New Proposals for “Superfast” Patents
Published:13 June 2013
The UKIPO has outlined its initial plans for introducing a “superfast” patent application procedure which could see patents being granted in just 90 days. However, the “superfast” service is likely to come at a substantial cost, which is being proposed to be around £3500-£4000.
A standard UK patent application can take up to 54 months to process, although the average processing time is around 36 months[i]. The long processing time can be advantageous for some applicants, particularly those who wish to delay patent prosecution costs, develop their invention into products and those in the pharmaceutical industry. However, the delay can be a problem for others.
A speedy grant can be advantageous for products that have a short life cycle, patents that are being or likely to be infringed and for companies that are seeking funding for their invention. The UK IPO currently offers a number of ways to speed up the application process. Requesting combined search and examination, which is available at no extra cost, can reduce the processing time to 21 months. This process can be further accelerated to less than a year under certain circumstances[ii].
Speeding up the application process in the UK can also help speed up applications in other countries under the Patent Prosecution Highway (PPH) programme. A positive examination report issued by the UK IPO, which indicates that at least one claim is patentable, can be used to fast track applications elsewhere. A positive examination report can be obtained in 3 or 4 months under current UKIPO acceleration options. If the “superfast” procedure was introduced a positive examination report could be obtained in as little as 5 days. This may be particularly useful for fast tracking corresponding applications at the USPTO, which has a notoriously large backlog of applications awaiting examination.
Currently, accelerated processing brings the publication of the patent application forward from 18 months to 5 months from the filing date. This period will be reduced to 1 month under the “superfast” proposals. Thus publication will occur well within the priority year, which could hinder patent applications filed to developments of the original invention within the priority year but after publication of the original application.
Further details on the proposal can be found at: http://www.ipo.gov.uk/consult-2013-superfast. The response period for the public consultation has just ended and we await publication of the results, which we hope will arrive in a suitably superfast manner.
[i] http://www.ipo.gov.uk/foi-log188.pdf
[ii] An applicant can request accelerated search and examination: i) if they have an adequate reason (such as the need to secure an investor, or the need to expedite grant due to a potential infringer); ii) if the invention relates to environmentally-friendly technology; iii) under the Patent Prosecution Highway scheme (where the claims of an equivalent application have been found allowable by another intellectual property office that is part of the PPH programme); and iv) under the PCT(UK) fast track scheme for the UK national phase of a PCT application that has received a positive International Report on Patentability.
