Be Prepared for the UK IPO website migration

On the 6th October the UK Intellectual Property Office is scheduled to fall into line with other government

The original result of searching IP on www.gov.uk

departments and feature only on .gov.uk. The ipo.gov.uk URL will be no more and instead we will be headed to https://www.gov.uk/government/organisations/intellectual-property-office. That link will already work for you today. More information on the staggering transition is currently to be found at http://www.ipo.gov.uk/moving.htm but it might move

As trademark specialists we cannot complain about this consistent branding which guarantees authentic origin to the consumer by placing the www.gov.uk in pride of place. Lets hope that the consumer is savvy enough to appreciate this. It should reduce the risk of them being deceived by other on line UK patent and trademark  renewal and trade mark filing services which charge a premium for their "services".

There is a video tour of the website on YOUTUBE.

If you prefer to be introduced to the new website personally, then there is an event on Thursday 2 October at 88 Kingsway, London WC2B 6AA on Thursday 2 October. Sessions will run at 10am, 11.30am, 1.30pm and 3pm. To register your interest, please email david.barker@ipo.gov.uk stating your preferred session time.

Hopefully, all will go well and we won't find ourselves locked out because the data scrapers believe that there is new information to be scraped (I suspect there is no change in the underlying databases).

They promise that they have tried to preserve the links that we may have already stored and I am hoping that is true because I do have a lot of links to the on line registers and it would be a ball if they were all broken but with our experience of the OHIM transition we know that even such a disaster can be accommodated.

In desperation, I sometimes had to resort to searching the whole IPO database to find some piece of information I needed. Fortunately this is still possible on.gov.uk as they kindly show at 2:21 into the e video as you can limit your results to a particular department and who knows something interesting may have popped up when you searched the whole of gov.uk.

For those of us who cannot cope we can live in the National Archives

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? 

SOLO practitioners meet the IPO

BIS HQ 1 Victoria Street

Save the date Wednesday 9 April from 3 to 17:30. This is your opportunity as a small customer of the IPO to get to know their plans and provide some feedback. Its bound to be educational and so IPREG CPD and a good opportunity to meet together with others in a similar situation.

Its being held at BIS HQ and to reserve your place you only need to email with your name, firm and indication of interests by 26^th March 2014.

I have said I am interested in  the opinions service and how the new post IP Bill improvements are expected to work as well as the Trademark opposition process.  These are the topics that might come up if you suggest them

• Patent Prosecution Highway
• Opinions service and mediation
• Update and questions on the Unitary Patent and Court
• Update and questions on the IP Bill 
• IPO Electronic Services - recent and forthcoming changes to IPO services 
• Service issues you are currently experiencing and your suggestions for service improvement 
• Search and examination targets and practice 
• Excluded matter - e.g. Computer programs 
• Bio-technology 
• Accelerated services  (you must have noticed the new .gov format consultation on going two track again on trade marks)
• Colour drawings 
• Section 20 compliance period 
• Electronic citations 
• Excessive claims
• Patent Box
• Guidance for small firms and obtaining finance 

I look forward to seeing you there. Even if you only do patents or trademarks and not both it makes sense to come and pick up a few contacts for your cast offs.

This is part of the customer visit programme run by the UK IPO . There is a full report of how they got on last year here

Suggestions for a drinks sponsor or a nearby watering hole to facilitate networking welcome. Add a comment if you are coming but don't forget to email to get through security on the day and to ensure your place.

UK Trademark Searching

As part of their systems upgrade, that was revealed on 11 February, the UK IPO provided a new trade mark search interface .  It is still listed as find by word or image but there are some important developments that make it a whole lot more useful than the previous version. The biggest, and most significant for unrepresented trademark applicants as well as agents seeking to do economical clearance searches, is that there is a new option to search for 'similar' marks. This is now the default and you may be surprised to find that you get pages of hits when you were expecting just a few from an identical word mark search. You can revert to Exact word or Begins with if you are looking for something specific. However the new option ensures you don't miss the vowel changes. There is no information about the particular fuzzy algorithm they are using but it survived my tests, so I am impressed.

You do hit the buffers, though, if your search wants to deliver more than a 1000 hits.

I did a search for FORTY TWO and got 7 hits but 42 gave me 979 but then that's the meaning of life isn't it?

Another change is that instead of offering you spaces for several words that you could AND or OR together, you can type in a bunch of words and choose to have the search for all of them or any of them.

The search will retrieve you any mark protected in the UK and community trademarks and Madrid registrations are displayed in a new format. There is no link direct to CTM online or Romarin, which is frustrating especially when your CTM hit comes up with a status of OPPOSED very tantalising that.

Have fun

Mediation Services

The IPO mediation room ?

