Consultation outcome

Government response to consultation on potential legislative changes for IPO digital transformation

Updated 1 August 2023

Introduction

In November 2022 the government launched a consultation about the Intellectual Property Office’s (IPO’s) Transformation programme. The Transformation programme will create a single, integrated system for all registered intellectual property (IP) rights and provide fully digital services. As part of the programme, the government is also reviewing IPO practice and services for patent, trade mark and design customers more broadly. The government sought views on a range of options to remove legal barriers, address inconsistencies between IP rights and introduce flexibility for easier future adaptation.

The consultation had two parts, part A and part B. Part A focussed on proposed changes to the law and practice to enable digital transformation and broader questions about our services. Part B focussed on proposed legal and practice changes to the IPO’s tribunal function. Respondents were able to respond to either or both parts of the consultation and were not required to respond to every question.

The consultation ran for 9 weeks, running from 3 November 2022 to 6 January 2023. There were 88 responses to the consultation. Respondents included IP owners, small and large businesses, and legal and IP professionals. Responses varied in their level of detail, with some providing qualitative evidence while others simply stated whether they did or did not support a proposal.

The responses have helped inform planned legislative changes and system design ahead of the launch of new services under the One IPO Transformation programme. This forms part of ongoing work under the programme with further public consultations related to legislation, practice and system design planned for other issues. The new patents service will launch in spring 2024. Services for trade marks, designs and tribunals will launch in autumn/winter 2025. Here we provide a summary of responses and set out the government response for each issue of the consultation. A collated summary of the government next steps can be found at the end of this response.

Part A

Automation of IPO systems and processes

Question 1. What are your views on the approach the government wishes to take to support the potential future use of automation in IPO systems and processes?

Providing fully digital services will allow automation of processes currently performed manually, where it is reasonable to do so. The government intends to automate processes where human assessment is not needed. In the consultation we discussed potential approaches to removing legislative barriers to automation and providing a route to challenge automated actions. We sought views on the automation of IPO processes and systems.

The majority of respondents to this question were generally supportive of automation, but many caveated their support. Some said corrective mechanisms would be needed and expressed concerns about the availability of staff to correct mistakes. Many respondents wanted further consultation and clarity on the processes to be automated. Few respondents commented on how legislation could be changed to allow automation. Some of these supported a general enabling legal power. Others supported individual changes to references to persons in legislation as they thought this would ensure clarity.

Next steps: The government will consider amending the law to provide the flexibility to automate processes in the future where there is an appropriate opportunity. We note the concerns raised relating to error correction and will consider how automation can modernise the IPO’s services without creating difficulties for customers.

Digital and dynamic media for patent applications

Question 2. Would allowing other types of media to be included in a patent provide any benefits or cause any issues when applying? Would it have an effect on the ability to understand the patent with respect to follow-on innovation?

Current legislation only permits black and white drawings or photographs to be included in a patent application. The legal framework could be updated to allow colour drawings and other types of media in patent applications. This may help with the clear depiction of inventions to third parties and examiners. However, consideration of the use of UK applications at other patent offices would be needed. In the consultation the government asked for views on the impact that allowing colour drawings and other types of media within patent applications would have.

There were mixed views from respondents from across stakeholder groups. Some respondents thought allowing colour drawings and other media may help with the illustration of complex structures, graphs and for specific technologies, such as image processing. Some thought not having to create black and white drawings would lead to cost savings. There was widespread concern that divergence with other patent offices would affect the ability of applicants to rely on UK patent applications at other offices. Some also expressed concern about how accessible certain media types are or about obsolescence of certain formats. Among those that supported a change there was a general preference for permitting colour drawings and photographs. There was less support for allowing other forms of media.

Next steps: Owing to concerns raised, particularly relating to the risks associated with international divergence, the government does not intend to change practice or legislation at this time. The IPO will engage with other patent offices and seek to build international understanding and acceptance of colour figures in patent applications. We will do further work to understand how such changes may affect those using an application made at the IPO as basis for applications at other patent offices.

Digital service for copies of documents

Question 3. What are your views about moving to digital COCs?

Question 4. In what situations might you still require a paper COC, even if we offered a digital version?

Certified office copies (COCs) are used to verify the content of original applications and the date of filing, and can have various uses. This includes their use as ‘priority’ documents, i.e., to apply for rights in other territories using the filing date of the first application. Legislation for patents and designs requires COCs to have a physical seal. This is a barrier to the provision of digital COCs by the IPO. Being able to provide digital COCs may make it easier for customers to obtain COCs. We asked for views on digital COCs and situations where paper COCs may still be required.

The majority of respondents supported the introduction of digital COCs. Some commented that this was dependent on digital COCs being accepted by other offices or paper COCs being available alongside digital COCs. A few stakeholders also said they supported the introduction of digital COCs provided digital seals are secure and the documents are verifiable. Several respondents thought that digital COCs would make processes simpler, more efficient, quicker and cheaper. A small number queried the benefit of digital COCs or suggested work needed to be done to allow their use at other offices before implementation.

Most respondents said paper COCs would still be needed where they are required by other IP offices. Paper COCs can also be needed for use in court, border enforcement, and for commercial activities.

