The Enlarged Board of Appeal has recently confirmed in G 2/24 that, after all appeals are withdrawn, appeal proceedings are terminated – even if an intervention is filed during the appeal. A party who intervenes only on appeal does not have the right to continue proceedings after the appeal is withdrawn.
The referring Board of Appeal in T 1286/23 sought clarification with the following question:
“After withdrawal of all appeals, may the proceedings be continued with a third party who intervened during the appeal proceedings? In particular, may the third party acquire an appellant status corresponding to the status of a person entitled to appeal within the meaning of Article 107, first sentence, EPC?”
Background – Interventions at the EPO
Under Article 105 EPC, a third party that is sued for patent infringement may intervene in EPO opposition proceedings – even after the normal 9 month opposition window – provided that the intervention is filed whilst opposition proceedings are pending (or a subsequent appeal is pending). This allows the third party to bring new objections and evidence into the opposition.
The Decision – G 2/24
The Enlarged Board considered the situation where an intervention was filed during appeal proceedings following opposition and then all appeals are withdrawn.
G 2/24 confirms an earlier decision in G 3/04, deciding that such an intervener could not then continue with the proceedings. The Board that referred the question in G 2/24 questioned this approach and indicated an intention to deviate from G 3/04. However, in G 2/24, the Enlarged Board concludes that the legal situation has not changed substantively since G 3/04 in respect of the relevant provisions, and that the conclusion given in that decision still applies.
The Enlarged Board confirms that an appeal is a judicial review of the decision under appeal and is not a mere continuation of opposition proceedings. The principle of party disposition is also reiterated, in that the party has the right to withdraw an appeal (and the Board itself has no right to continue). Under Article 107 EPC, an appeal can only be filed by a party to the original proceedings that is adversely affected by the decision.
This reasoning led the Enlarged Board to decide that the intervener did not have the status of appellant and did not have further rights beyond a non-appealing party in respect of continuing proceedings.
As a result, if the sole appeal is withdrawn (or, should there be multiple appellants, then if all appeals are withdrawn), an intervener that only files an intervention on appeal does not have the right to continue with the proceedings.
Strategic Implications
G 2/24 gives patent proprietors more control over appeal outcomes when they are the sole appellant. For example, if an intervention on appeal raises new issues, the proprietor may opt to withdraw the appeal if they are the sole appellant. With the appeal terminating, this may allow the proprietor to fall back on an amended form of the patent maintained after opposition.
From the intervener’s perspective, it may be more beneficial to intervene in opposition proceedings rather than only on appeal. Whilst the ability to intervene will be determined by the proprietor bringing infringement proceedings, the third party may pre-emptively file an opposition in the first place (which may be filed anonymously).
In any case, intervening on appeal may still be a useful tool. For example, this may force the proprietor to withdraw the appeal and limit the patent to narrower claims.
G 2/24 therefore provides legal certainty confirming that interveners on appeal cannot continue with appeal proceedings once all appeals are withdrawn. This has implications for strategic decision-making in both opposing and defending patents at the EPO.
If you have any questions about your opposition strategy, please contact a member of our team.
We are delighted to announce that Partners Edd Cavanna, Max Thoma and Harry Rowe have been named as 2025 Rising Stars.
The Managing IP Rising Stars guide recognises leading intellectual property practitioners across more than 50 jurisdictions and a wide range of IP practice areas. This prestigious list highlights professionals who are making significant contributions to the field and showing strong potential for future leadership in the industry.
Each year, Managing IP conducts extensive research to compile its rankings, drawing on feedback from IP practitioners, firms, and clients. The process includes detailed surveys, interviews, and an independent analysis of publicly available information, ensuring that the rankings are rigorous and impartial.
Managing IP identifies Rising Stars who have demonstrated exceptional work within their firms and in the broader IP landscape. Being named a Rising Star is a mark of recognition for consistent, high-quality performance and is considered a notable achievement.
For more information on the Mathys & Squire rankings, visit the IP Stars website here.
