This week saw the launch of a consultation to bring in a new ‘superfast’ patenting service at the UK Intellectual Property Office, which could see applicants obtaining a granted patent in as little as 90 days.
It is already possible to accelerate a patent application, and grant can be achieved in less than one year. The superfast service would nevertheless represent a significantly faster patent grant than the current accelerated procedure.
The superfast service would be available to applicants upon payment of an official fee of around £3500 – £4000. The existing accelerated service is free-of charge.
A paid-for priority service for patent applicants is not a new idea. In December 2006, an independent review of the IPO framework published by Andrew Gowers outlined recommendations regarding fast tracking the grant of both patents and trademarks. In particular, it was suggested that applicants who wished to accelerate the procedure could do so, subject to payment of a higher fee. In setting out the details of the report the IPO stated:
‘there is no clear single fast-track procedure from application to grant […] The aim of this proposal is, in implementing the Gowers recommendation, to provide a simpler more consistent approach to accelerated processing from which will emerge a comprehensive fast-track grant process.’
The suggestions however were not implemented by the Patent Office at that time, and the matter has come up for consideration once again.
At present, the standard route of applying for a patent and pursuing it to grant can take up to four years from the date of filing, which has its obvious drawbacks. A patent can only be enforced post-grant, meaning that if an applicant becomes aware of any potential infringement of their invention, particularly at the beginning of the process, it could be a long wait until they can enforce their rights and halt the offending party in their tracks. Even making use of the accelerated procedure, an application must be published for at least three months before grant, and this can be a long wait when infringing products are being widely sold.
Intellectual Property is a competitive game, and companies with significant assets need to obtain legal rights as early as possible to stay ahead. With the proposals that have been suggested under the ‘superfast’ system, it would become undisputedly both quicker and easier for applicants to govern and defend themselves if a granted patent was accessible in just three months.
As well as this, the UK government this month introduced a tax concession for patented products, meaning that now more than ever, patents are key commercial tools.
However, although the current procedure may seem to some to be an unnecessarily lengthy one, it does exist for good reason, and the proposed superfast system may cause its own problems. For example, post-grant amendment of patents might become more common if prior art is not discovered by UK IPO examiners in the shortened time-frame.
With the added incentive from the Patent Box tax benefits, the threshold for patenting will be significantly lowered, because companies will want as much of their product to be covered by patents in order to benefit from the relief.
The consultation will run from 17th April until 12th June 2013. The results are likely to be largely influenced by potential and existing patent applicants, along with legal representatives and anybody interested in the tax benefits. The question is, will this proposal find more favour a second time around?
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