Next steps: Where appropriate, the government will seek to remove legal barriers to digital COCs but will continue to make paper COCs available alongside digital COCs for the foreseeable future. The IPO will continue international work to promote the acceptance and standardisation of digital COCs.

International priority document exchange service

Question 5. What are your views on the UK extending its participation in WIPO DAS? Would doing so reduce the situations where a paper COC would be required?

The IPO participates in the World Intellectual Property Organization Digital Access Service (WIPO DAS) for patents. This allows the digital and secure exchange of priority documents between participating offices. Instead of having to send digital or physical copies of documents between offices users supply the WIPO DAS access code for a specific document. We sought views on extending the UK’s participation in WIPO DAS to trade marks and registered designs.

The vast majority of respondents were supportive of extending UK participation in WIPO DAS. Respondents said participation would reduce costs, complexity, administrative burden and delays in exchanging priority documents. Several respondents thought participation in WIPO DAS would reduce the need for paper COCs, but some of these said paper COCs would still be needed in some scenarios. Where respondents were unsupportive of extending participation in WIPO DAS this related to other offices not participating or security concerns about the system.

Next steps: The government intends to extend participation in WIPO DAS to trade marks and designs, and will investigate legislative and technical requirements to enable this. The government recognises the support for this among stakeholders and the value WIPO DAS participation has already brought to the IPO’s patent customers.

Powers to make directions

Question 6. What are your views on providing the comptroller with more powers to make directions, in particular on the form and content of patent applications? Are there other areas where government could consider seeking the power to make directions, and why?

The UK government has powers to adjust how the UK IP system works in limited areas without making changes to the law. The IPO publishes the changes as directions. We asked if the power to make directions would benefit other areas of IP law. For example, the form and content of patent applications and how extensions of time work.

The majority of respondents agreed there was value in more powers to make directions on the detail of how the IP system works. They said this made the process more agile and responsive to changing circumstances. Many respondents emphasised the importance of customer consultation and the need for clear limits on any new powers. Respondents did not suggest new areas of law that might benefit from powers to direct change.

Respondents gave positive support for more powers to direct the form of patent applications. They said this was an efficient way to make simple, uncontroversial amendments that did not impact the substance. There was also support for powers to direct how extensions of time work. Respondents commented that current laws need simplifying.

Respondents had mixed views about powers to change the content of patent applications. Respondents had concerns that the IPO could use these powers to amend the substantive content requirements of patent applications. They said it was important to keep oversight of patent application content changes as inconsistency with international laws risked international filings.

Next steps: The government notes the support from respondents for powers (i) to make it more efficient and flexible to introduce simple, uncontroversial amendments on the form of patent applications and (ii) to simplify laws governing extensions of time. We will consider introducing powers in primary legislation, where appropriate, so the comptroller/registrar can direct the form of patent applications and how extensions of time periods work. The government will not seek powers to direct patent application content.

Hours of business and excluded days

Question 7. What would the impact be if the IPO extended its hours of business to seven days a week to match when services are available?

The IPO directs when it is open and closed for business. This varies for different types of business conducted with the Office. We asked about the impact if the IPO extended its hours of business to seven days a week to match the availability of digital services.

Some respondents favoured the option of 24/7 access to automated IPO services for users. But most responses rejected the IPO being formally open for all services on weekends and public holidays. Deadlines for doing something that fall on weekends and public holidays would no longer roll over to the next working weekday. The private IP attorney profession raised strong concerns about this. They noted the extra cost of weekend cover, mental health impacts of weekend working and the risk of missed deadlines by applicants unfamiliar with the treatment of deadlines by the IPO.

Next steps: The government will continue to allow deadlines that expire on weekends and public holidays to extend to the next working day. We will ensure that the way in which we define IPO’s formal hours of business does not change this practice. This would not prevent users from accessing IPO services 24/7 should they wish, subject to availability.

National security checks

Question 8. Which of the options presented, if any, would you prefer government to take forward? Please explain why.

The IPO manually checks the thousands of applications for patents and registered designs received to identify those containing ‘sensitive’ material that may be prejudicial to national security or public safety. The government is interested in whether the screening process for applications made at the IPO can be done more efficiently and proposed three options for security screening in the consultation. These were self-declaration of whether applications contained sensitive material or not, automated security screening, or a hybrid approach of self-declaration with an automated screen on the securely filed rights. We sought views on the proposed options.

Respondents had mixed views on the options presented. Several respondents supported a self-declaration system and said it would mirror the decisions already being made when filing applications abroad. Some respondents supported self-declaration due to concerns about the accuracy and security of automated or artificial intelligence (AI)-based screening processes. A few comments were made about whether the legislative burden and investment that would be needed by the IPO could justify automated/AI-based screening.

Many respondents favoured automated screening. Respondents cited concerns about self-declaration relating to potential abuse, over-reporting, and criminal sanctions. There were also concerns about incorrect declarations where applicants aren’t aware an application contains sensitive material. Current guidance is viewed by some as unclear and is partly redacted. A few respondents said automated screening would reduce the burden to the IPO or to applicants. In automated screening, some wanted examiners to have the final decision on whether the application contained sensitive material.

