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Introduction

On 22 August 2023, the government launched a 10 week consultation about the Intellectual Property Office鈥檚 (IPO鈥檚) Transformation programme. The Transformation programme is reviewing IPO practice and services as well as delivering a single, digitised system for all registered intellectual property (IP) rights. The consultation aims to inform some of the potential legal and practice changes to enable transformation.

The consultation sought views on proposals for potential changes in the following areas:

• online public document inspection service for trade marks and designs
• rules governing public inspection of trade mark and design documents and requests for confidentiality
• series trade mark service
• length of supplementary protection certificate (SPC) fee payment periods
• collection and publication of addresses for patent inventors
• ways to encourage more mediation during聽IPO聽tribunal proceedings

There were 44 responses to the consultation. Respondents included聽legal and IP professionals, large business, a representative of small UK businesses as well as private individuals. Responses varied in their level of detail, with some providing qualitative evidence while others simply stated whether they did or did not support a proposal.

The responses will help inform future legislative and practice change as well as system design of services under the Transformation programme. Here we provide a summary of responses and set out the government response for each issue of the consultation.

Executive Summary

1. Online public document inspection service for trade marks and designs

The government will seek to introduce an online file inspection service for trade marks and designs.

2. Rules governing public inspection of trade mark and design documents and requests for confidentiality

The government will:

• seek to amend design legislation to remove the 14-day delay to designs documents becoming available for public inspection
• seek to amend the trade mark rules so that anyone can make a confidentiality request at any time
• seek amendment of the patents and designs rules to remove reference to a 14-day time limit in which to make a confidentiality request

3. Series trade mark service

The government will:

• seek removal of the series marks service while enabling existing registrations to be maintained as series marks
• monitor trade mark applications to assess the impact of this change
• review guidance to support customers in understanding the protection provided by trade marks and in making informed decisions about protecting variants as standalone trade marks where such applications may be necessary

4. Length of supplementary protection certificate (SPC) fee payment periods

The government will seek to change both the standard period and the later grant period to 6 months. Once this change has been made, an SPC will be subject to the later grant period if it is granted 6 months or less before its start date.

5. Collection and publication of addresses for patent inventors

The government will:

• explore legislative and technical options to reduce the address details collected and made public for each inventor, avoiding collection of a complete street address
• develop an administrative process to request contact details for the inventor in the event the IPO requires them
• consider whether to introduce a process for the inventor to provide optional contact details during the patent application process

6. Ways to encourage more mediation during聽IPO聽tribunal proceedings

The government will:

• carry out a trial of Mediation Information and Assessment Meetings involving disputes at the IPO Tribunal where there are private litigants on both sides
• explore hearing officer powers to encourage voluntary mediation including engagement in the Mediation Information and Assessment Meeting process

Detail of outcome

Online public document inspection service for trade marks and designs

The IPO does not have an online file inspection service for trade marks and designs. To inspect trade marks and designs documents, customers either need to request copies from the IPO or view them in person at the IPO. An online inspection service already exists for patents. The consultation sought views on introducing such a service for trade marks and designs.

Most respondents were in favour of the proposal. Respondents said this would make accessing documentation easier and quicker and improve transparency. It would also align the IPO with other intellectual property offices such as the United States Patent and Trademark Office (USPTO) and the European Union Intellectual Property Office (EUIPO). Some commented that the existing patents service was useful and that a similar service for trade marks and designs was welcome.

Several respondents said it would be important to ensure certain information is kept confidential and not made available on the new services. It was also queried if historic records would be made available. Others raised concerns about data scraping and the copying of legal arguments by third parties, including for use in AI tools.

Next steps:聽

The government will seek to introduce an online file inspection service for trade marks and designs. We note the concerns surrounding confidentiality, data scraping and AI tools. These will be taken into account when designing and implementing the new services.

Rules governing public inspection of trade mark and design documents and requests for confidentiality

Documents relating to a published patent or trade mark application generally become open to public inspection on filing. In contrast, designs documents do not become available until after a 14-day period after filing. The consultation proposed amending design legislation to remove the provision requiring a delay to designs documents becoming publicly available. This would allow timely availability of documents, which is in the public interest.

The majority of respondents were supportive of this proposal. Increased alignment across rights and greater transparency were provided as reasons. Those against raised concerns that filers would have less time to make a confidentiality request before a document becomes publicly available.

The consultation also proposed to amend the trade marks rules to make clear that anyone can make a confidentiality request within a 14-day period of the relevant document being filed. This would align trade marks legislation with patents and designs legislation.

