Wednesday, 13 August 2014

Who is filing the unsearchable UK Patent Applications?

Is the UK IPO flooded with patent applications? That seems to be the implication of the observed backlog and the newly published discussion document on the publication of patent applications. You can find it here and the IPO would like your comments by 26 September : note thats 11:45 pm and not close of business.

The implication of the document is that a lot of people are filing patent applications for the sake of getting a publication which they can be certain will go into the search files of other patent offices properly classified. The IPO think that it is a waste of time them searching these cases. That implies to me that they are software related and perhaps filed directly. The document refers to the practice of action before search (ABS). It's supposed to put a brake (pun intended) on these applications by promising to refund the search fee if the application is withdrawn. That gets rid of 75% of the hopeless cases, but the remaining 25% are a problem.

So I wondered where they come from. I have only ever had one ABS and that was a case which was filed as a priority document and destined to enter the US backlog. Generally I turn away the hopeless cases. The cost of drafting a hopeless case is a high price to pay for a publication.

One solution that struck me on first reading this document was that they could simply give themselves the option of deferring search until examination is requested. The Act already gives the examiner the ability to determine whether or not the search would serve any useful purpose (section 17 (5)). A more aggressive use of this power might enable applications to be published and further action delayed until the applicant requests examination. If he only wanted publication he won't request examination.  That still leaves classification to be done.

I'm writing this blog so that you can tell me where you think these applications come from. The document is a little coy about who the applicants are that don't want a granted patent. Who are they protecting?


I greatly value the prompt and efficient searches carried out at low cost by the UK IPO for my entrepreneurial clients who would like to know where they stand before shelling out extortionate substantial PCT fees. Therefore, if there are problems down in Newport that are overwhelming our examiners, we should look to help them out. Even an increase in the search fee might be tolerated. Could we have a sliding scale for the more hopeless fields? 


2 comments:

Anonymous said...

Well some of the people causing backlogs at the EPO Boards of Appeal are US applicants wanting patents to software and business methods that they'll never get. I don't know if they are also the culprits at the IPO.

Anonymous said...

Well some of the people causing backlogs at the EPO Boards of Appeal are US applicants wanting patents to software and business methods that they'll never get. I don't know if they are also the culprits at the IPO.