27.3% of all applications filed at the European Patent Office (EPO) in 2024 originated from China, Japan, and Korea. Almost all of such applications claim priority from patent applications filed locally in those countries, which are normally prepared and filed in the local languages. This means that the content of such applications must be translated into an EPO official language (normally English) either when a corresponding European patent application is filed or a PCT application enters the regional phase.
The intricacies of translation
Translation issues can invalidate patents in Europe. Priority claims are only valid if a priority document contains a clear and unambiguous disclosure of a claimed invention. This is a very strict test and minor differences in language can lead to allegations that a claimed invention was not disclosed in an earlier priority application.
Similarly, when a European patent application is derived from a PCT application, whether or not matter is added during prosecution is judged against the content of the original PCT application rather than the content of a translation filed on entry to the regional phase. Again, the EPO’s test for added matter is a strict one – did the original PCT application contain a clear and unambiguous disclosure of a claimed invention? Minor changes in language can result in a patent application failing such a test.
Whenever such issues arise, the EPO is forced to consider the content of documents written in languages other than the working languages of the office. When dealing with languages such as Chinese, Japanese and Korean which are far removed from the European languages with which the EPO is normally familiar, knowledge of how languages work and the quality of translations used can become crucial.
The Opposition against EP2022349
The Opposition against EP2022349, filed by seven Opponents, illustrates how unsatisfactory translations can jeopardise the validity of patents before the EPO.
EP2022349 relates to an early vaporiser design for electronic cigarettes. The patent was involved in litigation in the UK and Germany among various e-cigarette companies in the mid-2010s because it represents an early example of an e-cigarette patent which covered modern e-cigarette designs.
The patent was based on a PCT application WO2007131449, originally drafted in Chinese. Unfortunately, the Chinese text itself was less than satisfactory, and the English translation submitted on entry into the European phase was also of limited quality. This later led to numerous added matter issues under Article 123(2) EPC.
Translation issues and Added Matter disputes
Air Inlet(s)
The Opponents objected that the application did not disclose an electronic cigarette having a single air inlet. The patentee explained that the Chinese characters 进气孔used to refer to the air inlets in the original Chinese implicitly referred to “one or more air inlets” because in Chinese if a specific number of air inlets was to be intended this would need to be made explicit in the Chinese (e.g. 一个进气口 one air inlet or 两个进气孔 two air inlets).
“Perforated” vs “Porous”
The original translation rendered a key term 多孔 (“Duo Kong” two characters literally having separate meanings as “many” and “holes”) as “perforated,” later corrected to “porous.” The Opponents objected that this correction introduced added matter, a point that was upheld by the EPO in a related divisional case.
“Frame” vs “Support Member”
The Opponents objected that 架体 ( “Jia Ti” two characters literally having separate meanings as “frame” and “body”) had a restricted meaning of “frame” and that the translation of 架体 as “support member” added matter.
Conjunctions and Prepositions
Even small linguistic nuances triggered disputes. For example, the location of the air channel in the claim was objected to with an Opponent contending that the original Chinese referred to the air channel being located “in the centre on one end surface of a cigarette holder shell” rather than “in the centre of one end surface of a cigarette holder shell”. This objection was refuted by the patentee with an explanation that in the original Chinese it was clear the central air channel was located in the centre of the surface of the cigarette holder shell.
Resolution and practical lessons
Ultimately the EP Opposition against EP2022349 ended without a formal conclusion on these translation disputes, as the case was withdrawn prior to a final decision. Nevertheless, the case provides a valuable example of issues which can arise when an inaccurate translation is used as well as the manner in which such objections may be overcome – in this case affidavit evidence was filed to explain the differences between English and Chinese.
The EP2022349 Opposition is a cautionary tale for patentees, attorneys, and translators alike. Above all, it reinforces the importance of investing in precise translations and expert linguistic input at the earliest stages of international patent prosecution.
We are delighted to announce that Mathys & Squire has been commended in the 2026 edition of The Legal 500 in both PATMA: Patent Attorneys and PATMA: Trade Mark Attorneys categories.
