Patently past their time? Three ideas that have outlived their usefulness

There is a useful life to most ideas, and when an idea outlives its usefulness it should be discarded, refurbished, or replaced. Jim Boff (Fellow) highlights three ideas that may be worth retiring – naming inventors, SPCs and transitional translations at the UPC. This article was first published in December's CIPA Journal.

Naming inventors

That an inventor has a right to be named, few would quibble with. Not all ‘moral rights’ are tosh – just most of them. However, the proposition that the inventor must be named unless they opt-out, jumping hurdles to do so, is somewhat dirigiste.

It is peculiar that GDPR places great emphasis on safeguarding personal information and privacy, and yet UK patent law currently requires the inventor to positively opt-out of being named, and to provide reasons acceptable to the Comptroller (Rule 11 – Patents Rules 2007). Inventors may have many reasons to wish they were not named, and should not be compelled to explain their reasons for wanting privacy. I suspect DABUS does not have a point of view.

In the UK, issues of inventorship normally only arise in the context of entitlement disputes or in claims for employee compensation (which are rare) and yet applicants for UK patents must solemnly name inventors, as though each application is an entitlement dispute waiting to happen. In contrast, there is no requirement for the designers of registered designs to be named, even though section 43(4) of the Patents Act 1978 implies inventor compensation applies also to registered designs.

Of course, in other countries with constitutional requirements addressed to inventors, or legal philosophies demanding respect for moral rights, it will be necessary to name inventors: but even in such countries applicants can often file first and sort it out later. So, the first idea to be junked is the current mandatory requirement to name inventors in UK patents unless the inventor has asked not to be identified – and to replace it with a requirement to name an inventor if they assert their right to be mentioned under article 4ter of the Paris Convention. For this purpose, a declaration from the applicant that all inventors have been informed of their right to be mentioned under article 4ter of the Paris Convention, and no inventor has asserted their right to be mentioned should be sufficient without mentioning inventor names to permit the application to proceed to grant without showing any inventor details.

This would be unlikely to change practice that much, as if a corresponding application needs to be filed elsewhere, in a country having mandatory state-enforced compulsory identification of individuals, the inventor’s name will come out regardless of any desire for privacy.

Who would want to live in such a country?

Supplementary protection certificates (‘SPCs’)

The law in this field is a mess. SPC law was intended to provide incentives to originators while ensuring early access to generic followers, but in this aim has produced a system of Byzantine complexity that appears to satisfy neither originators nor followers. When there are currently proposals for amendment to the system that have attracted adverse comments from both followers and originators, one must ask whether the whole concept is fundamentally flawed.

Pre-SPCs there was the concept of patent term extension in the event of ‘inadequate remuneration’. No doubt it may be difficult for some pharmaceutical companies to argue inadequate remuneration with a straight face, but that is what barristers are for.

Combined with a thoughtful use of compulsory (not free) licensing during the extended term, this could provide a more nuanced economic approach to protection in this area (or indeed in any area where regulatory approvals delay marketing).

So why not consider whether the SPC project has exceeded its useful lifetime and should be replaced by a patent term extension regime?

Of course, a new Byzantine mess might result after a few years, but for a while the law might be easier to understand.

UPC transitional translations

Here is something young, that should never have happened.

The language regulation for the UP (1260/2012) was dated December 2012 and envisaged taking effect ‘1 January 2014 or the date of entry into force of the Agreement on a Unified Patent Court, whichever is the later’.

The regulation provided in article 6 that six years after the date of application of the regulation and every two years thereafter, an independent expert committee would ‘carry out an objective evaluation of the availability of high-quality machine translations of patent applications and specifications into all the official languages of the Union as developed by the EPO’.

These committee reports would inform the Commission, who would on each review present a report to the Council and, if appropriate, make proposals for terminating the transitional period.

Further, if the transitional period were not terminated on the basis of a proposal of the Commission, it would lapse 12 years from the date of application of the Regulation.

No one expected the agreement to take over ten years to come into effect, given the political impetus that it had at the time. Machine translation has improved beyond measure since the regulation was formulated. Had the agreement come into force on 1 January 2014, we would have had the first language review in 2020, and if necessary, the first two-year review in 2022. The maximum term would have been due in 2026.

As it is, the first review will only take place in 2029, three years after a reasonable person might have expected the requirement to cease.

Surely it would be a good idea for the powers that be to consider whether the development of machine translation has advanced so far during the period that we were waiting for the UP to come into effect, that the first six-year evaluation should be brought forward (say to 2024).

Dispensing with the transitional translation would reduce both user costs and administrative costs (which are borne by the UP states share of UP renewal fees).

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Three conclusions

1. Ideas have a lifetime and should be regularly reviewed for fitness.
2. Changing circumstances may require radical changes.
3. Asking stupid questions is not the sole preserve of the young.

Written by Jim Boff, CIPA Fellow