The significance of UK in EU's IP system -- Interview with Neil Feinson, director of international policy, UKIPO

By Stella Yang, China IP,[Comprehensive Reports]

The UK, as the earliest industrialized country and the first one to establish Intellectual Property (IP), has always been a world leader in terms of IP reform. With the increasing advancement of the Unified Patent Court (UPC) in Europe, the UK has played an active role in the implementation of the UPC.

On 9th October, it was a great honor for China IP to have an opportunity to interview Director Neil Feinson during his visit to Beijing to know more about the current IP situation in the UK and its preparations and adjustments for the implementation of the Unitary Patent System. In addition, Director Feinson also explained how the European Union functions when deciding big issues.

Director Feinson is a person with broad career experience. In his early career, he mainly focused on competition, economic regulation and trade in services. In 1988, Director Feinson joined the Department of Trade and Industry. With his wider experience, he was assigned to Directorate General of Competition of the European Commission from UK government for two and a half years working on merger control. In September 2011, he was appointed as Director of International Policy for the United Kingdom Intellectual Property Office (UKIPO), and was responsible for the success of the Office’s bilateral relations, international negotiations and the UK’s implementation of the new European UPC.

His first time in Beijing is to understand the extraordinary IP development in China and really get a feel for conditions on the ground and what is happening and what has happened in the IP field in China. He said that the UK and China share common challenges in the IP industry, although the IP official institutions of the two countries are set up and operated differently. And he hoped to cooperate closely with China to solve those challenges. During his visit in Beijing, Director Feinson had also met with opposite numbers from the Trademark Appeal Board of China and exchanged opinions on various issues such as the specific implementation issues on the newly modified Trademark Law, the basis to assert the well-known trademarks, etc.

Different IP agency settings, common challenges

China IP: Could you please explain how to compare the institutional setup or structure of IP authorities of the UK and China? How do you have to say about the inter-government cooperation between the two countries?

Director Feinson: The most striking difference between UK and China is the policy-making. The policy-making in Beijing is extremely diversified by being dispersed among several different agencies, whereas in UK, the IPO is not only responsible for patents, trademarks, designs and copyrights, but also responsible both for rights granting, advice to business as well as IP policy and for giving advice to government ministers in charge of IP. What I find interesting when meeting with IP offices across the world is the fact that we share common challenges and have common concerns; for example, how to manage demand, how to recruit the right people and how to manage finances. Just this morning, I had a conversation with colleagues from SIPO about some of the above issues and found how similar the experiences we have are.

China IP: Which companies are you going to meet during this trip? And what agreements do you hope to achieve from these cooperatives?

Director Feinson: Discussions have focused on the IP environment in China and globally and areas for collaboration in the coming year. It is always good to work together to think about how to meet common challenges. By meeting with a variety of agencies in the IP industry, either both British and Chinese companies in China and their advisers, I have learned a lot about the Chinese IP environment, its characteristics and its likely evolution, as well as the experiences of British companies in China. One of the issues discussed with companies last night was the differences on the IP system between UK and China, including the different roles and different philosophies. What matters to me is to understand the experiences of British companies in China and help Chinese companies understand what their expectations can be in the UK market under the UK IP framework.

The operation mechanism of WIPO

China IP: Both the UK and China are the member states of the WTO and WIPO. In your opinion, what is the current situation and prospects associated with joining the above two treaties?

Director Feinson: The multilateral framework represented by WIPO and WTO is incredibly important in setting the rules for conducting business globally. Progress can sometimes be slow, as when 100 to 200 countries all try to represent their interests, it must be discussed thoroughly. But the progress can also be very impressive at times. Take the Beijing Treaty on Audiovisual Performances on protecting audio-visual performers’ rights signed on June 26th 2012 for example. Symbolically, the signing of the Beijing Treaty was an important milestone for WIPO. Now the spirit of Beijing has caught people’s attention and produced an important impact on the work of WIPO. What is the most significant one is that it leads to the success of the Marrakech Treaty about copyrights for the visually impaired.

China IP: You mentioned the Marrakech Treaty. What do you think is the significance of the Marrakech Treaty? Is it a very controversial piece of legislation?

Director Feinson: Whenever the copyright law is changed it is always controversial because someone’s rights are potentially being altered. Therefore, it must be done quite cautiously and with a lot of respects for those rights. The Marrakech Treaty might appear a small success, but obviously it is not small for the people affected who are hopefully to gain greater access to popular brailed materials. The UK is very supportive of the ideas of the Marrakech Treaty. The UK attaches great importance to ensuring visually impaired people across the world have access to the popular brailed materials while ensuring that the interests of rights holders are respected. So once again it is the point to get the proper balance between the interests.

