IP in Canada

Author John Picken Licence CC BY 2.0 Source Wikimedia Commons

Jane Lambert

On 30 Jan 2023, I discussed the Intellectual Property Office's guidance on  IP in New Zealand  (see IP in New Zealand).  The IPO has published similar guidance entitled IP in Canada.  Like the New Zealand guidance, it covers trade marks, patents, designs, copyrights and enforcement.  It has links to the Department for International Trade's Exporting Guide to Canada and Report a Trade Barrier pages, the British Canadian Chamber of Trade and Commerce and the UK's IP attaché for North America at the British embassy in Washington DC.

The guidance states that the intellectual property authority for Canada is the Canadian Intellectual Property Office ("CIPO").   According to its home page, CIPO is a special operating agency of Innovation, Science and Economic Development Canada which delivers intellectual property services in Canada and educates Canadians on how to use IP more effectively.  Its services include examining applications for patents, trade marks and industrial designs and the registration of copyrights and integrated circuit topographies. Its education, tools and resources include information on green technology. managing IP, data and research, an IP academy, an IP hub, an IP toolbox, events, webinars and seminars, a newsletter and other publications.  CIPO also publishes several blogs.

It would appear from the guidance that Canadian trade mark, patent, industrial designs and copyright laws are similar to ours.  The main differences seem to be a grace period for patents and a registration system for copyrights,  Applications for patents, trade marks and designs can be made directly to CIPO or through international conventions.

Infringement actions can be brought in the civil courts although the guidance warns that litigation is expensive and time-consuming.   Arbitration, mediation and expert determination are also available,  Information on enforcement can be obtained from the IPHub Enforcement/Infringement.  The Canadian Border Services Agency can intercept and detain counterfeit goods or pirate copies of copyright works.

Anyone wishing to discuss this topic further should call me at +44 (0)20 7404 5252 during office hours or send me a message through my contact form at other times.

REUL Bill First Update

Intellectual Property Office

Crown Copyrights  Open Government Licence

 

Jane Lambert

In Retained EU Law (Revocation and Reform) Bill (26 Oct 2022), I mentioned the introduction and second reading of that bill.  In that article, I wrote that the purpose of the bill s to enable the government to remove the special features of retained European Union law ("REUL") from the English and Welsh, Scottish and Northern Irish legal systems by the end of 2023.  I added that the bill if passed was likely to affect intellectual property law in the United Kingdom because much of that law implements EU legislation and case law.  For that reason, I offered to follow the progress of the bill and its application to intellectual property law.

According to the UK Parliament's website, the bill has completed the report stage and is now at the report stage.  A copy of the bill as amended in committee can be found here.   Anyone interested in what was said in Parliament about the bill can consult Hansard here.

On 29 Nov 2022, the Intellectual Property Office published updated guidance on the bill.   It consists of a list of retained EU law, as defined in s. 6 (7) of the European Union (Withdrawal) Act 2018.  Such law relates to intellectual property within the policy remit of the IPO and does not address issues that lie outside such as plant varieties or rights arising at common law.  The list covers copyrights, designs, patents, trade marks and enforcement.  Readers will see that it is quite long enough.

I shall continue to monitor the progress of the bill and report any other useful materials on the topic that come to my attention.  In the meantime, anyone who is interested in the topic may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

IP in India

Photograph of India taken from a US Satellite

Source Wikimedia Commons

 

Jane Lambert

The Department for International Trade has recently carried out a consultation on the top priorities for businesses and members of the public for a future trade deal with India and where they think the biggest gains from such a deal may lie. Any trade deal with India is likely to contain provisions on intellectual property and the topic was suggested as an option in several of the consultation document's multiple-choice questions.

According to An information note for the consultation relating to a Free Trade Agreement between the United Kingdom and India, "intellectual property" is the UK's second-largest export to India amounting to £833 million.  The note does not explain how that figure is computed or of what it consists. It is, therefore, assumed to be royalties and other payments for licences, assignments and other intellectual property transactions.

