Prosecuting a patent application from filing to grant can be a long winded process lasting, in some cases, many years. An application needs to be searched and then published before being examined. Delays at the UK Intellectual Property Office in certain technology fields can mean that examination reports take years rather than months to issue and delays at the European Patent Office (EPO) have, in extreme cases, meant that applications have remained pending for even longer.
In many cases applicants may be happy to proceed at a slow pace because it allows an invention to be developed and marketing/commercialisation plans put in place. The cost of the patent process can also be spread out over time. There are however circumstances where a more speedy grant would be useful, for example where you think someone is using your invention and you want a granted patent to allow some kind of infringement action to be taken or where an investor asks for a granted patent before they release funds for the development of your company/invention.
Both the UKIPO and the EPO offer a range of acceleration procedures that can help get a granted patent more quickly. The various options for these two patent offices are discussed below.
The UKIPO offers a number of acceleration choices including: three acceleration services; a green channel for environmentally friendly technologies; the PCT Fast Track; and the patent prosecution highway (PPH).
Acceleration services (see here for more information)
The UKIPO has three acceleration options including: (1) combined search and examination, (2) accelerated search and/or examination and (3) accelerated publication. Other than the normal search and examination fees, there are no official acceleration fees in respect of any of the following options.
- Combined search and examination. In the UK, the search request is not due until one year from the filing date (or priority date) of the application and the examination request is not due until six months from publication of the application (the exam request is therefore effectively due two years from the priority date of the application). However, both the search and examination requests can be made together (and can also be made on filing) which enables the UKIPO to conduct search and exam at the same time and to issue a combined report. An applicant does not need to provide any reasons for wanting to use this service and the combined report is usually received within 6 months of requesting combined search and examination.
- Accelerated search and/or examination. It is also possible to formally request that the search or examination be conducted on an accelerated basis. An applicant has to provide reasons for an application to be accelerated in this way (e.g. because commercial negotiations are taking place and an early search or exam opinion would be beneficial to such negotiations). The UKIPO aims to issue exam reports within 2 months of an allowable request. It is also noted that an application accepted into the green channel (see below) will also be treated on this basis.
- Accelerated publication. Applications are usually published 18 months from the priority date. However, early publication can be requested which can help allow a fast grant (in the UK a patent cannot be granted until 3 months after the application has published).
If, at the time of filing an application, all three of the above services are requested and the examination process runs smoothly then grant can occur in under a year from filing.
Green Channel (see here for more information)
The Green Channel was introduced in 2009 and allows applicants to request accelerated processing (e.g. accelerated search, publication or examination or accelerated combined search and examination) if an invention has an environmental benefit.
A written request is required that explains why the application is environmentally-friendly and which of the accelerated processing options the applicant wants to accelerate. There is no fee for this service.
Patent Cooperation Treaty (PCT) (UK) Fast Track (see here for more information)
This service can be used for PCT applications that enter the UK national phase where the claims have been found allowable in either the international preliminary examination report or the written opinion of the international searching authority. There is no fee for this service but the request needs to be received before examination has commenced in the UK. The UKIPO’s aim is to issue an exam report within 2 months of receipt of the acceleration request.
The PPH initiative enables accelerated examination of a patent application if examination work has already been conducted at another intellectual property office. The PPH process may enable the UKIPO to improve their efficiency and provide a granted patent more quickly than normal. However, a number of conditions need to be met (see PPH section below).
Prosecution of patent applications in front of the EPO may be accelerated under the “PACE” programme. One PACE request is allowed to request accelerated search and another is allowed to request accelerated examination. PACE requests are accepted on the Examiner’s discretion subject to their workload. An application can be removed from the PACE programme, e.g. because a due date for reply to the EPO is missed, and, if this happens, it is not possible to request PACE again for that stage of the prosecution process.
The EPO endeavour to issue search reports within 6 months of an allowable PACE request and exam reports within 3 months of an allowable PACE request (assuming no exam reports are outstanding at the date of receipt of the request).
There are other acceleration options that are available at the EPO, including:
- Requesting early publication
- Waiving the right to certain communications (a range of communications can be waived at the EPO including: the Rule 161 communication that follows EP regional phase entry can be waived; where an examination request has been made on filing then the communication that issues shortly after the search report that asks whether an applicant wants to proceed with examination can be waived; further communications under Rule 71(3) EPC can be waived). It should be noted that if such communications are waived then additional actions may be required to be taken (e.g. a response to objections raised in the international phase may need to be filed on EP regional phase entry before an applicant can consider waiving the Rule 161 communication). For more information see here.
- Early processing of a PCT application by the EPO. The EP regional phase deadline is 31 months from the priority date but it is possible request early regional phase processing once the patent application has published.
- Enquiring when the next office action is to be issued. Under the process that was formalised in 2016 an applicant can ask the EPO when the next office action is to be issued. The EPO will respond with an indication, based on their workload, when the next action should be issued and in certain cases will commit to providing this action within a certain time frame.
- The Patent Prosecution Highway option is also available at the EPO (see below).
Patent Prosecution Highway (PPH)
The Patent Prosecution Highway (PPH) provides an option for accelerating prosecution based on the earlier positive work product of another patent office. A number of conditions need to be met to make use of the PPH system, namely: examination at the UKIPO or EPO cannot have started yet; there needs to be at least one claim that has been allowed by the other patent office; the claims pursued at the UKIPO or EPO need to correspond to the claims that have been found allowable by the other patent office (and this may therefore require amendment of the UK or EP application). It is noted that if the EPO accepts a PPH request then the application will be processed under the “PACE” programme.
Although there is no fee for using PPH at either the UKIPO or EPO, meeting the conditions of the PPH programme may mean that it is simpler to request accelerated prosecution either under the PACE system at the EPO or one of the acceleration options described above at the UKIPO.
Mark Richardson 15 January 2019