The IPO is currently making a call for evidence to try and work out why it is not getting any mediation business. Is it because nobody suggests it, or no lawyers want it, or we are all just ignorant that the IPO has a service to offer.  It would be good to know so can we send our input.

From my viewpoint, I have aspired to use mediation far more often than I have ever achieved it. My best results have been with the mediation element of the Nominet Dispute Resolution Service. They have a simple approach and it costs nothing and it uses the pleadings you have already prepared. Best of all it takes place over the phone and is initiated by Nominet not the parties. It would be neat if the IPO were able to have a staff member read the Patents County Court Pleadings and offer a similar approach, though would it be before or after the CMC - ideas?

Other recent reasons why I have not got disputes into formal mediation include:

• the parties are physically too far apart so coming together for a meeting is impossible
• the other side tells me to stop calling and suggesting that settlement might be something we can discuss
• its too hard to decide who will appoint the mediator and who will pay the cost
• the £££ charge of the best mediators are disproportionate to the value in dispute
• you mean we need a suite of three rooms in central London!
• the decision makers are not prepared to come and spend the time on it - they employ lawyers they don't want to do it themselves
• the idea of preparing a bundle and argument for the mediator is too much extra expense
• the client thinks he is going to win
• getting a debate going on the blogs and on twitter about the rights and wrongs of the case is so much more fun
• a mediator cannot invalidate the patent/trademark/registered design

A mediator has to be a certain type of person, who is learned and fair without coming across as judgmental. The IPO has a role that involves making decisions and it may well be that this makes them come across as more on the side of the gamekeeper. However they are not-for-profit, whereas most mediators are working for profit, so its as good a starting point as any. Maybe all they need is a few more Google Ads.

The Terrors of Taxonomy

Order in all things -
these are breakfast cereals in class 30
everyone will accept that

The OHIM British Day hosted at the UK IPO yesterday is usually an opportunity both to hear the latest on the office procedures and IT tools and give our feedback on usability. This year it was not. Instead we did find out about several of the Co-Operation fund projects and in particular received a very enthusiastic presentation from Ms. Inge Buffolo. She waxed lyrical in particular about the work that was being done on the classification tools and creating a common database. She is the Project Manager and as an engineer clearly devoted to the idea of putting the entire classification into a neatly ordered structure so no business man need ever say what his goods and services are in his own words ever again.
The aspect that worries me about this is that trademarks are directed at people, ordinary business people who may get sent registration certificates and be told to stop infringing. These are users too. It may well be that the Advocate General in the IP Translator opinion in Case C 307/10 called such users *economic operators* when he said

65. The second objective is to enable economic operators to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties.

At the coalface of trademark practice it really matters. Recently it was suggested to me that expert evidence would be needed to determine whether a web based application was within the WIPO standard terms in class 42. He meant it. He was confused. Similarly a start up filed its own application by searching software in the OHIM efiling tool and ticking select all. That seems a sensible option when you want to cover software. No, it results in along and chaotic specification and no clarity at all for anyone. However such a specification can be translated at no cost into all official languages. Yes they were a start-up and they were programmers. Since the irresponsible system permits them to protect all manner of software, that's what they wanted but it would have been better had they written just software and overridden the dire warning signs.

The other worrying aspect about this taxonomy is that it is hierarchical and each broad term is supposed to cover all beneath. Does this mean that judges and users are going to have to consult the taxonomy to see what the certificate protects. This flies in the face of good sense however accessible the taxonomy may be.

Acceptable indications are good and work great for breakfast cereals but we must not get carried away into thinking that all goods and services are best described by reference to remote and abstract terms that mean little to the ordinary person.

Fortunately Richard Ashmead was present and in good health.

Why has the IPO changed its practice re online filing?

I too am still struggling post INTA and LA networking trip from which have just returned.

As life is so busy it is not always possible to get to grips with all the details one needs to know. So, it would be extremely useful if somebody who is familiar with the reasons behind one recent IPO change of practice which is puzzling me but which I don't have the time to look into would either please post a blog item on it or comment on this blog. The change in question is that it is no longer possible to file an application online unless one pays for it straight away. Previously, we used to file the application, wait till its details were posted online, check that it was correct, and then send in a cheque to complete the application. If for some reason we needed to abandon the application we did so without incurring a charge. This worked extremely well for me as I left junior staff to file the desired application but could check it later before making payment. Now, according to my junior staff, it is necessary to submit the paper form if we wish to have this same flexibility of abandoning the application should we want to. Is this the only way? Is it really necessary for us to print out and post the application form? We are a paperless office and given that the IPO seems to also want to cut down on paper, it seems nonsensical for them to have introduced changes which increase the volume of paper they will generate. Can anyone shed light on the reasons behind this change of practice, and indeed whether there is another way to achieve the possibility of abandoning an application if necessary?