Consultation outcome

Transformation consultation: Part A

Updated 1 August 2023

Part A – Legal barriers to digital transformation

Automation of IPO systems and processes

In an increasingly digital age, the IPO’s customers rightly expect modern, flexible, digital services. By using a single, integrated digital system for all IP rights we can move away from onerous paper-based processes. Moving to fully digital services will allow us to automate processes currently performed manually, where it is reasonable to do so. We also want to improve the tools available to the IPO’s staff and customers by making use of technologies such as Artificial Intelligence (AI). Redesigning internal processes and systems will enable the IPO to provide modern, more customer-focussed digital services that are quicker and easier to use.

Unleashing the power of AI is a top priority in the National AI Strategy and part of the government’s plan to be the most pro-tech government ever. We already provide a pre-apply tool for trade mark customers that makes use of AI to perform checks. This helps improve their chances of registering a trade mark and leads to better quality applications. AI is a transformative technology which government wants to make full use of in a reasonable and proportionate manner. This will allow the IPO to stay world-leading in the quality and effectiveness of the services it provides to customers.

More than 300,000 applications for IP rights were received by the IPO in 2021. Processing these, and other requests, takes a significant amount of manual effort. End-to-end manual processing means requests and checks take longer to complete.

The government intends to automate manual checks where human assessment is not needed. Assessment of some formal requirements of applications could become more automated, as in example 1 below. At the same time, we want to preserve the value added by human input. Substantive patent, trade mark and design examination would continue to be carried out by a human examiner. There will be mechanisms to remedy any mistakes so that action can be taken if an issue is identified.

Example 1

Preliminary examination of a patent application is a check of whether the application meets certain formal requirements and includes all the right information. Section 15A of the Patents Act 1977 explicitly requires this to be done by an examiner.

Amendments to this section could allow a computer to carry out part of this process. For example, it could check whether the correct priority document was supplied on filing.

Any issues the automated checks find could be raised immediately via the customer’s IPO account. Applicants and attorneys would not have to wait until notified by an examiner, and the issues could be resolved much more quickly. Also, search and examination would not be delayed by administrative errors. This would save time for both customers and staff.

Other uses for AI and automation could include:

• providing automated help and guidance for customers, such as pre-apply services across all rights;
• validating and authenticating customer details and application contents;
• helping classify the technology of a patent application;
• checking the goods and services classification of trade marks; and
• assisting with prior right searches

There are many provisions in the legislation which require “the registrar” or “the comptroller” or “the examiner” to carry out specific tasks. This implies that the law requires manual checks. These tasks may involve verifying documents or making decisions. The table in the annex illustrates the range of actions and decisions that currently require human input. These requirements may significantly limit the amount of automated processing that can occur. This could limit what we would like to do as part of our transformation plans. We are therefore looking to modernise and future-proof the IP legislation to more easily allow automation.

Updating the legal framework will allow new services and systems to make use of automated processing and AI tools as they are developed. The Australian Government introduced provisions into their legislative framework in 2018 that allow for automated decision making. These allow the use of a computer program to make decisions, exercise powers and comply with obligations.

The government could introduce a similar general enabling provision into UK IP legislation. It would permit automated processing and computer-based decision making if it is appropriate to do so. It would also remove any doubt as to whether the legislation allows for automation. This would ensure that the legislation does not contain unnecessary barriers to modern, automated digital services.

There is always the possibility that automated processing could cause errors or create problems. To reduce this risk, a corrective mechanism could be included in the provision. This would ensure that remedial action could be taken if an issue is identified. This could include an option for a human intervention to carry out or verify the process, and a route to challenge actions or decisions taken by an automated service.

A general enabling provision permitting automation of processes and decisions for IP rights could introduce uncertainty in the IP system. It may not be clear exactly which processes or decisions are automated in practice and which are not. There may also be concerns over the quality of an automated service previously carried out by a human.

An alternative way to enable automation could be to make individual amendments to the legislation. These would remove explicit obligations for a person to do a particular task, allowing a computer to perform it. Example 2 below illustrates this. We could be more selective over which provisions are amended to allow for automation. Doing so may give more certainty to users. However, it would not futureproof the IP framework. The government would need to make further changes to the legislation to automate other services at a later date. This would make it harder to take advantage of developments in technology, for example.

