Patent applications require detailed analysis by Patent Office Examiners and this can take a long time to complete, especially where backlogs exist for popular technologies. It is not uncommon for a patent application to remain pending for three or four years before proceeding to grant. In most cases, a significant delay between filing a patent application and obtaining a granted patent is not a problem. Indeed, in many cases it can be advantageous to allow the application to progress slowly. This allows expenditure of costs and decisions regarding the direction of the application to be extended over a long period of time.
Nevertheless, there are a number of possible reasons that acceleration to grant is desirable. One such reason is that there may be a potential infringer on the market. It is not possible to enforce a patent until it grants. Fortunately, the UK Intellectual Property Office (UKIPO) offers a range of acceleration options.
“Patents Fast Grant”
It is possible to request acceleration of the search and/or examination procedure for free at any time under the UKIPO’s “Patents Fast Grant” procedure. This request is at the discretion of the UKIPO and justification is required. Possible reasons for acceleration may include: a potential infringer on the market (as mentioned above); need for a granted patent to secure an investor; and need for a granted GB patent to serve as a basis for making use of the Patent Prosecution Highway in other territories.
Applications that are directed to technology that has some environmental benefit may be accelerated via the Green Channel. The UKIPO exercises discretion on access to the Green Channel but does not conduct significant investigation into the environmental submissions made to gain access to the Green Channel. They will, however, reject any submissions that are clearly unfounded.
“Fast Track” for PCT(UK)
If an International (PCT) application has received a positive Written Opinion, or if International Examination of the PCT application has been requested and resulted in a positive opinion, the UK national phase of the PCT application may be accelerated using the “Fast Track”. Early processing of the application may also be requested to avoid having to wait for the 31-month UK national phase entry deadline.
Patent Prosecution Highway (PPH)
If the claims of the UK patent application match the claims of an equivalent patent application granted at a participating overseas office, the PPH may be used to accelerate the application. This is only possible if examination of the UK application has not yet begun. A granted UK patent may be similarly used to accelerate equivalent applications at participating overseas offices using the PPH.
There are also ways that UK applications can be accelerated, independently of any of the options mentioned above. Unlike the above options, the applicant may not be required to meet any specific conditions to accelerate their application. However, the UKIPO may require adequate written justification.
Combined search and examination
Requesting search and examination at the same time (for example, on filing the application) will result in a combined search and examination report within around six months. This allows examination of the patent to begin much earlier. Moreover, early indication of the prior art and likelihood of success of the patent application can be extremely useful so that decisions can be made on filing equivalent applications overseas.
A patent cannot be granted until at least three months after publication so early publication can bring the grant of the patent sooner. It may be beneficial to request early publication before a positive opinion is received in order to speed up the process, especially if the details of the invention were made public soon after filing the application. This also provides an additional period of “provisional protection”, which can increase damages awarded in any subsequent infringement proceedings.
If an accelerated path to grant is of interest for your UK patent application, please contact your usual Boult Wade Tennant adviser.