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Rule 141 and UK IPO spin

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The IPKat wondered a few weeks ago what the point was of the new requirements as from 1 January 2011 to supply search results to the EPO on priority applications, under an amended version of Rule 141 EPC.  This was particularly puzzling since the requirement will immediately become superfluous in relation to priority application from the UK, US and Japan, according to a Decision of the President from 9 December 2010.

Baroness Wilcox meets Wallace & Gromit [Flickr]

Thanks to a press release issued today by the UK Intellectual Property Office, the point now becomes clear.  According to the UK minister responsible for IP, Baroness Wilcox (right: the one in the middle), the point is cutting duplication of work. She says:

"Reducing the burden of bureaucracy saves businesses time and money. It is essential in creating the conditions for businesses to grow and prosper. 

These new arrangements will make it cheaper and easier for UK firms to obtain patent protection as they look to expand into other European countries. 

The UK has been campaigning for greater work sharing like this and I am pleased to see this latest development. 

Cutting duplication is key to dealing with the worldwide backlog of patent applications.
The quicker we deal with patent applications, the quicker firms can bring the latest innovations to the consumer."

These might seem like very good aims, but only really make sense if they relate to reducing a burden that already existed.  Rule 141 in its new form does not even come into force until tomorrow, so to claim that the requirement not to submit search results somehow reduces the burden on applicants is somewhat disingenuous, to say the least.  In its old form, Rule 141 could only result in an EPO examiner inviting the applicant to provide search results, with no provision for a penalty if the applicant did not comply. This was therefore hardly an onerous burden, and in practice was rarely used.

To add a further insult to its (presumably uninformed) readers, the IPO adds that the new requirements reduce costs because "individuals cannot make their own applications to the EPO so companies must engage a patent attorney to do it for them".  It is perhaps fair enough to presume that a non-patent attorney applicant would not know of the provision of Article 133 EPC, which states that, except for applicants from outside Europe, "no person shall be compelled to be represented by a professional representative in proceedings established by this Convention".  To have the IPO propagate such nonsense, however, is a little surprising.

The IPKat thinks that perhaps the new year celebrations have started a little early at the IPO.

Full post as published by IPKat on December 31, 2010 (boomark / email).