Plans to change patent application publication process may benefit companies seeking investment, says expert

Out-Law News | 12 Aug 2014 | 12:54 pm | 1 min. read

The Intellectual Property Office's (IPO's) plans to change the patent application publication process may benefit companies seeking investment, an expert has said.

The IPO has opened a consultation on possible changes to the way it publishes patent applications (8-page / 192KB PDF) at the moment. It said it wants to find out "what applicants want from the patent application system" and use that knowledge to work out how to better use its resources.

At the moment, the IPO publishes patent applications approximately 18 months after the applications have been filed, but it said it would consider making the current system more flexible if stakeholders want.

In particular it said that a new "automated system" could allow applicants to choose when to publish their patent applications.

"In an automated system it can be envisaged that once the application fee has been paid the applicant could choose to have their application published at any point prior to the 18 months required by the Patents Act," the IPO said.

Patent law expert Adrian Murray of Pinsent Masons, the law firm behind Out-Law.com, said some companies could use flexibility in the patent application publication process to their advantage.

"Early publication of a patent application which has been found to be acceptable by the IPO has the potential to speed up the time it takes for a patent to be granted," Murray said. "Businesses can already request for their patent applications to be processed more speedily, but making the process of requesting early publication of the application easier could encourage applicants to pursue their applications more aggressively than they otherwise would, thus expediting the granting of patents to happen even faster. This may be attractive for companies seeking investment as businesses subject of potential takeover offers or other investment, for example, are able to value their assets higher on the basis that patents granted are worth more than patents pending."

"Conversely, however, often the publication of the application for a patent is the first time an invention is made public. In these cases, applicants are often keen to wait as long as possible before their inventions are disclosed so as to prevent rivals scrutinising their plans and developing competing technology," he said.

"As a result, greater flexibility in the publication of patent applications is unlikely to persuade companies to request expedited publication unless the purpose of the application is for it to be published, thus preventing rivals patenting that invention for themselves," Murray said.