London Patent

UK Patents are, as we noted before, fast.

Normally, a UK patent application will be examined with a full search and examination report within 4 months of the day of the request.

However, in some cases, even this is not enough.

The examiners have the power to accelerate the examination even more. If a special reason (such as actual infringment) for accelerating the examination exists, a letter to the examiner can have your application reach examination within a few weeks. Just to let you know.

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The UK Patent Office published a new litigation manual. The manual can be accessed on the UK IPO’s website, here:

http://www.ipo.gov.uk/pro-types/pro-patent/p-law/p-manual/p-manual-litigation.htm

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A relatively new convention provides an excellent method of accelerating US patents.

The most important jurisdiction for patent filers is the United States of America. It is the largest market for many products, and a US patent, being a federal patent which covers all US states, is very cheap compared to the huge market it covers.

However, until a US patent reaches examination, you can wait a few years.

We believe that the most cost-effective and successful way to change this is by using a relatively unknown convention called the Patent Prosecution Highway (PPH). According to the PPH, one can request to advance in line a patent filed in the US, if such a patent is based on a UK granted patent’s priority date, and vice versa.

Since reaching examination in the UK can be very fast (usually within 4 months since the moment of filing the search request), this can be a very effective way to accelerate the US patent.

This option is not practical for US applicants, as a US applicant must file in the US first to obtain a foreign filing license, but for non-US applicants (such as UK applicants), filing in the UK and then in the US can be an excellent opportunity to enjoy a “skip the line” mechanism.

Same applies for the UK and Japan, as a PPH convention also exists between these two countries.

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In a recent consultation document, the UK IPO suggests a significant increase on UK patent fees.

Here are some of the proposed changes are:

- Increase of search fee from £100 to £200.
- Increase of examination fee from £70 to £150.
- Increase of the search of an International application from £80 to £160.
- To increase the discount for E-filing to £30.
- To introduce a fee of £20 for each claim above 15 in a patent application.
- To increase patent renewal fees. Increase on first 12 years will be minor while for the next 7 years they will be substantial.

The patent office requests the public to comment on these changes. the fear is that the changes will discourage applicants from filing patents. The patent office’s case is “it is still cheap under the discount”.

So here is our reply: dear patent office, please please please don’t do this. The UK IPO is a rare example to a government agency that operates professionally and quickly without burdening the public with high fees. The suggested increase will put the UK IPO in line with the United States Patent and Trademark Office in terms of fees and will make significantly discounrage applicants from filing patents.

A 10% increase is reasonable although we don’t think there is a true need for that. Doubling the fees is just too much. Do not do that.

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Many countries have laws prohibiting nationals to apply for a patent in a different country in certain cases, before getting permission. US residents, for example, require that every patent will first filed in the US to obtain a foreign filing license.

In the UK, section 23 of the Patent Act states that if you are a UK resident and your application contains information about military technology, or could harm national security or public safety, you must either:

• apply first for the patent in the UK. You can apply abroad 6 weeks after your UK application date, as long as not have been told otherwise.
  or
• get permission from the UK IPO before you apply.

A permission should be requested from the Security Section, Room GR70 at the folloing address:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Phone: +44 (0)1633 813558
Fax: +44 (0)1633 814415

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Here, Hon. Justice Kitchin establishes that the test for acknowledging a priority claim is that the person claiming priority must be the same person who filed the priority application or his successor in title in the date of filing the application claiming the priority. Here is the relevant quote:

“In my judgment the effect of Article 4 of the Paris Convention and section 5 of the Act is clear. A person who files a patent application for an invention is afforded the privilege of claiming priority only if he himself filed the earlier application from which priority is claimed or if he is the successor in title to the person who filed that earlier application. If he is neither the person who filed the earlier application nor his successor in title then he is denied the privilege. Moreover, his position is not improved if he subsequently acquires title to the invention. It remains the case that he was not entitled to the privilege when he filed the later application and made his claim. Any other interpretation would introduce uncertainty and the risk of unfairness to third parties. In reaching this conclusion I derive a measure of comfort from the fact that the Board of Appeal of the EPO has adopted the same approach to the interpretation of Article 87 EPC in two cases: J 0019/87 and T 0062/05. “

The case was about an artificial heart valve rendered invalid as it was obvious in light of a few prior art references.

The priority application was a US provisional application.

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The UK Patent Court gives a few rulings every month. They are long and technical.

Starting next post, we will quote the important parts of the UK Patent Court decisions, to make it easier for the professional and unprofessional public to follow up. We will also be counting how many patents were held valid, how many cancelled, and how many cancelled in part.

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On Monday, June 29, 2009, a free IP awareness seminar will be held.

The seminar  is meant for anyone who wants to learn the benefits of Intellectual Property protection.

Free lunch will also be provided.

The venue:

Ramada Maidstone
Hollingbourne
Nr Maidstone
Kent
ME17 1RE

The speakers will be:

admin patents copyrights, patents, trademarks, UK IP Awareness

On 12 May 2009, a “Green Channel” for patent applications was introduced.

The “Green Channel” is a UK IPO service which allows applicants to request accelerated processing of their application if the invention relates to a ‘green’ or environmentally-friendly technology.

To enter the Green Channel, the applicant should make a written request,  indicating:

• that their application relates to a ‘green’ or environmentally-friendly technology and
• the actions they wish to accelerate: Search, Combined Search and Examination, Publication, and/or Examination.

That’s it. No further reasons will be required.

This service will apply to both new and existing applications.

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Here is another good reason to file a patent in the UK – it is one of the quickest jurisdictions.

If you choose to request a search together with filing the application you are expected to have a search report within 2-3 months. In the United States, it will take 2-3 years if you are lucky, in most fields.

Fast patent examination may be important for many reasons – you may want to have a good indication that it is more “safe” to go on with the project. You may want to show investors that the patent is “good” and has good chances to be allowed. You may want to accelerate corresponding applications (more on this issue – in another post). You may simply want a certificate of a granted patent on the wall.

In any case, the UK patent examination is expected to start faster than in more jurisdications.

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