Example 2

Section 64(4) of the Trade Marks Act 1994 allows the registrar to enter a change of name or address in the register following a request.

This provision could be amended to say, for example, that the change of name or address can be entered in the register, without saying how this could be done. This would allow for an automated process to update the information of a new name or address in the register based on the customer’s request.

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?

Modernising the IP framework

Creating modern, digital and efficient IP services requires more flexibility to adapt to technological developments than the current legislative framework allows. Many provisions in legislation were drafted with paper-based processes in mind or where documents are exchanged by post. Whilst some changes have been made over time to allow electronic communications and exchange of documents, more flexibility is needed. This will ensure the IP framework meets the increasing needs of customers for digital services.

Digital and dynamic media for patent applications

The Patents Act 1977 requires an application for a patent to include a specification containing:

a description of the invention, a claim or claims and any drawing referred to in the description or any claim.

The specification must also:

disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.

A clear explanation of the invention is important so that others can understand how it works. The description and drawings must provide that. That way, someone working in that field can reproduce the invention or find ways to improve it. This allows them to build on the technology described in the patent. This is often described as “follow-on innovation”.

Current legislation only permits black and white line drawings or photographs to be included in an application. This is because they are expected to be printed on paper and so need to be legible when they are.

But this approach may be hampering innovation in an increasingly digital environment. Trade marks can be filed using various types of media, but patents can’t. The review of the designs system is also looking at the use of different types of media for applications.

Flat black and white images can’t easily depict many technologies. Colour images can better represent how a complex structure fits together. Companies often use 3D models, videos, augmented and virtual reality objects to show how products and systems look and work.

Updating patents legislation could allow government to move away from the current limited approach. This may enable applicants to illustrate their invention using a much wider range of visual representations in future.

Doing so could help people better understand how the invention works. It could be particularly useful in certain areas of technology. These include image processing, biotechnology, medical imaging and process-based technologies. It may help examiners better assess the patentability of the application. It could also assist third parties to better understand whether they are infringing the patent.

This does not mean the IPO would begin allowing these types of media straightaway. Its IT systems would still need updating to support them. But updating the legal framework now will mean that the law won’t be a barrier to change once they are. We can also adapt the requirements further as technology develops.

There are also international considerations which may determine when we could put changes in place. Current requirements are in line with the legal and IT frameworks of most patent offices around the world. These other offices are also not yet set up to accommodate other media formats in patent applications. Although work has been done to try and enable the filing of colour drawings, there are still barriers to overcome. Diverging from other patent offices could have negative consequences. It could become more difficult to use UK patent applications as a basis for filing in other countries.

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?

Certified and uncertified copies of IP rights

Applicants for IP rights will often want to gain protection in multiple countries. To do so, they may seek to claim “priority” based on an application filed in another country. The priority period is a key part of the global IP system and enables applications to be treated as having the same date for determining validity. It relies heavily on the exchange of paper priority documents, known as Certified Office Copies (COCs).

COCs contain the documents that were filed as part of the original application. They are used to verify the content of the original application and the date of filing. COCs may also be used in other situations. They may be useful if someone needs to prove legal ownership of an IP right, such as in a court case.

An uncertified copy is a plain photocopy or digital copy of the details on our register or documents in the case file. These are often requested for personal use or research purposes, among other reasons.

Digital service for copies of documents

Relying on paper priority documents can cause difficulties. The Covid pandemic highlighted this, as customers who wanted to claim priority had issues obtaining and using COCs. A certified copy of a trade mark can be provided digitally, but for patents and designs, legislation requires that COCs be “sealed with the seal of the Patent Office”. This means a physical seal on a physical document, which was not possible when our offices were closed during the pandemic. It also means that a digital copy of a patent or registered design is not legally considered a COC, although it may still be accepted by other offices.

The government intends to make it possible for a digital COC to be produced for any registered IP right. A digital COC would be an electronic copy of the application certified by a digital signature to verify the integrity of the information. To enable this, we would need to remove the requirement in legislation for a COC to have a physical seal. The table in the annex sets out the provisions that contain the physical seal requirement.

