James Peel looks at the UK IPO fees review

by kenteegardin

Fellow Patent SOLO James Peel of J.P.Peel & Co Ltd has been taking a look at the recently published Consultation document from the UK -IPO as they seek to balance the books. Here is his summary:

The proposed changes are a balance between a desire to increase income whilst changing the behaviour of applicants to simplify the UK IPO workload, particularly by encouraging applicants to file “better quality” patent applications. As an example, they report that in one year, ten individuals filed 3000 patent applications of which 51 were examined and only three resulted in granted patents which were renewed for just a few years.

The UK IPO says that they break even on costs/income after a patent has been renewed for 15 years. The fee increases may be needed to pay the salaries of the new patent examiners as their numbers have more than doubled in the past six months. Pressure had been exerted by CIPA to sort out the backlogs which were making it hard for the UK IPO to meet their own deadlines. Some years ago, national patent offices in Europe appeared to be struggling to find a role for themselves with a drop off in filings because of the success of the EPO. The UK IPO marketed itself as providing a fast and low cost route to patent protection. This appears to have been successful but at a cost to their non-urgent work. It must be a sign of confidence in their strategy and offering that the UK IPO are putting their fees up.

Two approaches to the fee increases are proposed: the introduction of new fees and increases in prosecution fees or an increase in renewal fees but with lower new fees and lower increases in prosecution fees. The latter approach is unlikely to change applicants’ behaviour though, and an opportunity might be missed.

The new fees are a charge of £10 for each page over 35 pages to be included in the application fee and a fee of £30 for each claim above 15 claims to be included in the search fee. The UK IPO predicts that the introduction of a claims fee will increase their income per case by about £210 as the average case has 22 claims. This calculation assumes that the behaviour of applicants will not change. I wonder if they took the elimination of omnibus claims into account. Also, the fees for long specifications in other jurisdictions can largely be eliminated on most cases by careful choice of font size, margins and line spacing.

In percentage terms at least, the biggest change is to the application fee which in one proposal is being tripled from £20/£30 to £60/£90 with a 25% surcharge for late payment. It is this fee which is aimed at dissuading “frivolous” applications. Such an increase in upfront costs is balanced with smaller increases to the search and examination fees.

There are greater fee increases for paper based transactions and so I wonder if we are being guided towards online transactions.  (Wonder no longer, James, the UK is going digital). This may inadvertently favour lone applicants as online transactions are on a case by case basis: it is not possible to make batch payments online.

Following the unpredictable result of the dramatic increase in claims fees at the EPO in April 2008, it is good that the UK IPO are consulting about the changes. It is now up to us to respond.

We are invited to respond by email by 6 June 2017 (Note the precise 11:45pm deadline). The earliest date on which the new fees could come into force is 1 October 2017.

Buying Time for Christmas: a guide for UK Trademark Opponents and Applicants

This is the season when many trademark agents look at their docket and realise that some of those imminent deadlines (and maybe even ones early in the New year) can't possibly be met now that their clients have run off to enjoy the Thanksgiving holiday without providing the material that is needed for their evidence in a UK opposition.

If you read The  Manual of Trade Marks Practice  - the bible of practice published by the UK IPO -  Paragraph 4.9.1 of the Tribunal Section chapter at page 438, you will obtain the impression that extensions are not readily available:

"The timetable is to be adhered to. It provides more than enough time, in the vast majority of cases, for facts or submissions pertinent to the pleaded grounds to be gathered and presented to the Tribunal. Parties should not regard this timetable as a ‘starter for ten’, to be varied at a later date. The Tribunal will, in exceptional cases, consider requests to extend the time allowance. Such requests will need to be fully supported with explanations as to not only what has been done to date but, more particularly, what is left to do and how long it will take to produce the evidence. The Tribunal will also need to be satisfied that the extra time is warranted in the context of the pleaded grounds and what is necessary to determine the case efficiently and fairly."

Therefore a trade mark applicant might reasonably expect things to move along. For the new business applicant this can be necessary, especially if there are investors concerned about a shadowy or real threat of infringement proceedings following on from a successful opposition.

If you read the cases published on extensions you will find this hard line endorsed.

But wait. This is not the full picture.The decisions on extensions that are published are the ones where a refusal of the extension decided the whole case. If the extension is allowed the reasons don't get published. This is an omission that could be rectified if interim hearing decisions were published.

In ZILLION O-193-16 Ann Corbett refused a retrospective extension of time. It was a cancellation action, rather than an opposition and it would have been possible for the case to be re-started. Nevertheless, Ms Corbett held

"Despite the fact that evidence has now been received, and notwithstanding that this may lead to the commencement of another action between the same parties covering essentially the same subject matter (a matter on which the applicant may wish to consider seeking professional advice), I was not persuaded, in the circumstances of this case as set out above, that the requested extension of time should be granted. The request was therefore refused."

Note that these were litigants in person and you, my friend, are more likely to be a professional and know that you regularly get extensions with the flimsiest excuses if the evidence is in by the time of the hearing and there are other grounds so that the case will not close. If you have  a decent reason and can show reasonable efforts you are even likely to get the extension in response to a request without a hearing.

If the UK Registry provides an indication that the extension will be allowed there is absolutely no point in the other party objecting. It will be futile and will simply increase their costs and costs exposure. Never do it. Hearings arise when the UK Hearing Officer is minded not to allow the extension. When the requesting party would prefer the initial indication be maintained they will likely put some effort into preparing for the hearing. The first thing to do is ask your counterpart if they plan to have evidence submitted in time. If they do, back off and forget it. Of course they may deceive you, which is unprofessional, or simply not answer.

