Intellectual Property is important. Although never at the forefront of our thinking (IP Lawyers aside) the role of patents, trade marks and copyright in shaping the business and leisure aspects of our lives is immense. Rights to media content and their delivery to new audiences drives Google's recently announced tie-up with BskyB, while in contrast their recent acquisition of You Tube became potentially damaging as hundreds of copyright owners suddenly took an interest in preventing infringement of their rights on the video exchange website.
It is relatively easy to create a level of hysteria over specific issues. Cliff Richards' campaign for extension of sound recording copyright is an example of this. It is therefore to the credit of the Gowers Review of Intellectual Property and Andrew Gowers himself that the report represents a thorough and thoughtful review of the role of intellectual property in the UK in the digital world and makes a number of sensible recommendations.
Consequently, it is worth looking at those recommendations implement-able in the UK only, and contained within the 54 separate recommendations is a theme that will not be entirely welcome to intellectual property practitioners across the UK. If the Gowers recommendations are followed, and the UK patent office gets a new name – the UK Intellectual Property Office – and an ever increasing remit, the news is not all positive.
The UK Patent Office is an unusual government agency in that it is profitable – routinely, year on year profitable. A number of commentators when reviewing the initial terms of reference for the Gowers Review anticipated the possibility that the Review may recommend a full-scale privatisation of the Patent Office with an immediate benefit to the Treasury's coffers. The Gowers Review sensibly ignores this but does continue a worrying trend of expanding the commercial operations of the Patent Office.
Throughout the 1990's, the Patent Office developed commercially available searching services where companies or individuals could carry out searches of the patent and trademark registers to identify existing intellectual property rights which might impact on their business or indeed applications for new intellectual property rights. By 2006, private firms of trade mark and patent agents, for whom searching was previously a large part of their business, are finding it increasing hard to compete on price with the UK Patent Office.
In the Patents' Act 2004, the Patent Office gained the ability to offer non-binding opinions on the patent ability of inventions.
The core role of the Patent Office is as a gatekeeper for registered intellectual property. It examines applications for patents, trade marks and registered designs, assesses whether applications relate to subject matter that is able to be registered and considers whether there are existing registered rights that prevent the application proceeding. The UK Patent Office has a reputation for a very high standard of examination and these examinations can often be extremely complex from a technical and engineering standpoint. Although decisions of an examiner can be appealed, they are the major point at which any applications for IP rights will be assessed.
To permit the Patent Office to offer non-binding opinions on a commercial basis as to the patentability of subject matter is similar to permitting a judge to operate a lucrative side-line advising parties in his court as to their likelihood of success (all on a non-binding basis of course).
The Gowers Review proposes new roles for the Patent Office in carrying out intellectual property audits for businesses to assist them to identify their intellectual assets. This would follow a French model where these audits are partly publicly funded. Gowers also recommends that the Patent Office take a role in developing model licence agreements for use by businesses in transferring technology.
In each case, the justification for these activities is that they will increase use of the intellectual property system and thereby the competitiveness of the UK. This is a laudable aim but fails to appreciate that both services are already available from advisors in the private sector, on a highly competitive basis. Many small companies are able to access these services with support from regional enterprise companies and various other sources. It is difficult to see the justification for public sector intervention creating another competitor in this market – particularly the Patent Office with its immense resources. More importantly, there is no room for a conflict of interest between a trade mark agent advising his client on licensing terms and the trade mark examiner deciding on an application.
Gowers proposes increased financial transparency for the Patent Office which may go some way to developing a sense of accountability within the Patent Office but will not examine the impact of Patent Office activities on the private sector nor will it control the inherent conflict of interest in pursuing these additional activities.
The UK Patent Office is staffed with vastly intelligent people who care passionately about the intellectual property system in the UK and beyond. It is very easy for successive governments to harness this energy in various initiatives to promote intellectual property. Nevertheless, the creeping commercialisation of the Patent Office is a threat to its standing as an independent gatekeeper of registered IP and is something to be undertaken with great care. The Gowers recommendations do not assist here.
Paul Carlyle a partner specialising in media and technology with UK law firm Shepherd and Wedderburn.