The IPO also wants to improve the overall process for obtaining COCs and uncertified copies, to make it much easier for our customers. Currently, different forms and fees are required for COCs depending on the IP right. Customers can request patent uncertified copies using an online form, but they request them by email for trade marks and designs.

Transformation may allow a single, cross-rights service for customers to request COCs and uncertified copies for all registered IP rights. It could provide digital COCs with a digital signature. A streamlined digital service would reduce costs and save time for customers.

We know that some IP offices do not currently accept digital COCs. The IPO continues to work with other IP offices so that digital COCs can be sent directly to them. However, the government recognises that this change could have unforeseen consequences for filing internationally. We seek your views on the benefits of this change and any potential negative consequences. We are also interested in whether there are any mitigating actions which could help overcome any issues.

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

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

International priority document exchange service

The World Intellectual Property Organization’s Digital Access Service (WIPO DAS) allows priority documents to be exchanged digitally and securely between participating IP offices. It provides an alternative to supplying paper priority documents. Depositing offices upload priority documents (with applicants’ permission) to the WIPO DAS system and an access code is given to the applicant. On filing a later application with a participating office, they can provide that office with the access code to retrieve a copy of the document. The service is secure, simple to use and more efficient for users. It also reduces costs as applicants do not have to pay for multiple paper COCs to submit to other offices.

The IPO’s participation in WIPO DAS is currently limited to patents. This means UK trade mark and designs priority documents cannot be exchanged using this system. The IPO is looking at whether to extend its participation in WIPO DAS for trade marks and designs. This would benefit customers who file applications in multiple participating countries.

We seek your views on this and whether this would have any unforeseen consequences.

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?

Powers to make directions

The legal framework currently delegates much of the specific detail on how the system works to secondary legislation. For example, the Patents Rules set out the formal requirements that documents must meet. These include the margins of a page and the size of the font. While it is easier to amend secondary legislation to make changes to these requirements, the process can still take a year or more.

In some cases, the legislation allows the comptroller/registrar to set out requirements through directions instead. This means that changes to legislation are not required when government wants to make adjustments. Instead, the IPO publishes directions in the journal and on GOV.UK. Changes can be implemented rapidly and in response to specific issues.

The IPO already has the power to make directions on the content of its forms, its hours of business, and the electronic filing of documents. To help make the IP framework more flexible and agile, the government wants to explore whether the comptroller/registrar could have powers to make directions in other areas.

We intend to seek powers to direct the formatting of patent applications. With new digital filing services, paper and text sizes should not need to be set out in legislation. Replacing these provisions with directions would make it easier to have requirements specific to digital services. It would also help the IPO to update those requirements when making improvements in the future. Parliament would need to approve the conferring of such powers to the IPO.

There are other areas where government considers that deregulating the requirements may make sense. For example, the ability to direct how extensions of time work, which could give the IPO greater flexibility in extending time periods.

While this would allow greater flexibility, the government recognises it may also create uncertainty, as changes could be introduced at short notice.

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?

Hours of business and excluded days

The IPO’s directions on hours of business and excluded days set out the times and days when the IPO is closed. This varies depending on the type of business being conducted. For example, Saturdays, Sundays and public holidays are excluded days for all business except filing an application not claiming priority from an earlier case.

Anything filed on an excluded day, or after business hours, is not counted as being received until the next working day. If a deadline for doing something (such as filing a form) expires on an excluded day, it is extended to the next working day. This reflects the fact that some of the IPO’s services are not available when the office is closed. This is usually because they require manual processing. Other IP offices around the world, such as the European Patent Office and the United States Patent and Trademark Office, have similar rules.

It is likely that future digital services would be available seven days a week. This raises the question whether the IPO should direct that it is formally open seven days a week for such services. Anything filed through those services would therefore be counted as being received on the actual date it was submitted.

The government recognises this would be a different approach to that of other offices but considers that it may provide benefits. Customers will be able to file documents at the weekend and have them processed immediately. They will know exactly when a deadline must be met. But those deadlines would no longer be extended over a weekend. A deadline falling on a Saturday could not be met by filing on the following Monday. This may affect how customers and/or their representatives deal with such deadlines.

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?

