Accelerating Patent Prosecution at the UKIPO and EPO


After the time and effort expended in developing your invention, then explaining it to your friendly neighbourhood patent attorney, your patent application has been drafted and is on file at the Patent Office. Congratulations! You are now on your way to obtaining a granted patent and begin reaping the rewards. The question is: how soon?

Typical!

Unfortunately, there is a typically lawyerly answer to this simple question: “It depends”. Relevant factors include the technical field of the invention, the closeness of the prior art (publicly available information, e.g. journal articles, published patent applications) that is cited, and any deficiencies within the application, such as the need to provide formal drawings that have been prepared by a technical draughtsman.

Typically, the UK Intellectual Property Office (UKIPO) will grant a patent in two to three years, whereas the European Patent Office (EPO) takes a bit longer at two to five years.

Years?

There are circumstances where a shorter timeframe would be beneficial. Many commercial benefits flow from the removal of the uncertainty imparted by the word “application” and the ability to state that you are the proud owner of a “granted patent”.

A quicker grant also feeds back into the patenting process, allowing proprietors to make more informed decisions before committing to further filings in other countries and, potentially, allowing use of streamlined processes before their patent offices.

More straightforwardly, obtaining an early grant maximises the benefit that can be wrung out from the 20-year life of the patent.

Patent Prosecution

Prosecution is the process of taking a patent application from filing to grant. It is generally divided into “Search” and “Examination” phases, with the Patent Office looking for prior art that is similar to the invention during Search, and using said prior art to dispute the novelty and inventiveness of the invention during Examination. Once these objections are addressed, either by arguing that they are mistaken or by limiting the scope of the patent application, the patent proceeds to grant.

General Advice

As always, “be the change you want to see in the world”.

Patent Offices typically give applicants periods of two to six months to respond to objections. These months are usually spent determining how to overcome the objections while giving up as little as possible in terms of scope. However, if a fast grant is desirable, applicants can take a different approach by responding quickly and being more willing to limit the scope of the patent application to something more clearly acceptable to the Patent Office (noting that broader claims can be pursued in divisional applications).

Another option for moving the dial is directly contacting the Patent Office Examiner handling your application to discuss the objections and potential solutions. Although it must be noted that, unfortunately, some Examiners aren’t open to these overtures.

At the UKIPO

As mentioned, UK patent applications that reach grant typically do so within two to three years. However, UK patent law provides a backstop in the form of a 4½ year “compliance period”, after which an application will be rejected if it is not ready for grant. There is then a backstop to the backstop, extending the compliance period to a year after issuance of the first examination report if this is later. In other words, UK patent law is set up in the expectation that it may take over 3½ years before the first examination report is even issued.

There are several options for accelerating prosecution at the UKIPO, including combining search and examination (e.g. by requesting both on filing of the application), accelerating search, accelerating examination, and requesting early publication.

Some of these options are available as a matter of course, however, accelerating search or examination requires a reasoned request. The reason needs to justify why the application should jump the queue. A non-exhaustive list of reasons includes potential infringement, realisation of a commercial benefit (e.g. internal or external investment or to use patent box), or to seek a positive outcome to streamline prosecution elsewhere. Alternatively, the UKIPO operates a “Green Channel” programme for inventions with environmental benefits. Environmental benefits are interpreted broadly to include inventions such as those improving efficiency in energy use or materials, as well as more obviously ‘green’ inventions such as renewable energy technologies.

If the above options are fully leveraged, it is possible for a patent to be granted within 9 months.

At the EPO

The EPO is considerably less flexible than the UKIPO, but still provides for accelerated examination. Certain procedural steps can also be expedited by waiving rights, such as the applicant’s right to consider whether they wish to proceed following issuance of the search report. All of these options are available as a matter of course, with no reasoning being required.

If the available options are fully leveraged, a European patent can theoretically be granted shortly after 18 months, assuming no new prior art is found when the EPO completes its ‘top-up’ pre-grant search.

Case Study

Atomik AM Limited (an AMUK member) is a recent spin-out from the University of Liverpool, headed by Professor Kate Black. They have formulated a patenting strategy where they seek rapid grant of UK patents, while allowing subsequent familial patent applications to proceed at their usual pace. This feeds into their commercial strategy of securing a line of income from licensing agreements, underpinned by the granted UK patents, to fund their work, while keeping open their options for broader patent protection, both in terms of scope and geography.

Atomik AM have made full use of the procedural options available at the UKIPO, requesting combined search and examination and accelerated publication. They have also taken a pragmatic view when it comes to responding to issues raised by the Examiner, focusing their UK applications on subject-matter considered allowable by all parties. This has resulted in a first patent being expected to grant 17 months after filing.

Speeding up the prosecution process at the UKIPO has been a real advantage for Atomik. It’s meant we can secure our intellectual property rights much quicker, giving us the confidence to move forward with our commercial plans. This has been key in helping us enter markets, attract investment, and stay ahead of the competition.” – Prof Kate Black

Marks & Clerk advises on all aspects of IP, including patents, trade marks, designs, contracts and contentious matters, and is an associate member of AMUK.

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