The formal launch of the One IPO Transformation five-year program on 22 April 2021 marks a welcome step change in the way the UKIPO handles registered IP rights in the digital era. In fact, work began in March 2021, but this launch marks the publication of the IPO’s plans.
Ever since the UKIPO began to use computerised databases and then introduced customer facing IT systems, there has been a patchwork of systems in operation which brings complexity not only for the UKIPO, but also for their customers.
For filing registered IP rights, there are multiple systems in place which have little in common with each other.
UK Patents can be filed using the EPO’s legacy EOLF system (which allows local saving), but also via a web-filing system (with 14 steps requiring completion, with no option to save progress). UK Designs can be filed online, but saving progress requires the entering of an email address and password, and a link gets emailed from which the application can be continued. Neither of these UKIPO systems provides an address book for people or companies, whereas the UKIPO’s online Trade Mark filing software does allow retrieval of a previously used name and address.
This demonstrates the existing variety in the filing systems for the three main registered rights, without looking at the multitude of systems on each for filing follow-on communications and paying additional fees. Some activities require the submission of a form (with an attached fee), whereas some require the use of a specific email address to ensure the communication is delivered in a timely fashion (rather important in the deadline driven world of IP).
The UKIPO has a single (beta) portal for the payment of renewal fees across all three registered rights, and this offers a variety of methods of uploading details of the rights to be renewed. It also includes some element of checking the information uploaded is correct. This is somewhat useful, but doesn’t integrate a search function to find the rights in the first place.
The (eventual) advent of a single integrated system for applying for and managing patents, designs and trademarks will bring huge benefits for direct applicants, attorneys and their clients, as well as making searching for rights much easier.
We can expect much tighter control of applicant/proprietor information so that all the rights of the same person/company are grouped together. As an example, searching for designs in the name of Apple Inc. brings up seven entity records, some of which appear identical, and where some have the state named in full or in capital letters. A similar search for Trademarks brings up 31 different entity records, and there is not even an entity based search for Patents on the UKIPO website!
Similarly, UK based attorneys can hope for a system where all pending and granted patents, designs, and trademarks they represent can readily be accessed to check on status, download correspondence, file responses and to carry out other management tasks, such as changes of name and renewal. The ability to segment the rights, for example, by applicant/proprietor or renewal date, as well as interfacing with their own docketing systems, would make this a world leading tool. Unification of the ways of filing rights (with the ability to save partially completed applications) will cut down on administration time within attorney firms, and make training new staff simpler. Having a single way of reliably receiving communications from the UKIPO will also make savings in the administration of registered rights.
The improved system should also make it easier to gather data on the use of the IP system by individuals and companies, and to measure the effect this has on their business.
The enormity of the task facing the UKIPO should not be underestimated, but the recent successful import and cloning of all granted EU trademarks and designs onto the UK register following Brexit should give all users confidence that this project can be delivered. The first phase, which runs until 2024, will involve building the integrated system and moving the UKIPO’s patent service onto the platform. The second phase, which runs from 2023 to 2025, will see trademarks and designs transition to the integrated system. The third phase will look to incorporate new developments into the system after all the rights have transitioned.
There will be opportunities to test the new systems as they are developed, and it is important the whole user community, i.e. attorneys, represented applicants, direct applicants and third parties, take these opportunities, so that the system can be fit for purpose.