For those thinking of investing in, or exporting to, India, the Intellectual Property Office has published a short booklet entitled  Intellectual property rights in India.  It lists the intellectual assets that are protected in India, the treaties and conventions to which India is party and the need to register patents, trade marks and designs with the Indian Intellectual Property Office.  Even though India has acceded to the Berne Convention, the booklet recommends the registration of copyright works with the Indian Copyright Office.  There is a section on IP enforcement that discusses civil litigation, criminal proceedings and other methods of dispute resolution.

A particularly helpful paragraph in the booklet suggests the following self-help considerations:

• "Think about the design of your product, and how easy it would be for somebody to reproduce it without seeing your original designs; 
• When you hire staff, have effective IP-related clauses in employment contracts. Also make sure you educate your employees on IP rights and protection; 
• Have sound physical protection and destruction methods for documents, drawings, tooling, samples, machinery etc.; 
• Make sure there are no ‘leakages’ of packaging that might be used by counterfeiters to pass off fake product; 
• Check production over-runs to make sure that genuine product is not being sold under a different name." 

The booklet lists a number of typical problems faced by British businesses in India and suggests the following precautions:

• "take advice from Indian IP rights experts at an early stage on how to protect your IP – prevention is better than cure; 
• consult publications and websites on Indian IP rights and protection in general; 
• carry out risk assessment and due diligence checks on any organisations and individuals you deal with; 
• take professional advice from other experts – for example lawyers, local diplomatic posts, Chambers of Commerce and the UK India Business Council; 
• talk to other businesses already doing similar business in India; 
• consult agents, distributors and suppliers on how best to safeguard your rights; 
• check with trade mark or patent attorneys to see whether there have been previous registrations of your own marks, or other IP, in India; 
• stick to familiar business methods – don’t be tempted to do things differently because you’re trading in a different country."

The booklet offers some useful guidance on getting professional help in India.  

Since the publication of that booklet, the British government has appointed Ms Pragya Chaturvedi as our IP attaché in India.  Her job includes advising British businesses on IP issues in India, working with various government entities to raise IP awareness and engaging and assisting consular officials in different regions of Indian.  Ms Chaturvedi can be contacted at the British High Commission at Shantipath, Chanakyapuri, New Delhi 110021 on +91 (11) 2419 2100 or by email at Pragya.Chaturvedi@fco.gov.uk.

The European Commission operates an India IP SME Helpdesk which describes itself as a

"A first-line IP assistance service for European/COSME SMEs that operate or intend to access the Indian market and look to improve their global competitiveness."

It keeps a directory of 214 IP Institutions resources, publishes a regular newsletter on Indian IP law and holds frequent and regular in-person and online conferences and seminars and promotes many more that are held by other organizations.  The infographic 10 Tips to survive in India is particularly helpful: 

1. "Identify your IP assets
2. Plan in advance when it comes to IP!
3. Adapt your IP strategy to the Indian market
4. Carry out preliminary searches
5. Protect your IP Rights
6. Maintain your IP Right
7. Monitor the market for infringements
8. Be ready to enforce your IP Rights
9. Work with Indian Customs
10. Last but not least… Seek advice from IP Experts,"

The Commission collaborates with Business Support for the EU-India Policy Dialogues, the EU-India Innocenter and the Global Cosmetic Cluster Europe.

The WIPO's India page links to the Copyright Office and the Indian Intellectual Property Office, the treaties to which India is party, India's primary and secondary IP legislation, statistics and a collection of other resources called IP in Action.

The Indian IP Office website holds comprehensive information on Indian patents, trade marks, design and geographical indications.  It publishes updated statutes and secondary legislation, a Manual of Patent Office Practice and Procedure a Manual of Design Practice and Procedure and a Draft manual of Trademarks Practice and Procedure and other guidance.

