Policy paper PP 4/23

IPO transformation programme: second consultation –IP Federation response
Introduction
The IP Federation represents intellectual property (IP) intensive companies inthe UK – a list of members is attached. Our members are extensively involved
with IP in the UK, Europe and internationally, including IP aspects of innovation policy and trade issues. Not only do our members own considerable
amounts of IP in the UK, Europe and elsewhere, but they are affected by theactivities and IP rights of competitors. Our cross-sectoral membership of overforty influential IP-intensive companies has wide experience of how IP works
in practice to support the growth of technology-driven industry and generate
economic benefit.
Second transformation consultation
The Government has launched a second consultation on proposed law changes
for the IPO’s digital transformation programme. It contains a series ofproposals for legislative changes that will remove barriers and allow the IPO
to be more innovative. The consultation ends on 31 October 2023.
IP Federation response

Introductory questions
Question 1.

What is your name?

David England
Question 2.

In what capacity are you responding to this consultation?

Secretary of IP Federation

Online document inspection service for trade marks and designs
Question 3.

What would be the impact of having an online inspection
service for trade marks and design documents?

Our members find the online Ipsum service for patents very useful, and wewould welcome the introduction of a similar online inspection service fortrade marks and designs. It would also be useful if documentation relating
to renewals (e.g. reminders) was included on the online system.
We support transparency and ease of access to such information, with thecaveats specified in the preamble to this question of the consultation.

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Public inspection of trade mark and design documents andrequests for confidentiality
Question 4.

Should the designs provision which prevents a document frombeing inspected until the period of fourteen days beginning
after the day it was filed at or received by the IPO has passed,
be removed?

See our answer to Question 6.
Question 5.

What are your views on allowing someone who is not the filer
to request confidentiality of information filed at the IPO in
respect of trade marks?

Without practical examples as to what type of information this might apply
to and when or why a third party might make such a request, we do not see
how this would be useful.
Our members believe it would be sensible for the IP rights to be aligned.
However, as with patents and designs, reasons should be required when
making a request for information to be made confidential and the outcomeof such a request should be at the discretion of the IPO.
Question 6.

What are your views on allowing a request for confidentiality
to be filed at a date later than the document was filed, inrespect of trade marks?

Our members support aligning the IP rights and introducing a fourteen day
period during which the confidentiality of any document can be requested.
However, if this is to be allowed, then it is essential that there is a reintroduction of the provision requiring an automatic delay of fourteen days beforea document could be inspected by the public. Otherwise, any such information is already public, and many people will have already (potentially) had
access to it. We do not see how such information can then be retroactively
confidential.
It may be important to make the distinction between commercially confidential information and information that a person would like removed from thepublic record such as libellous comments and/or personal information.
Question 7.

Do you have any other views on the proposals to amend design
and trade mark legislation to harmonise public availability of
documents and requests for confidentiality?

Our members are always in favour of harmonisation, although they prefer
this to be on an international level whenever possible.

Series trade marks
Question 8.

Do you find series marks to be useful? Please explain why.

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When our members file marks at the UK IPO direct, series marks are a useful
way of filing multiple variations on the same mark, whilst keeping costs
down. However, many would choose to file an international mark designating
the UK and other countries. Since series marks are not allowed in themajority of territories, and cannot be request them via WIPO, they would
not typically apply for series marks.
Question 9.

What are the main drivers for you or your clients when deciding
to apply for a series of marks?

As indicated above, series marks are a useful way of filing multiple variations
on the same mark, whilst keeping costs down.
Question 10. What are the legal and practical benefits of series marks?
(i) Simplicity (a single record to manage internally), and (ii) cost.
Question 11. What is your view on the proposal to reduce the number ofmarks which may constitute a series?
We agree with the government’s initial assessment that any reduction isunlikely to address many of the issues currently faced.
Question 12. Do you have any views on which, a maximum of four or twomarks, would be more appropriate?
Neither of these seems particularly appropriate.
Question 13. What are the potential impacts of the UK ceasing to offer series
marks?
Our members would be concerned as to the fate of current series marks. We
would want these to remain on the register as series marks and would notwant them to be split out into individual trade marks. If the latter happened,
this would have a large cost implication.
We note that the change would create greater harmonisation with thebroader international trade mark landscape. Our members are generally infavour of this, with the above proviso.
Question 14. Do you foresee any practical issues for trade mark holders withthis proposed change which cannot be mitigated through theexisting infringement provisions and/or existing ability to apply
for multiple trade marks?
No, we do not foresee any practical issues.
Question 15. Which of the options presented do you think the government
should take forward to balance the needs of rightsholders
whilst addressing the current issues faced by series marks?
Please explain why.