If you fail to have the evidence ready for the hearing life can be harder as even a professional representative found in ALOHA  where on 27 April 2016 Heather Harrison refused an extension to an opponent without completed evidence, with this level of reluctance:

Whilst I am satisfied that the reasons in support of the original extension request were sufficient to justify the length of time granted, nothing has been provided to persuade me that the opponent has taken any steps to finalise its evidence in the intervening period. Whether the parties continue to negotiate is clearly a matter of uncertainty. In making my decision, I have kept in mind that an apparent lack of diligence by a party does not mean that an extension cannot be granted. I have also considered Ms Hobbs’s request that I impose a further, final deadline and I have some sympathy for her position. However, in the absence of any information about the current state of the opponent’s evidence, let alone an assurance that it is near completion and will be filed imminently, it would not, in my view, be appropriate to allow the opponent further time

Once again this decision only came to be published because it led to closure of the opposition file.

You should copy the other side and the Manual suggests in bright green letters

"Failure to Copy to the Other Side or to Provide Detailed Reasons Will Result in Refusal of the Extension."

This is also not true, but why risk it.

There are also alternatives to an extension. If there are negotiations or you could initiate some, you might be able to persuade the other side to agree a stay. That has the bonus of not requiring a fee, but you do need consent and you still need to support it with convincing reasons for the request. Turn to page 439 and section 4.9.2 of  The  Manual of Trade Marks Practice  .

So if you need to buy time, remember:

• your reasons
• your fee (yes sometimes lazy opponents try to avoid the fee - a retrospective request also costs more)
• that you do need to have the evidence complete before any hearing
• it would be helpful to have some non-evidential grounds and a reasonable prospect of being able to start over

UK Examination Deadlines - Don't be Fooled

I bet you barely read those standard letters from the UK IPO? It must be mortifying for those that draft them because they do care ( I know because I attended one of their consultations recently since small users count with the IPO if not with OHIM). Hopefully the unrepresented applicants do read them as they contain important information about what an applicant needs to do to become a patentee as opposed to merely an applicant.

The picture shows the new flyer that comes with your publication letter and look - the bit on the bottom is not the same.  It says they are not going to remind you again about the examination deadline any more. The practice change is described in full on the website here.  Hopefully there were not many professional representatives who relied on that second letter. I hardly ever got any because I am a big fan of the combined search and examination approach. Nevertheless there are 3000 of those letters posted annually to other people who are content that their patent applications should take years to mature.  I have one case on my docket that came from another agent. The Form 10 was filed on 20 December 2011 and it still has not been examined so  it sits on my docket looking just like a European Patent application except without the renewal fees.

Under the new regime if you don't request exam within 6 months of the publication (or 8 if you are prepared to pay the extra fee) your application will just die quietly - treated as withdrawn - not refused. You might never know if you have not got a decent docketing system and/or review those sleepy files regularly. I wonder when they will update IPSum.  This could be a good business opportunity for the increasingly ASA harassed invoice senders.

Fast Track UK Trademark Oppositions

My 40 UK Oppositions OUT

The UK IPO are running a fast consultation on revising (again) the UK trademark opposition procedure.

I did a little survey of my files. If you can't measure it in UK IP policy, it doesn't exist so we must provide evidence even if its only a measured anecdotal sample. So this is what I can say about UK oppositions over the last several years. I have dealt roughly with twice as many outgoing ones as incoming ones 40:19 and the number I have let go to a decision by the UK IPO is tiny at 5 and only one of those went to an appeal. In OHIM the ratio was 65:49

The parties involved are not all SMEs by any means but a reasonable proportion are and whatever the size of the client it generally makes sense in the UK to settle because going the whole way is costly, slow and not that much fun.

My 19 UK Oppositions IN

How does your experience compare?

This doesn't tell us much about the trademark owners who didn't do anything so its always good to review.

Some Registry ideas are

• Lower fee
• Proof of Use with TM7
• Relative Grounds only
• TM8 retained
• Separate arguments stage in writing
• No hearing
• An Appeal Fee to keep appeals down

OHIM can be made to produce fast cheap decisions using a file it and leave it approach using only CTM grounds. My strategy as an applicant is one observation only and you can even forego that with a reasonable prospect of success in some cases.

There is one little diamond lurking in this consultation that I hope will survive and that's the Appeal Fee. £800 would be about right. 

My first reaction is that the fast track opposition won't work and just makes life more complicated, but is it worth getting together to have a discussion about it?

Statements of Use at UK IPO

I haven’t had time to mention my trip to LA which was interesting on many counts. Unfortunately have no time to do more than touch on it in this post because am short of time. I have a new website going live later this month which is taking up loads of time, and am grappling with ordinary workload, staff absences on holiday, and the after effects of being away at INTA in May and LA in June!

Two points stood out for me from the trip as regards IP practice. One is that in the USA IP is regarded as an extremely high risk area of work, and it can be almost impossible for niche practices to get insurance apparently. What is even more surprising is that your risk profile is improved if you can do a proportion of non IP work. To my mind the risk of being negligent or would Decrease rather than Increase the more specialised you were so why the insurers see it differently baffles me. They must know better, so if anyone has thoughts on this point I would love to hear them.

The other striking point that emerged during the trip is that the majority of practitioners who have become wise to the risks of signing trade mark forms on behalf of clients now refuse to do so. They will NEVER sign a trade mark form, preferring to post it to the applicant to sign him or herself. So, I intend to adopt this practice despite the many inconveniences this will cause, including the introduction of paper into our otherwise paperless office. But what else can one do given that the UK IPO will now only allow a form to be filed online if one ticks a box stating that ‘The trade mark is being used by the applicant or with his consent, in relation to the goods or services stated, or there is a bona fide intention that it will be so used’. In fact if I had time I would take this up with the UK IPO, as it seems a retrograde step which will discourage online filing. Any thoughts on this would be most welcome.