Anyone wishing to discuss this article or any of its contents can call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Brexit - A Significant Change of Tone

Rt Hon Michael Gove MP

Author Chris McAndrew

Licence: Attribution 3.0 Unported
Source Wikipedia Michael Gove 

Jane Lambert

It is not often that a notice from the Cabinet Office publicizes a newspaper article even when that article has been written by a cabinet minister.  The arrival of the authored article No-deal is a very real prospect. We must ensure we are ready: article by Michael Gove in the mailboxes of subscribers to the "Immediate updates to Brexit" mailing list at 14:35 yesterday is therefore significant.  That article had appeared earlier that day in The Sunday Times.

HM Government has been publishing Guidance on how to prepare for Brexit if there's no Deal since 22 Aug 2018 (see Jane Lambert And if there is no deal .......... 24 Aug 2018). Until now, those guidance notes have emphasized the government's intention to leave the European Union in accordance with a withdrawal agreement negotiated pursuant to art 50 (2) of the Treaty on European Union and that it was planning for withdrawal without such an agreement just in case. Yesterday Mr Gove wrote:

"No deal is now a very real prospect, and we must make sure that we are ready."

The article still pays lip service to the hope of negotiating a withdrawal agreement with the remaining EU member states.  Gove writes:

"It’s our aim to ensure we can leave with a deal. We want to continue with warm and close relations with our friends, allies and neighbours in the EU. We will do everything in our power to conclude a good agreement that honours the referendum result and secures a brighter future for us outside the single market and the customs union." 

But since the government's precondition for recommencing negotiations is abandoning the backstop which would mean sacrificing the interests of one of the remaining 27 member states in favour of those of the governing party of the departing state, it is hard to see that happening. 

As I noted in Irish Preparations for No Deal 20 July 2019, "The rationale for keeping the threat of leaving the EU without a withdrawal agreement is that the prospect of disruption and other negative consequences for the economies of the 27 remaining member states will force the governments of those countries to require the Commission negotiators to make concessions." As Ireland is geographically separated from the other remaining member states by us to the east and north and a longish sea crossing to Britanny to the south the calculation must be that pressure on Ireland even tacitly and gently applied will yield concessions.   As I also said in that article: "It is not a very attractive negotiating position either for us or for our trading partners and it may well do a lot of long term harm, but, for some in the UK, that will not matter if the threat is effective." 

In EU Preparations for a "No Deal Brexit" 2 July 2019, I noted the Commission's press release of 12 June 2019 ‘No-deal' Brexit: European Commission takes stock of preparations ahead of the June European Council (Article 50).  The Commission acknowledged that a withdrawal without an agreement in accordance with art 50 (2) of the Treaty on European Union "will obviously cause significant disruption for citizens and businesses and would have a serious negative economic impact" but such serious negative economic impact will "be proportionally much greater in the United Kingdom than in the EU27 Member States."  In Irish Preparations for a No Deal 20 July 2019 I concluded that no deal is "clearly not an outcome that anyone in Ireland wants (even though there may be some benefits for Ireland such as the transfer of some financial services businesses from the City of London to Dublin) but it is one that the government of the Republic seems at least as able to handle as that of the United Kingdom."

As for British preparedness, the Institute for Government which describes itself as "the leading think tank working to make government more effective" has today published Preparing Brexit: No Deal  by Joe Owen, Maddy Thimont and Jack Jill Rutter.  The report states:

"With huge barriers to agreeing and ratifying a deal by the end of October, the prospect of a no-deal exit is rising. But no deal would not be the end of Brexit. The UK will be out of the European Union, but the all-encompassing job of adapting to the new reality and building a new relationship with the EU will still be incomplete. The biggest questions Brexit will still need to be settled. The difficult choices that have been unresolved for the last three years will not evaporate overnight on the 31 October. And Brexit will remain the key dividing line in a Parliament in which Johnson’s government has a wafer-thin majority, and one that is constantly under threat."

