UK national phase

It is possible to convert an international (PCT) patent application into a United Kingdom patent application by entering the UK national phase. The deadline for filing the UK application, or “entering the UK national phase”, is 31-months from the PCT application’s filing or priority date, whichever is earlier. (Read what can be done if the national phase deadline is missed).

 

A UK patent, once granted, is effective only in the United Kingdom and countries to which a UK patent extends, or can be extended.

Compared with many other jurisdictions, the UK patent procedure is relatively straightforward and inexpensive.  The procedure involves several stages, as follows:

  1. Filing
  2. Combined search & examination
  3. Prosecution
  4. Grant
  5. Maintenance

Stage 1 – Filing 

The cost of entering the European regional phase consists of professional fees for filing the application, plus the official fees paid to the UKIPO.  As the formal requirements of UK patent applications are less rigid than for, say, European applications, and because there are no “claims fees” to pay, in most cases, the UK-PCT application is not amended upon entry into the UK national phase.

The fees payable to the UKIPO, which currently total just £230, are:

  • Filing/national phase fee
  • Search fee
  • Examination fee

Stage 2 – Combined search & examination

In most cases, the UKIPO will draw-up a Combined Search and Examination (CSE) Report for UK-PCT applications.  This will state the prior art relied upon by the Examiner and set out the Examiner’s objections to the application.  Due to backlogs, the lead-time for receipt of the CSE Report can be one to several years.

The UK Act contains a maximum pendency period of 4 1/2 years from the application’s filing/priority date; or 1 year from the date of the first Examination Report.  As most UK-PCT applications will not be started until 2 1/2 years into the 4 1/2 year maximum period, CSE Reports tend to have relatively short response deadlines.  Whilst the deadlines can be extended, this simply eats into the Applicant’s already short maximum pendnecy period, so prompt action is required upon receipt of the CSE Report.

Stage 3 – Prosecution

Thereafter, the procedure will involve a series of responses by us, and further Examination Reports issued by the Examiner.  Our fees for analysing each Examination Report are fixed, as are our fees for filing a response each Examination Report.

If all of the objections are overcome, then the application will proceed to grant.  If not, or if the application is timed-out, then it will be refused

Stage 4 – Grant

The UK grant procedure simply involves the UKIPO writing to say that they intend to grant a patent on a certain date, issuing the grant certificate (Deed of Letters Patent) and following that up with a letter confirming that the grant of a patent has been published in the Patents Journal and recorded on the Register of Patents.

There is no “issue fee” to pay.

There is no “opposition period”, but the validity of a patent can nevertheless, be put at issue at any stage (pre- or post grant) by making an application to the UKIPO, or to the Patents Court.

Stage 5 – Maintenance

Renewal fees are payable each year calculated from the application’s filing date.

There are no pre-grant renewal fees to pay in the UK.  However, the first (5th year) renewal fee sometimes falls before the patent’s grant date, in which case, the Applicant may need to pay one or more “backdated” renewal fees together – within 3 months of the patent’s grant date.  However, after that initial “wrinkle”, relatively modest renewal fees are then payable, each year, at the end of the calendar month containing the anniversary of the patent’s filing date.

We automatically enrol all of our client’s UK Patents into our comprehensive patent renewals monitoring, reminder and payment system.