Commentary Part 2: Patents Section 18: Sharing information with overseas patent offices
70.Applying for a patent can be a lengthy and complex process. UK patents only give protection in the UK so businesses seeking global protection have to file patent applications for the same invention in many different countries. As a result, major national patent offices have built up significant backlogs of patent applications waiting to be processed. In 2012 the World Intellectual Property Organisation estimated the global patent backlog stood at approximately 5 million. This represents several years of work for offices, judging from the rate at which they currently process applications. This can impact on the economic benefits businesses can derive from their patents.
71.Sharing information on patent applications between major national patent offices can reduce the duplication of work undertaken by patent examiners in each of these offices, thereby speeding up the patenting process and helping reduce the backlog of patent applications waiting to be examined. The IPO can share information on published patent applications (section 118(2) of the 1977 Act), and very limited bibliographic data on unpublished patent applications (section 118(3) of the 1977 Act). However, it is more effective if substantive patent information, in particular relating to the search results, can be shared with other offices earlier in the patenting process, before the patent application has been published.
72.Subsection (1) of this section amends section 118 to allow the IPO to share information on unpublished patent applications with other national and regional patent offices. Subsection (3) of this section amends section 118 to define these other patent offices as being those which carry out the same functions relating to patents as are carried out by the IPO. However, the amendments made to section 118 by subsection (2) require a working arrangement (such as a working agreement or memorandum of understanding) to be in place between the IPO and the other patent office; information on unpublished patent applications may only be sent in accordance with that working arrangement. The working arrangement will have to include provision for ensuring confidential treatment of the information. This will mean that pre-publication patent information is not disclosed by the other patent office in circumstances when that information remains confidential in the UK.
73.The IPO will only share information with other offices in circumstances where doing so is likely to lead to a reduction in duplication of work. Information will therefore not be shared where no work has yet been conducted by the IPO in relation to the UK patent application. It is envisaged that work sharing is likely to be of most benefit when the other office is dealing with an application which claims priority from a UK patent application. Consequently, the other office will be required to specify what information is required and in relation to which patent application, identified by the application number. This is in line with the approach taken when the IPO provides information to the European Patent Office in accordance with section 118(3)(a) of the 1977 Act and the European Patent Convention.