Several respondents favoured a hybrid screening approach. Many of these did not provide reasoning for their support. However, some thought combining the two approaches would reduce risks associated with either one. Some respondents wanted the current system maintained, with some querying the need for change.

Next steps: Having considered the points raised by stakeholders we will maintain our current processes for now. This includes applicants filing directly with the IPO’s Security Section where they think their application may contain sensitive material. The government recognises the importance of identifying applications containing sensitive material, though these applications make up a very small number of those received by the IPO each year. The use of automated and AI tools in the IPO’s screening processes will be investigated further. Should technical capability and security allow we will look to implement automated screening processes in the future.

Allowing for removal of some fees

Question 9. What are your views on providing more flexibility in legislation over removing fees?

The digitisation and automation of IPO processes will reduce the administrative effort required for processes and checks. This may reduce the need to charge fees for certain processes. The consultation asked for views about providing more flexibility in legislation to remove fees that are set in statute. The IPO may need the flexibility to swiftly remove some fees considered unreasonable when new digital services are in place, to provide consistency across the rights, or to support customers in the event of an emergency.

Respondents gave strong support to the principle of more flexibility in legislation to allow the removal of some fees. They said flexibility would allow efficient fee removals to reflect, for example, automation or fee suspension in an emergency. They also highlighted that legislative flexibility should not extend to allow fee increases, particularly without the need for user consultation. Respondents did not give examples of specific fees that need more flexibility in legislation to enable removal.

A small number of respondents noted other considerations for fee removal decisions. For example, IPO has enough income to provide quality services and the need to use fees to control demand and avoid negative behaviours by some users.

Next steps: The government will seek to provide more flexibility in legislation, where there is an appropriate opportunity, to allow the IPO to remove fees more easily when removing fees becomes reasonable to do so.

Aligning periods for paying renewal fees

Question 10. What are your views on harmonising the period for paying a renewal fee across the rights? Would this have an impact on how you (or your clients) deal with renewals?

One IPO Transformation provides the opportunity to offer consistent services across the IP rights. The period for paying renewal fees differs across the rights both in their length and their end date. Trade mark and registered design legislation allows six months to pay renewal fees and this period ends on the anniversary of the date of filing. Patent legislation allows three months to pay renewal fees, this period normally ends on the last day of the month in which the anniversary date falls. The consultation proposed aligning these payment periods to that of trade marks and registered designs and asked for views on this potential harmonisation.

There were mixed views to harmonising renewal periods across rights. Many supported harmonisation or did not express a problem with it, though many of these respondents did not explain their support. Representatives that supported harmonisation said it would simplify administration or dealing with clients. Other respondents suggested it would make processes less confusing or complicated or would provide a longer payment period. A small number of respondents, however, were concerned that having longer to pay renewals fees may increase the activity of fraudulent renewals companies.

Where respondents opposed harmonisation, in most cases this was due to a potential change to the end date of the payment period. Respondents were concerned divergence with other IP offices would increase their administrative burden and costs or may result in rights being lost.

Some respondents queried the benefit of harmonising the renewal payment periods. Some commented that harmonising the payment periods wouldn’t have an impact on renewals systems, represented clients or small businesses. This related to rights having renewal cycles of different lengths and being dealt with by different representatives. Some also said harmonisation wouldn’t help with issues associated with monitoring payment deadlines for various rights or multiple jurisdictions.

We recognise there may be benefit in having longer to pay patent renewal fees and having consistency in the length of the payment period across the rights. We acknowledge concerns about divergence of the end date of the payment period from that of other offices.

Next steps: The government will seek to harmonise the period for paying for renewals to six months across the rights but will not change the end date of the payment period. Where the end of the payment period is currently the last day of the month in which the anniversary of the date of filing falls this will remain the same.

Aligning periods for requesting restoration

Question 11. What are your views on the idea of aligning the period for requesting restoration?

In reviewing the consistency of services between different IP rights, the government considered aligning periods for requesting restorations. This allows rights to be restored where failure to pay a renewal fee was unintentional. As the period for patents is set by international treaty, we suggested restoration periods for trade marks and designs could be aligned to the period for patents. This would give trade mark and design owners a longer period to make a request. We sought views on aligning the period for requesting restoration across the rights.

Respondents had mixed views across stakeholder groups. Many respondents, including some representative bodies for IP owners and IP representatives, did not support aligning restoration periods for trade marks and designs to that of patents. Several respondents were concerned about the impact longer restoration periods would have on third parties, for example, saying it would increase legal uncertainty over whether a right could be used. Some thought alignment was not justified due to the different lengths of renewal periods between the rights. Several representative bodies raised concerns about diverging from the practice of other IP offices.

There were many respondents that were either supportive or did not oppose extending trade mark and design restoration periods to align to that of patents. However, many of these respondents did not provide reasoning for this. Where reasons were provided these were that it would simplify the system or provision of advice on restoration requests or would reduce the risk of confusing different deadlines.

Next steps: The government will not seek to harmonise the period for requesting restorations across the rights. There was major concern among stakeholders on the effect longer periods to request restorations for trade marks and designs may have on third parties. The government thinks it is justified to maintain the current periods for requesting restorations for the respective rights.

Standardising evidence requirements for IP transactions

Question 12. Have you experienced any problems with the current system such as someone fraudulently claiming IP rights?