Patent Partners Chris Hamer, Alan MacDougall, Martin MacLean, Paul Cozens, Andrea McShane, Dani Kramer, Philippa Griffin, James Wilding, Sean Leach, James Pitchford, Andrew White and Managing Associate Oliver Parish are all featured in the 2026 edition of the directory.
Mathys & Squire’s trade mark team also received recognition in the directory. From our trade mark practice, Partners Rebecca Tew and Harry Rowe, Gary Johnston, and Consultant Margaret Arnott have been featured in the 2026 edition.
The firm received glowing testimonials for its patent and trade mark practices:
‘The Mathys team is easy and a joy to work with. They have the experience and requisite background to digest complex scientific matters and undertake well-done patent prosecution. I quite enjoy strategizing together and our collaborative efforts. They are pleasant and appropriate in communications, as well as responsive.’
‘Dani Kramer is a pleasure to work with. He is sharp, provides excellent and cost-effective advice and professional services.’
‘I work with the team around partner Sean Leach, who is exceptionally responsive and technically highly competent, as is his team. Pleasant to work with, always transparent, flexible – highly recommended.’
‘Sean Leach is highly skilled technically, a great communicator, an excellent patent attorney, very experienced and very responsive.’
‘Paul Cozens as a standout partner, and Oliver Parish has impressive technical knowledge.’
‘Fantastic team work from an absolutely top-notch team.’
‘Very skilled and knowledgeable.’
‘They are absolutely committed to working with the customer. James Pitchford is outstanding with his knowledge and ability to apply it to IP writing.’
‘They have exceptional experience and expertise.’
‘They are a go to firm for EPO consultation.’
For full details of our rankings in The Legal 500 2026 guide, please click here.
We extend our gratitude to all our clients and connections who participated in the research, and we extend our congratulations to our individual attorneys who have earned rankings in this year’s guide.
Partner Nicholas Fox has been featured in an exclusive titled “Uptake of Unitary Patents Almost A Third of EU Total” in Law360 and “Report reveals unitary patent strategy of IT and engineering leaders” in the World Intellectual Property Review. This is following Mathys & Squire’s recent report, The Use of the Unitary Patent System in IT & Engineering by Partner Nicholas Fox and Associate Maxwell Haughey.
In these articles, Nicholas Fox offers deeper insights into why industry players within the field of IT & Engineering are becoming more open to the Unitary Patent system, whilst noting that some may still remain cautious on account of certain factors such as the likelihood of patent disputes and the cost of translation.
Read the extended press release below.
EU’s new unitary patents now account for 28% of all new patents granted – but major companies split on patent strategy
The EU’s new unitary patents (UPs) now account for 28% of all European patents granted in 2025 to date, up from 26% last year and 18% in 2023*, says leading intellectual property (IP) law firm Mathys & Squire LLP. Of the 19,000 European patents granted in 2024, 5,300 were maintained as UPs rather than as a bundle of national rights.
Mathys & Squire says that the Unitary Patent System, introduced in 2023, is cost-effective if the objective of patent proprietors is to obtain wide geographical protection in Europe. The cost of maintaining a Unitary Patent is roughly equivalent to the cost of maintaining patent protection in four European countries whilst giving inventors a single patent that applies to eighteen EU member states.
In some circumstances unitary patents can, however, be riskier than maintaining rights as a bundle of national patents. The primary risk is that a single court decision could see the patent revoked in all countries where it has effect.
According to Mathys & Squire’s Use of Unitary Patent System: IT & Engineering report, uptake of UPs varies significantly by technical field. The highest uptake of UPs is in civil engineering, where 39% of European patents granted in 2024 were maintained as UPs, up from 28% in 2023. Within the sectors sampled, the Defence sector had the lowest uptake with only 11% of defence patents granted in 2024 being maintained as UPs, that being an increase from 6% of patents granted in 2023.