National security checks

All applications for a patent or registered design are manually checked by our Security Section. This is to identify those applications which may be prejudicial to national security or public safety (“sensitive”). If an application is deemed sensitive, directions are imposed. By law, the application then cannot be published, or its contents discussed with anyone. Filing equivalent applications abroad is also prohibited.

Around 20,000 patent applications are filed every year. Of those, only around 50 have security directions applied, and these are generally filed through a separate secure route. Applications with sensitive material mostly come from a small number of specialised applicants in the defence industry. These applicants are very familiar with the process of security screening. No patent applications filed by an unrepresented applicant have had security directions issued since 2010.^{[footnote 1]}

Before 2005, there was a similar screening process for UK residents wishing to file patent applications abroad. Anyone wanting to file abroad had to get written permission from the comptroller. Alternatively, they could file a UK application first and wait to see if directions were imposed. Now, changes to the law mean that applicants are only required to do this if their application might contain sensitive material. This removed a burden for most UK applicants filing abroad and saves time for both them and the IPO.

The government would like to explore changes to the way IPO staff screen UK applications. These may allow screening to be done more efficiently, without compromising national security. However, the changes could have unintended consequences and we seek your views on the proposals.

Option 1: Applicants to self-declare

This option would be similar to the procedure for UK residents wishing to file a patent application abroad. It would be for applicants to decide whether their application contained sensitive material. If it did, they would need to file their application securely for scrutiny by a Security Section examiner. If not, it could be filed using the IPO’s normal application process. Security Section examiners would only assess applications filed directly to decide whether directions need to be applied. For most applicants, there would be a time saving. This is because most applications would not have to wait for an outcome from screening before processing could begin.

Self-declaration could lead to sensitive applications entering our standard application process and potentially becoming publicly available. To minimise this risk, an examiner would be able to refer an application back to Security Section if they believe it may be sensitive. This is a process the IPO already uses as a safeguard. The IPO could offer additional support to help applicants determine if their application is sensitive. This could include extra guidance or allowing applicants to file with Security Section first on an advisory basis.

It is possible that someone may intentionally file an application using the normal process knowing it was sensitive. To prevent such misuse, government could extend existing criminal sanctions for failure to follow security directions to cover this. This would mean a fine or prison term on conviction.

Option 2: Automated screening

As an alternative to self-declaration, we could automate security screening. The current legislation requires screening of applications to be performed by a human, so this would need to be amended. That way, once the technology is in place to automate screening, the legislation would already accommodate it.

With automated security screening, applicants would continue to file applications directly with the office using normal routes. The IPO would still screen all applications, but the process would be completed or supported by some form of automation or AI. An AI tool could use training material to screen applications and apply directions. Automated keyword searching could flag applications to a Security Section examiner. Further checks would determine if directions needed to be applied.

Option 3: Applicants self-declare with automated second check

This proposal would be a hybrid of the first two. Applicants would self-declare and file securely if their application contains sensitive material. The process of considering securely filed applications for directions could then be partly or fully automated.

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

Modernising our fee structures

The aim of the One IPO Transformation programme is not to replicate what the IPO does now. Instead, it will completely change the way the IPO delivers services. New services will be easier to access, with an increase in self-service, and internal processing will be more efficient. Self-service would mean simple changes, like an address, could be done by the customer themselves and apply automatically to all of their rights. There will no longer be onerous paper-based processes and manual data entry between different systems. These changes could have an impact on the fees the IPO charges.

The One IPO Transformation programme aims to provide a single integrated service across the IP rights managed by the IPO. This may offer an opportunity to review the IPO’s fee structures and make sure they are consistent across the different rights.

The government wants to provide more flexibility in IPO fees, including the ability to remove fees, when we review them in future. This is important as the new digital systems may reduce the costs of delivering some services. The government could also put measures in place to support the IPO’s customers in the event of emergencies, such as a pandemic, if appropriate to do so.

Allowing for removal of some fees

Digital or automated services will reduce the need to charge administrative fees for simple requests. In many places, the IP legislation gives the flexibility to set the amount of a fee in rules, including the possibility of saying that no fee is required. However, there are some requests and services where the current legislation does not allow this and requires us to charge a fee. Examples of these provisions in primary legislation are listed in the annex. Without a change in legislation, the IPO could not remove the fee if it became reasonable to do so. This could prevent it from being able to pass savings from new services onto customers.

