Mutual recognition

Changes to patents forms 9A and 10

On 4 October 2009 Patents Directorate is introducing changes to forms 9A and 10 to ask for applicants’ consent to share the results of search and examination of UK patent applications with IP offices in other countries before publication of the UK application. This is being done as part of our mutual recognition initiative to create a more effective global patent system.

Patent offices around the world are not able to keep pace with the rising demand for patents which has doubled in the last 15 years. The result is a huge backlog of up to 10 million unprocessed patent applications worldwide. In some countries it can now take up to 10 years to get a patent granted, and occasionally longer.

Increasing globalisation means that more and more businesses need patent protection in many different countries. This means many applicants have to file multiple applications with different patent offices. The result is that the same invention is examined many times over by different patent offices around the world.

One obvious solution is to reduce duplication by allowing different national patent offices to accept each others’ work through a system of mutual recognition. By agreeing quality standards and harmonising working practices, backlogs in patent offices could be greatly reduced allowing applicants to obtain granted patents more quickly and cheaply.

Patent examiners around the world (including those in the UK) already informally use the work of other IP offices to assist in their own search and examination processes. The Intellectual Property Office (IPO) is working with other IP offices to investigate how to share results of search and examination more systematically. This will help to reduce backlogs and delays by minimising duplication of processing work as well as promoting high quality standards internationally.

In most cases, a request to share work results with another office will be made after the UK application has been published. However, before publication of a patent application, the IPO cannot share any work carried out without permission from the applicant. We are therefore introducing questions on patents forms 9A and 10 to seek the applicant’s consent to share results before their application is published. The IPO will only share results with other patent offices before publication on a confidential basis. This means that any shared results will not be made available through the other patent office before the patent application is published in the UK. These changes form part of our preparations for more systematic worksharing with other IP offices in the future.

Further information

For further information please contact Laura Starrs +44 (0) 1633 814806.