Nicholas Fox, Partner at Mathys & Squire and European Patent Attorney, explains that uptake of UPs is typically lower in sectors requiring patents in only a few countries. The Oil and Gas sector is a good example of this. In many cases, oil and gas companies tend to only need patent protection only in the North Sea and hence often only in the UK and Norway. Such companies gain little from using UPs. Businesses in sectors needing broader geographical protection benefit more.
Says Fox: “In many sectors, Unitary patents are fast becoming one of Europe’s main patent types. They’re increasingly displacing the old ‘bundle’ system that requires separate validation in each country. They can be a cost-effective way of securing broad geographic protection for an invention in Europe. Adoption of unitary patents is, however, uneven across different technologies and amongst different companies even when companies operate in similar fields.”
Small businesses make proportionally greater use of unitary patents than large businesses
The slow uptake of UPs in some fields is partly due to translation requirements. In many IT and Engineering fields (e.g. telecoms), European Patents are typically maintained in countries where full translation isn’t needed, including the UK, Germany and France. Maintaining rights only in these countries can be sufficient for many companies operating in these fields.
The need for full translations to obtain a UP can be a significant factor behind the slow adoption rate of UPs in IT and Engineering. For companies with large portfolios, costs can mount up, as patents prosecuted in German or French must be translated into English, and those in English must be translated into any EU language.
This is backed up by research which finds that small and medium sized enterprises (SMEs), who normally have far smaller patent portfolios are making greater use of the unitary patent than large businesses. SMEs accounted for just 23% of European patent filings in 2024 but obtained 36% of all UPs. Large businesses accounted for 69% of all European patent filings but only 57% of UPs. Universities and public research organisations account for the remainder of filings and UPs.
Fox says another reason for lower uptake among large businesses is uncertainty over the role of the new Unitary Patent Court (UPC). The UPC centralises patent disputes in a single court with authority across Europe. However, Fox says these concerns should ease as the court builds a track record of high-quality and predictable rulings.
Adds Fox: “Small businesses appear more enthusiastic about the new unitary patent system. The annual renewal fees to maintain multiple national patents account for a bigger share of their budgets than for large businesses.”
“Some large companies have taken a wait-and-see approach to the UPC. The UPC’s rulings have been consistent so far, giving businesses greater confidence in the system. We therefore expect large businesses to gradually increase their use of the unitary patent system.”
“Businesses are still weighing the costs and benefits of the new system. Broad European coverage can be attractive, but in fields with more frequent disputes, the risk of one court deciding everything across Europe is enough to make them hesitate.”
Leading businesses in tech and engineering take sharply different approaches
Mathys & Squire’s research shows significant variations in UP uptake in different sectors and between companies operating in the same sector.
In Automotive and Aerospace, Mercedes-Benz and Airbus have obtained UPs, while BMW, Boeing and Rolls-Royce have yet to meaningfully engage with the new system. Across the wider transport sector, UPs made up 21% of all European patents granted in 2024, up from 14% in 2023.
Similar variations are to be found within the Defence sector. Overall, engagement with the Unitary Patent system in the Defence sector has been limited with only 10% of European Patents in the sector granted in 2024 being maintained as UPs. Many Defence companies have either not engaged at all with the new UP system or have been highly selective in doing so. By way of example, only 6% and 3% of European patents granted in 2024 to Leonardo and Rheinmetal respectively were maintained as UPs. In contrast, BAE Systems chose to maintain 36% of their patents granted in 2024 as UPs and ThyssenKrupp chose to maintain all its European patents granted in 2024 as UPs.
In Digital Communications, UP uptake has also lagged, climbing from 11% in 2023 only to 18% in 2024. Ericson, and Samsung each converted large numbers of their European patents into Unitary Patents. But as with other areas of technology there is significant variation amongst the biggest filers. Some companies, like Lenovo, maintained all of their European patents granted in 2024 as unitary patents, while Google and Microsoft obtained no unitary patents and instead maintained their European patents as bundles of national rights.