Question 13. What sort of evidence do you think should be required by the IPO before a transaction is registered?

Question 14. Which of the options presented would you prefer us to take forward? Please explain why.

The IPO register holds details of who owns an IP right. When a transaction is made those involved in the transaction can update the details of the register. Legislation differs across the rights for the evidence required to register a transaction. The government is considering how users can register transactions within our new digital services. We asked about experiences of parties fraudulently claiming IP rights and sought views on the evidence that should be required to register a transaction. We also proposed two options for when that evidence would be required. The first option set out that some form of evidence would be required for all transactions. Documents would not necessarily be required; patent requests currently accept the seller’s signature as sufficient evidence. Within this option it was suggested that requests made by the seller would be processed with no further evidence required. The second option was a system where evidence would not be required by verified users.

Most respondents said they had not experienced problems with the current system of registering transactions. A few of these commented that there is a risk of fraudulent registrations or that this risk may increase with the use of digital or automated systems. Some respondents said they had experience with someone fraudulently or erroneously claiming IP rights but that this is not common. Some of these related to the register not having been updated with previous transactions or administrative mistakes by the IPO. A small number of respondents said they had frequently experienced parties fraudulently or erroneously claiming IP rights. Some made specific reference to issues with trade marks and registered designs.

Respondents suggested a variety of evidence types that should be required when registering a transaction. Some suggested numerous evidence types that should be accepted. The most common suggestions were the signatures of both parties, or their representatives, in the transaction, or a copy of the transaction documents. Several respondents also suggested the signature of the seller or their representative could be accepted. In some cases, acceptance of these evidence types was caveated, such as the signature of the seller should only be accepted alongside confirmation the party is the director of the company or where the signature has been verified by an attorney. Some supported a flexible approach to the type of evidence required, with some of these explicitly supporting the legislative approach taken for patents in simply requiring supporting evidence. Several respondents from across the rights said the current system should be maintained. A small number of respondents suggested instances where no evidence should be required, e.g., where the representative works for both parties.

Most respondents thought evidence should be required for all transactions (option one), rather than adopting different approaches for verified and unverified users (option two). Many of these respondents said there would be a lower risk of abuse or errors. Some respondents favoured option one as they said it would ensure the IP registers are more reliable and is not particularly burdensome. Some respondents favoured option two. For some this was dependent on verification being limited, such as to regulated professionals. Some respondents said option two would reduce the administrative burden on parties and the IPO.

Some respondents generally commented that not requiring evidence may result in more errors, both from IP owners and their representatives. There were also comments that all transactions should be checked by the IPO or that the current system should be maintained. A few respondents suggested the IPO could send notifications to parties of the transaction, should check the identity of the seller or that evidence should only be required if there are doubts about the transaction.

Next steps: The government will not proceed with an approach where there are different evidence requirements for verified and unverified users when registering a transaction. We recognise that a small number of customers report frequently witnessing issues related to registering transactions and take this seriously. Accordingly, we will further consider what evidence types are required to register a transaction, taking into account the views raised here. This will be used to inform whether legislative changes are appropriate, for example to enable the patents approach of not specifying the type of evidence needed in legislation.

Providing represented customers with greater control over their representation

Question 15. If you are a represented customer, what administrative tasks do you typically delegate to your representative? If you are a representative, what administrative tasks do you typically perform on behalf of your clients?

Question 16. Are these administrative tasks ones which could be performed as effectively, or that would provide a benefit in terms of time and/or cost, if carried out through self-service?

Question 17. Do you have a preference as to which option we should take forward? Please explain why.

Digital services which are easy to use give the opportunity for represented customers to do more work themselves. We asked how represented customers use representatives for different tasks now – and the extent that representatives perform simpler tasks for their clients. We sought views on four options for how the represented customer may engage with the IPO through their customer account.

The responses suggest that representatives usually perform all administrative tasks for clients. Many noted the advantage of self-service by represented customers, at least for simple tasks. They gave cost saving as the benefit, particularly for smaller businesses. But many respondents opposed the availability of self-service for represented customers. This view was common among those who represent inexperienced IP customers. Their concerns included:

• confusion over task responsibility between represented customer and representative
• the IPO receiving conflicting instruction
• loss of attorney income
• the potential for mistakes by customers

Most respondents who did not support self-service preferred a customer account that would not allow represented customers to deal directly with the IPO. Supporters of self-service had mixed views about the three examples of customer accounts which could allow represented customers to do at least some tasks. No one example was clearly preferred. Instead, many respondents proposed certain features for the system design or business processes as a way to bring certainty, clarity and mitigation against mistakes:

• all representatives and customers notified of all task actions
• avoid opportunity for conflicting instructions to be issued to the IPO
• don’t offer self-service for customers based outside the UK
• representatives to carry out notice of task delegation to avoid mistakes

Next steps: The government notes the differing views expressed in the consultation responses. Overall, we recognise the value of unrestricted customer account access for represented customers to complete tasks as well as the need for certainty and clarity for customers when tasks are actioned.

As such the government will provide IPO customer accounts that allow both the represented customer and their representative access to conduct tasks. This could allow represented customers to choose to keep responsibilities even if they appoint a representative. A customer account set up in this way reflects that the law does not restrict represented customers completing tasks themselves at the IPO while employing a representative. As a general principle, the customer account will not restrict or determine the responsibilities agreed between a customer and their representative for their interaction with the IPO.

However, we recognise feedback from representatives and others who have concerns about customer accounts that do not limit who has access to complete a task.

The IPO will continue using administrative business processes to ensure that any potential confusion relating to requests or responses where a representative is appointed are resolved. For example, the IPO will continue to query if a represented customer replies to a patent examination report rather than the appointed representative. The customer account itself will help support clarity and certainty around task completion. The system will make available detailed audit trails so users can identify what changes have been made and by who. Furthermore, customers will be able to set up notifications to alert them to some changes that are made within the digital service.

This approach will give attorneys, other representatives and represented customers tools to manage their relationship freely without the IPO imposing customer account technical restrictions. However, we recognise that there may be certain circumstances where this may cause unintended confusion or expense for other parties, for example, when there is a challenge to an IP right before the IPO tribunal.  Certain customer account restrictions may therefore be explored and discussed with users in the future as an option in such circumstances.

Part B

Part B of the consultation addressed several issues relating to the IPO’s tribunal function. Within the tribunal IPO hearing officers hear disputes on issues covering patents, trade marks and designs. The hearing officers have similar powers and responsibilities to the courts in terms of dealing with cases fairly and justly. We sought views on various aspects of the tribunal’s legislation and practice.

The IPO’s tribunal function

Question 18. Apart from the ones discussed below, are there any changes to the legislation relating to the IPO’s tribunal function we should consider?

In addition to the questions asked below, we sought suggestions of legislative change that could be made to the IPO tribunal. A few respondents made suggestions for legislative change. Of those that did, there were no common areas where respondents agreed on a need for legislative change. Proposals included individual suggestions to introduce a “Notice to Admit Facts” process akin to the courts, legislative provisions regarding service by email, and a revised regime for the filing of counterstatements. Many of the responses focussed more on tribunal practices than on legislative change. These included comments on the IPO’s practices relating to how it treats unrepresented parties, extensions of time, and scale costs. Other comments were made about how the IPO’s guidance material could be improved, for example relating to the availability of video hearings.

A few comments were made on wider policy issues which we know are of concern to stakeholders. This included reform of the designs system, concerns regarding rights of representation, and encouraging the IPO to continue to build and expand its mediation and opinion services. Finally, a few comments and suggestions were made which we expect to deliver by our transformed services. For example, seeking better digital systems to view litigation documents or upload evidence.

Next steps: The government will consider the suggestions for improvements to the IPO’s tribunal and whether legislative change is appropriate to enable them. The IPO will keep comments about practice and guidance in mind as part of the continuous improvement of tribunal working practices generally. The wider policy issues raised will be reviewed in any future consideration of the IPO tribunal.

Expedited hearings

Question 19. What are your views on providing the ability to request expedition in legislation, and which of the options would you prefer us to take forward? Please explain why.

The timetable for a dispute heard in the tribunal is usually specified by the IPO once both sides have set out their case. Disputes are usually decided within 12-14 months of them being launched. In some instances, a party may need a decision earlier than this. This would require the case to be expedited, however, expedition is not currently part of the IPO tribunal processes. The government would like to expressly provide the ability to expedite hearings in legislation. It is not clear that this can be done within the current case management powers. In the consultation we asked for views on two options for expressly setting this out in legislation. The first option was to amend legislation on case management powers to include a specific reference to expedition. The second option was to set out a specific process for expedition in legislation, though legislation would allow for flexibility within the process.

There was general support for providing explicit powers in legislation to expedite cases. However, a small number of respondents queried the benefit or justification of expedition of IPO hearings. Some said expedition removes the possibility of parties negotiating a case or may affect the timings of non-expedited cases. While some recognised the value of such powers, they said powers should be exercised appropriately and used sparingly. Some were concerned expedition requests may be used tactically, which may disadvantage unrepresented parties in particular.

Respondents had mixed views on the option they preferred. Some favoured option one saying it provided more flexibility or said the prescriptive nature of option two may cause issues for unrepresented parties or small to medium sized enterprises. Some favoured option two as they thought it would provide more clarity over the process. There were a few comments that the process should allow parties to object to an expedition request, and that guidance should be provided on the process.

Next steps: The government will consider amending the rules on case management powers to provide for expedited hearings. We will seek to provide guidance on the expedition process and when such powers may be used.

Request for clarification of grounds

Question 20. What are your views on replacing some checks on pleadings with a process for making a request for clarification?

When someone wants to start proceedings at the IPO, they must set out the details of the case they wish to make. This is known as a statement of grounds. The statement of grounds is checked by IPO caseworkers when it is filed. If the statement is considered unclear the party will be asked to make it clearer. This differs to the practice in the courts where, if the statement is unclear, the other party must request its clarification. Most cases raised at the IPO tribunal are not defended. This means the IPO may be spending significant time on statements that may have no effect on the case. We asked for views on replacing the current checks on pleadings with a process for parties to request clarification of pleadings.

