Simplified patent prosecution

One of the questions that we are asked most often is “which fees should I pay and why?”  Here is our attempt at an answer to that seemingly simple question:

THE CHOICES

When filing a patent application at the UK Intellectual Property Office (UKIPO), the applicant can elect to pay some, all or no fees (hence the original question!).  In short, when filing a UK patent application, the applicant has to make a choice between paying:

• no official fees;
• the filing fee only;
• the filing and search fees; or
• the filing, search and examination fees all at once.

MAIN CONSIDERATIONS

Where the cost of filing needs to be minimised, some applicants choose not to pay the filing and/or search fees, which yields a fairly modest saving of £150 at the start of the application procedure.  An application filed without fees (sometimes referred to as a “provisional” application) nevertheless is accorded a filing date and a patent application number, thus giving the applicant “patent pending” status, and also providing a priority application to which a later-filed application relating to the same subject matter can effectively be backdated.  To that extent, provisional filing can sometimes be useful.  However, applications filed without fees are not processed by the UKIPO (other than to be accorded a filing date and serial number) and if further action is not taken, the application will be deemed withdrawn (without having been published) on the anniversary of its filing date.

The applicant has the option to pay the filing and search fees at any point during the first year.  However, the UKIPO has considerable processing backlogs, so deferring paying the filing and search fee (even by as little as a few days) could result in the Search Report not being drawn-up and issued until after the one-year cut-off for filing corresponding overseas applications.  Thus, if an applicant wishes to assess its application’s prospects of success (i.e. to analyse the Search Report) before committing to overseas filing costs, then this may not be possible where the search has not been requested very early on in the procedure.

One solution is to re-file the provisional application afresh, claiming priority from the earlier application, and requesting a search of the later application at the time of filing.  This can result in the new application being placed straight into the search queue, which is often yields the Search Report faster than if the fees were simply paid on the original application.  This, however, amounts to duplication of work, and an increase in professional fees.

In any event, deferring paying the filing and search fees merely defers the cost: they have to be paid anyway.  For that reason, our approach is to strongly recommend paying at least the filing and search fees simultaneously with filing the patent application.

The deadline for paying the examination fee is calculated from the publication date of the application, i.e. publication + 6 months (in the UK).  Thus, upon publication, the exam fee request deadline needs to be entered into a reminder system and monitored.  At the appropriate time, we need to write to the UKIPO to request examination by fling Form 10, and by booking the fee payment from our UKIPO deposit account.  This procedure introduces additional complexity and cost, as well as a finite risk that the applicant might forget, miss or be unable to meet the deadline.

FEATURES AND BENEFITS OF OUR PREFERRED CHOICE

Our preferred approach, to avoid all of the above pitfalls, and to simply the procedure (as well as saving cost in the process) is to pay the filing, search and examination fees at the same time as filing the patent application.  This serves a number of purposes:

1. From a practical point of view, it simplifies the application procedure from the applicant’s perspective because there are fewer letters and reminders going back and forth
2. Because all of the fees are paid up-front, there is only one invoice to deal with, rather than a series of invoices for essentially the same work split up over a period of years.
3. From our point of view, requesting search and examination at the outset only involves ticking a few extra boxes in our online filing system.  This means that we do not need to write additional letters to the applicant and to the UKIPO. Therefore, when we file an application and pay all of the fees up front, we do not charge any additional professional fees for so doing.  Whilst this approach increases the up-front cost by a mere £80 (i.e. the additional official fee for requesting examination), the benefit to the applicant is that this cost is more than offset by the savings in professional fees that would otherwise have been incurred to monitor and meet the various deadlines.  
4. Paying the filing, search and examination fees up-front has the advantage of getting the application allocated to the Combined Search & Examination (CSE) procedure, which results in the application being searched and examined at the same time.  Because this saves Examiner time at the UKIPO (compared with having one Examiner carry out the Search, and another carry out the Examination much later) in our experience, CSE applications are generally examined much more quickly than regular applications.
5. The resulting CSE Report includes the standard Search Report (a list of potentially relevant prior art) as well as detailed reasoning and substantive objections as to why the patent application is/is not allowable.  The CSE Report is much more useful: it provides a much better indication, than what has to be inferred from the Search Report alone, as to the application’s prospects of success and the likely scope of protection that might be obtainable.
6. As a result of procedural expediency and reduced complexity, applicants will hear from us less.  The number of back-and-forth communications will be reduced, and the number of “crunch points” will be reduced.

OUR RECOMMENDATIONS

Taking all of the above into consideration, our approach, when filing a patent application for a client, is to offer just two choices:

• A provisional application (without paying any fees); or
• A CSE application (filing, search and exam fees paid at the outset).

GOING “OFF PISTE”

There are, of course, always situations in which our client requires other options, and we will always advise and try to accommodate such requests.  However, in-line with our philosophy of providing excellent, low-cost service, and most importantly simplifying the application process, we would normally encourage clients to adopt one of the two options presented above.  We are more than happy to discuss the options, and any queries should be directed to Tom Hutchinson in the first instance.

SUMMARY OF FEATURES AND BENEFITS

For the sake of completeness, the following comparison table outlines the key features and benefits of the various UK patent application routes: