Legal Updates
A proposal for a premium “superfast” patent processing service is now out for consultation from the UK IPO. This new service, which could potentially be available from later this year, promises a tremendously shortened time-line for patent processing of around 90 days. We believe that one of the primary reasons behind this potential new service is to assist applicants seeking faster grant in order to qualify for the UK Patent Box regime, which opened for business on April 1st 2013. HGF has been monitoring the situation with the Patent Box closely and in general welcomes proposals which assist innovative companies in obtaining rapid ROI on their technology. However, we believe that should the presently proposed relatively high fee for the service survive the consultation, this may well dissuade applicants from making use of the new process, particularly those within the SME community.
The key features of the proposed service are:
- On request the IPO will accelerate all stages of the application process and aim to achieve grant within 90 days, for applications claiming priority, but at least 120 days for first filing applications not claiming priority (this would be to enable reasonable prior art searches).
- An additional new superfast processing fee would be payable, anticipated to be in the region of £3500-£4000.
- No reason would be required to request superfast processing, which is a welcome feature and a change from the current accelerated processing service.
- Publication would occur on or after 50 days from filing, and a minimum of 1 month before grant, to allow 3rd parties to file observations.
- Post-grant searching will still be carried by the IPO, for prior art filed before the superfast application, but not published till after grant.
The consultation is open until June 2013 and we shall report further as the process moves forward. If you would like to respond to the consultation, we are always happy to file this on your behalf, or assist in the preparation of a response.
HGF Comments on the proposal: It is already possible to achieve relatively fast-grant in the UK (in about 10 months - 1 year) with no additional processing fee, using the currently available optional accelerated processing service under either the Green Channel for environmentally friendly technology, or by requesting accelerated search, examination and publication in any other area of technology – where an acceptable reason is provided. Alternatively, for applications already underway, UK examination may be accelerated using either the Patent Prosecution highway (PPH) or the PCT (UK) Fast Track services, where applicable.
Although these existing options may well provide sufficient acceleration for many applicants, none has such a short, relatively fixed, time-frame for grant proposed by the new “superfast” service. We would anticipate the new service will be of most interest to those applicants considering filing an application for a product having projected high sales, but a time-limited life-cycle, perhaps in a quickly developing and highly competitive area of technology, because fast-grant in itself would be desirable, with faster access to the Patent Box being a “bonus” feature. Alternatively, there may be merit in using the proposed new process in circumstances where a degree of legal certainty is required exceptionally quickly on what sort of granted UK claims may be achieved.
It is noted that “normal rules” will still apply for prior art under the proposed “superfast” regime, and so the IPO will complete a further (top-up) prior art search after grant. As such, there will always be a risk that earlier-filed documents will publish at later date and pose a risk to the superfast granted claims. This may occasion either amendments or even revocation, but the new service does anticipate this issue by providing an opportunity to file comments or amendments as necessary.
If it is introduced, the projected “superfast” grant within 90 or 120 days would potentially provide grant up to 6 months earlier than is presently possible using accelerated processing at the UK IPO. However, the added-value provided by this faster-processing needs to be considered carefully in view of the cost, as well as the underlying risks.
If you would like to discuss this topic further, please do get in touch with your usual HGF representative.
From 1 April 2013, the “patent box” will reduce the rate of UK corporation tax on qualifying profits from patented products to 10%. We can provide a fixed-price patent filing programme for new products to take advantage of these tax benefits. The programme is cost-neutral for products that are expected to generate more than £600,000 of total global sales over the 20-year life of the patent.
On 16 March 2013, US Patent Law will change from a “first-to-invent” (“FTI”) system to a “first-inventor-to-file” (“FITF”) system. This change benefits inventors who are the first to file their patent applications, rather than inventors that are the first to invent. The FITF system also means an increase in the scope of prior art that may be used against a US patent application.
Following a recent EPO legal decision, the European Patent Office has issued a notice to advise that the date the EPO has been using to calculate the deadline for filing divisional applications may not be correct. Therefore, some applicants that still have applications pending at the EPO, may still be within the time limit to file a first or further divisional application.
On 11 December 2012, the European Parliament voted to approve the “unitary patent package”. This new patent regime gives businesses the option to protect their inventions across all 25 participating EU Member States through a single application administered by one organisation.
more...The Australian Patents Act will be amended on 15 April 2013 to impose a greater burden on applications. It is possible to avoid the increased examination standard by requesting early examination of pending Australian applications.
Community Trade Mark Registrations are of great value to any brand owner given that they cover all twenty seven member states of the European Union.
