined in the Agreement."

"To leave the exceptions as they are in UK law would create the scenario where a patent in the UK may or may not be considered to have been infringed depending on whether it was a GB patent, a European bundle or a unitary patent. This would create doubt and uncertainty for patent-holders and users of patented products. An amendment to UK law would bring certainty on these specific matters," it said.

The draft Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2015, if approved, would give new UPCs the exclusive jurisdiction to rule on certain disputes relating to new unitary patents.

"The aim of the proposed changes to UK law is to ensure the correct division of competence between UK courts and the UPC, in accordance with the UPC agreement," the IPO said in its consultation.

Unitary patents are protections businesses will soon be able to obtain from the European Patent Office (EPO) in relation to their inventions. If granted, the unitary patents would have effect across most of the EU. They have been proposed as an alternative to existing European patents which businesses can obtain.

At the moment, businesses need to validate a patent registered with the EPO in each individual member state. The European Commission has said that the cost of translating these patents and obtaining this EU-wide protection is prohibitive and has sought to deliver a new unitary patent regime in its place for many years. Unitary patent protections will be available by making a single application to the EPO.

The IPO has proposed that existing UK patent laws, under the Patents Act, should "apply to unitary patents ... in the same was as they apply to [European patents with effect in the UK]", except in certain specified cases.

The agency has asked for views from stakeholders on a number of issues, including the anticipated impact the proposed changes would have on businesses because of the fact UK courts that are not part of the new UPC framework will not have jurisdiction to hear certain disputes on European patents with effect in the UK, new unitary patents or related supplementary protection certificates.

Businesses also have an opportunity to share their view on how they see the fact London will be a seat for a central division of the UPC impacting on them, and also how important it is that they have access to a "local division" of the UPC.

"By signing up to the UPC and the unitary patent it is expected that there would be an increase in innovation in the long term," the IPO said in its 'statement of innovation' (2-page / 68KB PDF). "Patents offer a time limited exclusive right to commercialise an innovation, giving firms the opportunity to appropriate the returns from their investments in innovation. The potential for these higher financial returns incentivises firms to innovate. The introduction of the Unified Patent Court and the unitary patent is expected to increase this incentive by providing a more streamlined and cost effective method of obtaining Europe-wide patent protection, for those that want to protect their inventions across the single market."

The IPO's consultation is open until 2 September.