Under the UK Patent Box scheme, the profits earned on a patented invention can be subject to a lower rate of tax. A requirement for obtaining a lower rate of corporation tax on profits earned from patented inventions is to obtain the grant of a patent in specific territories, typically a UK Patent.
In part due to the popularity of the Patent Box scheme, the UK intellectual Property Office is currently struggling to manage its workload. This has led to delays in the average time it takes to grant a UK Patent. However, there are ways in which an applicant can minimise the time taken for the grant of a UK Patent, such that the grant of a UK Patent can be obtained within twelve months of filing.
The main time constraint imposed on the prosecution of UK Patent Applications is a result of Section 20 of the Patents Act 1977, which states that “If it is not determined that an application for a patent complies before the end of the prescribed period with all the requirements of this Act and the rules, the application shall be treated as having been refused by the comptroller at the end of that period.”
This Section 20 period is defined by Rule 30 of the Patents Rules as:-
- four years and six months beginning immediately after—
- where there is no declared priority date, the date of filing of the application, or
- where there is a declared priority date, that date; or
- if it expires later, the period of twelve months beginning immediately after the date on which the first substantive examination report is sent to the applicant.
This means that, in effect, the period for putting an application in order for grant can be extended by the late issue of a first examination report by the Examiner.
There are three main official fees to pay during prosecution of a UK Patent Application, namely an application fee, a search fee and an examination fee. The application and search fees must be paid within twelve months of the priority/filing date and the examination fee must be paid within six months of publication of the application (which normally takes place 18 months from the priority/filing date and includes publication of the search report).
If the search and examination fees are paid at the same time, the applicant can request combined search and examination, whereby the search and examination reports are issued together.
If the examination fee if not paid at the same time as the search fee and combined search and examination is not requested, there is no real time pressure on the UK Intellectual Property Office to issue a first examination report, and indeed it may be beneficial for the first examination report to be issued late to effectively extend the Section 20 period for putting the application in order for grant. As such, the time for issuing a first examination report has slipped from around 12 months from the payment of the examination fee to up to two or even three years from payment of the examination fee.
By contrast, if the examination fee is paid at the same time as the search fee and combined search and examination is requested, due to the requirement to publish the application complete with search report and the need to publish the application 18 months from the priority/filing date, there is a pressure on the UK Intellectual Property Office to issue the first examination report (combined search and examination report) as soon as possible, typically within six months of payment of the search and examination fees.
If a prompt and complete response is filed to the objections raised in the first examination report, it should be possible to place the application in order for grant before publication. However, a patent will not be granted until at least three months after publication to allow third parties the opportunity to file observations.
There are two further steps that can be taken to speed up grant of a UK Patent.
Firstly, a request for accelerated publication can be filed. A reason for the request does not have to be given and the application will be published as soon as it meets the formalities requirements and the search report is available.
Secondly, a request for accelerated examination can be filed. However, accelerated examination will not be granted without a valid reason. Acceptable reasons for the request for accelerated examination could be that infringement is taking place or that early grant of a patent is required to secure investment or to facilitate a commercial agreement concerning the invention. Another valid reason may be that faster grant of a UK patent is required in order to subsequently request accelerated processing under the Patent Prosecution Highway (PPH) at another Patent Office.
It is therefore possible to obtain the grant of a UK patent within only nine to twelve months from the filing date, if the application, search and examination fees are all paid at the time of filing along with a request for combined search and examination and accelerated publication and possibly also accelerated examination are requested.