With the UK Intellectual Property Office currently operating under "interrupted days" and not operating its usual paper-based services, you might be left wondering how to obtain authorisation to file patents abroad where they contain material which is potentially sensitive from a national security point of view. Here we look at how that process is currently working during the pandemic.
The purpose of sections 22 and 23 of the Patents Act is to prevent the publication of patents that might be prejudicial to national security or to public safety. All patent applications filed in the UK are screened by the Security Section and may be removed from the general stream of applications under a prohibition notice. This process is the reason why patents relating to potentially restricted subject matter must be filed in the UK first if the applicant, or any inventor, is a UK resident.
To comply with the Act the applicant can simply file in the UK and wait six weeks before filing abroad. For those unwilling or unable to wait, historically they could apply in writing for permission from the comptroller. However, in the wake of COVID-19 a different approach is required.
Applying via email
As the IPO offices are closed, there is now an email address for these Section 22/23 queries: email@example.com is a secure address to which only a few staff have access.
You will need to send as much detail about the specification of the patent as you are able or willing to disclose, as well as the country in which you intend to file abroad.
An examiner will then consider the patent and either:
- Ask for more information;
- Provide the permit;
- Say that a permit isn't needed; or
- Refuse to permit the foreign application or give directions restricting the disclosure of the application's contents, pursuant to s.22.
Legally, the examiner must warn you that a decision can take up to 24 hours. However, more often than not a response is received within an hour or two at the most.
Having used this procedure recently, we chose to file the application and then immediately follow it up with an email to the screening email address (providing the application number) in order to avoid providing detail about the invention by email.
Unfortunately, we didn't receive a reply and had to chase the IPO by telephone two working days later. We were advised to resend the email with the words "resubmission – no response" in the subject line. Upon doing this we received permission to file abroad in just over an hour.
Clearly the system is working but our advice is to remain alert to the possibility of emails going missing and to consider filing the application in the UK first before seeking permission to file abroad.
Originally published by Taylor Vinters UK, on June 2020
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.