Fast Track your UK Patent Application Through to Grant
Typically, a UK patent application takes between 3 and 4 years to reach grant, which for many applicants can be too long. There are currently a number of ways in which an applicant or a prospective applicant can shorten this period of time, depending on what stage of the patenting procedure they are at and the technical nature of the invention.
Direct Filed UK Patent Applications
These are patent applications filed or to be filed directly at the UK Intellectual Property Office (‘UK IPO’), with or without claiming priority.
Option 1: Combined Search and Examination (‘CSE’) – by filing the request for search and substantive examination at the time of filing the application, the CSE Report will typically be issued within 4 months.
A first Examination Report would otherwise be issued around 3 years after the filing date (or ‘priority date’, if there is one).
Option 2: Accelerated Search and/or Examination – if a request for a Search or Substantive Examination has already been filed, then by requesting accelerated prosecution, the consequent Search or Examination Report will normally be issued within 4 months of the request.
Such acceleration is at the discretion of the UK IPO and reasons supporting the request must be provided, for example, that infringement seems very likely to occur.
Option 3: Early Publication – a patent application cannot be granted without having been in the public domain for 3 months. Publication normally occurs around 18 months after the filing date (or priority date) of the application.
If early publication is requested, and again reasons must be provided, then the UK IPO will aim to publish the application within 6 weeks of the request.
The fastest way (though not necessarily the best way) of taking a UK patent application through to grant is by requesting all three options at the time of filing, i.e. combined search and examination, accelerated prosecution and early publication. If the applicant promptly addresses all the issues raised by the Examiner, then grant can feasibly occur well within a year.
Option 4: ‘Green’ technology – if your invention provides clear benefits for the environment, then it will be accepted for fast tracking by the UKIPO under the ‘green channel’. A request for consideration under the green channel must be made in writing to the UK IPO.
Applications designated as such can be accelerated in the same manner as that offered by options 1, 2 and 3 above.
EP(UK) Patent Applications
A European patent application is effectively the same as applying for patent protection in all 30+ members of the European Patent Convention, but only cheaper and simpler. It is thus possible to obtain patent protection in the UK via a European patent application.
If you are about to file a European patent (‘EP’) application or should you already have one pending, it is possible to accelerate the search and/ or examination stages using the ‘PACE’ program. No reasons supporting the request need be given.
Search: if the EP application does not claim priority, then there is no need to request accelerated search under the PACE program. As a rule, in such cases, the the European Patent Office (‘EPO’) ensures that all applicants receive their search reports within 6 months of the filing date.
If the EP application does claim priority, then once requested, an accelerated search will be carried out as soon as possible.
Examination: essentially this can be requested at any time, but there are also several key points at which it would be particularly appropriate to request it, for example, at the time of filing.
In brief, the EPO will aim to issue the first Examination communication within 3 months of the request, subject to certain conditions being met, for example, the Examination fee having been paid.
There are several other ways of accelerating a European application, but these have been omitted at this point for the sake of brevity.
PCT(UK) Patent Applications
An international PCT patent application is a simple and cost effective way of applying for patent protection in all 144 members of the Patent Cooperation Treaty. It is thus possible to obtain patent protection in the UK via a PCT patent application.
During the international phase, the International Search Authority carries out a search to identify prior art it considers relevant to the invention, and then to formulate a non-binding written opinion on the patentability of the invention. This ultimately results in the ‘International Preliminary Report on Patentability’. (‘IPRP’).
If the IPRP is positive, for example, only documents considered relevant to the technological background of the invention are cited, then the UK IPO will automatically accept a national phase application stemming from the PCT for fast tracking. No supporting reasons need be given.
If accepted for fast tracking, the UK IPO will aim to issue the first Examination Report in 90% of cases within 2 months of the request.
Concluding Remarks
It is thus possible to progress a UK patent application through to grant rapidly. This can have huge benefits for those applicants who, for example, determine that infringement is imminent or who are perhaps involved in licensing negotiations.
It should be borne in mind that acceleration inevitably brings forward the costs associated with the application and grant procedure.
Albright IP Ltd is a firm of professional Chartered patent attorneys, with a wealth of experience of patent prosecution before the UK IPO. We should be happy to advise you, if appropriate, on the best way of fast tracking your patent application through to grant.
