The Examination of a patent application can take several years during which time the patent application has a “pending” status. This is not necessarily an issue as it gives time to the applicant to mature his commercial project while keeping the scope of protection open.
On some occasions however it may be beneficial or necessary to obtain legal certainty as early as possible, for instance to convince commercial partners and investors or to take legal action against an alleged infringer.
Most patent offices provide a route to accelerate patent prosecution.
The UK Patent Office
To reduce examination time under normal circumstances the applicant may simply choose to request a combined search and examination on filing and respond promptly to communications issued by the patent office. This proactive approach can already lead to a faster grant.
However, to really speed up the procedure, the applicant may choose to file the application with a request for accelerated combined search and examination together with early publication. This requires also providing reasons for wanting such an accelerated procedure or demonstrating that the application relates to technology that can claim an environmental benefit (Green Channel).
A patent application is normally published around 18 months from its filing or priority date. At the UKIPO a patent application cannot be granted until three months after publication to give sufficient time for third parties to make observations. When requesting early publication the application can be published in about six weeks from the request. If the UKIPO agrees to the request, a combined search and examination report can then be expected within 3 months, publication within 5 months and possibly Grant within a year [1].
The European Patent Office
The EPO provides its own programme to accelerate patent applications. This is known as PACE [2]. Applicant must file a PACE form and specify which stage of the procedure they want to accelerate. A PACE request can only be filed once for search and once for examination. There is no official fee for this procedure, however the EPO will only consider a PACE request if any defect identified at an earlier stage have been addressed by the applicant. In practice the EPO will aim at issuing its next examination report within 3 months of receipt of the PACE request.
In addition to the PACE program, the applicant has the option of reducing the number of communications issued by the EPO during the examination procedure by “waiving” invitations under specific rules [3]. For instance, before the applicant receives the search report, they can request examination irrespective of the result of the search. In this case the EPO sends the search together with a first examination report at the same time.
Other Patent Offices
Most major patent offices provide their own specific accelerated procedures. For instance the US Patent Office offers a Prioritized Patent Examination Program referred to as Track One [4] for which the Applicant must file a request and pay an additional (significant) fee. The number of granted requests is limited in each fiscal year; however, for successful applications the USPTO aims at providing a “final disposition” within twelve months of the prioritized status being granted.
The Japanese Patent Office provides “accelerated” and “super accelerated” examination procedures for related applications filed both at the JPO and in another foreign IP office [5]. The applicant must comply with several requirements, including filing a written explanation of the need for accelerated examination, providing a disclosure of prior art documents and an explanation comparing the invention with the prior art.
The Patent Prosecution Highway
Once an application has been granted in one patent office it is possible to accelerate examination in other offices under the Patent prosecution Highway Program (PPH). It is also possible to request accelerated processing in the national phase of an international application (PCT) that has received a positive International Preliminary Examination Report.
PPH requirements may vary between offices but generally require amending the claims to match the claims of the original granted patent. Although the program does not guarantee in any way that the patent application will be granted in the other office(s), it accelerates the examination procedure by reusing the search and examination results obtained earlier.
The number of offices participating in the PPH program has increased over the years and includes the EPO, the UKPO, the USPTO, the Chinese Patent Office CNIPA and the Japanese Paten Office JPO, among many others [6].
Conclusion and further thoughts
Although patent laws and rules differ between Patent Offices, most offices provide procedures to accelerate patent applications. In recent years Patent Offices have increased their collaborative efforts to share their work product via the PPH program to offer a streamlined option for prosecution.
Ultimately the scope of protection of any application is primarily dictated by the information provided in the application as filed and starting with a high quality application will facilitate examination. Performing a prior art search before filing may also provide significant information that help focussing on key novel and inventive aspects of the invention [7].
[1] https://www.gov.uk/guidance/patents-accelerated-processing
[2] https://www.epo.org/law-practice/legal-texts/official-journal/2015/11/a93.html
[3] https://www.epo.org/law-practice/legal-texts/official-journal/2015/11/a94.html
[4] https://www.uspto.gov/patents/initiatives/usptos-prioritized-patent-examination-program
[5] https://www.jpo.go.jp/e/system/patent/shinsa/jp-soki/index.html; https://www.jpo.go.jp/e/system/patent/shinsa/jp-super_soki/index.html
[6] https://www.wipo.int/pct/en/filing/pct_pph.html; https://www.jpo.go.jp/e/toppage/pph-portal/network.html
[7] https://www.scintilla-ip.com/prior-art-searching-to-evaluate-the-patentability-of-an-invention/
At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!