The tasks for the new government in the next few months are herculean. They include putting the whole government on a no-deal footing, introducing new legislation for the government of Northern Ireland and probably an emergency budget.  The report warns that no deal is a step into the unknown, that there is no such thing as "managed no-deal" and peak preparedness for brexit may have passed.

The government has announced a massive advertising campaign to sell no deal to the British public (see Christopher Hope Boris Johnson to unveil biggest ad campaign since Second World War to prepare for 'no deal' 29 July 2019 Daily Telegraph).  If despite that campaign brexit proves to be unpopular with the public the government can always blame the obduracy of its former trading partners.  That has always worked in the past though it may not do so in the future as the EU has less and less to do with our affairs.

Anyone wishing to discuss this article, the Cabinet Office's email, the Institute for Government's report or the legal consequences of brexit generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Plant Breeders' Right after Brexit

A Saline Resistant Wheat Variety

Author US Department of Agriculture
Licence Copyright waived by US government
Source Wikipedia "Plant Breeding"

Jane Lambert

A plant breeders' right is the exclusive right to prevent reproduction, marketing, selling and certain other acts in relation to new plant varieties.  Plant breeders can acquire those rights for the UK alone by registering  the plant variety with the Plant Variety Rights Office in Cambridge. Alternatively, they can obtain such protection in all 28 EU member states including the UK by registering it with the Community Plant Variety Office ("CPVO") in Angers.

The legislation that established the CPVO and provides for plant breeders' rights throughout the EU is Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights ("the Plant Variety Rights Regulation").  That regulation will cease to apply to the UK once it leaves the EU by reason of art 50 (3) of the Treaty of European Union.  If HM government concludes a withdrawal agreement substantially on the terms of the draft that has circulated since the end of February the regulation will continue to apply to the UK until 31 Dec 2020.   If this country leaves without such an agreement the regulation will cease to apply after 29 March 2019.

On 12 Oct 2018 the Department for Agriculture, Food and Rural Affairs published a guidance note entitled Plant variety rights and marketing of seed and propagating material if there’s no Brexit deal in case the UK leaves the EU without a withdrawal agreement.  According to the note, existing Community plant variety rights belonging to British rights holders will continue to be recognized and enforced in the remaining EU member states. They will also be recognized and protected in the UK presumably because the regulation will be incorporated into our national law by s.3 of the European Union (Withdrawal) Act 2018.

The guidance states that where an application has been made to the CPVO but not granted before the UK leaves the EU, the applicant must make a fresh application to the Plant Variety Rights Office. However, the applicant will keep the same priority date and rely on the same test for distinctiveness, uniformity and stability.

The CPVO issued a Notice to Stakeholders regarding the withdrawal of the UK and EU rules in the field of Plant Variety Rights on 30 Jan 2018.

Anyone wishing to discuss this article or plant breeders' rights generally should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.

Patents if there’s no Brexit Deal

Jane Lambert

Since the 23 Aug 2018 the Department for Exiting the European Union has been publishing guidance on how to prepare for Brexit if there is no withdrawal agreement (see Jane Lambert And if there is no deal ......... 24 Aug 2018).  These are indexed in How to prepare if the UK leaves the EU with no deal which was published on 24 Sept 2018.  Several of those guidance notes concern intellectual property including Patents if  there's no Brexit deal subtitled How the UK patent system would be affected if the UK leaves the EU in March 2019 with no deal published on 24 Sept 2018.

Like all the other guidance notes, this one opens with the statement:

"A scenario in which the UK leaves the EU without agreement (a ‘no deal’ scenario) remains unlikely given the mutual interests of the UK and the EU in securing a negotiated outcome."

It continues that negotiations are going well but the government has to be ready for all eventualities. It has published this and other other technical notes "to allow businesses and citizens to understand what they would need to do in a ‘no deal’ scenario, so they can make informed plans and preparations."