The research also shows some large companies vary their level of engagement strategies across different technologies. For example, Qualcomm maintained roughly two-thirds of its semiconductor patents as UPs in 2024. But in the field of digital communications, the share of patents maintained by Qualcomm as UPs was only 30%.
* The 2023 figure shows the share of European patents that were filed as UPs since the regime came into effect
Mathys & Squire Partners Chris Hamer and Laura Clews, and Head of Consulting Lyle Ellis have been featured in “Patents on a Plate” by Protein Production Technology International (PPTI). They provided commentary on how to protect innovations and manage intellectual property in the alternative proteins industry.
The article in PPTI highlights how intellectual property is a crucial pillar of the industry, as innovation within protein production is evolving rapidly in response to growing consumer interest in sustainable and ethical food, from fermentation-based proteins to cell-cultured alternatives. Intellectual property assets, including patents, trade marks and trade secrets, are vital in preventing competitors from exploiting your innovation, but they also play a significant role in shaping how innovation develops.
Partners Chris Hamer and Laura Clews discuss how recent years have seen food companies demonstrating a greater recognition of the importance of IP, for example in attracting investors, as well as the necessity of a robust IP portfolio, spanning multiple jurisdictions, for start-ups in the industry. Head of Consulting Lyle Ellis touches on the tricky balance between maintaining exclusivity and ensuring that key technologies are accessible to others in the sector, evaluating the trade-off between patents and trade secrets.
You can read the full article here.
Partner Max Thoma has recently been featured in Law360 discussing the recent proposal by the UK Government to limit AI generated design applications in ‘Sweeping UK Reforms A Mixed Bag For Simplifying Designs’.
In the article, Max discusses how applicants have previously been able to apply for IP protection on design that have solely been created by AI. The new ruling would aim to prevent the UK design system becoming overwhelmed by a large number of applications, and ensure human-created designs do not have difficulty in being validly registered as a result.
Read the extended press release below.
The UK Government is proposing to change the law to prevent a flood of requests for the registration of completely AI generated designs says intellectual property (IP) law firm Mathys & Squire.
The proposal comes as part of a wide-ranging consultation launched by the Government on the intellectual property laws related to designs. Registering designs with the Intellectual Property Office can protect the appearance, shape or decoration of a product from being copied.
Unlike in other areas of intellectual property, UK design law contains provisions that allow protection for designs entirely generated by computer and without a human “author”.
Max Thoma, Partner, of intellectual property (IP) law firm Mathys & Squire comments: “The Government is worried by the possibility that the UK design system could be flooded with thousands of AI generated design applications. In theory AI tools churning out designs that are then registered could block new products from entering the market and make it more difficult for human-created designs to be validly registered.”
The consultation also proposes the introduction of an examination process for registered design applications in some circumstances. This would mean that some design applications will need to be reviewed and approved by the Intellectual Property Office.
Max Thoma says that this change is being proposed as some designs were being registered when they were invalid. In some cases businesses had been using those invalid design registrations to request the removal of a competitor’s product from online shopping sites.
There are number of other proposals in the consultation document including a proposal to make it easier to register animated designs.
Head of Trade Marks and Partner Claire Breheny has been featured in The Grocer providing insights on the growth of the non-alcoholic drinks industry in publication, ‘Non-alcoholic beer and cider trademarks on the increase’.
In the article, Claire provides commentary on how the preferences of the younger generation is a significant factor in the growth of the non-alcoholic drinks industry, and how recent trade mark applications is a direct indicator of this shift.
Read the extended press release below.
The number of new UK trade mark filings for non-alcoholic beer and cider surged 20% to 1003 from 833 and 19% to 515 from 433 respectively in the last two years*, says Mathys & Squire, the leading intellectual property law firm.
Mathys & Squire says that the number of new alcohol-free trademarks and brands being launched reflects the growing importance of the segment to the drinks industry.
In 2024, non-alcoholic beer trade marks accounted for 37% of all 2737 beer trade marks and 66% of all the 782 filings for ciders.
These figures show that non-alcoholic brands are on the rise as beverage companies continue to respond to demographic shifts around alcohol consumption.
