Superfast, Green Channel, accelerated prosecution – Confused?

Four years on from the launch of the lean, mean, Green Channel patent machine, will this process for accelerating UK patent prosecution still have any worth should the new Superfast patent processing service be launched?

In May 2009, the UK Intellectual Property Office (UK IPO) launched its much lauded Green Channel for patent applications.

The Green Channel allows applicants to request that the search and/or examination of their UK patent application be accelerated. The service does not cost any additional official fees, however a positive, written request must be filed at the UK IPO in order to take advantage of this process. The main stipulation for eligibility is that the technology of the application must have a benefit to the environment. This requirement is however, relatively broad and the UK IPO has indicated that they “will not conduct any detailed investigation into these assertions”.

The main benefit of the Green Channel is the speed at which a patent application can be granted. It is not uncommon for a UK patent application to be granted within 9 months from the filing date, using the Green Channel.

The Green Channel appears to have proved a relative success. As of 09 May 2013, 673 UK patent applications have been or are in the process of being prosecuted via the Green Channel route. The very first patent application to take advantage of the Green Channel was GB2437148, and is a prime example of the potential speed of this process. For this application, the Green Channel was requested on 15 May 2009 and a patent was granted by 25 August 2009.

In addition to the Green Channel, there is an alternative, informal route for accelerating prosecution of a UK patent application. Regardless of the technology, should a request containing a ‘valid’ reason for the request be filed, then the UK IPO, at their discretion, can accelerate the search and/or examination of the application. Common ‘valid’ reasons include an imminent, commercially important transaction that depends on the grant of the patent (e.g. a licensing agreement), or a potential infringement threat. The threshold for substantiating the request is low. Again it is not uncommon for a UK patent application to be granted within 9 months from the filing date, using this discretionary route.

So what of the proposed new superfast patent processing service?

Last autumn Vince Cable, the Secretary of State for Business, Innovation and Skills, announced plans for a system by which patents could be granted in as little as 90 days. The Intellectual Property Office has recently launched a consultation on those plans.

If implemented, the new process will potentially cut the patent prosecution time by up to 6 months, when compared to the existing routes for accelerating prosecution of a UK patent application.

However, the UK IPO has not called the service ‘premium’ for any reason. Should applicants wish to take advantage of this ‘premium’ service, it has been proposed that the official fees will be £3500 – £4000 on top of normal UK patent application official fees of typically £230. This appears to offer a disproportionate hike in costs for a potential benefit of only 6 months.

If the superfast patent processing service is to go ahead in its current guise, it will be interesting to see whether applicants will see the service as value for money, whether this service will be used instead of existing options and whether the service will have the comparative success of the existing ‘free’ services available.

One reason why the superfast service may be of benefit, is for businesses to take adavatage of the UK patent box . The quicker a granted patent can be obtained, the earlier a business can theoretically take adavantage of the tax benefits arising from the invention of the patent (though it will be possible to back date benefits to take advantage of the patent box). It remains to be seen however, whether the potential tax savings will offset the cost for using the superfast service for those businesses of a more modest size than the bigger commercial players.

Hiren Gandhi  21 May 2013