Basic
Patent Procedures are as follows: -
(a)
File a
patent application at the UK Intellectual Property Office.
(b)
Have a novelty search
carried out by the UK Intellectual Property Office.
(c)
Request a substantive
examination of the application based on the prior published published documents
revealed in the search.
(d)
File legal and technical
arguments to overcome any objections raised by the Examiner.
The patent application will publish automatically in the form
as originally filed at 18 months after the filing date. This
publication should not be taken to mean that a patent has been granted; grant
can take between two to four years from filing the application providing you are
successful in overcoming any legal and technical objections.
Filing an Application
Our Charges for preparing a patent application are largely
dependent on the time required to draft a detailed specification in order to
file it at the UK Intellectual Property Office.
It is possible to file an application with or without "Claims"
(statements that define the scope of monopoly that you are seeking). The
claims have to be wide enough to cover your invention and other equivalent or
alternative ways of carrying out your invention, but they must not be too wide
so that they cover inventions made by others before the date of your
invention. The claims require great skill to draft and therefore contribute a
significant part of the overall costs. If
you file an application without claims they must be filed within 12
months of filing the application, and further formalities have to be complied
with at that time. Filing the claims later than at the date of filing will incur
slightly more cost at that stage than if they are incorporated at the date of
filing. There are distinct advantages in filing the claims at the time of filing
the Application as will be explained below. The route to obtaining grant of a
patent is explained below
Official Novelty Searches
Before a patent is granted it is necessary for the UK
Intellectual Property Office to carry out a novelty search to see if there are
any earlier published documents that would render your application invalid. You
can request an official novelty search at the time of filing the
application but this requires the claims to be filed, on which the novelty
search is based. A search request
need not be made at the date of filing, but in this case it must be done within
12 months if you intend to continue with the British patent application; this
will incur a further additional cost at that time.
We recommend that both the claims and the search request are
filed at the date of filing, because the results of the novelty search will then
be available early (typically after about 3 - 6 months from filing the patent
application). The search report can
then be taken into account when deciding whether to continue with the British
application, or when deciding foreign filing. The disadvantage is that any
subject matter for improvements, for example, included in a follow-up patent
application, will not be searched, and in order to be searched may require the
preparation of separate claims, for any new matter and this will entail paying
an additional search fees. We make no charge for reporting the search results to
you. Publication of the search report usually takes place at the time the
application as filed is published (18 months after the date of filing).
Substantive
Examination
A substantive examination based on the results of the search is
carried out by the UK Intellectual Property Office
not be due until
about 2 years time. After requesting examination, an examiner examines the
application and may raise novelty or inventiveness objections based on any
earlier published documents revealed by the search report, and other technical
and legal objections. A response must be
filed to the Examination Report. The examiner could raise further objections
and, each time it is necessary to respond to those objections. We recommend
delaying filing the request for substantive examination until after the search
results are published unless there is an overriding need to secure early grant
of the patent in the UK.
Grant of
Patent
Once all of the examiner’s objections are overcome, the
application will proceed to grant and a certificate of Grant will be issued.
Thereafter, annual renewal fees become due (from the fourth year onwards)
for the life of the patent (max 20 years from application date).
Fast Track Prosecution Routes
The British Patent Office has introduced two
“Fast Track” routes for speeding up the process of obtaining grant of the
patents.
The first route is referred to as the Patent
Prosecution Highway (PPH) route relates to an agreement with the US Patent
Office whereby each country will accept the previous examination of the other
country in place of their own examination. This enables US Applicants who base
their British Applications on US PCT Applications to request faster prosecution
of their British Applications by relying on the US Examination.
The second fast track route relates to speeding
up the prosecution of inventions where it can be shown that there are adequate
reasons to want to speed up the prosecution (for example someone is infringing,
or there would be a public benefit in making the technology available to the
public). The Patent Office has introduced three measures whereby the process
could be speeded up to lead to early publication and grant of the patent. The
three measures are
(1)
Combined Search & Examination
(2)
Accelerated Search & Examination,
and
(3)
Early publication
If these three measures are requested when
filing the application it is possible to reduce the period from filing to grant
to less than a year. Since Publication would normally take place 18 months after
filing, when this procedure is invoked publication occurs early to enable a two
moth period for third party objections prior to granting the patent.
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further information
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