5 most frequently asked questions about patents
We answer five key patent questions.
A UK patent application can take some time to grant and it is not unusual for grant of an application to occur 4+ years after the filing date. There are advantages to allowing an application to run for this length of time, however, there is often a need to obtain grant as soon as possible. For example, you might want to speed up grant when there is a risk of imminent infringement (or infringement is already occurring) and you wish to enforce a granted patent as soon as possible, or where a granted patent is required to obtain investment or licensing income. In these cases, there are a number of options available for accelerating the application process and obtaining a granted patent sooner.
In normal cases, examination is requested up to 6 months after publication of the application, which itself occurs 18 months after filing. Examination can be requested sooner than this, so as to speed up the application (since applications must be examined and found allowable before they will be granted). Combined search and examination can be requested on filing (or soon after). The UK Intellectual Property Office (UKIPO) will then issue an examination report with its search report, typically around 6-9 months after the filing date. Hopefully any objections to the application can then be overcome quickly, or the examiner has no objections, which would then mean the application could be granted soon after 3 months from the publication date if no further relevant prior art is found and/or the examiner has no new objections.
The UKIPO aims to issue search reports (or combined search and examination reports) around 6 months after filing the application, assuming search was requested on filing and it typically issues examination reports around 6-12 months after requesting substantive examination. Accelerated search and/or examination can be requested to reduce these periods. A suitable reason must be given when requesting acceleration, and if the reason is accepted the search and/or examination will be accelerated. The UKIPO doesn’t set deadlines for when accelerated search and/or examination reports issue, but typically we’d expect them to issue 2-3 months after requesting acceleration, although it does vary based on the UKIPO’s current workload. Suitable reasons typically accepted include the threat of imminent (or currently happening) infringement; a potential licensee which requires a granted patent; and the requirement of a granted patent or allowed patent application for investment.
Even if examination has been conducted early and the examiner has no objections to the application, it cannot be granted until at least 3 months after publication of the application so that the examiner can carry out a ‘top-up’ search. Usually, publication occurs shortly after 18 months from filing, but instead early publication can be requested to move publication forwards- generally within 6 weeks of a request for early publication. A request for early publication can be used together with combined search and examination – a typical approach is to request early publication once a report issues stating the examiner has no objections or no longer has any objections. If early publication is requested and accelerated search and examination granted, a UK patent application can be granted in as little as 9 months from its filing date.
If you have patent applications for the same invention in other territories and/or the UK patent application originated from an international (PCT) application, it may be possible to accelerate the UK patent application. The UK patent application can be accelerated on the basis of an examination report issued by the examining office in the international phase of the international application which indicates the application is allowable for grant, or a notice indicating allowance of a corresponding application by a foreign patent office participating in a Patent Prosecution Highway. The claims of the UK application will need to match or at least sufficiently correspond to the claims found allowable in the international application or corresponding application. Such a request needs to be made prior to commencement of UK examination.
If the invention of the patent application has an environmental benefit, a request may be made to enter the application into the ‘Green Channel’. Green Channel applications can undergo accelerated search, examination, combined search and examination, and/or early publication, as requested by the applicant. To enter the Green Channel, an explanation of how the invention of the application is environmentally friendly must be provided and accepted by the UKIPO.
If you would like advice from a patent professional on filing a patent application or obtaining accelerated grant for your patent, please get in touch to speak to one of our attorneys.