This surge in non-alcoholic drinks reflects a decline in alcohol consumption by Generation Z (those born between 1997 and 2012), which has a higher proportion of individuals who prefer alcohol-free options.
Many young people in Generation Z are choosing non-alcoholic options to align more with their healthy lifestyles spurred on by celebrity influencers such as Spiderman actor Tom Holland.
Also, the UK’s growing diversity means many consumers abstain from alcohol for cultural or religious reasons. These lifestyle and demographic shifts are increasing demand for alcohol-free beers and ciders.
People often choose non-alcoholic beers and ciders, as opposed to standard soft drinks, as they allow them to socialise with others who are drinking alcohol without feeling excluded.
Beverage companies are innovating in the non-alcoholic sector to meet this new demand and protect profit margins amid slower growth in the alcoholic beverage market. In the last two years, alcoholic beer and cider trade mark filings grew 7% and 6%, respectively.
Claire Breheny, Head of Trade Marks at Mathys & Squire says: “The surge in trade marks for alcohol-free drinks underlines how quickly businesses are responding to the shift in consumer priorities. By drinking less alcohol, the younger generation are redefining the R&D and marketing spend of the drinks industry. You can see the impact of that in any supermarket.”
“Companies that fail to innovate in this emerging alcohol-free space fear missing out on one of the fastest-growing areas of the industry.”
New 0.0% branding allowing big brewers to advertise at prime time
Leading brewers such as Heineken, Carlsberg, and Guinness have all launched 0.0% ranges. Alcohol-free drinks give these brewers access to prime-time advertising and sports sponsorships that are off-limits to alcoholic products under current advertising rules.
Retailers and hospitality venues have responded to the alcohol-free surge by expanding shelf space and boosting visibility for alcohol-free products in stores, bars and restaurants.
Adds Claire Breheny: “The surge in trade mark filings suggest where the market is heading.”
We are delighted to announce our partnership with MassChallenge UK, a global network for startups and innovators. Through this collaboration, we will provide our intellectual property expertise to assist with the development of patent strategies for early-stage businesses.
MassChallenge UK is an international zero-equity startup accelerator, enabling businesses to make a meaningful impact in their industries. Our partnership will bring our specialist knowledge to the impressive network of entrepreneurs at MassChallenge UK, helping to foster innovation and support the startup ecosystem.
Through our involvement with MassChallenge UK, we will encourage the growth and development of each business through vital intellectual property advice, helping founders to avoid common IP pitfalls and create strong foundations for long-term value creation.
We will deliver tailored workshops, provide 1:1 guidance for specific patent-related challenges across a diverse range of sectors, and, beyond individual support, offer thought leadership and strategic insights to the wider MCUK community.
Partner Paul Cozens said: “We’re delighted to be supporting MassChallenge UK and its inspiring cohort of founders. Protecting and leveraging intellectual property is essential to long-term innovation, and we’re proud to help startups build resilient businesses underpinned by strong legal foundations.”
David Kinsella, Managing Director at MassChallenge UK, added: “We’ve seen firsthand how crucial IP understanding is for early-stage startups. This partnership with Mathys & Squire brings invaluable expertise into our programme, enabling our founders to make confident, informed decisions about their innovations and the impact they’re creating.”
Find out more about the partnership on their website here.
As London hosts DSEI UK, one of the world’s largest defence trade shows, a look at how the patent system deals with matters of national security.
Each year, a very small number of patent applications are classified as secret and vanish into the patent system without trace, re-emerging perhaps only years later, if at all. What does that mean in practice? How can the idea of such secret patents be reconciled with the rationale for having patents? And can there continue to be a place for secret patents given the ways of modern innovation?
A not so secret history
Britain in the 1850s. The time of the Great Exhibition and the Crimean War. The government, having only recently set up the Patent Office, moves to halt publication of John Macintosh’s patent application for “Incendiary materials for use in warfare”, which proposes means for attacking the port at Sevastopol. The application is eventually allowed to publish, but only after the war concludes with a peace treaty. The appetite for secrecy having been whetted, the government soon passes an Act formalising the process of restricting publication of certain patent applications. And then for good measure establishes the first Official Secrets Act.