The majority of respondents supported introduction of a process to request clarification of pleadings. There was support for a less interventionist approach than current practice. Some said the current process of checks can cause delays or unnecessary work if cases are not defended.

Several respondents did not support changing the current system. A few commented that having a clear case set out at the first instance is needed to decide whether to defend the case. Some suggested the request process would slow down or add to costs of proceedings or may disadvantage unrepresented applicants. A few respondents raised concerns about a clarification process being used to delay or frustrate proceedings.

There were also some general comments that guidance or examples of statements of grounds would be useful, and that as a neutral tribunal the IPO should not assist parties in redrafting statements.

Next steps: The government will trial a new process for trade mark proceedings where upon initial filing cases will be checked by the tribunal for formal legal requirements. Clarification of the statement of grounds may then be requested by a party. The IPO may still request clarification of grounds after the defence has been filed. The IPO will then review the success of the trial to decide whether to implement the process as standard practice across the rights.

Copying the other party into tribunal correspondence

Question 21. What are your views on creating a statutory obligation to copy the other party into correspondence? Has this caused you issues in the past, and what impact has that had?

Parties to tribunal proceedings at the IPO are required to copy correspondence to all parties involved. This is currently set out in a Tribunal Practice Notice but is not a statutory obligation. We are aware that this is not always complied with. We asked about the impact of not being copied into correspondence and sought views on creating an obligation in law to copy correspondence to all parties to proceedings.

Most respondents did not comment specifically on whether they had experience of not being copied into tribunal correspondence. Of those that did comment, most said that they had experienced this. Many of these commented that this causes issues and is particularly seen with unrepresented parties, among others. Issues caused included delays, additional costs, or uncertainty over deadlines. There was much support for creation of a statutory obligation to copying tribunal correspondence. Though some who voiced support said it must be clear what communications this obligation relates to. There were also a few comments relating to when this obligation should or should not apply, such as only where email addresses are provided.

A small number of stakeholders queried the practical impact a statutory obligation would have. Some respondents raised concerns about the burden of complying with this obligation in certain scenarios or said any statutory obligation should be accompanied by means of remedying the omission. Several respondents suggested digital solutions to address the issue. Suggestions included the IPO providing online access to correspondence and automatic notifications of parties about correspondence. A small number of respondents did not support setting out this obligation in legislation. There were comments that this is unnecessary, may be difficult to comply with, may require the disclosure of commercially sensitive information or may lead to additional costs.

Next steps: The government will further explore how the new tribunal services could be designed to facilitate or ensure access to correspondence. We recognise the impact caused by parties not being copied into tribunal correspondence and intend to address this issue. While there was support for introducing a statutory obligation, we believe the issue could be addressed via our new digital services. The IPO will assess how far these digital solutions can resolve this issue ahead of considering whether introduction of a legislative obligation is still needed.

Improving enforcement of unpaid IPO costs orders

Question 22. Have you or your clients been awarded costs in an IPO tribunal case which have then gone unpaid?

Question 23. Were you successful in enforcing the costs order through the civil courts? What issues did you encounter? Please provide any information on how much it did or would have cost to enforce the order.

Question 24. What are your views on whether IPO costs orders for costs and damages should be registered like County Court Judgments?

At the end of a case, the IPO usually awards costs to the successful party. Sometimes these costs awards are not paid by the other party. The IPO publishes details of those who do not pay costs awards on the IPO website. We sought to understand how frequently costs orders go unpaid, and whether parties have successfully enforced costs orders. We also asked for views on whether IPO costs orders should be registered as per County Court Judgments (CCJs).

Of those that responded, the majority said they had experienced costs orders going unpaid. Some commented that this is a frequent occurrence. The majority of respondents said it is not cost effective to pursue court enforcement, with some representatives saying they advise clients against this. Some commented that publishing the names of parties that fail to pay costs awards is usually ineffective. A small number of respondents said they had gone to court to enforce costs orders. These commented that it was difficult to find the correct procedure or that this was done to realise justice, rather than for the costs award itself.

There were mixed responses as to whether unpaid costs should be registered as per CCJs. Some respondents supported this suggestion as they thought it would make enforcement easier. However, there were suggestions that this should only apply to parties that serially fail to pay costs awards or that registration should be at the hearing officer’s discretion. Some respondents were concerned about suggestions to register unpaid costs awards like CCJs. These respondents said this may be disproportionate to the size of the costs awards, and there were concerns about potential impacts to credit ratings. There were also comments that unrepresented parties can have genuine difficulty paying awards and removal from the register on payment can involve significant administrative burden. A few said it would be more effective to prevent or suspend a party’s use of IPO services until costs awards are paid.

Next steps: The government will not pursue registration of IPO costs orders as per CCJs. While there is a problem with the payment of costs awards ordered by the IPO tribunal, we recognise the concerns raised about the consequences of registering unpaid costs orders like CCJs. We will explore alternatives to improve enforcement of unpaid awards. For example, we will explore raising awareness of the availability of security for costs orders, made upfront against those who have a history of non-payment, combined with more robustness in making those orders. We will also look at ways to improve the courts’ familiarity with how the IPO makes cost orders, so that litigants who pursue unpaid costs at the courts are better placed to do so.

