Government Consultation on Patent Application System Seeks Views on Changes to Patent Application Process

The Intellectual Property Office have recently launched a Consultation to investigate what applicants want from the Patent Application System and therefore allow the IPO to consider how they might use resources more appropriately. Jeremy Parkin, Corporate Partner at The Wilkes Partnership, looks at the issues being raised.

Action before Search

Currently, where a Patent Examiner is of the opinion a Patent Application is unlikely to be granted, they can write to the Applicant offering a refund of the search fee if the application is withdrawn at that stage. Whilst in the majority of applications where this occurs, the applications are withdrawn at that stage, approximately 25% proceed to search and A-publication.

It is suggested that for those applicants unwilling to withdraw their application as they simply want it published, the IPO could allow accelerated publication without a search being performed. A request for publication without search could also be taken as a request for withdrawal of the application once A-publication has taken place. Applications of this sort would be distinguished by a footnote clarifying they will not be proceeding any further. Whilst the Applicant would not have the protection of a granted patent, they would still have official IPO publication, the ability to stop others patenting the same invention, entry onto patent databases worldwide and a specification describing the invention and inventor.

Certificate of Disclosure

Whilst documents relating to patent applications are currently available to purchase to show details of an application, it is suggested some applicants are requesting examination purely because they want a certificate confirming publication (currently only issued after examination). It is suggested a certificate could be made available once the application is published to certify publication together with the name of the applicant and/or inventor. Such certificates would be optional and incur a fee and whilst not offering the protection of a granted patent would provide recognition that application had been made and the details disclosed.

A More Flexible Patent Application Process

The IPO is looking to simplify and automate more of the process over the coming year. This would include the option for the applicant to choose to have their application published at any point prior to the 18 months required by the Patent Act whether or not a search has been performed. Applicants could then decide whether to continue with or withdraw their application.

Jeremy comments; “The clear aim of the consultation is to reduce the number of applications that progress through the system. The IPO hope that there is an appetite for having an application published without then proceeding through the process of actually obtaining a patent. One suspects there is certainly an appetite on the part of the IPO to save both the time and the costs involved in dealing with the volume of applications that are currently made.

The fact of the application having been made and published may well be sufficient for a number of applicants as this will prevent others from registering a patent for the same invention. It will not however offer the same protection as having a patent granted.”

If you have any views on the above and would like The Wilkes Partnership to submit them on your behalf please email them to [email protected] by 19th September 2014 or call us on 0121 233 4333.