This was an issue during the Covid pandemic. The government introduced measures to help support customers and businesses, including temporarily reducing some IPO fees to zero. The legislation allowed us to do this for the surcharge fee for late renewal of a patent or a design. However, we were unable to do the same for trade marks because the wording of the legislation prevented setting the fee to zero. Instead, the fee was reduced to £1.

Another example of a service that must be accompanied by a fee is the request for a certified or uncertified copy of an IP right/application. For patents and designs the fee amount is set by rules, but the fee cannot be removed completely. This is different to trade mark legislation, where the drafting means that government could choose to not charge a fee.

Without greater flexibility to review fees as new services are introduced, some of the existing fees may become unreasonable. We seek your views on these proposed changes.

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

Changes to how we provide services

Transformation provides opportunities to offer consistent services across IP rights, streamline processes and introduce new self-service functions. To fully achieve this, the legal frameworks for each IP right will need greater alignment and consistency.

Aligning periods for paying renewal fees and for restoration

Each of the registered IP rights must be renewed on a regular basis to remain in force. Patents must be renewed every year, designs every five years, and trade marks every ten. Holders of supplementary protection certificates (SPCs) must pay the fees up front.

There is a set period in which the renewal fee for each right can be paid, which is provided for in the legislation.

• trade marks and registered designs give six months, ending on the anniversary of the date of filing
• patents give three months, normally ending with the last day of the month in which the anniversary date falls
• supplementary protection certificates give three months, either up to the day on which the certificate is due to take effect, or from grant

If payment is not made on time, there is a further six-month period where the right can still be renewed if a late payment fee is paid along with the renewal fee. Otherwise, the right lapses.

The IPO introduced a digital system for paying renewals across patents, designs and trade marks in July 2021. This system is designed to deal with the different periods for payment of renewal fees. However, the government would like to explore aligning these periods so that they are the same for all rights.

We propose that all rightsholders should have six months in which to pay their renewal fee. The period would end on the anniversary of the date of filing, rather than at the end of the month. The six-month period would also apply where a different end date is needed, such as when a patent is granted later or for SPCs.

This would mean that rightsholders have the same period, or longer than they do currently, to make their payment. They will also be able to do so earlier than currently in many cases. The late payment period would continue to be six months in length, starting from the end of the renewal period.

We think this harmonised approach would provide greater certainty, especially for representatives and renewals companies who work across the different rights. There would be no need to consider what period applies to the relevant right. It would enable the IPO to issue clearer guidance in relation to when IP rights can be renewed. This would reduce the risk of confusion causing businesses to accidentally lose their rights by failing to renew them within the right period. Having a consistent approach would also make it easier to develop new IPO systems.

The government recognises that this means a change to how the patents renewal period works. The current period, based on the end of the month, matches how the European Patent Office and many of its member countries operate. This proposal may therefore require some changes to customers’ systems for dealing with renewals.

Restoration

If their right has lapsed for failing to pay the renewal fee, a rightsholder can request restoration of the right within a certain period. If they can prove that the failure to pay was unintentional, and pay the outstanding fees, the right will be restored.

Each of the rights where restoration is available defines the period for requesting it differently. Trade marks legislation sets the period at six months after the mark is removed from the register. Patents gives 13 months from the end of the late payment period. Registered designs allows a request within 12 months of the design ceasing to have effect. There is no one approach as to when the period is calculated from and how long it is said to last.

The government would like to explore whether these different approaches should be simplified. It may be beneficial for the period for requesting restoration to be defined in the same way across the rights. The same length of time for making a request could also be provided.

The period for patents is set by international treaty, and so can’t be shortened from its current length. For that reason, any change to make the period more consistent would likely be in line with the calculation for patents. A request could then be made within 13 months of the late payment period ending. This would give trade mark and design owners a longer period to make a request. It would also avoid any rightsholders losing out in the process of making the change.

However, there may be valid reasons for applying different periods to different rights. For example, a trade mark being restored may have an impact on applications that were filed after it had lapsed. A longer period may increase that impact.

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?

