Guest post from Paul Cole of Lucas & Co.
Claims searched, examined and approved for grant (subject to publication and possible third party comments) within six working days? Not only theoretically possible but actually achieved in an application filed earlier this year at the UK IP Office through our firm. And in contrast to the situation in the US, achieved at no additional cost to the applicant.
The UK IP Office offers three types of accelerated service:
- Combined search and examination (CSE)
- Accelerated search and/or examination
- Early publication
Any applicant can use the combined search and examination procedure, in which case according to targets within the IP Office there is an 80% chance of receiving results within four months from the original filing date. Complete and prompt response should lead to early grant. All that is necessary for combined search and examination is to file a request for substantive examination when the request for search is filed or before the search has been carried out; it may be helpful to include a covering letter specifically requesting combined search and examination.
Accelerated search and examination and early publication are available when an applicant needs early grant in order to secure investment or where there is a potential infringer. It is also available as of right for inventions relating to “green” technology (the case handled by our firm fell into this category). According to the UK IP Office if these procedures are used, grant within nine months of initial filing should be readily achievable. All that is necessary is to file at the IP Office a letter requesting expedited processing and giving supporting reasons. For example, in the case handled by our office we included the following in a letter to the IP Office:
“Expedited processing is requested on the ground that the present invention qualifies for processing within the Green Channel. Significant environmental benefits are expected to flow from embodiments of the invention. In particular, the invention is intended for the processing of municipal solid waste and other waste materials… It is envisaged that substantial recovery of biomethane will result which can be used as a fuel or can be combusted to generate power. Furthermore the recyclable component of waste will be converted to a more compact and easily recovered form and the volume of solids from the anaerobically digestible component will be significantly reduced. Overall, recovery of energy and recyclable components of waste will be improved and the amount of material going to landfill will be reduced.”
Where the request is on the ground of securing investment or of foreseeable infringement the covering letter needs to state the reason why accelerated prosecution is needed and to provide sufficient factual information to support the request and make it credible to the IP Office. It is advisable to make such a request in a separate letter, in which case it may also be requested that the letter concerned and any supporting documents should not be placed in the public part of the official file.
Where there is a parallel PCT application a short delay may be advantageous to allow the PCT search (which is wider than that carried out by the UK IPO) to become available and the results to be considered. But the UK IPO can process applications considerably faster than the EPO, and the UK route is advantageous for applicants for whom a granted patent, and not just a pending application, is important.