Proposed change to UK patent law: sharing unpublished information with other patent offices

During the first eighteen months of a UK patent application, the UK Intellectual Property Office (IPO) conducts a prior-art search and informs the applicant in a Search Report of any relevant documents found as well as providing remarks on patentability of the invention. Under the current system, the Search Report is published along with the patent application eighteen months after the priority/filing date, but remains confidential until this date (although it may be shared confidentially with the European Patent Office).

The applicant may voluntarily permit the UK IPO to share this information with other patent offices around the world even before the application is published, which can help each patent office to save time when processing applications for the same invention in other countries. Unless the applicant opts in, the Search Report remains strictly confidential until the application is published.

Under new proposals, the UK IPO is considering removing the need for the applicant’s consent so that this information is made available in all cases to patent offices in other countries. This is intended to reduce duplication of work, which may help patent offices to save time and money and to reduce work backlogs so that patent applications are processed more quickly and efficiently.

Possible concerns with this proposal include the risk that unfavourable early search results could unduly prejudice the opinion of patent examiners in other countries, and that it may sometimes be difficult to guarantee that information shared with patent offices in many countries remains confidential.

The UK IPO has opened a consultation on this proposal. Responses must be submitted by the closing date of 4 February 2013. Full details are available here.

In particular, they ask what businesses and individuals think.

  • Would the proposed change affect your use of the patent system to protect inventions?
  • Would it cause you to file fewer patent applications?
  • Do you have any specific concerns about the proposal?

Our view is that patent applicants are unlikely to see any direct benefit from implementation of this proposal, but nor does it raise any significant cause for concern.

If you would like to know more about how the proposed change may affect you, speak to Jonathan Caruana or your usual contact at Wilson Gunn.

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