Expediting Prosecution of UK Patent Applications
Patent protection may be obtained in the UK either by filing a European patent application with the European Patent Office and then validating a granted European patent in the UK, or by filing of a UK national patent application with the UK Intellectual Property Office (UK IPO). It is possible to file a UK patent application directly with the UK IPO, with or without a claim to priority from an earlier (e.g. foreign) patent application, or to enter the UK national phase from a PCT application.
The official fees payable to the UK IPO for prosecution of a UK national application are much lower than those payable to the EPO for a European application, and renewal fees are not payable until after grant. Accordingly, filing directly in the UK provides a low cost alternative to obtaining patent protection in one of the major European markets, while still offering a detailed search and examination process.
There are various options available for expediting prosecution of UK patent applications if an early grant is desired for commercial reasons. It is in principle possible for a UK patent to be granted within 1-2 years from filing if active steps are taken to speed up prosecution. There are no additional official fees applicable for expedited prosecution.
Options available for expediting prosecution of UK patent applications include:
- Requesting Combined Search and Examination (CSE). Requesting CSE on filing of a UK national patent application allows for issuance of an earlier opinion on patentability and for arguments and amendments to then be filed in response at an earlier stage in prosecution. A CSE request may be filed together with an acceleration request (see below) to speed up issuance of a first search and examination report.
- Requesting early publication. If very fast grant is needed, early publication may be requested in combination with other steps being taken to accelerate search/examination. Publication is necessary before a case can be sent for grant to allow for the necessary 3 month period for third party observations after publication. No specific reason needs to be given in a request for early publication.
- Filing an acceleration request. If acceleration is granted, the IPO have a two month target for issuing a next action. The IPO will accept an acceleration request citing valid reasons justifying acceleration. Reasons that may be accepted (more than one could be given) include a possible infringement, a need for grant to secure licensing/funding/investment, a need for a UK patent for use as a basis for PPH (see below) elsewhere. An accelerated search can be justified by a need to identify prior art before considering proceeding with examination. One scenario where an acceleration request may not be accepted is where there has been a previous delay in procedure on the part of the applicant e.g. only requesting search at the end of the priority year.
- Requesting entry into the Green Channel. A written request may be made for a patent application to enter the green channel, which is subject automatically to acceleration by the IPO if accepted onto the channel. The request may be for any or all of the application process to be accelerated. The green channel applies to any environmentally friendly technology, which in principle includes any invention that improves efficiency or provides an energy saving. The written request should include a reasoned assertion of environmental benefit. The timescale for processing by the IPO in the green channel is the same as for acceleration requests.
- Using the PCT(UK) Fast Track. This applies only to UK national phase applications (i.e. derived from a PCT application) and must be requested before the start of UK examination. The fast track requires that the claims filed in the UK national phase sufficiently correspond to one or more claims indicated as acceptable in the WOISA/IPRP (International search report/examination report). The timescale for processing is the same as for an acceleration request.
- Using the Patent Prosecution Highway (PPH) based on a foreign patent. The UK IPO are part of the global PPH highway enabling PPH in the UK based on patents granted by 25 other partner offices, including the US, Japan and most major national patent offices. The UK IPO also has bilateral PPH agreements with China and Brazil.
Please speak to your usual J A Kemp contact if you have any questions regarding filing of a UK patent application and expedited prosecution in the UK.