RESOURCES

 

ACCELERATED PROSECUTION

ACCELERATED PROSECUTION

Our information sheets titled ‘UK Patents – The Basics’ and ‘European Patents – The Basics’ set out in detail the various procedural steps involved in obtaining UK and European patents, along with the likely time scale involved. This time scale is summarised below:

  • 0 months – file priority application
  • 14-16 months – search report issued
  • 18 months – application published
  • 30 months – examination commences
  • 32-44 months – grant

It is possible to shorten many of the stages in the prosecution of both UK and European patent applications by requesting accelerated prosecution. There is no charge for requesting accelerated prosecution, and in many cases no reasons need be given.

Why should I accelerate prosecution?

In many cases it is undesirable to accelerate prosecution. For example, if you wish to delay costs then you probably do not want to accelerate prosecution.

However, there are several reasons why you may wish to speed up prosecution of your patent application.

  • After filing the priority application, there is a period of 12 months during which you can file applications in other countries. Filing abroad can involve considerable expense. Therefore, if you are unsure about your prospects for gaining a patent, it may be a good idea to request an early search so that you will have the search results before you take the decision whether or not to file in other countries.
  • Filing a patent application gives you no protection from infringers until the application is published. After publication, you will have “provisional” protection which can be acted on after the grant of the patent. Therefore, if you become aware of a potential infringer early on during the life of your application, it may be a good idea to request early publication if possible so that your provisional protection extends from the earliest date possible.
  • As mentioned above, once the application is published, you will have only provisional protection. However, this is of limited scope and you cannot take action against any potential infringers until your patent is granted. Therefore, if you are aware of a potential infringer, then it may be a good idea to accelerate examination of your application and/or grant of your patent so that you can take action against any potential infringer at the earliest date possible.

What stages in the prosecution of my UK patent application can be accelerated?

  • SEARCH

The UK Patent Office claim to search all applications as soon as possible.

However, if an early search is requested along with a suitable reason for the request, the UK Patent Office will attempt to carry out an early search. A suitable reason could be that you wish to study the search results before deciding whether to proceed with foreign filings.

  • PUBLICATION

It is possible to request early publication of a UK patent application. However, the application cannot be published until the search report has been issued and so it may be necessary to request an early search in combination with a request for early publication. There are also several other formalities which must be met prior to publication. Once early publication is requested, the publication process takes about five weeks. It should be noted that if the application is published early, the examination fee becomes due at an earlier date than would otherwise have been the case.

A patent cannot be granted until three months after publication. So, if very early grant is likely and wanted, early publication should be requested.

  • EXAMINATION

There are several ways to accelerate examination at the UK Patent Office. Firstly, if on filing your application you know that you wish to accelerate prosecution, you can request search and examination together. In this case, the Patent Office will carry out the examination at the same time as the search. Secondly, if after filing you decide you want an early examination, it is possible to request an early examination provided that an adequate reason is given, such as a possible infringement. Thirdly, in certain circumstances you can make use of the ‘Patent Prosecution Highway’, explained in more detail below.

  • FAST-TRACK FOR PCT(UK) APPLICATIONS

Applicants can request fast-tracking of PCT applications entering the UK national phase, where all the claims were considered in the IPRP (the patentability opinion issued in the international phase) and not objected to. Once an application is on the fast-track, the UK Patent Office aims to issue the first examination report within two months. Fast-tracking may be requested for both new and existing PCT(UK) applications.

What stages in the prosecution of my European application can be accelerated?

Acceleration at the EPO uses the “PACE” procedure. The “PACE” procedure is only provided by the EPO when “practically feasible”, and is subject to the workload of the relevant searching and examining divisions. It may also be affected by the number of PACE requests being made in a given technical field or by a given applicant.

From 1 January 2016, PACE acceleration can only be requested once for each stage.  That is, one PACE request is allowed for accelerated search, and one for accelerated examination.

If PACE status is lost for any reason (for example, if a due date for reply to the EPO is missed) it cannot be requested again in that stage.

  • SEARCH

If a request is made for early search, the European Patent Office (EPO) will try to search your application as soon as possible.

In the unusual circumstance that your European application is your first filing then the EPO will automatically try to issue a search report within six months, to provide you with a search report to help you to decide whether or not you wish to file in any other countries.

If the EPO thinks that they cannot perform a full search and write to you to that effect, the search report will only be issued once you have replied.

Accelerated search may not be possible in certain circumstances, for example where an application is filed by “reference” to a previous application, or where the claims are filed later than the rest of the application.

  • PUBLICATION

It is possible to request early publication of a European patent application. However, publication may still not occur for up to five months after the request is received.

  • RESPONSE TO SEARCH OPINION

In many cases, the EPO issues a written opinion with the search report, to which the applicant can respond. Before receiving the search report, if the examination fee has been paid, the applicant can waive their right to that response. If they do so, an examination report is issued instead of the search opinion.

  • EXAMINATION

Accelerated examination can be requested in writing at any time after the Examining Division has taken responsibility for the application. If such a request is received by the EPO, they will attempt to issue the first examination report within three months.

If accelerated examination is requested, it is necessary to file any responses to the examination reports without requesting extensions of time, in order to maintain a speedy examination process. If that is not done, and extensions of time or ‘further processing’ are used, PACE status will be lost.  From 1 January 2016, it will be impossible to reapply for PACE status.

The EPO aims to issue further examination reports within 3 months of receiving a response.

Another option is to make use of the “Patent Prosecution Highway” which is available in certain circumstances.

Patent Prosecution Highway (PPH)

The Patent Prosecution Highway (PPH) offers a mechanism by which positive examination results from one patent office (the Office of Earlier Examination, OEE) can be used to accelerate examination of a corresponding application at another (the Office of Later Examination, OLE).

In the UK, a positive examination report from the Austrian, Australian, Canadian, Chinese, German, Danish, Estonian, Spanish, Finnish, Hungarian, Israeli, Icelandic, Japanese, Korean, Mexican, Norwegian, Portuguese, Russian, Swedish, Singaporean or US patent office can be used to accelerate examination of a corresponding UK application.

At the EPO, a positive examination report from the Canadian, Chinese, Israeli, Japanese, Korean, Mexican, Singaporean or US patent office, or a positive report from one of those offices in their capacity as an International Search or Examination Authority can be used to accelerate examination of a corresponding European application.

Many conditions need to be met to make use of the PPH program. Some points to note are:

  • For PPH to be used, examination at the UK Intellectual Property Office, or at the EPO, must not have begun.
  • At least one claim must have been said to be allowable by the OEE.
  • The claim(s) pursued under PPH must correspond to the claim(s) said to be allowable by the OEE.
  • For the UK and EPO, there is no fee for using PPH.

Please refer to our information sheet entitled “Patent Prosecution Highway” for more details about this program and the general requirements for its use.

This information is simplified and must not be taken as a definitive statement of the law or practice.