On 21 June 2013, we reported a consultation issued by the UK Intellectual Property Office (IPO) as to the possibility of a new, ‘superfast’ patent granting procedure. In short, for those with the inclination (and the capital) the proposal offered a new, accelerated route to a granted patent that would offer a turnaround time of no more than ninety days from filing.
The responses to the consultation, which has now closed, revealed dissent among large numbers both of IP practitioners and of businesses large and small. As a result, the IPO has elected not to implement the proposed scheme after all.
Of the answers to the six questions put forward, it is perhaps those received in relation to the first that speak the loudest: when asked whether they would use the service, only three respondents indicated that they would be likely to do so. While, as anticipated in more than one quarter, there was some level of interest in the scheme as a potentially fruitful option for those wishing to take advantage of the Patent Box scheme which has as a requisite for its application the existence of a granted patent, the demand was quite simply far below that expected by the authorities.
By contrast, by far the most abundant and varied were the responses submitted in relation to the final question, “Do you foresee any risks or problems with grant of a patent in as little as ninety days?”. Issues flagged included a high risk of poor quality, or even invalid, patents being granted, leading to a potentially heightened level of uncertainty for all parties involved in any given situation. Indeed, some even expressed a fear that remaining applications, be they accelerated via any of the IPO’s other prioritisation channels or not, would also suffer, as a result of resources being directed away from them in favour of those filed under the new system. Other concerns related to the disadvantages engendered by early publication, the ramifications of which may be poorly understood by those unfamiliar with the patent system, and an increased burden on third parties to monitor the status of a superfast application and, where necessary, to intervene within a significantly reduced timescale.
The decision not to implement the proposed, ultra-accelerated patent granting scheme has been called courageous by some; judging by the published responses, it will almost certainly be welcomed by many. However that may be, the consultation document makes for a refreshing read, giving as it does considerable weight not only to the quality of the patent system, but also to the interests of small entities. It has also been pointed out that the UK IPO is already among the speedier authorities when it comes to granting patents; where necessary, it is possible for a granted patent to be obtained within little over half a year from filing by making use of the numerous acceleration schemes already on offer, which have the additional, not insignificant benefit of being free of charge. The proposed, superfast route would offer little advantage over such options with the exception, perhaps, of the absence of any qualification criterion; currently, an applicant wishing to expedite the prosecution of his application must give a reason. Of potential interest, then, is one response noted in the closing remarks to the consultation: would not a sensible compromise be to introduce a service offering the degree of acceleration already available, but which replaces the need to give a reason with payment of an appropriate fee? Only time will tell whether such an option will indeed materialise as a by-product of this consultation process.
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This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.