The UK Intellectual Property Office (UK IPO) has recently announced a new consultation, posing some questions relating to publication of UK patent applications.
Patent applications are normally published after 18 months from their earliest priority date (or their filing date if no priority is claimed). In the UK, it is possible to request early publication of a patent application. Early publication can be useful if an applicant becomes aware of a potential infringement. Although the claims cannot be enforced until the application is granted, it is possible in certain circumstances to receive damages for infringing acts that occurred between publication and grant of the patent application. Further, because the UK IPO does not grant applications until at least three months after publication, requesting early publication can expedite grant for applications already found allowable by the examiner.
Presently, the UK IPO only allows early publication after a search has been carried out. The UK IPO is now seeking your views on the three possible changes discussed below.
Publication Following Action Before Search
Where a patent examiner decides that a patent application has such serious issues that it is unlikely to grant, the examiner may write to the applicant before searching the application, offering a refund of the search fee if the application is withdrawn at that stage. This is called Action Before Search. The UK IPO has noted that a surprising proportion (around 25%) of such applications are not withdrawn before search, so proceed to be searched and then published.
The UK IPO would like to know whether applicants who pursue such applications believe there is a chance of securing patent protection, despite the examiner’s view, or whether they just want their applications to publish.
The UK IPO believes that if applicants only want their application to be published and not to proceed further, carrying out a search is an inefficient use of UK IPO resources. For applications where Action Before Search is applicable, the UK IPO proposes to allow applicants to request early publication without the need for a search to be conducted. Such a request could also count as a request for withdrawal once publication takes place, so no further prosecution occurs.
In fields in which excluded subject matter is a potential problem, this proposal could allow applicants to publish subject matter, in order to prevent other parties from attempting to patent it in jurisdictions where the subject matter can be more readily patented. Publication would help to ensure that the specification will be found by other patent offices around the world, and publication provides an undisputable date, clearly marking when the disclosed subject matter was made available to the public.
Optional Certificate Of Disclosure
The second proposal is an optional certificate of disclosure, confirming that the application has been disclosed at publication, and naming the applicant and inventors. This would not apparently provide any more information than the publication of the application itself and so would appear to be only a supplementary optional document available on request.
Flexible Publication Dates
The final proposal relates to a generally more flexible approach to publication, tying in with the UK IPO’s future plans for a simpler and more automated application process. They propose that applicants may choose to request publication at any time prior to 18 months, whether or not a search has been completed, as long as the application fee has been paid. The UK IPO would like to find out whether such a provision would be useful to applicants as part of a future automated electronic system.
These proposals may not be earth shattering, but if you have a view on whether requesting publication should be more flexible in the UK, the deadline for submitting a response is 26th September 2014.
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.