Many applicants have experienced the effect of the significant backlog of patent applications awaiting examination at the UK Intellectual Property Office (UKIPO), with there sometimes being a wait of a number of years for the first examination report to be issued.
The UKIPO is working to reduce this backlog of applications in the long term by recruiting additional examiners. However, due to the time it takes to train new recruits it is likely to be 1-2 years before we start to see the long waits for examination reports start to come down.
Despite this, if a quick grant is important, there are ways in which prosecution of a patent application can be expedited.
Combined Search and Examination
Normally, examination isn’t requested until after the results of the search have been issued. However, it is possible to request combined Search and Examination at the time the application is filed. This will result in the examination process being started sooner, leading to a quicker grant.
Normally, a patent application will be published 18 months after it is filed. There is then a wait of three months before, if the application is allowable, it can be granted. However, it is possible to request that the application be published early, enabling earlier grant. Provided that the search report has been issued, the application will normally be published around 6 weeks after the request is made.
Unlike the two approaches described above, which are available simply on request, examination will be accelerated only if adequate reasons are given. You must either demonstrate why it is important for examination to proceed quickly, or demonstrate that it relates to “green” technology. Acceptable reasons for accelerated examination are varied, but typically include issues such as a requirement by prospective investors that patent rights be in place, potential infringement by a third party, or development of a company being contingent upon patent rights.
In our recent experience, the bar for reasons demonstrating the importance of accelerated examination is currently low, and we are seeing a large proportion of requests being accepted.
If all three services are requested on filing the application, and all communications from the UKIPO are responded to promptly, then it is possible to move a patent application from application to grant very quickly.
However, before employing any or all of these methods, it is worth considering carefully whether a quick grant will be beneficial. There are a number of advantages to letting an application proceed to grant in its own time. These include:
• Spreading the cost of the process, enabling an applicant to see whether their product is commercially viable before committing to the whole process.
• Retaining some uncertainty among competitors as to what the final scope of the patent will be.
• Early publication means that the technology will be in the public domain sooner. This may alert competitors to future plans, or cause issues with obtaining further protection for small modifications to the product if the technology is still being developed.
If you would like to discuss any of these routes in more detail in relation to your own present or prospective patent applications, then please contact us and we will be happy to talk through the options with you.