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

Standardising evidence requirements for IP transactions

Like other types of property, IP rights can be bought and sold. When that happens, the old owner or the new owner will normally tell the IPO that the transaction has taken place. They will request to update the details held on our register. When a request is made, the legislation requires that it must include evidence of the transaction to prove it has happened. The amount of evidence required is different for each IP right:

• for trade marks, the request must be signed by both parties involved in the transaction
• for patents, the legislation is less specific and simply requires supporting evidence
• for registered designs, the evidence must satisfy the IPO that proof of title has been established

A team at the IPO checks this evidence before the transaction can be registered. If the evidence cannot satisfy the requirements, the IPO will ask for more information. This is usually done by requesting a copy of the formal document which sets out the transaction. This could be a contract, a court order, or a grant of probate on a will.

The IPO is developing a new digital service for registering transactions and changes of ownership, which can be seen in this IPO blog. To make the new service as effective as possible, the government is looking at what the requirements for evidence should be. We want to provide consistency across IP rights.

We are interested in your thoughts on what the appropriate level of evidence should be. We have come up with two options for when that evidence will be required, which are set out below.

In both options, if the request is not being made by the seller, we expect to send a notification of the request to them. We believe this would reduce the risk of fraudulent assignments.

Option 1: Require evidence for all transactions

Some type of evidence would be required when registering any transaction, which would then be checked. This is the approach currently used for patents.

This does not necessarily mean that documents need to be provided. Current practice is to accept the seller’s signature as sufficient evidence that the transaction has taken place. Other evidence is only required if the person making the request is unable to provide this signature.

With this approach, it is likely that all requests made by the seller would be processed with no further evidence required. This would mean transactions could be registered immediately. However, checks of evidence would continue for applications filed by new owners of rights. This could lead to delays in registration for those transactions.

Option 2: Require evidence only to support requests made by unverified users

The concept of verified and unverified users is an idea which the One IPO Transformation work is exploring for its new systems. Verified users would typically be representatives or other parties who the IPO has previously dealt with. Unverified users would primarily be customers with whom the IPO has not dealt with previously.

With this option, verified users would not be required to submit evidence when registering a transfer of ownership of an IP right. The register would be updated automatically, allowing for self-service by most of the IPO’s customers.

For unverified users, the IPO would require evidence from them to support any requests to register a transaction. The evidence provided would be subject to manual checks before the change is recorded on the register.

Whilst this option could allow automatic registration of all transactions from verified users, the government recognises there are potential issues. It is possible that such a service could be misused – for example, by someone fraudulently claiming that they have acquired a right. Also, as the sale of IP rights can be complicated, fully automating such entries could affect the accuracy and reliability of the register.

Without checks from IPO staff, the register could end up displaying incorrect information about a particular transaction. These could include a change of name being registered rather than a change of ownership, or an incorrect date of transfer being published. This could create issues for owners trying to enforce their rights.

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.

Providing represented customers with greater control over their representation

Customers who want to use the IPO’s services will either do the work themselves or use a representative. This will usually be a patent or trade mark attorney. The representative acts on their behalf and will often deal with all matters relating to their client’s requests. The services provided by the representative are usually agreed separately through a contract or retainer.

(We’ll use “represented customer” in this section to refer to the customer who sits behind the representative, i.e., their client.)

The government would like to explore how represented customers could have more control over their activities at the IPO. This may mean that the represented customer keeps some responsibilities even where they have appointed a representative. For instance, they could decide to stay in charge of updating their name or address, notifying of transactions or licences, and other administrative actions. With the IPO’s improved, easy-to-use services, these tasks may be simpler to carry out. The representative could then focus on progressing the substantive elements of a request.

When an application is filed, the named representative is presumed to be authorised to act in all matters relating to the application. The represented customer is not legally restricted from prosecuting their application while employing a representative. In practice, the IPO will not normally interact with a represented customer. This is because they have appointed the representative to act on their behalf. It has the benefit that the IPO does not receive conflicting requests or inconsistent information.

The IPO’s new, more flexible services will be built around a customer account. Individual tasks on an application or right will be carried out from the account’s dashboard. You can see an early version of the concept in this IPO video. A represented customer and their representative may each have a customer account. These accounts could have different “roles” or “types” with different levels of access. This could include the tasks that can be done by each type of account.

We recognise that the relationship between a customer and their representative is separate to their interaction with the IPO. It is for the customer and their representative to define and agree their respective responsibilities. It is important that those decisions are not restricted or determined by how IPO systems operate.

