Consultations on the One IPO Transformation Programme

The UK government launched the One IPO Transformation Programme (the Programme) on 22 April 2021. The Programme intends to bring about a centralised and digital system for the management of all UK registered intellectual property (IP) rights, modernising the way the UK Intellectual Property Office (IPO) handles its services and processes, and removing any unnecessary inconsistencies between the treatment of various IP rights.

From 3 November 2022 to 6 January 2023, the IPO ran its first consultation on how the IP legal framework could be modified to deliver the proposed outcomes of the Programme. The consultation had two parts, with Part A relating to the digitisation of the IPO’s services and Part B relating to the homogenous functioning of the IPO Tribunal (Tribunal). The consultation also allowed for respondents to suggest new target areas for change to the Tribunal function.

Responses were sought from a broad audience of right holders, legal professionals, businesses and individuals with an interest in how the IPO works. Despite casting the net so widely, there were under 100 replies to the consultation.

The outcome of the first consultation was published on 1 August 2023.

The government kick started its second consultation on 22 August 2023, which will run until 31 October 2023. It is seeking further responses from stakeholders on a number of proposals with the same overriding objective of creating a more robust, homogenised and centralised IPO system.

What are the key points from the government’s response to Part A of the first consultation, on proposed changes to the law and practice to enable digital transformation and broader questions about the IPO’s services?

Powers of the IPO

The government will consider amending the law to provide the IPO with the general legal flexibility to automate processes where an opportunity to do so emerges. In conjunction with the ability to automate/digitise appropriate processes, the government also intends to provide the IPO with the legal flexibility to remove fees, where this is reasonable due to the automation/digitisation of services.

The government will also consider granting the comptroller/registrar the general power to make directions so that they are able to direct the form of patent applications and indicate how extensions to time periods work.

Process optimisation

In an important step, the government intends to introduce the concept of IPO online customer accounts that will allow both right holders and their representatives to carry out tasks, and to monitor completed actions through detailed audit trails and notification systems. This will allow represented right holders to gain the cost benefit of simplified processes that do not require the input of representatives, while having the freedom to allocate tasks as between themselves and their representatives.

Homogenisation of deadlines

The government intends to harmonise the period for the payment of renewal fees for patents, to align with that applicable to trade marks and registered designs, to six months. The method of calculating the end date of the payment period will however remain unchanged as between patents and other registered IP rights to avoid divergence from other IP offices.

Digitisation of processes

As it stands, legislation requires certified office copies (COCs) of documents to have a physical seal, which prevents the IPO from issuing digital COCs. The government intends to remove such barriers in legislation, so that the IPO has the option of providing both digital and paper COCs.

The government will investigate legislative action required to extend participation in the WIPO Digital Access Service, to trade marks and designs, so as to reduce the cost and administrative burden for right holders of sending copies of documents between IP offices.

The government also intends to allow right holders access to the IPO’s proposed digital services 24/7, subject to capacity.

In topic areas such as the incorporation of digital and colour content in patent applications and the use of digital COCs, the government has mentioned that it will liaise with other IP offices to bring about change so as to ensure digital transformation is possible without affecting the global management of IP portfolios.

What are the key points from the government’s response to Part B of the first consultation, on proposed legal and practice changes to the IPO’s tribunal function?

Expediting IPO proceedings

The government will consider amending the rules of case management to provide a general power to the Tribunal to expedite hearings where appropriate, with guidance to be provided as to the circumstances in which the Tribunal will use such powers.

Further, the government intends to trial a process in the context of trade mark proceedings, whereby the Tribunal will check an initial filing only for its meeting formal legal requirements (rather than reviewing the substance of the grounds) and will leave it to the parties to the proceedings to request any clarification of grounds; whilst retaining the general ability to request clarification of the grounds after the filing of the defence if needs be. This will help the government ascertain whether such a process should be applied as standard practice across other IP rights.

Appeal of IPO decisions

The government intends to change legislation to provide expressly for the opportunity to cross-appeal in the case of an appeal to an Appointed Person (AP), with powers similar to those granted to the appeal courts granted to APs (including the power to extend time limits). The process for such cross-appeal will likely follow that of an appeal to the courts.