Most respondents were in favour. However, some questioned the need to introduce a 14-day time period for making confidentiality requests. It was highlighted that people other than the filer may not even become aware of a document until after this period.

In view of this feedback, the government informally consulted on the option of amending the trade marks rules to provide for requests to be made at any time and by anyone. To ensure alignment across the rights we also asked about removing reference to a 14-day time limit in which to make a confidentiality request from the designs and patents rules (which also applies to supplementary protection certificates, 鈥�SPCs鈥�). Under this option, legislation for patents, SPCs, designs and trade marks would reflect that confidentiality requests can be made by anyone, at any time. As the 14-day time limits in patents and designs law are extendable at the IPO鈥檚 discretion, the IPO will already grant requests made after 14-days where good reasons are provided. As such, no change in practice for patents, SPCs and designs would occur under this option.

The majority of respondents to the informal consultation were supportive of this option. Respondents included those who responded to questions on confidentiality requests in the original consultation and other IP stakeholders. Where respondents were unsupportive, this was because they favoured requests being restricted to being made on filing or within 14-days.

Next steps:

The government will seek to amend design legislation to remove the 14-day delay to designs documents becoming available for public inspection. Some respondents thought the delay should be retained to allow filers longer to make a confidentiality request before a document becomes publicly available. The number of requests received for designs is extremely low, however, and the government does not believe it is proportionate to retain the delay for this reason.

The government will also seek amendment of the trade marks rules to provide for confidentiality requests to be made at any time, and by anyone. It will also seek to amend the patents and designs rules to remove reference to a 14-day time limit in which to make a confidentiality request. The government recognises the benefits of this approach over maintaining reference to a 14-day time limit for requests in patents and designs legislation and introducing such a reference into trade mark legislation, as originally proposed. These include providing a clear basis for third parties who may not become aware of a document until after the 14-day period has passed to make a request. There is a high bar for granting confidentiality requests across the rights given the presumption that information be made available for public inspection. The IPO will continue to ensure that requests meet this bar going forward.

Series trade mark service

The series mark service allows for the filing of a single application containing up to six trade marks which differ only in non-distinctive matter. A series of marks is not intended to provide materially different protection to that offered by any other mark in the series. There are concerns that customers are misunderstanding the series mark provision and that some are potentially misusing it to achieve multiple examinations at a reduced cost. This raises questions about whether the service is functioning effectively and delivering value to customers. The consultation sought views on how the service is used and options for reform. The consultation indicated that the government preference based on the evidence then available was to remove series marks.

Many respondents considered series marks to be useful or beneficial, primarily citing practical benefits. The most common reasons provided were:鈥�鈥�鈥�聽

• series marks providing a cost effective and efficient way to protect multiple variants of a mark鈥�聽

• flexibility, as the current system allows filings when the applicant has not determined which variant they want to use鈥�聽

• easier enforcement of marks and rebuttal against claims of non-use鈥�聽

• administrative benefits, as variants come under a single internal record

However, some respondents suggested they do not find series marks useful. Reasons provided included:鈥�聽

• concerns some applicants may think they are getting a greater scope of protection than actually provided鈥�聽

• series marks adding unnecessary complexity to the application process鈥�聽

• series marks not being offered in most other jurisdictions

Some of these issues were also raised by respondents who said series marks are useful. Many respondents considered the benefits of series marks outweighed any deficiencies.鈥�聽

There were mixed views amongst those that commented on the legal scope of protection provided by series marks. Some said series marks provide no additional protection compared to standalone marks or that there was only a perception of broadened protection. However, some said series marks arguably provide broader protection, even if only slightly.

Some respondents supported a reduction in the number of marks allowed in a series. They considered this would be an improvement to the system. Many respondents said reducing or removing series marks would penalise legitimate users of the provision or was not justified. A couple of respondents suggested there should be no cap on the number of marks allowed in a series.聽

Generally, respondents only supported a reduction in the maximum number of marks in a series as an alternative to service removal. Where a preference was expressed, respondents generally favoured a maximum of four marks in the series.

Many respondents suggested removal of the service would bring negative impacts. The most common concerns raised included:鈥�鈥�聽

• increased costs in applying for multiple variants of a trade mark (particularly for SMEs)鈥�聽

• increased costs and efforts in enforcement鈥�聽

• difficulties filing international applications based on UK trade marks

Some respondents suggested positive impacts would be brought by removal of the series marks service, including simplification of the application process and greater harmonisation with other jurisdictions. Some pointed to a lack of legal benefit provided by series marks.鈥�鈥�聽

Of those that commented, there was an apparent split as to whether other existing provisions could mitigate issues caused by the removal of the series marks service. However, where respondents suggested issues couldn鈥檛 be mitigated with existing provisions they mostly referred to the cost of filing additional applications. A few respondents referred to increased difficulties in the enforcement of marks.鈥�聽

Some respondents, including some that supported removal of the service, raised concerns about the fate and validity of existing registrations if the IPO stopped offering series marks.