The note explains how our withdrawal from the EU without a deal would affect:

• the UK patent system and supplementary protection certificates ("SPC"),
• the Unified Patent Court ("UPC") and unitary patent, and
• correspondence addresses and confidentiality for UK patents.

In respect of each of those topics the note sets out the position before and after 29 March 2019.

With regard to patents and SPCs, the guidance notes that few areas of patent law derive from EU legislation. Pharmaceutical and agrochemical products are important exceptions in that SPCs provide an additional period of protection for those inventions after their patents run out. There are also special provisions for biotechnological inventions, compulsory licences for patented medicines and limitations to the scope of a patent monopoly to permit trials and tests and other activities.  The note states that s.2 of the European Union (Withdrawal) Act 2018 will preserve the relevant EU legislation and s.3 will incorporate it into our law.

The note is much less certain and hence less helpful when it comes to the UPC. It begins with the extraordinary statement 

"The Unified Patent Court will hear cases relating to European patents and the new unitary patent – both administered by the non-EU European Patent Office"

in the "Before 29 March 2019" section. That is simply not happening and is unlikely to happen in the next few months.  The note then contradicts itself in the last two sentences of that section:

"The Unified Patent Court (UPC) is not yet in force, with the start date being dependent on ratification of the Unified Patent Court Agreement by Germany. It is unclear whether the Unified Patent Court and unitary patent will start before 29 March 2019."

It describes the UPC as "an international patent court established through an international agreement (the Unified Patent Court Agreement) between 25 EU countries" without mentioning that art 84 (1) states that this agreement is open to membership only to EU member states or that the legislation that provides for the unitary patent is an EU regulation.

After 29 March 2019 the note suggests two different scenarios for the UPC:

• The UPC Agreement will not come into force because the UK will leave the EU before Germany ratifies the agreement; or
• The agreement does come into force in which case "there will be actions that UK and EU businesses, organisations and individuals may need to consider." These will include exploring whether it will be possible for the UK to remain within the UPC and unitary patent systems in a ‘no deal’ scenario". 

The note gives the following advice to businesses and other stakeholders if the agreement comes into force before the 29 March 2019 but the UK has to withdraw:

• "UK, EU and third country businesses will still be able to use the Unified Patent Court and unitary patent to protect their inventions within the EU
• any existing unitary patents (UPs) will give rise to patent protection within the UK with no action required by the right holder. The UP system will only come into force when the Unified Patent Court is operational. UPs will not be available to businesses until this point
• provision will be made regarding the status of any pending cases before the Unified Patent Court at exit
• UK, EU and third country businesses seeking protection in the UK for their inventions will need to use national patents (including patents available from the non-EU European Patent Office) and the UK court system."

The last section on correspondence addresses and confidentiality for UK patents is really concerned with addresses for service, representation in the European Patent Office and Intellectual Property Office and legal professional privilege.  As the EPO unlike the EU Intellectual Property Office, is not an EU institution, there is unlikely to be any change in the existing in the arrangements that relate to patents.  The position with regard to Community designs and EU trade marks will be different.

About the best advice in the guidance note is that "businesses may wish to seek legal advice on how these arrangements could affect their business model or intellectual property rights."  Advice which is repeated below:

"You should consider whether you need separate professional advice before making specific preparations."

That is a service that I am well placed to provide and very willing to give.

Anyone wishing to discuss this article or Brexit generally should call me on  +44 (0)20 7404 5252 during normal office hours or send me a message through my contact form. 

