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UKIPO filing statistics viewed through a Brexit lens


26th Jul 2016

The UK Intellectual Property Office (UKIPO) has published its annual report for the financial year ending March 2016. The report includes a few facts and figures that make interesting reading for the UKIPO’s customers and allow us to check the health of IP in the UK. We look at the statistics for each of the main registered IP rights below, and take the opportunity to don our soothsayer hats and peer into our scrying bowl to predict the trends over the coming year, particularly in light of the UK’s recent vote to leave the EU.

The total number of UK national patent applications filed this past year is essentially unchanged from the year before. As always, not all of these are expected to proceed to examination – many are filed for priority-claiming purposes only.

However, it is interesting to see a slight increase in the number of requests for examination. This suggests that more and more applicants are choosing to keep their UK national patent application going after the convention year has passed.

As these figures pre-date the UK’s vote to leave the EU, of which the IP implications are discussed here, this increase cannot be attributed to BREXIT uncertainty. It is possible that some applicants, worried about the forthcoming Unitary Patent, might choose to protect their inventions in Europe via national rights rather than the EPO, to take their patents forever out of the jurisdiction of the Unitary Patent Court. Whether this trend will continue or not is another matter in the aftermath of the UK’s vote to leave the EU, which might have put the Unitary Patent process on hold.

On the other hand, we wonder if there is a trend in applicants choosing national rights over the EPO route? Anecdotally, we are aware of some applicants experimenting with this. If protection is only sought in a few countries, then the cost savings through using the EPO are small and applicants’ dissatisfaction with the EPO – for whatever reason, e.g. unreasonable delays, perceived unreasonableness of examiners – might be enough to tempt them to try the national route.

There were 5% more UK trade mark applications last year than in the previous year. Figures such as this are often correlated to some degree with overall economic strength since they relate to the launches of new brands, but there have been some IP developments that might have affected this figure.

In particular, in the 2015 Sofaworks v Sofa Workshop decision of the High Court of Justice of England and Wales, the judge held that use of a mark in one country of the EU, even if on an extensive scale, is not enough to satisfy the requirement of genuine use in the EU for a Community Trade Mark (now called an EU Trade Mark). We wonder, therefore, if this increase might be at least partly due to applicants without plans to operate elsewhere in Europe filing more UK national trade marks than EU trade marks.

In any case, it is likely that the number of UK national trade marks will continue to rise this year. We think that uncertainty as to the exact mechanism by which existing EU trade marks would take effect in the UK post-BREXIT will lead to more such filings as a precaution. Indeed, this appears to be happening right now: according to Kate O’Rourke, the president of the Institute of Trade Mark Attorneys, the UKIPO has seen a ‘spike’ in filings since the UK’s vote to leave the EU, counter to normal rates seen at this time of year.

The big story in registered designs is that there has been a 31% increase in applications, which follows a similar increase in the previous year.

Over the past year the UKIPO has made it easier to apply for design protection online. In the annual report, the UKIPO suggests that the increase in filings is mostly due to their efforts in this area.

We would expect the number of filings to continue to increase this year. As with trade marks, this partly due to the uncertainty as to the exact mechanism by which existing Registered Community Designs (RCDs) would take effect in the UK post-BREXIT.

In addition, following a consultation, the UKIPO is set to reduce the filing fees for design registrations to practically zero – the filing fees for 10 different designs contained in a single online application will be £70, with an additional £20 for each additional 10 designs included. In feedback to the consultation, one SME commented that for small items the RCD fee is disproportionate, so it would make commercial sense to register these items in the UK and suggested that, with the lower fees, they would probably register “hundreds”. One representative body suggested that, for industries where multiple registrations are created but only used for one to two years, designers will be much more likely to register their whole collections under the new proposals.

Overall, the figures are positive for the UKIPO, with increases in trade mark and design filings and an increase in requests for examination of patents. We think it is likely that these figures will continue to increase this year.

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 any action in reliance on it.

Author
Christopher Smith
Senior Associate
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Would you like to know more? You can talk to Christopher Smith who will be able to help. Call +44 (0)20 7242 0901

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