UK IPO transformation programme: second consultation – Law Society response

The UK Intellectual Property Office (IPO) is holding a second consultation on its transformation programme. Find out what this means for solicitors.

The proposals

The UK IPO is undergoing a transformation programme to modernise and improve its services, processes and systems with an aim of making these more effective and efficient.

As part of this wider work, the IPO published a first consultation in 2022 to inform potential legal and practice changes, publishing its response in August 2023.

This second consultation seeks views on further proposals, focusing on the issues surrounding trade marks and designs, alongside other intellectual property (IP) rights registered at the IPO.

Overall, the consultation seeks views on:

  • online public document inspection service for trade marks and designs
  • public inspection of trade mark and design documents and requests for confidentiality
  • series trade marks provision
  • length of supplementary protection certificate fee payment periods
  • collection and publication of addresses for patent inventors
  • ways to encourage more mediation during IPO tribunal proceedings

Our view

There is a need for further guidance on series marks and their validity, which could limit the potential for objections.

We judge series trade marks as useful, forming an integral part of the trade mark regime.

Proposals to cease or drastically limit the use of series trade marks would have fundamentally negative consequences for rights holders.

We also support the mediation information and assessment meeting and more robust use of hearing officer powers as a way to encourage more cost-effective positive outcomes.

However, we do not support requirements that would place more onerous burdens on rights holders, such as further contact details from inventors’ on the patent register.

What this means for solicitors

The IPO’s wider transformation programme and the reforms and proposals specific to this consultation would make fundamental changes to the way our members do business and how they advise their clients on IP issues.

Reforms to the mediation process would also promote access to justice by offering a more streamlined way of resolving IP disputes.

Next steps

This consultation closed on 31 October 2023 and we are awaiting feedback.

Read the full consultation on the GOV.UK website

Maximise your Law Society membership with My LS