Most respondents considered series marks should be retained for the reasons given above. Some supported removal or were ambivalent to the proposed changes. Some respondents supported a reduction in the number of marks allowed in a series.

Some suggestions for changes to the series marks service were made. These changes were:聽

• improving guidance and the application process
• changing IPO fees or the refund policy
• changing examination practice
• altering the scope of protection provided by series marks
• restricting legal representation to UK professionals

Next steps:

Concerns about removal of the service generally related to the impact on customers in filing for and maintaining additional marks, particularly SMEs. Owing to this, further analysis was performed to understand filing behaviour in France, considered an otherwise comparable jurisdiction that does not offer series marks^{[footnote 1]}.This analysis suggested that in the absence of series marks only a small proportion of applicants file multiple applications to protect non-distinct variants of a mark. We therefore believe, if the service were removed, only a small proportion of applicants will file additional applications while most customers will benefit from a simplification of the trade mark framework.

We do not believe respondents provided evidence that refutes government concerns about the misunderstanding or erroneous use of the series marks provision, or its necessity. As noted in the original consultation document, a high proportion of these applications receive an objection for not being a valid series. The further analysis suggests current use of the provision is largely driven by its availability. We do not believe providing such a service that places an additional financial and administrative burden on customers represents good value for customers. In particular, this service adds complexity to the trade mark application process and creates confusion for customers. Removal of the series provision would not prevent users filing standalone applications in the UK from which priority can be claimed in other jurisdictions.

As most series applications received by the IPO are for two marks in a series we do not believe concerns will be addressed by reducing the number of marks available in a series. We think this would bring limited impact in addressing concerns related to customer misunderstanding and to applications made erroneously or only because of the availability of the service.聽

Some respondents suggested reviewing fees or guidance. The IPO has previously introduced guidance which has had some impact on objection rates. We believe further guidance on series marks will have limited impact beyond this. As IPO application fees are already low, it is considered unlikely that reducing the price difference between series and standalone applications would deter customers from using the service where it may not be necessary. This would then also increase costs for these customers who continue to use the service.聽

The government intends to remove the series marks service while maintaining existing series registrations. Existing registrations will remain valid and continue to be maintained as series marks. The government nevertheless recognises the concerns raised and will monitor trade mark applications to assess the impact of this change. The government will review guidance to support customers in understanding the protection provided by trade marks to assist them in making informed decisions about protecting variants as standalone trade marks where such applications may be necessary, particularly for SMEs.

Length of supplementary protection certificate (SPC) fee payment periods

Fees for an SPC must be paid in a single payment before the SPC may take effect. These are one-off, in-force fees not renewal fees. The period within which the SPC in-force fee must be paid is currently three months ending with the start date of the SPC. This period runs up to the day on which the certificate is due to take effect (the standard period). However, if the SPC is granted less than three months before its start date, this three-month period runs from grant of the SPC (the later grant period). We sought views on extending each of these periods to 6 months from 3 months, in line with the situation that exists with the period for paying renewal fees for other IP rights.

Respondents were generally in favour of extending these periods to 6 months as it reduces complexity and uncertainty. A couple of respondents were against this proposal, stating that the period of uncertainty around whether an SPC will come into force or not would be longer. However other respondents stated that SPCs usually enter into force following payment of fees and so the uncertainty is unlikely to occur.

Next steps:

The government will seek to change both the standard period and the later grant period to 6 months. Once this change has been made, an SPC will be subject to the later grant period if it is granted 6 months or less before its start date.

Collection and publication of addresses for patent inventors

The patents register currently includes full addresses for inventors.聽 Inventors鈥� addresses are therefore available to the public online.聽 We asked if we should limit how much of the inventor鈥檚 address we make public.聽 This would avoid making public the inventor鈥檚 complete street address.聽 We also asked whether we should continue to collect a full address for each inventor during the patent application process (option聽1), or whether we should only collect the reduced address details (option 2).

The vast majority of respondents agreed the IPO should stop publishing full addresses for inventors. A majority felt that we should also stop collecting full addresses for inventors (option 2).