Secret patents (strictly, only ever applications) have existed ever since. Over the subsequent decades, restrictions were issued for various military innovations: artillery fuses, rifled ordnance, explosives and, somewhat alarmingly, mechanisms for synchronising a machine gun to fire through aircraft propeller blades. Later restrictions were applied to radar, atomic weapons and the hovercraft. We know of some of these secret patents because they were subsequently declassified. Many others have not been. Some perhaps never will be.
The usual reason given for preventing publication of certain patent applications was, and is, that they describe inventions which would be problematic for national security should they ever become public. This also prevented details of sensitive inventions moving abroad; no country would wish to cede a potential technological advantage to a foreign adversary. But another reason was that successive governments wanted to bolster their own national arms manufacturing industries.
This led to some friction between the Patent Office, which had initial access to the patent applications and insisted on maintaining inventor confidentiality, and the military, which wanted access to the inventions as early as possible.
Caught in the middle, inventors would sometimes be frustrated that commercial opportunities were lost because a patent had been classified. At other times patriotic (or commercial) offers of inventions would be ignored or rebuffed by the government. Compensation, when offered, was sometimes generous but not always.
All the while, the attitude to secret patents was evolving. World events influenced what was invented as much as what the government considered necessary to keep secret and for how long. The net effect tended to a ratcheting up of restrictions.
The 1930s saw arguments for abolition of secret patents entirely. Perhaps, it was argued, it would be more effective to publish all patent applications and so confuse adversaries as to what was actually being adopted. Or perhaps full disclosure would serve to suggest that there must be something even better being kept secret. Such thinking was scuppered by the onset of another world war, which prompted additional defence regulations, and the subsequent Cold War which saw a further tightening up of secrecy laws.
Once something makes it into law it can be difficult to remove. When the UK Patents Act was last fundamentally revised, in 1977, the Lords proposed removing security provisions from the Act altogether, only for the relevant sections to be promptly re-inserted by the Commons. “We can go on living with it for the time being,” was one legislator’s observation. And so we do.
Secret patents in practice
The process at the UK IPO for handling secret patents is governed by sections 22 & 23 of the UK Patents Act (1977), which allows for patent applications deemed “prejudicial to national security” to be withheld from publication. Not only the application, but the information disclosed within it. The process is both universal and unusual, in that all UK patent applications are subject to it, at least initially, but the latter stages are so rare that most patent attorneys are unlikely ever to encounter them.
Every patent application filed at the UK IPO – whether national, European or international PCT applications – is routed via “Room GR70”. There, one of a small team of patent examiners reviews the contents of the application and consults a document provided by the Ministry of Defence. In the vast majority of cases, patent applications proceed as normal. Very occasionally, however, an application takes a different path.
These applications are marked according to their perceived sensitivity (Official, Official Sensitive, Secret or Top Secret, with possible additional caveats) and subsequently searched and examined in the usual way, but otherwise, while the restrictions are in place, they remain in a form of patent purgatory: they cannot be published, so they cannot be granted.
While the decision to issue a secrecy direction lies initially with the UK IPO, ultimately it is for the government to decide whether or not to maintain it. Reviews are done periodically, but for the applicant the process is opaque; the restrictions may simply be lifted at any time.
Once a section 22 direction has been issued, the resulting restrictions are onerous and the overheads considerable. Patent attorneys require the relevant level of security clearance to work on such applications, and their offices need to be suitably secure. It is forbidden to communicate the content of the application to others without permission. Breaching the restrictions is a criminal offence, punishable by fine and/or up to 2 years imprisonment. Permission must be sought to discuss the subject matter for commercial purposes or for filing related patent applications abroad.
Unless the government sees fit to declassify a secret patent the restrictions remain in place, essentially in perpetuity. The only way to discharge the responsibility for keeping secret the related papers is to withdraw the patent application.
