Law and practice snippets: December 2022
An update on this month’s practice points by our Law and Practice Committee, including a focus on proposed changes relating to the UK IPO’s transformation project.
News of note
Simplified search functionality
The UK IPO has published details of its new search service, which will be the first of the new services to launch as part of the One IPO Transformation Programme.
The search service for patents will be piloted in June 2023, with trade marks and designs being added in 2025.
It will allow users to search for patents, designs and trade marks in one place.
More information on the development of the simplified search functionality can be found in the UK IPO blog here.
Working with the registries
As reported in previous snippets, the UK IPO is currently consulting on amendments to legislation that will help change how trade mark rights are managed as part of the One IPO transformation.
The proposed changes “will update the law and remove legal barriers, allowing the UK IPO to be more innovative and deliver world-class digital services. They will also address current inconsistencies between different IP rights”.
Click here to view full details of the consultation, which closes on the non-extendable deadline of 6th January 2023.
Representatives from the Law & Practice Committee were invited to attend meetings with senior representatives from the UK IPO to discuss Parts A and B of the Transformation Consultation.
The Committee will be submitting a written response to both parts of the consultation by the January deadline and will continue to work closely with the UK IPO thereafter as the transformation project progresses.
A summary of the points raised by the UK IPO is provided below and members are encouraged to review and submit any comments directly to the UK IPO before the consultation closes. Alternatively, please submit any comments or questions here.
UK IPO Consultation Part A – Legal barriers to digital transformation
A summary of the issues raised in Part A is as follows:
- Automation of IPO systems and processes – this includes the automation of some checks which are currently done manually. There is an indication that a corrective mechanism will be included to ensure remedial action, where required but no more detailed information available at present on how this will work.
- Modernising the IP framework – this includes the option of the IPO providing digital certified and uncertified copies of documents, the inclusion of trade marks in the WIPO DAS system (which is currently limited to patents) and reviewing whether the comptroller/registrar should have power to make directions in more areas.
Another important point being considered under this section relates to changes to hours of business and excluded days. The IPO is considering whether it should formally be open seven days a week, which would result in deadlines falling on weekends no longer being extended to the next working day. The Committee feel that this change in particular would have a negative impact on our profession and have previously provided comments in writing to the IPO on this point. - National security checks – this area of the consultation is more relevant to patents and includes a review of different options for security screening, including self-declaration, automation or a combination of the two.
- Modernising the fee structure – the IPO is reviewing its fee structure and whether legislative changes are required to facilitate greater flexibility in making changes.
There are some requests and services where the current legislation requires the IPO to charge a fee (e.g. for late payment of a trade mark renewal).
Without a change in legislation, the IPO could not remove the fee if it became reasonable to do so.
This could prevent it from being able to pass savings from new services onto customers. - Changes to how we provide services – this includes a review of time periods for paying renewal fees and seeking restoration across all forms of registered IP, a review of the evidence required for recording transactions at the IPO and options for different types of customer account to be made available at the IPO for registering and managing IP rights.
The full list of questions included in the Part A consultation can be found here.
UK IPO Consultation Part B – Improving the IPO Tribunal Function
A summary of the issues raised in Part B is as follows:
- Expedited hearings – there is no explicit mention of expedition in law and it is not part of the tribunal process.
The UK IPO is seeking a specific legislative provision on expedition and looking at options for implementing this, including amending rules on case management powers or adding rules to provide a process for expedition. - Request for clarification of grounds – the UK IPO is considering replacing the current practice of checks of substantive issues being conducted by caseworkers, with a process where the other party in the dispute has to request clarity on grounds.
This would bring the process more in line with the Courts. The UK IPO has indicated that more guidance to assist unrepresented parties could be provided. - Copying the other party into Tribunal correspondence – the IPO have commented that the requirement to copy the other party on correspondence is often not complied with which causes delay and disruption to proceedings.
The IPO is considering creating an express rule which sets out the requirement in law, mirroring the Civil Procedure Rules.
The Rule is likely to say that correspondence which does not comply would not be considered by the IPO. - Improving enforcement of unpaid IPO costs orders – the IPO currently has no powers if a party fails to pay a cost award.
It is exploring whether to bring IPO cost orders into the system for registering orders in a similar way to County Court Judgments in order to encourage payment and make enforcement easier. - Providing for cross-appeals in Appointed Person cases – there is no legislative process in place for cross appeals and the IPO is seeking to make changes to allow the filing of cross-appeals, which would put the Appointed Person in the same position as other appeals tribunal.
The proposed changes could also give Appointed Persons power to allow extensions of time. - Harmonising powers of IPO hearing officers – current trade mark and design legislation gives Hearing Officers the same powers as an “official referee”, but this role no longer exists so the power granted is not clear.
The IPO is looking at options for amending the rules to provide clarity and consistency with patent legislation. - Appeal on preliminary matters – trade mark legislation states that permission of the Hearing Officer is required to appeal an interim decision and the IPO is proposing to introduce this permission requirement for patents and designs.
- Striking out – patent legislation gives Hearing Officers the same powers as courts in striking out a case or part of a case, which allows summary judgment to be given if a party has no real chance of success.
The IPO is proposing having express provision for striking out in trade marks and designs disputes.
The full list of questions included in the Part B consultation can be found here.
CITMA Law & Practice Committee will be responding to the consultation with comments on changes to the hours of business and excluded days as previously expressed, and on all other points of the consultation which directly impact members.
Other UK IPO related news
Changes for well known marks (“WKM”)
The UK protects WKMs through a combination of trade mark legislation and common law.
The changes within the Trade Mark Regulations are technical amendments to the Trade Marks Act (“TMA”) in two specific areas.
Firstly, section 56 of the TMA will change so it applies to UK based holders of WKMs.
Secondly, additions at section 56(2) and section 56(2A) will mean holders of unregistered WKMs have a new remedy to protect their mark.
These changes will ensure clearer compliance with the World Intellectual Property Organization’s ‘Joint Recommendation on the Protection of Well-Known Marks’.
The changes will come into force 21 days after the legislation has been signed. They should be effective by the end of December 2022. Read more here.
International updates
USPTO new deadlines for responding to office actions now in place
With effect from 3rd December 2022, the deadline to respond to office actions issued by the United States Patent and Trade Mark Office (“USPTO”) is three months, with a possible three-month extension available on request and subject to payment of a $125 official fee.
It is important to note that this change does not impact office actions for Madrid Protocol section 66(a) applications, which will remain at six months.
The new response period will also apply to post-registration office actions with effect from 7th October 2023. Click here to explore further information.
WIPO Non-Working Days in 2023
WIPO has published a list of dates it is not scheduled to be open to the public during 2023. The list is available here.
Nice Classification – 12th edition enters into force on 1st January 2023
All trade mark applications on or after 1st January 2023 will be required to specify goods and services using the latest edition of the Nice Classification. Several changes and additions have been made. Some notable changes in class 9 are as follows:
- Addition of the terms 'downloadable digital files authenticated by non-fungible tokens [NFTs]', 'computer network routers', 'portable document scanners' and 'cases for smartphones incorporating a keyboard';
- Change of the term 'downloadable computer software for managing cryptocurrency transactions using blockchain technology' to 'downloadable computer software for managing crypto asset transactions using blockchain technology'.
WIPO’s update on the new classification is here, and the new edition will be available here.
Author
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Sharon Mackison
Director & Chartered Trade Mark Attorney, Lawrie IP