How fast can you obtain IP rights? Rights and wrongs of an IP protection acceleration strategy in the UK
Prosecuting a patent application from filing to grant can be an extended process lasting, in some cases, many years. A patent application needs to be searched, published and examined before grant, and delays at the UK Intellectual Property Office (UKIPO) and European Patent Office (EPO) can mean that examination reports take years rather than months to issue.
In many cases, applicants may be happy to proceed at a reduced pace as it allows an invention to be developed and commercialised, as well as delaying and spreading out the cost of the patent process.
However, once a patent application is published, only provisional protection is in place and the applicant cannot take action against any potential infringers until patent grant is achieved. Additionally, there is a period of 12 months after a first, priority-founding application is filed during which the applicant may file patent applications in other countries of commercial interest. The filing of these further applications can involve considerable expense and receiving the results of a search report early can educate the decision of whether to seek patent protection in other jurisdictions.
Both the UKIPO and the EPO offer a range of acceleration procedures that can help applicants reach a granted patent more quickly. By requesting accelerated prosecution, it is possible to shorten many of the stages in the prosecution of both UK and European patent applications.
In this first blog post we will explore options available for UK patent applications.
The UKIPO provides applicants with the opportunity to accelerate patent prosecution using its Patent Fast Grant System. Here, a request for accelerated search and/or examination must be filed along with an ‘adequate reason’ for requesting expedited prosecution. It is also possible to request accelerated publication and a combined search and examination.
The UKIPO’s guidance on what constitutes an ‘adequate reason’ is reasonably broad and discretion is exercised when assessing the specific reasons for each request. Typically, if an applicant states that they are aware of a potential infringer or that fast prosecution is required to secure investment, then the request for acceleration is likely to be granted.
There is no official fee for requesting accelerated prosecution.
While the UKIPO aim to search all applications as soon as possible, an early search can be requested along with a suitable reason for the request. For example, a wish to study the search results before deciding whether to proceed with foreign filings would be a suitable reason.
Publication of a UK patent application occurs around 18 months after filing (or the priority date). Several formalities must be met before the publication of a patent application, including the provision of inventor details. Additionally, where early publication is concerned, it is essential that all necessary priority claims have been added to the application before a required for accelerated publication is filed.
Once early publication is requested, the publication process takes about five weeks. Applicants should note that if the application is published early, the examination fee becomes due at an earlier date than would otherwise have been the case.
A patent cannot be granted until three months after publication. So, if very early grant is desired early publication should be requested.
However, applicants should note that once their patent application is published, the technology within it becomes open for public inspection and available to challenge the novelty and inventiveness of any further patent applications they may wish to file.
There are several ways to accelerate examination at the UKIPO. Firstly, a combined search and examination can be requested when filing a patent application. In this case, the UKIPO will carry out the examination at the same time as the search and a combined report will be issued. An applicant does not need to provide any reasons for wanting to use this service.
Secondly, if after filing the application you decide that early examination would be desired, it is possible to request early examination provided that an ‘adequate reason’ is given.
Thirdly, in certain circumstances an applicant can make use of the Patent Prosecution Highway (PPH), which is explained in more detail below.
FAST-TRACK FOR PCT(UK) APPLICATIONS
Applicants can request fast-tracking of PCT applications entering the UK national phase, where all the claims were considered in the IPRP (the patentability opinion issued in the international phase) and not objected to. There is no fee for this service but the request needs to be received before examination has commenced in the UK. Once an application is on the fast-track, the UKIPO aims to issue the first examination report within two months.
THE GREEN CHANNEL
In 2009, the UKIPO introduced the ‘Green Channel’ for patent applications. This service allows applicants to request accelerated processing of their patent application if the invention has some environmental benefit. A request must be submitted in writing indicating (i) how the application is environmentally-friendly; and (ii) which actions the applicant wishes to accelerate (search, examination, combined search and examination, and/or publication).
A simple statement is usually sufficient for inventions such as solar panels or a wind turbines, however a more efficient manufacturing process which uses less energy is likely to need more explanation.
- Consider whether it is in your best interest to expedite prosecution, for example, the earlier your patent application is published the earlier the technology is in the public domain
- Request a combined search and examination when filing any patent application, if it is already known that acceleration is desired
- Review the objections raised at the international phase to see whether fast-track for PCT(UK) applications is available
- Forget to evaluate whether slower prosecution could be advantageous; there may be benefits from taking time to develop and plan the commercialisation and marketing of your invention
PATENT PROSECUTION HIGHWAY (PPH)
The PPH is an initiative operated by a group of Patent Offices around the world. It allows the examination work product from one participating Patent Office to be re-used by another participating Patent Office, providing applicants with a means of accelerating examination. To apply for PPH at the UKIPO, the same case must have been allowed or granted by another participating Patent Office.
If the applicant has a patent that has been granted by one Patent Office in the scheme, examination of a corresponding patent application at another Patent Office can be completed more quickly, as the first Patent Office has already done much of the work.
In the UK, a positive examination report from the Austrian, Australian, Canadian, Chinese, German, Danish, Estonian, Spanish, Finnish, Hungarian, Israeli, Icelandic, Japanese, Korean, Mexican, Norwegian, Portuguese, Russian, Swedish, Singaporean or US patent office can be used to accelerate examination of a corresponding UK application.
Applicants should note that PPH may not be desirable if the later Examining Patent Office is one that would be expected to take a more liberal view during examination than the earlier Patent Office. In such cases, using PPH is likely to result in a narrower scope of patent protection at the later Patent Office than might have been available through normal examination.
There is no fee for using the PPH at the UKIPO, although applicants should note that:
Examination must not have begun;
The claim set must correspond in scope, or be narrower than, the allowed or granted claims; and
At least one claim must have been found to be allowable by the first Patent Office.
- Consider PPH if you have a granted patent in another territory
- Review whether the amendments made in the granted patent may raise added matter or other objections in the UK
- Consider whether the granted patent encountered prior art that wouldn’t be citable in the UK
- Apply for PPH if examination has already begun
- Forget to review whether a broader scope of protection may be achieved under standard examination
- If you require any further information or assistance in connection with your intellectual property or the intellectual property of your business then please contact Murgitroyd. Why not subscribe to our Newsletter not to miss our second blog post in this mini series?
Speak to our attorneys to find out more.