An IPO of the Future: Interview with UKIPO Deputy CEO David Holdsworth

David Holdsworth, UKIPO, London, UK

The United Kingdom Intellectual Property Office (UKIPO or Office) has been an example of how to navigate change and plot a path for the future, having managed in the past year the UK’s departure from the European Union and the challenges of the global pandemic.

UKIPO Deputy CEO and Director of Operational Delivery David Holdsworth has been in the thick of this intellectual property (IP) transformation. He is responsible for the Office’s registered rights functions, patents, trademarks, and designs, including the associated tribunal and mediation services, and is the lead on policy on registered rights and unregistered designs.

As part of the UKIPO’s forward-looking approach and using The IPO of the Future—Think Tank Report, recently published by INTA, as the foundation for discussion, the UKIPO brought together key constituents for its trademarks and designs forum on March 4, to discuss the Office’s future and how it can best respond to challenges that lie ahead.

In an interview with the INTA Bulletin, Mr. Holdsworth talks about the UKIPO’s transition and handling the unexpected, its approach to the future, anticounterfeiting, diversity, and more.

What were the most unexpected insights coming from users participating in the IPO of the Future forum?
First, it is important to say in delivering the priorities of the Prime Minister and the government—to build back better, promote global Britain, and give the UK the competitive edge in the future—we need to keep the UK IP regime at the global forefront. The discussion that took place brought this into stark reality.

A clear theme emerging was the rapid pace of change. Whether in the context of surging and difficult-to-predict demand, the development and use of AI within the IP system, the rise of private rights registers, or new modern and flexible ways of employing people to meet these and other challenges, it means constantly making IP relevant.

This requires IPO Offices to strike the right balance between, on the one hand, reacting too quickly, with the risk of creating bad policy, and, on the other, not adapting quickly enough.

Reports such as [The IPO of the Future—Think Tank Report] and the collaborative discussions we can have with our stakeholders will help to make sure that we strike the right balance and keep our policy and operational activities at the forefront of innovation.

One welcome change in the Office’s practices, as a result of the pandemic and users’ feedback, has been the acceptance of email as a regular filing means. Does the Office foresee any other permanent changes in its practices or overall strategy as a result of the pandemic and its impact on the interaction with users?
Going forward, we have set up a workstream to look at how a future hybrid approach might work for an IPO, but our wider organizational vision is ambitious.

Over the next five years, we want to transform what we do and increase the value we contribute to the UK economy. Of course, the experience of the last 12 months will help shape and inform our approach, but, ultimately, we intend to integrate our core services so our customers and their representatives can manage, secure, and challenge IP rights in one place.

Longer term, we believe that our moving on from aging technology and processes will help us make even better use of our resources. With that extra capacity, we can turn our focus to more strategic objectives, including the role we can play in building back better by helping businesses better use their IP. That’s where we feel we will really add more value, through enabling and accelerating UK innovation, within our role as global IP leaders.

Artificial Intelligence (AI) was one of four discussion topics at the forum. What does the Office see as the challenges and opportunities presented by this emerging technology?
While there are obvious opportunities of adapting the way the UKIPO operates to take account of new technologies or increasing demand for IP rights, this does not come without its challenges.

If regulators and IP Offices move too quickly, they risk creating bad policy. If they move too slowly, they could leave regulatory/ethical vacuums leading to bad outcomes for citizens and society. That is why the IPO published its call for views on AI and IP in September 2020. You will have seen that we recently (March 23) published the government response.

The UKIPO stressed that The IPO of the Future Report gave good ideas about new fields where AI was looking to help, like the references in the Report to the possibility of automated patent drafting, which is an area particularly important for the IP profession.

The UKIPO already has machine learning tools available on its website for both an automatic trademark search for the most relevant application and for trademark classification terms to be more aligned with the business applicants are seeking to build. The UKIPO has recently developed an AI tool to support better imaging searching and is considering how it could be integrated in the examination process. We will continue to look for opportunities to integrate AI into operational delivery of intellectual property rights, as part of the UKIPO’s Transformation program.

On March 24, the UKIPO published the government response to the Call for Views on AI and IP. What are its main conclusions in the fields of trademarks and designs?
Consensus was that designs and trademark legislation was adequate and flexible enough to respond to the challenges of AI. But this will be monitored as AI technology evolves.

We note that the approach that designs law takes toward computer-generated designs is similar to that taken by copyright law for computer-generated works. We will ensure that any review of copyright provisions takes this into account.

We remain receptive to further views from stakeholders on AI and trademarks and designs.

The European Commission has confirmed its intention to review the EU legal framework on designs. From the Office’s perspective, which aspects, if any, of the current legal framework should be reviewed and in which direction?
The EU evaluated its design framework in 2019, and the response was published late last year. We engaged throughout the consultation process and have since been considering what the response means for UK businesses and for the UK designs system itself. It is clear that we share common aspirations with the EU, for example, in terms of modernizing regimes and ensuring we keep up with technological advancements, such as in the field of AI. There are other areas that we will continue to monitor, for example, in relation to disclosure of unregistered designs.

Leaving the EU gives us the opportunity to evaluate our designs systems and make any changes that will benefit UK businesses. However, we know that our users value consistency and certainty between different regimes. Any future changes will be made following stakeholder consultation and will be informed by economic impact assessment.

