Consultation on fast-track procedure for trademark applications

A public consultation has been launched on proposals to introduce fast-track processing of patents and trademarks.

On December 6 2006 the government published its Pre-Budget Report. In the report, the government welcomed the independent Gowers Review of Intellectual Property, which was published on the same day. The government considers IP as extremely important to economic competitiveness in the United Kingdom and recognizes that an effective IP regime is essential to support innovation and investment.

The government undertook to take forward the recommendations of the Gowers Review for which it was responsible. One set of recommendations focuses on ensuring that the system, including the processes for protecting intellectual property, is fit for the 21st century. In relation to the award of intellectual property, the Gowers Review recommended the introduction of "an accelerated grant process for patents to compliment the accelerated examination and combined patent search and examination procedures" and "fast-track registration for trademarks" (Recommendations 25a and 25b).

On September 21 2007 the UK Intellectual Property Office (IPO) launched a public consultation on proposals to introduce fast-track processing of patents and trademarks. The consultation closes on December 14 2007 and responses must be submitted by that date.

The Gowers Review concluded that trademarks are affordable, but that the typical period to grant applications (six to nine months) is too long. Therefore, a fast-track route should be available for firms that require protection more quickly in order to start building up their brands. Despite the fact that the IPO will no longer object to trademark applications on relative grounds from October 1 2007 (see "Relative grounds examination ended for UK marks"), which will potentially speed up the processing of applications, the consultation nonetheless proposes the introduction of a fast-track examination process. This development is clearly more significant for patents, as the time to grant applications is longer; therefore, proposals to reduce that period to within a year from the date of filing (rather than over two years) will be a significant change.

The IPO proposed that, for an additional premium, it will examine new trademark applications within 10 business days of receiving the correctly completed application form together with the correct fee. Current application fees are £200 for one class, plus a fee of £50 for each additional class. The proposal is to fix the fee at £500 for an application for one class, plus a fee of £50 for additional classes - in other words, a premium of £300. The conditions proposed by the IPO in the consultation are as follows:

• A fast-track application will be capable of being filed electronically only via an online version of Form TM3;
  
  
• The fee must be paid electronically (so no period of grace for payment will be available); and
  
  
• Applications will be limited to one mark, rather than a series of marks.

If an applicant does not comply with these conditions, the application will be converted into a standard application and the premium returned. If the application is subject to an objection, the applicant will be given a choice of proceeding as a standard application or continuing as a fast-track application on the basis that the 10-day period does not start until the day after the date on which the objection is overcome. The 10-day period only covers business days.

The IPO is interested in receiving views on whether the proposed conditions are a workable balance between speed and usefulness to the business. If the IPO receives a large number of fast-track applications, the 10-day period will not be achievable; therefore, the IPO is seeking views on whether a standard service of around one month should continue to be the norm. The IPO projection is that a maximum of 10% of applications will be fast-tracked.

Only the examination process will speed up from around one month to 10 days, as the three-month opposition period remains. Therefore, in many cases no more than a two to three-week advantage will be achieved. It will be interesting to see how popular this process becomes, whether businesses consider it useful and whether the maximum percentage of applications, as estimated by the IPO, is the same in practice.

Jeremy Dickerson and Gail McDonald, Burges Salmon LLP, Bristol