It can typically take between 3-5 years to obtain granted patent protection in the UK and/or Europe from when a patent application is first filed. This relatively long period of time is often useful to the patent applicant. For example, it can allow prosecution costs to be spread out over a longer period of time than otherwise might be the case.

The lengthy prosecution time does not generally adversely affect an applicant’s ability to commercialise their invention as marketing of the invention, investment, patent licenses and patent assignments can still take place when a patent application is pending before grant. In addition, financial remuneration for infringement of a granted patent by a third party can be backdated to the date of publication of the patent application.

However, in some cases, the length of prosecution time for a patent application can hinder commercialisation of an invention and can delay patent infringement actions being brought against third party infringers, particularly in cases where patent prosecution may extend beyond the normal 3-5 year time period. In some technical fields, it is not uncommon to have patent applications pending for as long as 10+ years.

We are therefore frequently asked the question as to what can be done to accelerate prosecution of a patent application to reduce the time taken to achieve grant of a patent. We set out below the available routes in the UK and Europe for allowing accelerated prosecution of patent applications.

Five steps to Accelerated Prosecution in the UK

  1. Patent applications relating to green technology can be the subject of accelerated prosecution at the UK Intellectual Property Office (UKIPO). Applicants are required to set out a brief statement of the environmental benefits of their invention on making the request for accelerated prosecution.
  2. Requesting combined search and examination. In normal cases, examination is requested within 6 months from publication of a UK patent application, which is typically 18 months from the earliest filing date of the patent application. Combined search and examination can be requested on filing and this typically results in a combined search and examination report being issued within 6-9 months of the filing date of the application.
  3. Requesting accelerated search and/or examination and providing a reason for the request, such as for example, a threat of imminent infringement of the invention by a third party, an investment opportunity requiring a granted patent or a potential licensee requiring a granted patent.
  4. Requesting early publication of a patent application. Patent applications are normally published 18 months from the earliest filing date of the patent application. Even if accelerated examination of the application has been requested, applications cannot be granted until at least 3 months after publication of the application so that the examiner can carry out a “top-up search”. A request for early publication typically brings the publication forward to within 6 weeks of when the request was made.
  5. Applicants who have achieved grant of a patent for their invention at another national patent office in the world can request accelerated prosecution using the Patent Prosecution Highway (PPH) at the UKIPO. This allows the UKIPO to re-use the prosecution work undertaken by the national patent office for the same invention using the same patent claims that have been accepted for grant by the national patent office.

Six steps to Accelerated Prosecution in Europe

  1. Applicants who have achieved grant in one of 17 selected national patent offices around the world can enjoy faster prosecution at the European Patent Office (EPO) using the Patent Prosecution Highway (PPH). This allows the EPO to re-use the prosecution work undertaken by one of the national patent offices for the same invention using the same patent claims that have been accepted for grant by the national patent office, thereby allowing the patent examination process to be hastened at the EPO. There is no additional EPO fee for requesting PPH. The 17 selected national patent offices are: Japan, Korea, China, USA, Australia, Brazil, Canada, Chile Colombia, Israel, Malaysia, Mexico, New Zealand, Peru, The Philippines, Singapore and Saudi Arabia.
  2. Request PACE (Programme for Accelerated Prosecution of European Patent Applications). There is no additional EPO fee for requesting PACE and there is no requirement to amend the claims of the patent application or have a prior patent granted for the same invention in another country. PACE can only be requested once prior to the search report for a patent application being issued, and once prior to the start of examination of a patent application. It is necessary for applicants to respond in a timely manner to EPO Office Actions in order for a patent application to remain on the PACE scheme once it has been requested.
  3. Requesting early processing of a PCT patent application entering Europe before the required 31 month time limit. This allows the EPO to initiate their search and examination process before the usual time period.
  4. Waiving certain time limits provided during prosecution, such as for example, R. 161 & 162, R. 70(2), R. 71(3) EPC Communications. There is often time periods of 3-6 months provided for responding to certain EPC Communications and waiving these time limits reduces the prosecution time of the patent application.
  5. If an infringement action is pending before a national patent office at a contracting state of the EPC, accelerated opposition or appeals relating to the European patent application can be requested.
  6. Undertake certain prosecution steps earlier than is necessary.

If you have any queries relating to the above information or if you would like to file a patent application under accelerated conditions, please do not hesitate to contact us.