It will therefore be important to ensure that the different types of accounts can work effectively together. For example, notifications could be provided to inform both the represented customer and their representative of any updates. In one scenario, these could include if changes are made to the tasks delegated to the representative.

The government would like to understand how represented customers currently use representatives for different tasks, and the extent to which representatives perform simpler tasks for their clients. We are also exploring four options for how represented customers may engage with the IPO through their customer account.

Option 1: Represented customers cannot deal directly with the IPO

This option mirrors current IPO practice. If a customer authorised a representative to act on their behalf, the IPO would only deal with the representative. The customer would still be able to monitor progress via their own customer account. This ensures that the IPO always has a single point of contact, but may place extra costs on the customer. This is because representatives generally charge their clients to carry out tasks such as updating a name or address. Given that the new services are being designed to make things easier for all IPO customers, this may be unreasonably restrictive.

Option 2: Represented customers and representatives can carry out all tasks

Here, both the represented customer and their representative could carry out actions on a request through their own customer accounts. Whilst this could help reduce costs for applicants, it could also lead to confusion for those involved. This could cause problems for the IPO if different responses are received from both parties.

Option 3: Represented customers can delegate specific tasks to their representative via their customer account

Here, the represented customer would designate the activities they have appointed their representative to carry out. Their account could allow them to indicate this through a series of tick boxes associated with their representative. The represented customer would be able to decide which tasks to take on themselves and which to rely on their representative for. This already happens in some situations – for example, a representative may be appointed only to deal with renewals or to act in a dispute.

Option 4: Represented customers can perform certain administrative tasks

This option is similar to option 3 but would identify tasks a represented customer could carry out themselves. A specific customer “role” would allow only those tasks to be performed. The substantive processing of the request would remain for the representative to do. Representatives would still be able to carry out administrative tasks on behalf of their client if delegated to do so.

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.

Annex: examples of legislative provisions

Provisions which require human input on formal checks and requirements

Legislative Instrument	Section(s) or rule	Description
Patents Act 1977	14	The comptroller may decide whether an abstract fulfils its purpose to give technical information and can reframe it if it doesn’t.
Patents Act 1977	15A	The comptroller shall refer an application for a patent to an examiner for to check if formal requirements have been met, and the examiner must report their findings.
Patents Act 1977	117B(2)	The comptroller shall extend a period of time if the request complies with requirements in the rules.
Trade Marks Act 1994	37(1)	The registrar must examine whether an application to register a trade mark complies with the Act and rules. This includes both the requirements for filing and substantive matters.
Trade Mark Rules 2008	6(2)	If there is any doubt over a priority claim, the registrar may require that the applicant files documentary evidence for the registrar to check or verify.
Registered Designs Act 1949	3A	The registrar can refuse an application to register a design or designs if the application does not comply with requirements provided in the Act or in rules.
Registered Designs Act 1949	11	If a request is made in the prescribed manner, the registrar can cancel the registration of a design.
Registered Designs Rules 2006	7(4)	The copy of the representation of a design filed in a different country provided with a UK application must be verified by the registrar.

Provisions requiring certified office copies (COCs) to be physically sealed

Legislative Instrument	Section(s) or rule	Description
Patents Act 1977 Registered Designs Act 1949	32(13) 17(12)	“Certified copy” and “certified extract” mean a copy and extract certified and sealed with the seal of the Patent Office.

Provisions requiring a fee to be charged

Legislative Instrument	Section(s) or rule	Provision
Patents Act 1977	32(6)	Requires a fee to be paid for certified and uncertified copies of patents information.
Patents Act 1977	89A(3) & (6)	Requires a fee when an international patent application comes to the IPO to be processed as a UK case.
Registered Designs Act 1949	17(5)	Requires a fee to be paid for certified and uncertified copies of designs information.
Registered Designs Act 1949	21(2)	Requires a fee if a request is made to correct an error in a design application or in the register of designs.
Trade Marks Act 1994	43(1) & (3)	Requires an additional fee to be paid to renew a trade mark if the trade mark is renewed late.

1. The information for 2000-2020 can be found in Table 2.8a of this dataset available for download. ↩