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UKIPO: Possible low-cost appeal route with an Appointed Person for Patents

Keltie LLP

K2 IP Limited

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UKIPOlogoThe newly be-logoed UK Intellectual Property Office has recently released a Discussion Paper on the possibility of introducing an Appointed Person for Patents at the IPO (I promised ipcopymark I wouldn’t mention that on an initial glance he read this as an Anointed Person for Patents…so you didn’t hear it from me…), and has invited comments from one and all.

Presently, the route of appeal from any decision of the IPO on patents is generally to the Patents Court (part of the High Court, or to the Court of Session in Scotland). If an Appointed Person for Patents is indeed Anointed, this would provide a new low-cost route of Appeal for patent decisions issued by the IPO. The decision of the Appointed Person would be final, and no further appeal to the High Court would be possible.

This system is already in place for trade marks, and has been highly successful. Between 2007 and 2012 there were 324 appeals from IPO decisions on trade mark matters, of which 88 % were heard by the Appointed Person, most of these being inter partes. At the moment, there is no fee to lodge an appeal to the Appointed Person, and the informal process means applicants may be more inclined to represent themselves, resulting in low costs all round. The potential down-side is that costs awards do tend to be low, averaging at around £900.

It is likely that an Appointed Person for Patents would be less well-used than the trade mark equivalent: 2012 saw 1200 decisions issued by IPO trade mark hearing officers compared to 230 issued by the IPO in relation to patents. Of these 230, just ten were appealed to the Court, all ten being ex partes.

One interpretation of these numbers would be that there is little appetite for appealing IPO decisions on patent cases. However, at present only a relatively costly appeal process is possible. This IPCopy writer ventures that if parties have selected the lower-cost IPO route in the first instance, costly appeal proceedings are unlikely to (ahem) appeal, particularly for inter partes cases in which costs are less easily controlled. Introducing an Appointed Person for Patents would bring the options for the appeal process more closely in line with the first-instance options.

IPCopy would be interested to know whether the IPO saw an increase in the number of IPO trademark decisions that were appealed when the Appointed Person for Trade Marks was introduced. Does anyone have the numbers?

If you would like to submit observations, get your views to the UKIPO here by 21st May 2013.


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