Author: Adam Capewell
12 September, 2012
As of 8 June 2012, the UK Intellectual Property Office (UKIPO) has relaxed the requirement for accelerating the UK national phase of an international application using the PCT(UK) Fast Track scheme, meaning that more UK applications will now be eligible for accelerated prosecution.
Many applicants are happy for the prosecution of a patent application to progress at a steady pace. However, there are numerous reasons why an applicant may wish their application to be granted as quickly as possible, and the UKIPO provides a number of routes for obtaining accelerated prosecution of an application. One of these routes in the PCT(UK) Fast Track scheme, under which the prosecution of the UK national phase of an international application will be accelerated, upon request, if that international application received a favourable International Preliminary Report on Patentability (IPRP), or if it received a favourable Written Opinion of the International Searching Authority (WO-ISA) if the IPRP has not yet been issued. Acceleration can be requested this way without the need to provide any justification.
Prior to 8 June 2012, an application was only eligible for the PCT(UK) Fast Track scheme if all of the claims in the international application were deemed, in the IPRP, to be novel, inventive and industrially applicable. Therefore, if just one claim was deemed to be unacceptable in the IPRP, the UK national phase application was not eligible for acceleration under the PCT(UK) Fast Track, even if that claim was deleted in the UK national phase. Further, if any of the claims had not been examined in the international phase, the UK national phase application was again not eligible for acceleration.
Happily, the UKIPO has now relaxed these requirements, and an application is eligible for accelerated prosecution under the PCT(UK) Fast Track as long as the claims on file in the UK national phase “sufficiently correspond” to one or more claims indicated as acceptable in the IRPR or WO-ISA. Therefore, if there are claims that were not indicated as being acceptable, or that were not searched or examined, in an otherwise positive IRPR/WO-ISA, the application can still proceed under the PCT(UK) Fast Tack scheme if these claims are deleted in the UK national phase. For the claims on file in the UK national phase to be considered to “sufficiently correspond” to the acceptable international claims, the UK claims will need to be “of the same or similar scope as the claims found acceptable in the IPRP or WO-ISA”, or “narrower in scope than the claims found acceptable in the IPRP or WO-ISA”.
Note that the application will not be eligible for the PCT(UK) Fast Track if a claim is added in a different category from the claims of the international application. For example, if the acceptable international claims relate to a process only, adding a claim relating to a product of that process would render the UK application ineligible for the PCT(UK) Fast Track. It is, therefore, worthwhile considering having claims in all relevant categories in the international application.
Once an application has been accepted for accelerated prosecution under the PCT(UK) Fast Track, the UKIPO will endeavour to issue the first examination report within two months of requesting acceleration.
It should be remembered that even if the application is not eligible for the PCT(UK) Fast Track scheme, it may be still be possible to obtain accelerated prosecution via another route. For example, if an invention in an application can be shown to have some environmental benefit, the prosecution of that application can be accelerated under the UKIPO’s “Green Channel”. The Patent Prosecution Highway also provides a route (albeit somewhat limited) for obtaining accelerated prosecution based on the positive prosecution of corresponding applications in a small number of other countries. Alternatively, it is also possible to accelerate prosecution if you can provide a valid reason for doing so (such as if there is a strong suspicion that a competitor is infringing the claims of the application, or if the next round of investment relies on a positive prosecution of the application).