IP Cases & Commentary – Details
Obtaining a Quick Grant in the UK - Five Ways to Accelerated Prosecution
The UK Intellectual Property Office (UK IPO) provides patent applicants with plenty of options for accelerating prosecution of their UK applications with a view to achieving grant more quickly. While in some circumstances applicants may find an accelerated prosecution undesirable, achieving grant quickly has its benefits. Grant is required for the applicant to have any enforceable rights in the patent, and thus can be an important asset in commercial, mergers and acquisitions or licensing negotiations. Furthermore, in the event that the applicant has corresponding applications pending at other patent offices, a first grant in the patent family can also reinforce the family because grant of the corresponding patent applications is more likely.
When trying to achieve grant quickly, there are five different ways for a UK patent application to benefit from an accelerated prosecution (search and/or examination) at the UK IPO, as described below.
An applicant can request accelerated prosecution if he believes that someone might be an infringer, with a view to being in a position to enforce his rights against the possible infringer more quickly.
2. Securing an investment
The UK IPO recognises that the grant of a patent may be helpful or even required to secure an investment and an applicant can justify an acceleration request on this ground.
3. Green channel
Since May 2009, acceleration can be obtained for green applications. This scheme is not limited to inventions relating to clearly green technologies, such as wind turbines or solar panels, but it is in fact intended to encompass any invention that provides an environmental benefit. For example, a suitable invention may enable a reduction in energy consumption when in use, or a reduction in the amount of raw material required to manufacture a product.
4. Patent Prosecution Highway (PPH)
PPH agreements are generally bi-lateral agreements between two patent offices whereby each patent office agrees to accelerate examination of an application if a corresponding application has received a favourable decision at the other patent office (provided that the applicant requests the acceleration). The UK IPO has currently entered into agreements with the Japanese, Korean and US patent offices. Despite the current efforts to harmonise the terms of the various PPH agreements, the requirements for using a PPH generally vary depending on the patent offices involved. In the UK, it is required that the two corresponding applications are related (for example both may claim priority from the same earlier application). Also, the claims pending at the UK IPO should be substantially the same as the claims allowed by the partner patent office and examination at the UK IPO should not have begun.
5. PCT(UK) Fast Track
Since May 2010, PCT applications that have received a positive International Preliminary Report on Patentability (IPRP) can benefit from an accelerated prosecution in the UK national phase, upon request by the applicant. Each and every claim of the PCT application must have received a positive opinion with respect to novelty, inventive step and industrial applicability in the IPRP. The UK IPO’s intention is to use this PCT(UK) Fast Track as an incentive for applicants to address patentability objections during the international phase, and to amend their applications then before national or regional phase starts. Thus, an application where all claims that received a negative opinion in the IPRP have been deleted on UK national phase entry (ie, not during the international phase) would not be eligible for the PCT(UK) Fast Track.
The UK may therefore become the place of choice for applicants who wish to obtain results quickly when they need to and want to, thereby reinforcing their rights and position not only in the UK but also possibly in any country where they have a corresponding patent application pending.