08/04/2013
The UK Intellectual Property Office (UK IPO) typically takes three to four years to grant UK patents. This works for applicants who are happy to stake their claim to an invention but defer examination costs while they develop the technology. For applicants who want their applications to progress more quickly, the UK IPO has a range of provisions and examiners are keen to help.
Search reports are routinely issued within four months from receipt of an application with a request for a search – sooner than in many other jurisdictions including Europe and the US. Where the application is also filed with a request for examination, the examiner will issue a combined search and examination report, giving an early indication of the patentability of an invention well before a decision needs to be made on whether to seek protection for the invention outside the UK.
Requests for accelerated search and/or accelerated examination submitted after filing are usually well-received, provided a suitable reason is given, such as the applicant is seeking investment for the technology, is aware of a potential infringer, or intends to use the Patent Prosecution Highway (PPH) to accelerate examination of applications pending at the US, Japanese, Korean, German or Canadian Patent Offices. The quick turn around of the UK IPO in preparing combined search and examination reports (whether a request for accelerated examination is filed or not) makes them extremely useful in accelerating examination in other countries under the PPH scheme.
Accelerated search and examination is also available under the Green Channel for UK patent applications relating to inventions for environmentally-friendly technology. Allocation to the green channel often leads to a significantly quicker processing of applications, particularly where communications from the examiner are answered promptly.
Requesting early publication of applications helps to reduce the time to grant as well as putting competitors on notice and potentially setting the damages meter running early.
Provisions are also available for accelerating the UK national phase of international (PCT) patent applications which have received a positive international search report and patentability opinion.
These measures are also available to applicants based outside the UK. Filing a UK application as well as an application at the home IP Office can be a very cost effective way to get an early indication of the novelty of an invention before committing to the higher cost of an international application and/or national filings in other countries.
Contact us for further advice on how to get the best from the UKIPO and how to work with examiners to fast-track applications for key inventions.
UK IPO Resources:
- Fast Grant Guidance – http://www.ipo.gov.uk/p-fastgrantguide.pdf
- Green Channel for patent applications – http://www.ipo.gov.uk/p-pn-green.htm
- Green Channel FAQs – http://www.ipo.gov.uk/pro-types/pro-patent/p-law/p-accelerated/pro-p-green/pro-p-green-faq.htm
- Patent Prosecution Highway – http://www.ipo.gov.uk/p-pph.htm
- Accelerating the UK national phase of international applications – http://www.ipo.gov.uk/pro-types/pro-patent/p-law/p-pn/p-pn-fasttrack.htm
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