Brexit Briefing - August 2018

Rt Hon Dominic Raab MP

Author Chris McAndrew
Licence  Creative Commons Attribution Share Alike 2.0 unported
Source Parliament

Jane Lambert

Unless the British government withdraws its notice of intention to leave the European Union or the 27 remaining member states of the EU unanimously extend the notice period under art 50 (3) of the Treaty of European Union, the UK will leave the EU on 29 March 2019.  There are two possible scenarios as to what will happen after that.  If both sides sign a withdrawal agreement as contemplated by art 50 (2) arrangements between the UK and the remaining member states will continue more or less as they are now until 31 Dec 2020.  That would give negotiators a breathing space to negotiate an agreement for a future partnership with the EU that will come into effect on 1 Jan 2021.  If a withdrawal agreement is not signed by 29 March 2019 then the legal framework that has governed the UK's relations with its 27 closest neighbours, trading partners and allies will cease to exist with all sorts of unknown consequences.

A draft of the withdrawal agreement was published in February and 80% of it has been agreed according to Michel Barnier  in his op-ed An ambitious partnership with the UK after Brexit 2 Aug 2018 and the Rt Hon Dominic Raab MP, the new Brexit secretary, in his statement to the House of Commons on 4 Sept 2018.   However, as in all commercial negotiations, nothing is agreed until everything is agreed and the sticking point up to now has been how to ensure that there are no customs formalities at the border between Northern Ireland and the Irish Republic after the UK leaves the single market and customs union.  Two possible solutions have been offered so far neither of which is likely to be agreed.  The Commission has proposed a backstop arrangement by which Northern Ireland remains in the customs union and customs and immigration checks take place at British and Irish sea and airports.  The British government has suggested free movement for goods with a common rule book in its white paper on The Future Relationship between the United Kingdom and the European Union.

In his Commons statement Mr Raab described the Commission's proposals as "unacceptable, because they would create a customs border down the Irish Sea."  The white paper proposals have already prompted the resignation of two cabinet ministers and have been described by a former minister as less popular than the poll tax.  They are unlikely to survive a vote in the Commons let alone scrutiny by the Commission's art 50 task force.   Mr Raab told the Commons that "we are determined to reach a solution that protects the Belfast Agreement and avoids a hard border on the island of Ireland" but gave no details as to what that solution could be.

Interestingly, there now seems to be another snag which concerns geographical indications, a form of intellectual property.   In a statement following his meeting with Mr Raab on 31 Aug 2018, Monsieur Barnier said:

"On geographical indications - 3000 geographical indications in the 28 countries of the Union - I expressed again my worry. 

The EU's position is clear: Brexit should not lead to a loss of existing intellectual property rights.

We must protect the entire stock of geographical indications.

This protection is an international obligation, and seeing as it is one of the separation subjects, it must be clarified in the Withdrawal Agreement. We will come back to this subject, whose solution must be in the Withdrawal Agreement."

It is not clear why this is a problem as the UK is bound to protect geographical indications by section 3 of the TRIPs agreement and has always done so through the registration of collective and certification marks and the law of passing off.

Although Mr Raab stressed that he expected to reach a deal with the EU, that it remained the most likely outcome and the government's top and indeed its overriding priority, HMG had a duty as a responsible government to prepare for any eventuality.  Accordingly it has started to publish guidance to businesses and individuals on how to prepare for withdrawal without an agreement which I discussed in And if there is no deal ................. on 24 Aug 2018.

Concern over the consequences of leaving without a withdrawal agreement appears to have begun a shift in attitude over Brexit.  A number of opinion polls were published apparently showing growing disenchantment with Brexit and support for a second referendum (see Benjamin Kentish
2.6 million Leave voters have abandoned support for Brexit since referendum, major new study finds 4 Sept Independent and Patrick Grafton-Green Brexit news latest: Brits would vote 59-41 to remain in EU if second referendum was held, new poll shows 5 Sept 2016 Evening Standard).  A number of politicians in the Labour and Conservative parties as well as the Liberal Democrats have called for a peoples' vote or second referendum on the terms of the UK's withdrawal from the EU and they have been joined by a growing number of business and trade union leaders. The prime minister has rejected those calls and they have not been endorsed by the leader of the opposition but these are uncertain times in which anything is possible.

Anyone withing to discuss this article or Brexit in general should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.