Secret patent technologies
The term “prejudicial to national security”, which determines which patents become secret, is not precisely defined. Some technologies (such as those relating to nuclear, chemical and biological weapons) are self-evidently problematic, but others become so as technologies and threats evolve. Previous concerns about IEDs are now worries about drones and AI. A partially redacted version of the list made public over a decade ago detailed over 40 categories of technology, some likely expected (“fighting vehicles”), some somewhat vague (“specialist surveillance devices”), others remarkably specific (“accelerometers of accuracy better than 10-3g”). The contents of the full list, however, are classified.
Despite the seemingly broad scope of the restricted technologies list, the bar for an application to be classified appears to be high. Even a brief search of a patents database will show many applications with an explicitly stated military purpose, albeit an applicant simply stating that an invention is of relevance to the military does not necessarily make it so. And some applicants, wary of the restrictions which might be imposed, deliberately avoid describing their inventions in ways which may result in their patent applications being classified.
Secret patents by numbers
Inevitably, there is limited information on the number of secret patent applications. From the limited statistics reported by the UK IPO, it issues a secrecy direction on average once a week, a tiny fraction of the approximately 20,000 patent filings it handles each year (so unlikely to be a good metric for assessing the current state of innovation in the defence industry). Unsurprisingly, the vast majority of applications issued with such directions are filed by defence industry applicants, directly to the secrecy office.
Of all the patent applications filed since 2000, 1,755 were subject to secrecy directions, of which 1,100 of these directions remain in force. Meanwhile, 1,255 applications were declassified. The rate of declassification has evidently decreased sharply over the last couple of decades. However, since the total number of secret patents, including those which pre-date 2000, is not publicly known, it is unclear whether this decrease is because off an increased emphasis on secrecy or simply a result of fewer secret patents remaining to declassify. Restrictions on some particularly sensitive applications, such as those relating to the development of nuclear weapons, have reportedly been in place for over 80 years and are expected to remain so indefinitely.
The future of secret patents
Secret patents have a long history. But is there a place for them in the present world? The style and pace of military innovation has changed greatly since secret patents were first introduced. Barriers to entry are lower. There is less reliance on bespoke heavy engineering, more on software and AI. Many technologies are dual-use rather than exclusively military. What is proving most “prejudicial to national security” is now often based on commercial off-the-shelf products, many of which are cheap, easily available and able to be rapidly deployed in response to changing circumstances. Digital technologies have also allowed technology to be easily, widely distributed. There has been a democratisation of military technology. Innovation is (yet again) outpacing and side-stepping legislation.
So what purpose do secret patents serve? How effective have secret patents been in preventing the dissemination of technology? They are, in a sense, an attempt by governments to prevent genies from escaping their bottles. The list of proscribed technologies is very broad. There are very many bottles; is it realistic to expect to stopper them all? Historically, the significance of some inventions has been under-appreciated. In truth, while we may wish that certain inventions should not be widely available (see nuclear weapons), it is probably wishful thinking that they will remain so (see nuclear proliferation). Neither do secret patents prevent independent invention. Or espionage. What they do provide is a sense that a tide is being held back. More reassurance than reality.
Secret patents are an anachronism and are becoming increasingly irrelevant. They exist despite their inherent contradiction. The foundation of the patent system is a deal between the state and the applicant, wherein the state grants an exclusive, time-limited commercial rights in exchange for the public receiving a full description of how the invention works. Patents ostensibly exist to encourage the dissemination of inventions. Secret patents run counter to this ethos. Yet despite minor revisions over the years, and serious proposals to abolish the secrecy provisions altogether, secret patents persist. It seems we will need to go on living with them for the time being.
Sources
- Inventions and Official Secrecy: A History of Secret Patents in the United Kingdom, T. H. O’Dell,
Oxford University Press (1994) - UK IPO Facts and figures (2024)
- UK IPO Guidance Guidance: Technology prejudicial to national security or public safety
