The United Kingdom Intellectual Property Office (UKIPO) has published a proposal for a 'superfast' patent service, and has collected feedback on its idea from interested parties.
Under current UK patent law and rules, the typical time in which the UKIPO grants a patent application is between two and five years. There are already several mechanisms in place for reducing this time, however. The simple and free procedure of requesting combined search and examination when filing your application can give you a granted patent in about 21 months. This timescale is determined by the need for a 'top up' search to be carried out after publication of the application at 18 months to find any relevant prior art with a filing date close to that of the application. To reduce the time further, you can request early publication of your application.
Other more formal procedures for accelerated grant are available. Both search and examination can be accelerated upon request if you are able to provide an adequate reason, such as potential infringement or the need for results to secure investment. There are also three specific acceleration schemes available, all of which are free.
- The Green Channel permits accelerated search and/or examination for environmentally friendly inventions. To access this, you need to file a written request explaining the environmental benefits of your invention.
- The UKIPO participates in the Patent Prosecution Highway (PPH). Under the PPH agreements, you may request accelerated examination of an application if its claims have already been acknowledged as patentable by another PPH patent office.
- The PCT(UK) Fast Track allows you to request accelerated examination of the UK national phase of a PCT (international) application if your application has claims which have been considered patentable during the international search and examination.
These schemes, in conjunction with combined search and examination and early publication, can enable you to obtain a granted patent in less than a year, considerably faster than standard patent prosecution before most of the world's patent offices.
However, the UK Government has decided that the UKIPO could usefully offer an even quicker service, and has proposed the introduction of a new 'superfast' service capable of granting patents in as little as 90 days.
There is, of course, a catch – it is intended that the new service will only be available on payment of a substantial fee, suggested to be in the range of £3,500 to £4,000 and payable in addition to the usual official fees for filing, search and examination. At the UKIPO these are currently just a few hundreds of pounds, so use of the superfast service would increase the total official fees about ten-fold. In comparison, though, the 'Track One' prioritised patent examination service offered by the United States Patent and Trademark Office (USPTO) carries a charge of $4,000 plus usual official fees, and only promises the chance of a granted patent in under a year.
Various conditions are proposed for using the superfast service, including electronic filing and electronic delivery of all correspondence, and requesting the service on or shortly after filing.
The UKIPO also proposes to reserve the right to refuse a request in the event that current office capacity is insufficient to adhere to the promised timescale.
Grant within 90 days is indicated as being potentially achievable for an application claiming a priority date at least one month before its filing date. However, for first filed applications claiming no priority, a time scale of around 120 days is indicated, to allow sufficient time for a complete prior art search to be conducted. Also, a top up search will be necessary after grant to ensure that all novelty only prior art has been found; this may lead to post grant amendment by the patentee or revocation by the UKIPO. However, this is already true for any patent granted less than 21 months after its priority date using the existing acceleration procedures.
The high proposed official fee will no doubt be prohibitive or at least off-putting to many applicants, but for others the prospect of such a speedy grant procedure might be very appealing.
The 'superfast' procedure ties in neatly with the UK's new 'Patent Box' scheme which enables companies to pay a reduced rate of corporation tax on profits arising from products protected by granted UK and European patents. If the potential tax savings for a new product exceed the official fee, the 'superfast' scheme may look very attractive.
The UKIPO ran a consultation period to obtain users' views on both the 'superfast' patent service proposal and on its existing acceleration procedures; this ended on 12 June 2013. We await further developments with interest.