World Intellectual Property Review | 27 November 2019
US-UK trade leak: US seeks changes to patents and GIs
by Saman Javed
The Labour Party has obtained confidential documents from trade negotiations between the UK government and the US, which detail the US position regarding IP provisions.
Brandished by Jeremy Corbyn in a general election press conference today, November 27, the 451 pages of unredacted documents outline talks between the US and UK on several IP issues including patents, the Unified Patent Court (UPC) and geographical indications (GIs).
Corbyn said the documents show that the UK and the US have discussed lengthening patents for medicines, with US officials having “pushed hard” for longer patents for US drug companies.
“Longer patents mean only one thing – more expensive drugs. Lives will be put at risk as a result of this,” Corbyn said.
Additionally, he said the documents show that UK officials also discussed “patent issues” around NHS access to generic drugs.
Analysis from the lead negotiator in the second meeting, which took place from 13-17 November 2017, said: “The impact of some patent issues raised on NHS access to generic drugs (ie cheaper drugs) will be a key consideration going forward. Biologics were hugely contentious under TPP so one we were interested in discussing but unclear how far apart we are in this area.”
Corbyn said the discussion of lengthening patents was in the “advanced stages”. He referred to documents from the fourth meeting, on 10-11 July 2018, in which the UK said it has reached a point where it was awaiting clearance to “exchange text to really take significant further steps”.
The leaked documents also show that during the meeting of July 2018, a US Patent and Trademark Office representative said they were “surprised” that the UK government ratified the UPC Agreement before the UK’s exit from the EU and asked what the implications are for judgements of the Court of Justice of the European Union.
A UK representative said: “We intend to stay part of the agreement throughout the implementation period (a transitional phase in which we will abide by EU rules). Beyond this is subject to negotiations.”
When questioned over what will happen if Brexit happens before the constitutional challenge to the UPC in Germany is resolved, a UK representative responded by stating “we are not sure but are preparing for all eventualities”.
The focus for the sixth meeting, according to the documents, is to explore further detail on priority areas such as patents and engage on topics that have not featured in the meetings to date, such as trademarks, designs and new plant varieties.
In an earlier document, dated November 13-14, 2017, the US and UK held a “strong” discussion on IP issues, including GIs.
The UK highlighted later that GIs is a “big issue for the EU”, and will be a subject for negotiation in the UK-EU negotiation.
According to lead negotiator Oliver Griffiths, the US made a “strong pitch on GIs” proposing six objectives for the UK in this area, seeking “greater transparency, fairness and due process when it comes to GIs and international trade”.
The US said it had “concerns” about the EU’s approach of including lists of GI names to be protected within trade agreements, “which can have the effect of preventing US producers from using the name of the EU GI on their products”.
The US representative suggested the UK should consider:
- Implementing due process for the recognition of new GIs, including “opportunities for all interested parties to be consulted and to make oppositions”. The US also noted that in the EU system there is “no recourse” for opposing parties to appeal against decisions to award new GI protection, and that cancellation procedures for GIs could also be considered as part of the due process.
- Distinguishing GI names from terms that have become customary in common language. The US said the UK has specific GIs for ‘West Country Farmhouse Cheddar’ and ‘Isle of Orkney Cheddar,’ but the term ‘cheddar’ itself remains a “customary term” that any cheese producer can use. The US suggested that the UK could consider publishing guidance clarifying what terms it considers as “customary in common language”.
- Favouring recognition of new GIs through domestic application and examination procedures, rather than the EU’s favoured approach of exchanging lists of GIs for inclusion in international trade agreements. The US stated that “although there are over 4,500 GIs on the EU register, only 28 GIs from outside the bloc have been accepted through direct applications” (as opposed to via an exchange of lists in a trade deal).
- Establishing that infringement of GIs should be based on “likelihood of confusion” and the EU’s interpretation of the evocation principle should be narrowed.
- GIs be “officially examined”, like patents and trademarks, informed through “international norms/standards” on examination processes.
- Whether some of the EU GIs still meet “British consumer expectations, or whether the consumer now regards some EU GIs as customary common language”.
In response, the UK “welcomed” the US’ thoughts on GI objectives. The UK said the government “supports” the appropriate use of GIs to protect UK food and drink names, but currently “only has” 84 GIs in the EU’s GI register.