Providing for cross-appeals in Appointed Person cases

Question 25. What are your views on putting cross-appeals on a statutory basis and how they should work in practice?

Appeals of IPO decisions can go to the courts or to an Appointed Person (AP). When a decision made in the IPO tribunal is appealed, the other party can respond to points raised in the appeal. The party can also appeal other aspects of a decision - this is a cross-appeal. The process of making a cross-appeal to tribunal decisions in AP cases is not set out in legislation. The process of doing so is not clear. This can cause issues for the parties and for the AP as it results in cross-appeals being made when technically they are out of time. This requires subsequent extensions of time for filing the appeal and paying the fee. APs, however, do not have a direct power to extend time limits. This must be done by the IPO. In the consultation we proposed setting out the ability to file a cross-appeal in legislation and providing APs with the power to extend time limits. This would give APs similar powers to the courts in the appeals process. The consultation stated a standard appeal fee would still be required for cross-appeals and the cross-appeal would need to be filed within the normal 21-day period to respond to the appeal. Views were sought on setting out cross-appeals in legislation and how they should work in practice.

There was much support for putting cross-appeals in AP cases on a statutory basis and for giving APs powers to extend time limits. Some commented that they agreed with the proposals set out in the consultation of how the cross-appeals process may work. There were a few comments related to the process that could be followed for cross-appeals, how the process is set out, and the time periods that should be allowed to file a cross-appeal.

Next steps: The government will seek to change legislation, to provide for cross-appeals in AP cases. The government will also seek to give APs the power to extend time limits.

Witnesses and disclosure of documents

Question 26. What are your views on the detail in which the hearing officer’s powers should be set out? Which option for the changes to the Rules do you prefer? Please explain why.

IPO hearing officers can compel witnesses to attend hearings and can require documents relevant to the dispute to be produced. Legislation differs for patents, trade marks and registered designs in how these powers are set out. Trade mark and design legislation gives hearing officers the same powers as an “official referee”, however, this role no longer exists. As a result, the powers of some hearing officers are no longer clear. Legislation gives patent hearing officers the powers of a High Court judge. In practice, there is no difference between the powers of a High Court judge and an official referee. In the consultation we presented two options for updating legislation relating to hearing officer powers for witnesses and disclosure. Neither option changes the powers of hearing officers in practice. The first option was to change trade mark and design legislation to change references to the official referee to High Court judges. This would mirror the approach of the patent legislation. The second option was to change legislation across all rights to remove references to a particular judge and to set out the powers in detail.

Respondents generally supported aligning how the powers of hearing officers for witnesses and disclosure are set out in legislation. There were mixed views as to how this should be done. Several respondents favoured changing references to the official referee in trade mark and design legislation to references to the powers of a High Court judge. Where respondents provided reasoning, they thought this option was simpler or avoided inadvertent omission of current or future powers of High Court judges. There was also support for amending legislation across the rights to remove references to a particular role and to set out hearing officer powers in detail. Respondents said this would be clearer and would set the powers out in a single place. A few respondents also favoured this approach as it would avoid the automatic change of hearing officer powers if those of High Court judges change.

Next steps: The government will seek to ensure that the powers of hearing officers for witnesses and disclosure in trade mark and designs legislation clearly align with the powers exercised in relation to patents. This will not change how the powers of hearing officers are exercised in practice.  Hearing officers will continue in not having the power to punish summarily for contempt of court.

Appeals on preliminary matters

Question 27. What are your views on applying the permission requirement to interim decisions on patents and designs cases?

Hearing officers can make interim decisions on issues prior to the main dispute of the hearing, for example on how a case should proceed. These interim decisions can either be appealed at the end of proceedings or a party may request leave to appeal which, if granted, can cause delays to proceedings. In trade mark legislation, permission is required to appeal against interim decisions before any appeal of the final decision. We sought views on extending the permission requirement to patents and designs.

There was strong support from respondents for extending the permission requirement for appeals on interim decisions to patents and designs. Respondents pointed to this requirement in trade mark proceedings and said it worked well. Some also said this would reduce delays to proceedings and the ability of parties to frustrate processes. Respondents also commented that providing consistency between the rights would be beneficial.

Next steps: The government recognises the support for this proposal and intends on extending the permission requirements for appeals on interim decisions to patents and designs proceedings.

Striking out/summary judgments

Question 28. What are your views on providing an express power to strike out or issue summary judgment across all the registered rights, and allowing hearing officers to raise the issue themselves?

Patents hearing officers have the express powers to strike out cases or to give summary judgments. There are no equivalent express provisions in trade mark and design legislation. However, we believe these powers are within the case management powers of hearing officers. Cases are struck out when they are considered unfounded, vexatious or if rules/instructions of the tribunal are not complied with. Summary judgments are given when there is no real chance a party will succeed with their case. It is also unclear whether the existing patents rule allows hearing officers to consider strike out or summary judgment of their own volition. We sought views on creating express powers for trade marks and designs hearing officers to strike out cases or give summary judgments. We also asked about allowing hearing officers to raise these issues of their own volition.

The vast majority of those that responded to the question supported the proposal to provide express powers to strike out or issue summary judgment across the registered rights. There was also strong support for allowing hearing officers to raise the issue themselves. Respondents said this would save time and money for both parties for cases with no merit and would reduce opportunities to “bully” lay parties. Some respondents said the current powers for patent hearing officers haven’t caused any issues. A few respondents were concerned the proposals may restrict access to justice.

