How to obtain a granted patent quickly
The patent system is renowned for being slow and it can take several years before a patent application is granted. This article focuses on processes for getting applications though to grant more quickly before the European Patent Office and the UK Intellectual Property Office.
The EPO allows an applicant to request accelerated search and/or examination, under the PACE program. Following a PACE request, the EPO aims to issue a search report within six months and an examination report under three months. The EPO’s objective for applications filed after 1 July 2014 is to issue extended/partial search reports within six months, which matches the PACE timeline; thus, PACE is not generally required for searches of recently filed cases.
PACE may be requested only once during each stage of the procedure. An application will be taken off the PACE program if an extension is requested or if the application is refused, withdrawn or deemed to be withdrawn. Therefore, following a request for PACE, it is important to respond to all communication in a timely manner to prevent the application being taken off the PACE program, as a second request for PACE will not be accepted.
A European patent application filed via the PCT takes a particularly long time to grant, as there are many delays before examination of the application can begin:
- Under Articles 22 and 23 PCT, the EPO as designated office cannot process or examine the application until the 31-month deadline.
- Once the application has entered European regional phase, the R161/162 EPC communication is issued, setting a 6-month deadline for response. The application will not be searched until this period has expired.
- Following the European search report, the R70(2) EPC communication is issued, giving the applicant six months to confirm that they wish to proceed with the application.
Collectively, these can mean it is well over a year from regional phase entry to the start of examination.
It is possible to proactively take steps to avoid these time delays, though. The EPO may process or examine the international application earlier than the 31-month date following an express request from the applicant. The applicant may waive the right to receive the R161/R162EPC communication and/or to be asked under Rule 70(2) EPC whether they wish to proceed further with the application. All three of these steps may be requested on the Form 1200 when entering regional phase at the EPO.
The combination of these three steps with a request for accelerated examination under the PACE program can significantly increase the speed of processing the application. However, for this strategy to be successful, it is important that the requirements of the R161/162EPC communication are met on regional phase entry and that a timely and full response is provided at each stage.
The UKIPO has several services which allow the prosecution to be accelerated.
Combined search and examination (CSE)
Following a request for combined search and examination, the UKIPO will examine the application at the same time as the search and issue a combined report. This has the advantage that the application is examined much earlier than usual, theoretically within six months of the request.
Accelerated search and/or examination
The UKIPO will accelerate search and/or examination under certain circumstances. Search and/or examination can be accelerated under the “Green Channel” if the application relates to an environmentally friendly invention. Other acceptable circumstances include the applicant being aware of a potential infringer; faster search, examination or grant being needed to secure an investor; and faster grant in UK needed to subsequently request accelerated processing under the Patent Prosecution Highway at another office.
When accelerated in this manner, the search report can be issued in about 6 months and the examination report within 2 months of the request for acceleration.
The UKIPO enables publication to be accelerated on request. As the patent cannot be granted until three months after publication, this is an important step towards obtaining an early grant. The application will be published early, typically within six weeks from the request, provided that the search has been completed and formal requirements have been met.
Requesting accelerated search, examination and publication at the time of filing and responding promptly to reports and letter, can result in a patent being granted very quickly, for example in less than one year for a straightforward case.
As with PCT-EP applications, early national phase entry can be requested before the UKIPO.
PCT (UK) Fast Track
This fast track scheme is available if the claims have been found acceptable in the PCT international phase (i.e. the international preliminary examination report or written opinion of International Searching Authority). In this case, the applicant can request accelerated examination in the UK national phase.
The PCT(UK) Fast Track is available where the claims on file in the UK national phase sufficiently correspond to one or more claims indicated as acceptable in the IPRP or WO-ISA.
PATENT PROSECUTION HIGHWAY
Both the EPO and UKIPO are signed up to Patent Prosecution Highway schemes. PPH is beneficial if an applicant has an application allowed in a country which is a member of the PPH. The applicant may then request PPH on a corresponding application filed at a PPH partner office, with the result that the corresponding application undergoes accelerated processing, with the partner office being able to exploit the available work products (including PCT work products) of the allowed application. PPH has the advantage that once one application has been allowed, other applications in the same family may be accelerated.
The EPO is a member of the IP5 PPH programme, which consists of China, Japan, Korea, USA and EPO. The UKIPO is a member of the Global Patent Prosecution Scheme, which includes over 25 offices. The UKIPO also has a bilateral PPH programme with Brazil’s National Institute of Industrial Property.
Under the PPH scheme, an allowance on a first application is required before PPH can be requested on corresponding applications in other countries. Use of the techniques outlined in this article for accelerating processing of European and UK patent applications may be used to obtain earlier allowance of European and UK patent applications, which in turn can form the basis for a PPH request on corresponding cases in other countries.
In addition to the specific processes, adopting the right filing and prosecution strategy should not be underestimated. We recommend discussing the reasons behind seeking rapid grant with your patent attorney, so that an appropriate strategy may be formulated.
This article is for information only and should not be taken as legal advice. If you would like help with speeding up patent prosecution and achieving quick grant, please speak to one of our patents team.