The government also intends to extend the requirement to obtain permission to appeal an interim decision of the Tribunal (if the appeal is brought ahead of an appeal of the final decision) to apply to patents and designs (as is already in place for trade marks).

Management of proceedings

The government intends to create express powers in trade mark and design legislation to allow hearing officers to strike out cases and give summary judgments (with the relevant parties having the opportunity to be heard), as is already provided for in patent legislation. In addition, legislation across the rights will be homogenised to allow hearing officers to raise such issues at their own discretion.

In considering other process points, such as copying parties into correspondence with the Tribunal and improving the payment of the IPO’s cost orders, the government intends to consider non-legislative options to improve outcomes.

What is the purpose of the second consultation and what issues does it cover?

Publicly available online information

The second consultation picks up on new target areas relating to the public availability of online information, series trade marks, SPC fee payment periods, and a mediation offering within IPO proceedings.

A predominant theme of the consultation is the homogenisation of the information available online for each of the IP rights, with the consultation requesting opinions on:

• an online inspection service of relevant documents in respect of all IP rights. This would involve the immediate online filing of documents and a uniform 14 day period for the filing party and potential third parties to apply for the retrospective confidentiality of documents
• limiting the address information of patent inventors held and made available by the IPO (inventors are necessarily individuals so this reduces the amount of personal data available online). The applicant’s address and address for service will still be published

Series marks

The consultation also requests opinions on the potential abolishment of series marks or, alternatively, limiting the number of marks that can constitute a series. This is to address the financial and process inefficiencies involved. In this regard, the consultation seems to favour abolishment of the system, as the IPO’s data does not suggest any added benefit to retaining a limited system.

Continuing themes from first consultation

The consultation then picks on a couple of themes that emerged in the first consultation:

• the consultation proposes to extend the payment periods for SPCs to six months—this is in line with the renewal fee periods for other IP rights, as discussed in the first consultation
• the idea of a mediation information and assessment meeting (MIAM) to allow hearing officers to direct the use of mediation by parties to proceedings, with optional cost implications being levied on parties that fail to engage

What practical steps should lawyers be advising the proprietors of patent, trade mark and design rights to take in light of the ongoing consultation process and transformation programme?

Practitioners advising IP right holders should be alive to the additional discretionary powers, in the realms of case and process management, which the government intends to grant the IPO and the Tribunal as a result of the first consultation process.

The second consultation expands on the interventional powers intended to be granted to hearing officers in the first consultation, by proposing to allow hearing offers to stipulate engagement of parties with mediation services and potentially levy cost penalties on the basis of non-engagement.

The prospect of granting hearing officers even broader discretionary powers than they hold currently raises concerns. It could lead to unpredictability and uncertainty in UK office proceedings that is not seen in other jurisdictions (where IPO examiners typically follow standardised procedural rules) – making right holders reluctant to enforce their rights in the UK. Training of hearing officers will be key.

Once the proposed IPO digital account system is in place, it is important that right holders discuss and identify responsibility for the simpler IP management tasks that right holders may wish to carry out on their own (including monitoring online notifications and availability of documents), to ensure that there is appropriate allocation of responsibility between right holders and their representatives.

Otherwise, the response to the first consultation and the changes proposed in the second consultation broadly align many of the IPO’s systems and processes with those already in place at equivalent European institutions, such as the EU Intellectual Property Office, European Patent Office and the Unified Patent Court, which, for example, already provide continuous access to an online account with online availability of documents for inspection.

It also homogenises the treatment of different IP rights at the Tribunal level while ensuring there is no significant divergence in practice from other IP offices. In this respect, the only clarified change for right holders to be aware of is the period for the payment of renewal fees for patents being extended to six months.

The second consultation proposes further changes that may be key to right holders going forward, such as the extension of the SPC fee payment period and the potential abolishment or limitation of the ability to apply for series trade marks – all of which may impact the management of IP portfolios.

This article was first published on Lexis Nexis.