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Our members do not have a unanimous view on this question.
Question 16. Are there any options not identified which you think should beconsidered regarding the future of series marks?
Please see are answer to Question 13. Series marks that are already on theregister should remain unaffected.

Supplementary protection certificate fee payment periods
Question 17. What are your views on aligning the SPC payment periods withrenewal payment periods for other IP rights?
Our members are generally in favour of aligning the SPC payment periods
with renewal payment periods for other IP rights.
Question 18. Do you prefer keeping both the standard period and the later
grant period the same or would you prefer them to differ?
Please explain why.
Our members prefer keeping both the standard period and the later grant
period the same. Although the alternative would result in keeping the periodof uncertainty at its current length, this is outweighed by the issue of making
the calculation of the suitable period more complex.

Inventors’ addresses
Question 19. Should the IPO stop including full addresses for inventors in thepatents register?
Yes, our members agree that the IPO should stop including the full addressfor inventors in the patents register. It is enough that the applicant’s address
and address for service are required. Whilst this is not generally an issue forour members, no longer including the inventors address would likely cut
down on the receipt of unwelcome mail by inventors.
Question 20. If the government were to implement this change, are you infavour of option 1 or 2 above? Please provide your reasons.
Our members are in favour of option 2 (stop collecting full addresses forinventors; instead, collect and publish reduced details). This approach ismore desirable for the following reasons:•••

It aligns with EPO practice.
Addresses can become out of date.
It is better from a data protection point of view.

Question 21. If option 2 were implemented, should patents legislation require the applicant to provide contact details for the inventor,
if the IPO needs to contact the inventor? Please provide yourreasons.

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The applicant should be asked to provide any contact details that they mayhave.

Mediation within IPO tribunal services
Question 22. What do you think of:•••

the idea of a Mediation Information and Assessment
Meeting (MIAM)?
more robust use of hearing officer powers to direct thatparties attempt to mediate, and to stay proceedings?
more routine awarding of costs against a party if they
unreasonably fail to engage in mediation?

The introduction of a mediation information and assessment meeting (MIAM)
during proceedings is certainly an option worth exploring.
Our members would be hesitant in agreeing to more robust use of hearing
officer powers to direct that parties attempt to mediate, and to stay proceedings. Likewise, they would be hesitant in agreeing to more routineawarding of costs against a party if they fail to engage in mediation. Both ofthese options need exploring more fully before we could agree to them.
Question 23. What do you think is the optimum point (before or duringproceedings) to offer mediation?
The sooner the better would be a good principle, but it is difficult to give ageneral ruling without reference to any specific proceedings.
Question 24. Are there particular types of proceedings where mediation
should be more actively encouraged? For example where theparties are unrepresented, or concerning particular IP rights oron particular grounds?
Our members have no views on this.
Question 25. Do you have other views in relation to mediation and resolving
disputes at the IPO tribunal?
No.
IP Federation30 October 2023

PP04_23 IPO transformation programme - second consultation - IP Federation response

IP Federation members 2023
The IP Federation membership comprises the companies listed below. The UK Confederation of British Industry (CBI), although not a member, is represented on the IP Federation
Council, and the Council is supported by a number of leading law firms which attend its
meetings as observers. The IP Federation is listed on the joint Transparency Register ofthe European Parliament and the Commission with identity No. 83549331760-12.
AGCO LtdAirbus
Arm Ltd
AstraZeneca plc
BAE Systems plc
BP p.l.c.
British Telecommunications plc
British-American Tobacco Co LtdCanon Europe Ltd.
Caterpillar U.K. Ltd
Cummins Ltd.
CytivaDyson Technology Ltd
Eisai Europe Limited
Eli Lilly & Co Ltd
Ericsson Limited
GE Healthcare
GlaxoSmithKline plc
Hitachi Europe Ltd
HP Inc UK Limited
IBM UK Ltd
Johnson Matthey PLC
Merck Sharp & Dohme (UK) LtdMicrosoft Limited
NEC Europe
Nokia UK Limited
Ocado Group plc
Pfizer Ltd
Philips Electronics UK LtdPilkington Group Ltd
Procter & Gamble LtdReckitt
Renishaw plc
Rolls-Royce plc
Shell International LtdSiemens plc
Smith & Nephew
Syngenta Ltd
UCB Pharma plc
Unilever plc
Vodafone Group

Registered Office 2nd Floor, Viaro House, 20-23 Holborn, London EC1N 2JD
Email: admin@ipfederation.com | Tel: 020 7242 3923 | Web: www.ipfederation.com
Limited by guarantee Registered company no: 166772