Informal Consultation on Patent Citation and Publication document delivery

In December 2009 the Patents Directorate of the Intellectual Property Office, bearing in mind the Governments environmental targets to reduce carbon emmissions, issued an informal consultation following an internal review of its printing and publishing policies and procedures.  The main aims of the review were to:

• Reduce the amount of printed material generated by the patents granting process
• Increase emphasis on electronic communication and engagement with their customers
• Streamline internal procedures to realise further benefits from their electronic case management system and processes.

The consultation document detailed recommended changes to the delivery of two aspects of their publishing and printing activities, namely: the cessation of automatic printing and issuing of sets of citations free of charge to applicants (both patent and non-patent documentation) and the cessation of automatic supply of physical copies of A, B and corrected patent publication documents to applicants.

ideas21 submitted the following response on Monday, 15th February 2010

This response is on behalf of ideas21, a membership-based organisation which specialises in the successful commercialisation of ideas and of intellectual property.

The proposal regarding “A” and “B” publications and ceasing to provide paper copies of citations is, we presume, part of an overall (and inevitable)  move to electronic systems and distribution, and with the  “online publication server / Patents Publication Enquiry System” presumably being architected into the longer term design and plans for the case management system.

As  such we are concerned that it may prove to be yet another subsystem that

(i) may or may not work effectively
(ii) may or may not pick up the “latest” email address from the ‘master record’ in the current system and case management system (systems being updated weekly is no excuse), and
(iii) may or may not provide an effective audit trail

while at the same time actually perpetuating a combination of “separate” systems that appear as one “because” they are on a single web site , i.e. www.ipo.gov.uk. 

This may be a recipe for confusion rather than disaster, for example if material is sent to an attorney who has been replaced by another “because the computer says so”, but if the aim is to improve the overall efficiency and streamlining of IPO systems,  this needs to avoid the risk that the system sends the “wrong” document out or sends the right document but to the wrong place, for example because the link between the “only slightly separate” systems produces an unexpected outcome. Such errors may also involve substantial effort by those at the receiving end on sorting matters out, meaning that for the applicant, costs rise.

We sympathise with the IPO in its desire to reduce the amount of printed material generated by the patent granting process, but we caution against assuming that the proposals made will achieve the intended effect. The amount of printed material generated by the patent granting process is generated not exclusively by the IPO, but by others, most notably the applicant and his or her representative. If the Office chooses to stop sending out physical copy materials, but instead sends information as to how those materials may be printed, the likelihood is that, in many cases, the print will still be made, just not made internally of the IPO, and that part of the IP industry’s carbon footprint represented by paper use may increase rather than decrease as a result.

In particular, because it is the practice of the IPO to print both A and B specifications on both sides of the paper, shifting the printing to the “customer” is likely to result in increased paper use (at least by all those who prefer to read documents on paper rather than on screen) because they will tend to print the document single sided rather than double, particularly as the former is the default (or only possible) setting on most printers.

We are concerned that those individual applicants who choose to operate not using electronic communications are now going to be subjected to an arbitrary additional cost. We suggest that very careful consideration should be given to the imposition of an extra fee, but we believe that the numbers of applicants who would need the Office to provide paper copies, because they would be unlikely to be able easily to make them themselves, is relatively small and dropping.

We suggest that the simple criterion is whether or not the applicant has provided the Office with an e-mail address. Of course, an e-mail address must be provided in connection with any e-filing, but we believe that, in the case of many applicants, even those who do not use e-filing, they would be entirely content that communications to them are by e-mail. This would, of course, not only include the publication notice, but additionally the search report, copies of citations and any other communications.

Turning to the summary of the consultation questions which appear on page 6 of the consultation document, we observe in respect of the five items as follows:


Patent Citations

1.    We doubt that it will have the desired effect of reducing the number of sheets printed; it will relocate where they are printed.

2.    We suspect that few applicants request additional sets of citations and it is difficult to see why unrepresented applicants would ever wish to do so.

3.    The proposed approach will mean that unrepresented applicants who do not have instant and convenient web access will be put to additional trouble or additional expense; neither seems necessary.

Publication

1.    This seems hard on those who have spent money with the Intellectual Property Office getting that far and who do not have access quickly and conveniently to the Internet.

2.    It is difficult to conceive of circumstances in which anyone would purchase copies of those documents, particularly since any IPO notification sent by post, would presumably make it entirely clear that the document would be freely available to print off by anyone who wished, and if sent by email could be followed up at publication by an email to which the document was attached. If a paper notification quoted the link to the Publications server, there would be a tendency for those receiving the notification to go there to download a copy.

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