Routes to Accelerated Prosecution at the UKIPO

Routes to Accelerated Prosecution at the UKIPO

A faster patent grant may be beneficial to an applicant for commercial reasons, such as assignment or licensing. Furthermore, as a patent can only be enforced after grant, accelerated prosecution may also be useful to an applicant who is already aware of a potential infringer.

At the UKIPO, general strategies available to any applicant to decrease the time taken for a patent to be granted, include filing a request for combined search and examination on filing the application (rather than subsequently), meeting all deadlines, and responding promptly to any official communications such as examination reports.

Furthermore, a patent applicant may submit a reasoned request for acceleration of search, examination, and/or publication of an application. Such a request could be based, for example, on a statement that the applicant is aware of a potential infringer.

Acceleration of search, examination and/or publication in respect of applications which provide an environmental benefit can also be sought via the UKIPO’s “Green Channel” programme, as discussed in our earlier news article.

In respect of international (PCT) applications, it is possible to request early entry into the UK national phase. It is also possible to request acceleration of the prosecution of a UK national phase entry application, under the PCT (UK) Fast Track programme. To qualify for this programme, the claims of the application on entry into the UK national phase must sufficiently correspond to claims which have been found to acceptable in the International Preliminary Examination Report, or in the written opinion of the International Searching Authority.

Accelerated patent prosecution can also be sought under the Patent Prosecution Highway (PPH), or the Global Patent Prosecution Highway (GPPH).

The PPH initiative enables an acceleration of a patent prosecution in respect of an application which has been examined, and found to be acceptable, by an intellectual property office of another jurisdiction, and have been found by that office to be acceptable.

The GPPH pilot scheme is available in respect of participating intellectual property offices, and allows a patent applicant to request acceleration on the basis of one or more co-pending applications at another participating office. Currently, 27 intellectual property offices are participating in the GPPH pilot scheme, including the offices of the UK, Japan, USA and Korea. Notable exclusions to the list are the European Patent Office, and the Chinese patent office, SIPO.

The UKIPO also holds bi-lateral pilot PPH agreements with the intellectual property offices of China and Brazil.

It is to be noted that the filing of a PPH request at the UKIPO or any other intellectual property office does not guarantee allowance.

If you would like more information regarding accelerated prosecution of patent applications, please contact Secerna LLP at docketing@secerna.co.uk or +441904 202900.

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