One question we’re often asked is “how long will it take to get a patent?” Whilst the UK Intellectual Property Office (UKIPO) aims to have all patent applications either accepted or rejected within four and a half years of applying, there is no such cut-off at the European Patent Office (EPO).
While in many cases pending applications can have significant value, the long delay in examination can be frustrating, particularly for smaller clients and SMEs where patent protection (or at least an indication that a patent will be granted) can be important when trying to attract investors or ward off competitors.
Fortunately, there are various mechanisms in the UK and in Europe that allow applicants to accelerate the application process, if required. UK and European patent attorney, Chris MacDonald, sets out some of the available options below.
Perhaps the easiest way to accelerate prosecution at the UKIPO is to request Combined Search and Examination on filing. The request needs no explanation/justification and will result in the UKIPO providing a full examination report at an early stage in prosecution rather than issuing a search report and waiting for a separate examination request. With increasing delays at the examination stage at the UKIPO, Combined Search and Examination should be seriously considered by all applicants, unless long pendency is desired.
There is also the option to formally request accelerated processing at various stages in the application process before the UKIPO. It is necessary to provide a reason for the request, and the UKIPO has discretion to refuse if they do not feel that the reason given is sufficient. Fortunately, reasons such as a need to secure investment or knowledge of a potential infringer will typically be accepted. In general, the reason should be specific to the case, not something that is universal to all applicants.
The UKIPO also provides a ‘Green Channel’ for accelerated prosecution of applications where the invention has an environmental benefit. There is no fee, but the request will need to justify the environmental credentials of the invention.
The EPO’s PACE program provides a fast-track for search and examination. No reasons are required, and the PACE request can be kept off the public file. The requirements are slightly stricter than they once were, but the changes should not impact applicants who genuinely want to accelerate the application process. Full details of the PACE program can be found here.
The EPO has also implemented a new procedure for dealing with enquiries from applicants regarding the progress of an application, including committing to issue reports within one month of an enquiry where a projected timeframe has not been met by the EPO either under PACE or in response to a previous enquiry. Full details can be found here. This can be a useful way to try and accelerate a single action without necessarily committing to a general acceleration of prosecution.
Early entry into the European regional phase and UK national phase (i.e. processing before the 31 Month deadline) is possible, but must be expressly requested in both cases.
At the EPO, the applicant can also waive their right to receive formal communications (under Rule 161 and Rule 70(2)) to accelerate the start of the examination process. The UKIPO provides a Fast Track for applications with claims that correspond to claims that have been found allowable during the international phase.
The publication of patent applications, normally around eighteen months after their filing/priority date, is a part of the application process. A patent will not grant until the application has been published (the UKIPO allows a set period of three months following the publication for third parties to have an opportunity to submit observations before a patent is granted). Requesting early publication can therefore help to accelerate grant, but probably only where other acceleration options are also being used.
The Patent Prosecution Highway (PPH) allows acceleration of prosecution at both the UKIPO and the EPO (and several other countries) by relying on examination work carried out elsewhere. There are various restrictions on the PPH program, similar to the UK’s PCT Fast Track above, so applicants will often be better off just using one of the acceleration options described above. Indeed, a PPH request filed for a European Patent application simply moves that application into the PACE program, but requires additional criteria to be met.