Some respondents made arguments about the importance of legal identification of the inventor and avoiding legal uncertainty where there are multiple individuals with the聽same name. 鈥婬owever, the Government considers that it is not proportionate to collect full address data for all inventors given the relatively small number of issues which arise in relation to the identity of the inventor. It is also important to bear in mind that European Patents granted by the European Patent Office and designating the UK do not include full addresses for inventors. In addition, it is already the case that many inventors include their employers鈥� address, and that the inventor can waive their right to have their address mentioned as that of the inventor. Nonetheless, we will consider whether there would be value in introducing a process for the inventor to provide optional contact details during the patent application process. The contact details would be available to the public.

Most respondents did not 鈥媠ee a need for a legislative requirement compelling the applicant to provide contact details (or the last known contact details) for the inventor in the event that the IPO requires them, for example as part of an inventorship or entitlement dispute. Respondents鈥� preference was that any such request for inventor contact details would be a purely administrative procedure.

Next steps:

The government will explore legislative and technical options to reduce the address details collected and made public for each inventor, avoiding collection of a complete street address.聽 Prior to any such legislation coming into force, the IPO will provide guidance setting out what address data applicants need to supply for inventors, including whether they need to provide full postal codes (as at the European Patent Office).聽

The applicant鈥檚 address and the address for service will continue to be published in full in the register. The address for service is the contact point for all queries in relation to the patent application or granted patent.

Alongside the above legislative change, the government will develop an administrative process to request contact details for the inventor in the event the IPO requires them. We will also consider whether to introduce a process for the inventor to provide optional contact details during the patent application process.

Ways to encourage more mediation during聽IPO聽tribunal proceedings

The IPO already provides a commercial mediation service although usage tends to be low. Meanwhile, there are over 7,000 proceedings ongoing at the IPO Tribunal, some of which may be well suited to a mediated settlement. In order to settle a dispute before the IPO without having to complete formal proceedings, trying mediation (whether using the IPO mediation service or any other mediator) could be encouraged by using MIAMs at the right point in the litigation process. The MIAM would provide the parties with an introduction to the benefits of alternative dispute resolution and a chance to explore whether their case (or certain aspects of it) are suitable for mediation.

Respondents were broadly in favour of introducing MIAMs at the IPO Tribunal.聽 But they advised against a 鈥渉eavy handed鈥� approach when using hearing officer powers to direct parties. There was a strong consensus against having compulsory mediation. Respondents suggested that parties cannot be compelled to agree, and that compulsory mediation does not work in territories that adopt this approach.

They also gave the view that it would unnecessarily incur costs and protract proceedings.

The responses which addressed timings stated that mediation could occur at any point during the proceedings, but some felt that it should not be before the defence has been filed.

Many respondents were of the view that professionally represented parties tend to seek settlement themselves and many cases are resolved in this way. Therefore, there were suggestions that the MIAMs would be more beneficial to unrepresented parties.

There was broad support from respondents for mediation and for its increased use at the IPO tribunal. It was noted that this is in line with the wider drives across civil justice areas to increase mediation and to settle matters amicably.聽 As noted above, there was no support for compulsory mediation, and there was a degree of consensus that unrepresented litigants would benefit the most.

Next steps:

The government will pilot the use of MIAMs involving disputes at the IPO Tribunal. The pilot will involve proceedings where there are private litigants on both sides.聽 We will also further explore how hearing officer powers can encourage voluntary mediation, including parties鈥� engagement in the MIAM process.

Annex A: List of respondents

Below is a list of respondents where responses were expressly made on behalf of an organisation. Organisations have not been included where it was not clear whether the response was made in a personal capacity or on behalf of an organisation.

AA Thornton IP LLP

Anti Copying in Design

Barker Brettell LLP

Brabners LLP

British Brands Group

Burges Salmon LLP

Chanel Limited

Federation of Small Businesses

Gallafents Ltd

Haseltine Lake Kempner LLP

HGF

Honda Motor Co., Ltd

IBM United Kingdom Limited

International Association for the Protection of Intellectual Property

International Trademark Association

IP Federation

Indelible IP Limited

Ipulse (IP) Partners LLP

J A Kemp LLP

Marks & Clerk LLP

MARQUES

Murgitroyd & Company Limited

Pinsent Masons LLP

PipSqueak Developments Ltd

Potter Clarkson

Script IP Limited

Siemens Plc

The Chartered Institute of Patent Attorneys

The Chartered Institute of Trade Mark Attorneys

The Intellectual Property Lawyers鈥� Association

The Law Society

The Law Society of Scotland

Wiggin LLP