Taking the initiative to minimise delays in UK and European patent prosecutionPosted on
To some extent, applicants can readily control the speed of patent prosecution at both the UK Intellectual Property Office (UK IPO) and European Patent Office (EPO). Of course, the sometimes slow pace of and apparent delays in UK and European patent prosecution may be of benefit in many cases, since costs and decision-making are deferred. However, there are also times when it is desirable to obtain a patent quickly.
Both the UK IPO and EPO have schemes that allow applicants to request accelerated proceedings. These schemes may be used in conjunction with or independently of any patent prosecution highway (PPH) that may be available for a given patent application.
At present, the EPO has PPH agreements with the US Patent and Trademark Office (USPTO), Japan Patent Office (JPO), the Trilateral Offices, China’s State Intellectual Property Office (SIPO) and the German Patent and Trade Mark Office (DPMA). The UKIPO has PPH agreements with the JPO, USPTO, Korean Intellectual Property Office (KIPO), Canadian Intellectual Property Office (CIPO) and the DPMA. Details of the UKIPO’s PPH agreements can be found here
Up the PACE at the EPO
The EPO has a programme for accelerated prosecution of European patent applications (PACE). Applicants may use PACE to try to speed up issuance of EPO search reports, EPO examination reports and/or EPO notices of allowance. In principle, a PACE request can be made on filing or at any time thereafter. No reasons need to be given in support of the request and there is an official form that can be used. Also, provided that the PACE request is made in a separate document, e.g. if the official form is used, then the request will not be published in the publicly available case history. There is no official fee.
However, filing a PACE request will not always have the desired effect. According to the EPO, accelerated prosecution under the PACE programme can be provided only where practically feasible and subject to the workload of search and examining divisions. Further, in certain technical fields there may be constraints due to the number of PACE requests the EPO receives. The EPO also warns that applicants requesting accelerated prosecution for all or most of their applications will, as a rule, be required by it to limit the number of their PACE requests by making a selection.
Accelerate prosecution at the UK IPO
Requesting combined search and examination can speed up proceedings before the UK IPO. Normally, a combined search and examination report would be issued within four months of requesting search and examination.
Also, applicants can request early publication of their UK patent applications. This may accelerate grant of a patent, since the earliest the UK IPO will grant a patent is three months after publication of the application, in order to allow some time for third parties’ observations.
Both of these techniques are available to all applicants. In some cases, it will also be possible to request accelerated search and/or examination. Such a request can be made on filing, or at a later date. The request must be made in writing and must give adequate reasons as to why the application in question should jump the queue. There is no official fee. Whether or not the reasons given will be considered adequate will depend on the circumstances of a given case. However, the UK IPO will most likely accede to any request, which is backed up by one of the following reasons: that the applicant is aware of a potential infringer; or that a faster search, examination or grant is required to help the applicant secure an investor.
Green for Go at the UK IPO
The UK IPO also has a scheme for accelerating prosecution of patent applications relating to environmentally-friendly technologies – the green channel. Applicants can make a request for a patent application to be assigned to the green channel on filing, or at a later date. There is no official fee. The request must be made in writing and should include an indication as to how the application is environmentally-friendly and which actions are to be accelerated: search, examination, combined search and examination, and/or publication. All that is required is for the applicant to make a reasonable assertion that the invention has some environmental benefit. The UK IPO does not investigate these assertions in any great detail, but will refuse requests if they are clearly unfounded. The UK IPO provides a searchable online database of green channel applications. As of 23 May 2012, 470 green channel patent applications had been published since the introduction of the scheme on 12 May 2009.
The EPO and UK IPO have schemes for requesting accelerated patent prosecution. The UK IPO also has a scheme for accelerating prosecution of patent applications relating to environmentally-friendly technology. These schemes may be used in conjunction with or independently of any patent prosecution highway (PPH) that may be available for a given patent application. None of these schemes is as burdensome or constricting as it can be to request acceleration at the USPTO.
Outside of the formal schemes for accelerating search and/or examination, applicants can, of course, speed up prosecution by taking actions in advance of deadlines and responding to official letters promptly and in a manner that deals with all of the issues raised. At the EPO it is also possible to speed up proceedings by waiving the right to receive certain communications.
For further advice on this or any other aspect of patent filing strategies, please contact your usual Barker Brettell patent attorney.