Next steps: The government will seek to create express powers in trade mark and design legislation for hearing officers to strike out cases or give summary judgments. We will also seek amendment of legislation across the rights will also be amended to allow hearing officers to raise these issues of their own volition. Hearing officers will allow parties to be heard if striking out or summary judgment is being considered.

Next steps summary: Part A

Automation

The government will consider amending the law to provide the flexibility to automate processes in the future where there is an appropriate opportunity.

Digital and dynamic media for patent applications

The government will:

• not change practice or legislation for the time being
• engage with other patent offices and seek to build international understanding and acceptance of colour figures in patent applications

Digital service for copies of documents

The government will:

• seek to remove legal barriers to digital certified office copies (COCs), where appropriate
• continue to make paper COCs available alongside digital COCs for the foreseeable future
• continue international work to promote the acceptance and standardisation of digital COCs

International priority document exchange service

The government will investigate legislative and technical requirements to enable extension of participation in the World Intellectual Property Organization Digital Access Service to trade marks and registered designs.

Powers to make directions

The government will consider introducing powers in primary legislation, where appropriate, so the comptroller/registrar can direct the form of patent applications and how extensions of time periods work.

Hours of business and excluded days

The government will:

• continue to allow deadlines that expire on weekends and public holidays to extend to the next working day
• allow users access to IPO services 24/7 should they wish, subject to availability

National security checks

The government will:

• maintain current screening processes for now
• further investigate the use of automated and AI tools in the IPO’s screening processes
• look to implement automated screening processes in the future if technical capability and security allow

Allowing for removal of some fees

The government will seek to provide more flexibility in legislation, where appropriate, to allow the IPO to remove fees more easily at the point removing fees becomes reasonable to do so.

Aligning periods for paying renewal fees

The government will:

• seek to harmonise the period for paying for renewals to six months across the rights
• not change the end date of the payment period

Aligning periods for requesting restoration

The government will not change the period for requesting restoration across the rights.

Evidence requirements for registering transactions

The government will:

• not adopt an approach where there are different evidence requirements for verified and unverified users when registering a transaction
• further consider what evidence types are required to register a transaction

Providing represented customers with greater control over their representation

The government will:

• provide IPO customer accounts that allow both the represented customer and their representative access to conduct tasks
• provide IPO customer accounts with detailed audit trails so customers can identify what changes have been made and by who
• allow IPO customers to set up notifications to alert them to some changes that are made within the digital service
• continue using IPO administrative business processes to ensure that any potential confusion relating to requests or responses where a representative is appointed are resolved

Next steps summary: Part B

Suggested changes to IPO tribunal legislation

The government will consider the suggestions for improvements to the IPO’s tribunal and whether legislative change is appropriate to enable them.

Expedited hearings

The government will:

• consider amending the rules on case management powers to provide for expedited hearings
• seek to provide guidance on the expedition process and when such powers may be used

Request for clarification of grounds

The government will trial a new process for trade mark proceedings where:

• upon initial filing, cases will be checked by the tribunal for formal legal requirements
• clarification of the statement of grounds may then be requested by a party
• the IPO may still request clarification of grounds after the defence has been filed

Copying the other party into tribunal correspondence

The government will:

• further explore how the new tribunal services could be designed to facilitate or ensure access to correspondence
• assess how far digital solutions can resolve this issue ahead of considering whether the introduction of a legislative obligation is still needed

Improving enforcement of unpaid IPO cost orders

The government will:

• not register IPO costs orders as per County Court Judgments
• explore alternatives to improve enforcement of unpaid awards

Cross-appeals in Appointed Person cases

The government will:

• seek to change legislation to provide for cross-appeals in Appointed Person cases
• seek to give Appointed Persons the power to extend time limits

Witnesses and disclosure of documents

The government will:

• seek to ensure that the powers of hearing officers for witnesses and disclosure in trade mark and designs legislation clearly align with the powers exercised in relation to patents
• not change how the powers of hearing officers are exercised in practice
• continue in not providing hearing officers the power to punish summarily for contempt of court

Appeals on preliminary matters

The government will seek extension of the permission requirement for appeals on interim decisions to patents and designs.

Striking out and summary judgments

The government will:

• seek to create express powers in trade mark and design legislation for hearing officers to strike out cases or give summary judgments
• seek amendment of legislation across the rights to allow hearing officers to raise these issues of their own volition

Annex: List of respondents

Below is a list of respondents where responses were expressly made on behalf of an organisation. Organisations have not been included where it was not clear whether the response was made in a personal capacity or on behalf of an organisation.

Anti Copying in Design

AIPPI UK

Barker Brettell

Carpmaels & Ransford

Federation of Small Businesses

FICPI-UK

IBM

Intellectual Property Bar Association

Intellectual Property Lawyers Association

Intellectual Property Owners Association

International Trademark Association

IP Federation

Marks & Clerk

Potter Clarkson

Siemens

The Chartered Institute of Patent Attorneys

The Chartered Institute of Trade Mark Attorneys

The Law Society