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.
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