Adam Williams didn’t come through the usual civil service route or IP legal route to land at the UK Intellectual Property Office (UK IPO). He started his career in the airforce, then worked for the UK government on defence policy at the Foreign and Commonwealth Office working with NATO, the UN and the EU.

Pursuing his interest in business, next came an MBA; he eventually joined the UK IPO in 2009. He explains: “They were after somebody who could do international work and work with ambassadors, work with embassies, people that could negotiate with the European Commission. The office had a lot of IP experts, but perhaps didn’t have these skills.”

The IPO office is in Newport South Wales and, he adds, “my wife’s from this part of the world and we were thinking of moving back this way anyway so it was a meeting of a number of factors really.”

He initially focused on international work in the copyright field and, prior to his recent appointment as CEO, Williams was the UK IPO’s director of international policy.

When the UK voted to leave the EU in 2016, “that completely changed the landscape”, he says. The early part of the Brexit period was spent negotiating the withdrawal agreement - setting the terms of the withdrawal of the UK from the EU. “Making sure that IP rights were protected, making sure businesses had certainty."

The next big project was IT related and involved extricating the UK from the EU Intellectual Property Office (EUIPO) in Alicante. Williams says: “How were we going to manage the EUIPO’s UK trademarks, moving some 2.1m rights onto the UK register? It sounds relatively simple, it’s just a database, but readers will understand that the challenges were around where rights were being challenged, hadn’t been approved yet, oppositions based on European oppositions happening in the UK and so on.”

The office hired more examiners and teams because it knew it was going to have a spike of about 2m rights coming across comprising around 1.5m trademarks and 700,000 designs. Domestic trademark applications had also more than doubled since the Brexit result - from around 65,000, to more than 150,000 in 2021.

He emphasises that as well as hiring more people, the office strived for more efficiency by revamping its systems and allocating people in a different ways. “So whether it's quality systems, whether it's training systems, using the experience of previous senior trademark examiners, to actually really up-skill those new teams,” he says.

With this improved efficiency, over the last 18 months the office has cleared its backlog for the first time in several years. “So we're now back within our 10 day target for trademarks. And also on patents." The patent examination backlog had been steadily growing over the previous two decades. Patent backlogs are defined as those that have not been examined more than 42 months after the initial application.

Transformation programme

This brings Williams onto one of the office’s main priorities, the One IPO Transformation Programme, a £100m, five-year project to completely transform the way it delivers services. He says: “We realised that our rights systems were old fashioned, we talk about people applying for rights online, but in some cases, that was just very front end, but actually documents were being printed out when it got to us. It might have looked digital for the customer. But it was not a digital process.”

He continues that there were also about 15 different places where the customers’ details were being recorded. “So if you had a trademark it was being recorded separately to a patent, which was being recorded separately to a design, so there was a lot of manual input, presenting risk to quality and mistakes being made.”

 “We are completely reworking our internal systems and also our customer-facing systems. So eventually the customer will have all their rights in one place. For example, like Amazon if you change your details once it applies to all your accounts.”

The office is now at the deliver phase of the programme, starting with patents. He hopes it will be a much more effective service where you will be able to manage your IP rights and apply for them. You will be able to ‘search and research' where the system will provide abstracts of UK patents and a full text search of European Patent Office (EPO) patents. You will be able to save the searches and researches and create alerts.

The office has released a ‘private beta’ for the revamped patent system, a limited release for a small number of companies. The overhauled system will then go live to the public in 2024, while the trademark system and designs are scheduled for 2025 and 2026.

“This is the year of the start of our delivery of the transformation programme and we really want to engage with that and use input from users,” he stresses. The office is looking for trademark and patent attorneys to conduct some user testing to road test the new systems. The email to sign up is [email protected]. 

AI

The agency has a small futures team to determine what could be the next emerging or disruptive technology. The office is already using AI to allocate cases to examiners, he explains.

The office has also developed an AI tool called Trade Mark Pre-Apply that will allow the potential applicant to perform some basic searching to see if a similar trademark already exists, so the applicant doesn’t apply for something that's not registrable.

This was designed he says, very much for the SME or sole trader to allow them to better use their rights without spending a lot of money.

Every trademark when being registered is assigned a class from the international Nice classification system indicating what goods or service it covers.

Since the agency instigated this, the office has seen a 14% drop in mistaken Nice classifications “because people are being guided”, Williams points out.

The office has also seen a 70% drop in the length of goods and services that applicants file for “because it's focusing their minds on what they should be applying for. So not applying for multiple classes when they don't need to.”

It could also save applicants money, because there is a fee payable for each additional category of goods and services that is selected.

