Basic British Patent
Procedures
(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 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.
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. 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.
An examiner examines the application and may raise novelty or inventiveness
objections based on any earlier published documents revealed by the search
report, . 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.
Grant of Patent
If 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 for the life of the patent.
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 and 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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