Like an experienced Yogi the UK IPO demonstrates its flexibility

When considering a patent filing strategy and deciding between a UK national application and a European application, most will consider the cost implications of each choice. One aspect of UK IPO procedures that is often overlooked is the inherent flexibility of the system.

In early 2018, the UK IPO held a two-day hearing to concurrently deal with sixteen (16!) applications from Landmark Graphics. Each application related to geophysical modelling and while the sixteen applications were examined by different examiners, all came to the same conclusion— that each application was excluded from patentability as it related to a computer program. In issuing its decisions the Hearing Officer at the UK IPO grouped the sixteen applications into seven separate decisions according to common aspects. While the hearings process at the UK IPO is not universally popular, its flexibility is definitely advantageous in certain situations over the rigid approach of other patent offices. The flexibility of the UK procedures is a factor that should be considered when looking at patent filing strategy.

In all sixteen applications the Hearing Officer determined that the examiners were incorrect and that the applications did not contain excluded subject-matter. The applicant must be congratulated for pursuing the cases in the way they did. Not only for their perseverance but also for helping the UK IPO to deal with the cases in a flexible manner. Given that all sixteen cases were considered not to be excluded, it remains to be seen whether this signifies a softening of the UK IPO approach. Most of the cases were remitted for further searching in light of the conclusions. Often UK examiners will not search applications they consider to contain excluded subject-matter.

If these applications were considered at the EPO, each application would have necessitated a separate hearing and would each have been scheduled on a separate day. The applicant would have spent 16 days in either Munich or the Hague, which itself would have been a lot before you include travel time. That is also before you consider that the applicant would have spent well over £65,000 in official fees alone just to get to that point (not including grant fees) compared to roughly £5,000 for the sixteen UK applications. One suspects that few applicants would have continued all sixteen European applications to the hearing stage.