Adjustments and preparations for UPC in the UK

China IP: China IP research has revealed that you have been assigned to deal with the issues with the EU. What role does the UK play in the process of the EU’s policy-making? What are the adjustments you anticipate in terms of IP?

Director Feinson: The UK plays a full active part in the discussions about policy and legislation in the EU, and is especially in discussions about the single market.

As to the issue of IP, a key priority for the UK government is economic growth - not only for the UK but also for the wider European market. How is the process going to be played out? Under the EU system, the Commission has the right of initiative, i.e. the Commission brings forward the ideas for new legislation. It is up to the member states, the Commission and the European Parliament to debate the merits and demerits of each proposal and to negotiate in three ways to reach the final pieces of the legislation. Moreover, when the EU legislates, there are two main procedures. One is that here is a law; this law is applied directly in every EU country member. Another way is the approach for the directive, which is where the Commission agrees to a higher level framework of the law and the member states must meet the essential elements of that framework in their national laws.

To clarify, I will take the copyright law for example. The Information Society Directive includes a number of exceptions to copyright. The member states are obliged to ensure that their national laws fit within the elements of the Directive. A recent review of the UK’s IP policy and its goals by Professor Hargreaves, a UK academic, recommended some changes to improve the ability of IP to support GDP growth. The UK is conducting the reform and changes within the existing EU framework. European negotiations can sometimes be slow and complex, and appear not to be very efficient. But this is how Europe does business and how Europe progresses by carefully managing the different interests of the 28 separate member states. The member states agree on a law, and maybe five years later, the member states will come back to it to review and make reforms in order to resolve any unnecessary arbitrary limitations and previously conflicting views converge.

China IP: What will be the impact of the implementation of the new European integration patent system for UK?

Director Feinson: The IP industry in the UK is watching and analyzing closely the development of the UPC. In the long run, it will be positive. As a minimum, businesses using the unitary patent will save on translation and registration costs In addition, a UK or Chinese company using the unitary patent system will achieve protection across the 25 member states. With one single patent, if the patent is infringed, it can seek relief in one court and obtain other patent priorities within the other 24 member states. However, some patent holders are very nervous about the court’s jurisdictional authority to make such broad judgments over unitary patents. So they may opt out of the unitary court and not use it initially. If a large number of companies respond this way, it will have a negative effect on the unitary patent system. Many company advisors are making difficult analysis at the moments on the risks, benefits and costs and savings of the UPC.

China IP: There seems to be no European IP organization is located in UK, but a technical chamber will be located in London. What does this mean to the UK? What will be the policy adjustment in the future? What measures and preparations will the UK take?

Director Feinson: The Central Division of the UPC will be shared between London, Paris and Munich. Having a chamber of the Central Division in London is a reflection of the importance of UK patent legislation in Europe, just as the same is true of France and Germany. The London chamber will focus on life science and pharmaceutical cases. It is a reflection of the importance of London as a global center of commercial dispute resolution as well.

There is a tremendous amount of work necessary to implement the unitary patent legislation of the EU and the international treaty establishing the unified patent court. All of the signatory states constitute a preparatory committee and different states are leading from different angles. The UK is leading particularly on the IT system of the new court. The public consultation on the court’s rules of procedure has just closed. There is still a lot of work to do and it is hoped that the court will be ready by 2015.

The importance of providing balance

China IP: As for patents, some people hold that it protects IP rights and encourages innovation, while others hold that excessive patent protection will in turn make the tycoons form monopoly and damage the innovation environment. Therefore, some have suggested shortening the patent term or avoid the excessive universality in scientific and technological circles? In your perspective, how can provide greater balance?

Director Feinson: The key for this question is balance. The patent is like a social contract in order to encourage innovation. If someone invents something, it will allow him or her to have priority to enjoy the fruits of such invention over a defined period of time. That is monopoly which is normally unpopular. Under the Competition Law, monopolies receive serious resistance. The patent protection is an exception to normal Competition Law to encourage innovation. People can debate whether the term of patent, which typically tends to twenty years, is the right term, too long or too short, but the key is that it is long enough to reward innovators but not unnecessarily long. Certainly, there undoubtedly will be some problems about monopoly when referring to the patent system in the high-tech area and terms on which standards essential patents are licensed.


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