From filing to pruning, we explore the key considerations when managing your patent portfolio.
From the Green Channel to the Patent Prosecution Highway, there are many mechanisms that enable you to accelerate the progress of a patent application through the search, examination and publication stages at the UK Intellectual Property Office (UKIPO) and European Patent Office (EPO). Here’s our guide to ensuring that your applications proceed as quickly and smoothly as possible.
Firstly, it’s worth saying that not all applicants want their patents to grant early, as there are often benefits to allowing patent applications to remain pending. However, if your product is being copied, you’re in commercial discussions with investors or you want to take advantage of Patent Box tax relief, you may need to have your patent granted as soon as possible. Fortunately, while the patent application process can be very slow, there are mechanisms you can use to speed things up.
All UK patent applications (unless being filed purely for the purpose of establishing a priority date) can benefit from requesting combined search and examination at the time of filing.
The UKIPO has a two-stage examination process — a search phase and an examination phase. A patent cannot be granted until the examination phase is complete. If conducted separately, there can be a lengthy wait between the search and examination phases (up to two years). However, if the examination phase is combined with the search, the two can be completed in a matter of months and the additional cost to request examination at the same time as search is minimal. A combined search and examination report gives the applicant a more complete picture of prospects for the application.
The EPO issues a search report that already includes a ‘search opinion’, with a format more or less equivalent to a first examination report. Paying additional examination fees on a new or priority-claiming European patent application doesn't result in the examination phase commencing any sooner and therefore isn't worthwhile.
Under normal circumstances (i.e. in cases where there is no special request to speed up the application) it takes about six months after filing the application for a search report (or combined search/exam report) to issue.
In the case of PCT national phase filed in the UK, combined search and examination fees are required upon filing and the search and examination report doesn't issue in the same short timeframe as a direct UK filing. The delay to a first report can again be measured in years.
However, if it's important that your patent is granted as soon as possible, there are several mechanisms available that can reduce these timeframes. Each option provides a similar expedited treatment of the application, reducing the time to next action from years to less than three months.
Introduced by the UKIPO in May 2009, the Green Channel is available to UK patent applicants who make a reasonable assertion that their invention has some environmental benefit. If, for example, the invention is a solar panel or a wind turbine then a simple statement is likely to be enough. However, a more efficient manufacturing process that uses less energy is likely to need more explanation.
The applicant must indicate in writing which official procedures they wish to accelerate — be it search, examination, combined search and examination, and/or publication.
It’s generally assumed that accelerated prosecution is being sought to achieve grant as soon as possible. Therefore, unless mentioned in the written request, the UKIPO will query whether accelerated publication has been specifically requested. This is because since grant cannot occur until at least three months after publication to give the public a chance to make third party observations.
We generally recommend that publication shouldn’t be accelerated, at least not until after the first examination report is received and assessed. The patent file becomes open to inspection (searchable on the UKIPO website) once it’s published, so there may be a variety of commercial reasons to keep the content of the file confidential until you’re ready for it to be viewed by the public.
Assuming the application meets formal requirements and no accelerated request for publication is made, it will be published as normal 18 months on from the filing/priority date.
The Green Channel option provides a useful means of accelerating a UK patent application but is still not widely exploited, even though in some fields it can be relatively easy to present an environmental benefit.
Today, many automotive inventions have at least some ‘green’ benefits and only a plausible justification of environmental benefit is needed to take advantage of the Green Channel.
Automotive-related inventions are often concerned with improving efficiency in one form or another, such as fuel economy or lower carbon emissions. A new tyre may be made from an advanced material/composite or innovative pattern more resistant to shedding microplastics and an exhaust system could reduce the emission of toxic gases. On the low carbon side of the industry, practically any invention in the electric vehicle space could be presented as ‘green’ and likely qualify for accelerated prosecution.
Examples of accepted ‘green’ EV innovations have included:
If the claims of a patent application have been found to be acceptable by the first intellectual property office in the initial country of filing, it’s possible to request accelerated examination of a corresponding application at the IP office of a second country. This mechanism is known as the Patent Prosecution Highway (PPH). Some form of acceleration is possible for corresponding patent applications filed in most major economies, including the USA, Japan, Korea, Canada, Germany, China and Brazil.
For local clients, we can proactively recommend which accelerated services are available for any pending patent family. Overseas clients may wish to seriously consider using the UKIPO to achieve early examination and grant in order to use a granted UK patent as the basis for PPH requests in other countries. For example, filing a UK patent application at the same time as an international application under the Patent Cooperation Treaty (PCT) could result in a UK patent being granted within a year, or at least provide a test run for examination that can be leveraged by the time national phase applications are due to be filed. This may be a cheaper option than engaging in the PCT international preliminary examination system and has the added bonus that a UK patent may be granted.
In a similar way to the PPH above, a fast-track for UK examination can be requested where all claims present in the application at the time of the request sufficiently correspond to one or more claims that have been examined and found to meet the requirements for novelty, inventive step and industrial applicability in the international phase.
The fast-track request must be made before the UK patent examination has started. In practice, this usually means the request must be made when entering national phase in the UK.
In its general guidance for accelerated processing, the UKIPO website doesn’t specify any other methods of speeding up prosecution/grant. However, the examination guidelines at section 17.05.1 state:
“Awareness of a potential infringer, a need for a faster processing to secure an investor, or a need for a granted patent in order to subsequently request accelerated processing under the Patent Prosecution Highway (PPH) at another office… are likely to be accepted as adequate reasons for acceleration… In addition, where the applicant requests acceleration in order to take advantage of the Patent Box, the applicant should explain how a delay in grant would have a significant cash flow impact because of its effect on eligibility for the Patent Box.”
Essentially, this outlines that a written request for accelerated processing may also be allowed where there is a looming infringement action, investment opportunity or even when a UK patent is needed to be used as the basis of a foreign PPH request (in line with our advice above).
As outlined above, the UKIPO only accelerates prosecution if some form of written justification is given or a prerequisite is met. At the EPO, any request for accelerated prosecution — regardless of subject matter — can be allowed under the programme for accelerated prosecution of European patent applications (PACE).
PACE requests must be filed online using a dedicated form. The request may be filed only once during each stage of the procedure (i.e. search and examination) and for one application at a time.
An application falls out of the programme if:
In the above cases it will not be possible to restore the application to the PACE programme, so a second request for that application during the same stage of the procedure will not be allowed. Additionally, accelerated prosecution will be suspended in the event of a failure to pay renewal fees by the due date.
Accelerated prosecution at the EPO will generally be allowed unless the search and examination divisions are overloaded. Applicants requesting accelerated prosecution for all or most of their applications will, as a rule, be required by the EPO to limit the number of their PACE requests by making a selection. In other words, it would be seen as abuse of the process to ask for acceleration on a large proportion of applications in a portfolio.
As with the UKIPO, the next office action after making the request can be expected within about three months.
As you can see, expediting UK and European patent applications can be achieved through a number of channels and in a wide variety of circumstances. The ability to accelerate an application isn't limited by subject matter, although a specific channel is available in the UK for green innovations. Finally, it's also worth noting that UK patent applications relating to the treatment or mitigation of COVID-19 can also currently be accelerated.
If you’re unsure whether your patent application will qualify for any of the mechanisms above, or which path to go down, get in touch with me at firstname.lastname@example.org or contact your usual UDL advisor.
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