Accelerated patents

GETTING A PATENT GRANTED CAN SEEM LIKE A LONG PROCESS. YOUR APPLICATION MUST FIRST BE SEARCHED, THEN PUBLISHED, AND THEN EXAMINED BEFORE IT CAN BE GRANTED. EACH STAGE MAY TAKE MONTHS TO BE PROCESSED AND AS SUCH, AN APPLICATION CAN TAKE 3-5 YEARS FROM FILING TO GRANT. LUCKILY, THERE ARE WAYS OF SPEEDING THINGS UP IN CERTAIN CIRCUMSTANCES.  

This information relates to UK patent applications.

Patent applications can be accelerated through different procedures, such as combining the Search and Examination procedure (CSE), requesting acceleration for certain reasons, and requesting early publication. If a patent application is accelerated, the time from filing to grant may be significantly reduced, and in the UK, the pendency of a patent application can be reduced to under 12 months.

REQUIREMENTS FOR ACCELERATION

Acceleration methods depend on the circumstances surrounding the need for acceleration and the type of application. For example, through the “green channel” any application that relates to a green technology (e.g. solar technology, high efficiency internal combustion engines, recycling technology, etc.) is potentially eligible for acceleration. However, the green channel is not the only route for acceleration, provided there is reasonable justification as to why you need your application accelerated (e.g. it there is actual or likely infringement, or if an investor requires a granted patent before they are willing to invest in the technology).  If there is adequate justification, it is probable that the UKIPO (Patent Office) will grant a request for accelerated processing.

COMBINED SEARCH AND EXAMINATION (CSE)

Normally, search and examination are separate steps that are carried out sequentially.  This is for good reason, namely to give the applicant an opportunity to assess the invention in the light of the Search results prior to proceeding further with examination.  Ordinarily, each step may take 6 months or more to complete (depending on complexity of application and the speed of correspondence).  Regardless of circumstance, in the UK, you can request Combined Search and Examination (CSE) at the time of filing the patent application, which results in the two procedures being carried out in parallel, rather than in sequence.  Further, CSE applications tend to get preferential treatment because they enable backlogs at the UKIPO to be reduced.  

It is possible to combine a CSE request with a request for acceleration to further speed-up the process.  A green channel application filed with CSE and an acceleration request, for example, could be searched and examined within a few weeks of the application’s filing date.

EARLY PUBLICATION

Under normal circumstances, most applications are published shortly after 18 months from their filing (or priority) date. If a request is made to the Patent Office for earlypublication (no justification is required for early publication), your application will be published within approximately 6 weeks of receipt of the request (providing that a search has been completed).   Early publication can be advantageous in accelerated applications, because a patent cannot be granted until 3 months after the publication date. However, it is advisable to consult your patent attorney before requesting early publication, because if your application does not mature into a granted patent, publication of the failed application may preclude re-filing the application with amendments.

THE PATENT PROSECUTION HIGHWAY (PPH)

The PPH, which in January 2014 was piloted as the Global Patent Prosecution Highway (GPPH), is essentially a system that connects Patent Offices around the world. The premise of the PPH is that all participating countries* follow the same set of agreed criteria when examining applications, such that, in principle, if the claims in one country are deemed allowable, then they should also be allowable elsewhere.  Of course, there are country-specific exceptions to any rule, and the PPH is not a “rubber stamping” exercise where the grant of a patent in one country results in the grant of patents elsewhere.  However, the PPH does allow the participating patent offices to share work (such as search results) to considerably speed-up the processing of applications.  You can find out more about the PPH scheme by following this link.

In all cases, you should consult your patent attorney to discuss the options that may be available to you.

*Offices involved in the Global PPH (GPPH) pilot are IP Australia (IP Australia), Austrian Patent Office (APO), Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), Finnish Patent and Registration Office (PRH), Hungarian Intellectual Property Office (HIPO), Icelandic Patent Office(IPO), Israel Patent Office (ILPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), Nordic Patent Institute (NPI), Norwegian Industrial Property Office (NIPO), Portuguese Institute of Industrial Property (INPI), Russian Federal Service for Intellectual Property (ROSPATENT), Intellectual Property Office of Singapore (IPOS), Spanish Patent and Trademark Office (SPTO), Swedish Patent and Registration Office (PRV), United Kingdom Intellectual Property Office (UKIPO), and United States Patent and Trademark Office (USPTO)

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