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We welcome the UK Intellectual Property Office’s (UKIPO’s) decision to consult on its proposals for updating UK patent law. The UKIPO wishes to remove some legal constraints and to reduce inconsistencies between its handling of the different IP rights it is responsible for.
The consultation can be accessed here.
The consultation is open until 6 January 2023.
We would like to share two questions from the consultation, and to invite you to share your thoughts with us. The most interesting question is:
Question 2. Would allowing other types of media to be included in a patent provide any benefits or cause any issues when applying? Would it have an effect on the ability to understand the patent with respect to follow-on innovation?
The UKIPO’s explanatory comments for question 2 of the consultation include a brief comment about the risk of divergence from other patent offices. For example, if the UKIPO allowed applicants to submit video files and an applicant relied on this type of file to meet sufficiency criteria, they may encounter problems in other countries (even if a modified patent specification is filed, this may not be entitled to the earliest priority date). To avoid such problems, we assume the UKIPO will consult within the European Patent Organisation, national patent offices and WIPO before implementing this type of change.
Our starting point when considering question 2 above is our belief that international harmonisation of patent law and consistency of requirements save costs for industry, and that this outweighs any potential benefit from one patent office offering flexibility to use different media.
We would welcome the opportunity to include colours and shading within the figures in patent applications, and we have no objection to a conversation taking place within WIPO and the European Patent Organisation of the possibility of allowing other types of media, but we do not recommend a unilateral change to UK national law regarding additional types of media.
At AA Thornton IP LLP, we often advise clients on “internationalisation” of patent specifications to increase the likelihood of success at national patent offices around the world. There can be significant problems if a patent specification is drafted with a narrow focus on the requirements of a single national patent office – that can lead to rejection when patent applications are filed in other countries. For example, a patent application that is drafted in a first country without consideration of Europe’s list of exclusions from patent protection and Europe’s assessment of sufficiency could fail at the European Patent Office. Because of such issues, we offer a cautious welcome to starting an international conversation about allowing additional types of media, but we do not support a unilateral change of UK national law.
The UKIPO’s explanatory comments can be seen below.
Digital and dynamic media for patent applications
The Patents Act 1977 requires an application for a patent to include a specification containing:
“a description of the invention, a claim or claims and any drawing referred to in the description or any claim.”
The specification must also:
“disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.”
A clear explanation of the invention is important so that others can understand how it works. The description and drawings must provide that. That way, someone working in that field can reproduce the invention or find ways to improve it. This allows them to build on the technology described in the patent. This is often described as “follow-on innovation”.
Current legislation only permits black and white line drawings or photographs to be included in an application. This is because they are expected to be printed on paper and so need to be legible when they are.
But this approach may be hampering innovation in an increasingly digital environment. Trade marks can be filed using various types of media, but patents can’t. The review of the designs system is also looking at the use of different types of media for applications.
Flat black and white images can’t easily depict many technologies. Colour images can better represent how a complex structure fits together. Companies often use 3D models, videos, augmented and virtual reality objects to show how products and systems look and work.
Updating patents legislation could allow government to move away from the current limited approach. This may enable applicants to illustrate their invention using a much wider range of visual representations in future.
Doing so could help people better understand how the invention works. It could be particularly useful in certain areas of technology. These include image processing, biotechnology, medical imaging and process-based technologies. It may help examiners better assess the patentability of the application. It could also assist third parties to better understand whether they are infringing the patent.
This does not mean the IPO would begin allowing these types of media straightaway. Its IT systems would still need updating to support them. But updating the legal framework now will mean that the law won’t be a barrier to change once they are. We can also adapt the requirements further as technology develops.
There are also international considerations which may determine when we could put changes in place. Current requirements are in line with the legal and IT frameworks of most patent offices around the world. These other offices are also not yet set up to accommodate other media formats in patent applications. Although work has been done to try and enable the filing of colour drawings, there are still barriers to overcome. Diverging from other patent offices could have negative consequences. It could become more difficult to use UK patent applications as a basis for filing in other countries.
The second interesting question is:
Question 6. What are your views on providing the comptroller with more powers to make directions, in particular on the form and content of patent applications? Are there other areas where government could consider seeking the power to make directions, and why?
The UKIPO’s explanation can be found under the heading ‘Powers to make directions’ here. This focusses attention on formatting of patent applications, but includes the comment “There are other areas where government considers that deregulating the requirements may make sense. For example, the ability to direct how extensions of time work, which could give the IPO greater flexibility in extending time periods.”
As noted above, our starting point for any discussion of potential changes to national laws is that they should be carefully considered alongside the advantages of international harmonisation of IP laws. However, there may be opportunities for updating UK national patent regulations in a way that would remove unnecessary constraints. For example, we would welcome the UKIPO Comptroller having the freedom to extend the period for examination and prosecution of divisional UK patent applications.
We welcome this opportunity to share our recommendations with the UKIPO. We also welcome hearing your views.
AA Thornton IP LLP