The IPO is also involved in the high-profile DABUS case, where the inventor Stephen Thaler is attempting to name his AI invention as the inventor on patent applications. The UK has followed various jurisdictions in determining that AI cannot be named as an inventor on a patent application. Thaler is challenging the UK IPO stance on that, and the case was just heard at the UK Supreme Court in early March.

He says: “We have a view as lots of other jurisdictions do and which is based on the current legislation. I'm absolutely behind that in terms of the decisions we took, but it will be interesting to see what the Supreme Court says and how it moves the debate on.”

Counterfeits 

“Last year, we launched an ambitious new 5-year counter-infringement strategy. The strategy takes a collaborative approach, and aims to tackle both the supply side and the demand side for counterfeit goods,” Williams notes. 

“We now have a robust team of intelligence officers, financial investigators and intelligence analysts, as well as a campaigns/outreach team and coordinator and analyst posts in our partner agencies, such as Trading Standards, Border Force and ROCUs."

Intelligence analysts explore the opportunities that AI and machine learning provide to better identify reports of potentially harmful counterfeit goods. “This will help us to build on our understanding of how and where counterfeiters are targeting vulnerable consumers," he notes.

Last year before the FIFA World Cup, enforcement activity coordinated by the UK IPO saw four tonnes of counterfeit football shirts seized by the City of London Police Intellectual Property Crime Unit (PIPCU) officers in a series of raids across the United Kingdom. Six people were arrested for offences relating to the distribution and sale of counterfeit goods and £12,000 in cash was seized. This enforcement activity was supported by brands which, collectively, manufactured 26 out of the 32 team football kits for the 2022 World Cup. 

Future challenges

In his most recent budget speech, the UK Chancellor Jeremy Hunt mentioned that the UK IPO is working at pace with government to clarify the rules on how generative AI and IP work together. This isn’t putting new pieces of legislation in place, Williams stresses. "It’s making sure that people can understand the differences, understand the interactions, make sure people know where they can use AI datasets and where they can't, and help, hopefully, both sides use the flexibilities they have as much as possible without crossing the lines into IP infringement.”

He wants to enable the UK Science and Technology Framework: “IP is an enabler to that framework, not a throttle. IP in itself doesn’t give you a science and technology superpower. But IP rules could throttle that ambition.

“We need to make sure that we enable it in a sensible and fair way so that rightsholders get the benefits of their rights, but innovation can grow.”

Discussing challenges to the IP community, he mentions the drive to waive IP rights to Covid-19 vaccines. This “caused a lot of discussion and continues to cause a lot of discussion, for instance at the World Trade Organisation. We need to show how IP can benefit the system. That many of these developments in vaccines would not have been created without IP protection.”

The metaverse is also throwing up a lot of questions, Williams notes. In these online worlds, brands now advertise and people purchase things with cryptocurrency. Who owns the brand in that world? How do you prosecute or enforce your IP rights in that world?

“And sometimes you can just apply terrestrial rules, but sometimes they don't work. And we need to think about how we will do that,” he says. 

The office is keenly aware of global discussions on SEPs and FRAND, and has many conversations with larger firms and organisations. It has also recently launched a questionnaire about the topic for smaller business. “We haven’t had much interaction with smaller business so we want to ensure we get their views or the views of the law firms they use, that way we are making sure we get the best information before we start making any decisions.” 

Free Trade Agreements

Now that the UK has left the EU, it is focused on forming free trade agreements (FTAs) with other nations and has recently signed FTAs with Australia, New Zealand, Canada and Mexico and is currently negotiating with India. The UK IPO works very closely, Williams says, with the Department for International Trade on developing the IP chapters in FTAs. The IP chapter is generally one of the longest in FTAs, for instance the EU-UK Trade and Cooperation Agreement has an IP section 60 to 70 articles long.

So what we want to make sure in FTAs is that the UK system is seen as a really good basis for how to do IP, he adds.

The UK is an important member of the international system of trademark registration, the Madrid System. It is proposing to add Arabic, Chinese and Russian as full working languages of the Madrid System, in which case applicants will be able to file international trademarks in Arabic, Chinese, Russian, English, French and Spanish. How is the UK IPO preparing for these changes?

Williams thinks it is important that these languages are looked at. ”But we have to be careful that it does’t create a massive cost to the users of the Madrid system if businesses aren’t really using it. He pointed out that in 2020, China had the third highest number of applicants in the Madrid system but 85% of them were in English. "So there is the question, what is the problem we are trying to solve here?”

The UK has generally one of the best regarded IP systems in the world, coming in second place in the US Chamber of Commerce's International IP index earlier this year. The EPO has also just released statistics for 2022 that saw UK came in at number nine for European patent applications per country of origin.

Williams concludes: “We remain committed to ensuring our quality stays as high as it always has been and timeliness remains good and that we continue to provide a great service to our customers.”