In line with that, could you remind us what were the consequences or benefits for the UKIPO that were not anticipated during the transition period (and how you tackled/are tackling them)?
The IPO had undertaken a huge amount of preparation in advance. Our amazing team worked tirelessly ahead of the end of the transition period with great support and collaboration from our EUIPO colleagues to ensure a smooth transition for our users and customers. This was our key driver and joint objective. We successfully transferred data and the creation of over 2 million comparable rights on the UK Register overnight, with 1.4 million of those being trademarks.

As you would expect with such a large operation, it didn’t all go smoothly. There were a few challenges; namely, we had to suspend the new TMclass system only for a matter of days in January and international designs were not displayed on our website although they were protected under UK law.

We were also notified in early March of an issue in some cases where the displayed registration date for UK clones derived from EU designations of [International Registrations] was incorrectly taken from the “EU Designation Date,” that is, the date on which protection of the mark was applied for, and not the date protection is granted. This had implications for the five-year use period.

We have now been applying the correct date and all cases will have been updated by March 28. We expected demand for trademarks and designs as a result of Brexit. The Office received over 15,000 trademark applications during January alone. This is nearly a 50 percent increase in domestic trademark applications and record numbers for the UKIPO.

In designs, we have seen even more significant increases than in trademarks, with an increase of nearly 150 percent. We had over 4,000 applications in January, another record, and are again currently achieving [the granting of protection in] 34 days. We aim to get this back within our 10-day target by November 2021.

I want to take this opportunity to thank the amazing colleagues at the UKIPO and to our EUIPO partners and IP professional groups like INTA who helped us design the process, helped us understand issues, and helped ensure a smooth transition.

What is the UK’s strategy to tackle counterfeiting, in particular fake COVID-19 products (masks, tests, and vaccines) at the border, notably with the EU, in terms of human resources and financial resources, as well as cooperation with EU public and private authorities?
Having a UK IP enforcement regime that is fit for the 21st century and increases the confidence to invest in the UK while tackling serious organized crime is crucial to achieve the Prime Minister’s and government’s priorities. The IPO has a key role in coordinating this and works closely with the key partners responsible for IP enforcement, including [Her Majesty’s Revenue & Customs], whose responsibility it is to enforce IP at our borders.

The UKIPO currently funds two posts within the UK Border Force, with the objective of improving intelligence flows and enabling a fuller threat picture to inform effective application of wider government resources to this problem.

Regarding COVID-19 products, some of these will be regulated as medical products and medicines, others may be counterfeit, and others may be nonregulated but substandard. In all these cases, close cooperation between the different agencies is critical, and the IPO intelligence hub and PIPCU (the Police Intellectual Property Crime Unit) in the City of London have worked on several cases involving these types of products in recent months.

The IPO Intelligence Hub has from the beginning of the pandemic proactively collected, collated, and analyzed incidents arising from an IP perspective and shared that with government and enforcement agencies. The model of representing the risks and harm has been accepted and used as best practice at the OECD Anti-Illicit Trade Task Force and the United Nations Criminal Research Institute.

The IPO has maintained links with Europol within the terms of engagement established by the UK and the EU to ensure that all UK agencies are kept aware of matters arising from COVID identified there. To date, this is more about general threats rather than specific action affecting the UK and vice versa. Close liaison is being kept with partner agencies, for example, the Office for Product Safety and Standards.

The UK has stated that it is currently looking at possibly changing its exhaustion regime. Could you tell us more about it?
Now that the UK has left the EU, the UK has the regulatory freedom to choose its own exhaustion of IP rights regime. We recognize that the issue of exhaustion of IP rights is important for businesses given it underpins the system of parallel trade.

The government will be conducting a consultation to determine what the most appropriate exhaustion regime for the UK will be and to understand how any changes should be implemented. The government will consider the evidence from the consultation, and if there is to be a change, the government will look to introduce legislation to Parliament if necessary. We will, of course, let stakeholders know when this consultation has been published. We encourage businesses, civil society organizations, and consumers to contribute and welcome evidence on this important topic.

INTA’ Presidential Task Force this year is focused on diversity, equity, and inclusion. We understand this is also a subject close to the UKIPO’s heart. What measures have you put in place to foster DEI at the UKIPO? Any milestones or challenges worth mentioning?
The UKIPO has a strong track record on DEI and we have had a number of successes in external benchmarks: Top 10 Working Families; Top 25 Stonewall; Gold in MIND index.

The UKIPO has had an increased focus on closing its gender pay gap. The action plan concentrates on four key areas but also looks at other characteristics other than gender: awareness and candidate experience; review of internal processes and procedures to remove unintended bias; outreach to promote the UKIPO as an inclusive employer; and returners from career breaks.

We have progressed in a number of areas. A new, more inclusive recruitment policy has been established, with gender-neutral language, where strict requirements and “desirable skills criteria” are discouraged to allow applicant diversity and focus on the candidate’s capacity to learn, and where testing of applicants is specific to the level of job applied for. The UKIPO has seen more diverse results from recent recruitment exercises as a result.

The UKIPO focuses on equality, using alternative advertising media to access specific skills or specific communities, and organizing open events to promote opportunities to work at the office.

We combine fixed-term appointments with onboarding, career development, and internal mobility programs. The UKIPO will also reflect on how to improve its work-from-home policy to come up with a hybrid and flexible system for staff. The UKIPO agreed to share its experience with the IP profession on diversity and inclusion for recruitment and social mobility.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.