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31 July 2013EuropeMatt Smith and Jonathan Wills

Accelerating and decelerating patent prosecution in Europe and the UK

The time it takes for a family of patent applications to progress through patent offices around the world is enormously variable. For many applicants in the life sciences field, delays in the patent application procedure are useful since they delay grant costs, and leave the scope of claims uncrystallised, creating uncertainty for third parties. However, where there is an identifiable product to be pushed to market, there may be a need to get enforceable protection quickly.

Why fast?

The obvious reason for speeding up patent prosecution is to get the patent granted more quickly. That might be important, for example, for potential litigation. Typically, enforcement of patent rights in Europe and the UK can begin only once the patent is granted. So, the sooner the patent is granted the sooner action against infringing companies can begin.

Granted patent rights covering a company’s key products and enabling technologies may also be useful in attracting investment, since they are much more defensible in due diligence.

Other reasons may be tied to the patent procedure itself. For example, in Europe, divisional applications can be filed only within a certain window. By accelerating a case, applicants can find out if a divisional will be needed in good time, before the window closes. This means that important subject matter will not be lost because of European Patent Office (EPO) delays.

Finally, often patent applications are filed first in a low cost, ‘home’ jurisdiction (for example the UK) before being filed in other jurisdictions. By accelerating examination of that initial application, applicants can get a better idea of whether pursuing the application is worthwhile, before the decisions about foreign filing need to be made.

Speeding things up

At many patent offices a faster timeline can be achieved simply by replying quickly and fully to official communications and by frequently requesting updates on the status of the application. This is true of both the EPO and the UK Intellectual Property Office (UKIPO).

At the EPO, the main option for formal acceleration is the programme for accelerated prosecution of European patent applications—the ‘PACE’ system. Requesting PACE acceleration incurs no official fee, and the request is allowed by the EPO in the vast majority of cases. The EPO will then try to issue its search report as soon as possible (typically three to six months later). Further examination reports are issued within three months of the applicant’s last letter.

“Depending on the timings involved, the tactic of deliberately not paying a renewal fee can be used to stretch out prosecution.”

On the applicant’s part, once PACE is requested it is expected to reply to EPO communications promptly. If the applicant delays, the EPO can eject it from the PACE scheme. Then the application returns to the normal prosecution timeline. The patent attorney can also help the applicant by talking with the patent office examiner.

Many examiners have shown themselves to be willing to accelerate matters informally if they know that the applicant is willing to work with them. Opening a dialogue with the examiner also allows minor issues to be addressed relatively quickly, and without causing undue delay to the grant of the case.

The Patent Prosecution Highway (PPH) scheme is a relatively new, global initiative whereby a patent granted at one patent office can be used to accelerate prosecution of corresponding patent applications at certain other patent offices. At the EPO, PPH can be requested on the basis of a granted US or Japanese patent. It can also be based on positive comments issued during the international phase of a Patent Cooperation Treaty application.

There is some question as to whether using the PPH scheme is worthwhile at the EPO. If the request for PPH is successful, the EPO puts the application into the PACE system—which is available upon request for all applications anyway.

At the UKIPO also, there are several options for formal acceleration.

In all cases, the UKIPO tries to issue search reports as soon as possible. If a suitable reason is given, such as that the search results are wanted for analysis before foreign filings are made, the search can be obtained even sooner.

Combined search and exam can be requested, so that the first examination report is issued together with the search report. This not only gets prosecution moving, but also gives valuable information about the strength of the application. No reason is needed to qualify for combined search and examination.

The UKIPO is also part of the PPH scheme discussed above, and has agreements in place with the patent offices of Japan, the US, the Republic of Korea, Canada and Germany.

Further acceleration of the procedure can be achieved if a good reason is given. The UKIPO tends to be lenient on what the reason is. For example, “to attract potential investors” or “applicants think there might be an infringer” have been successful reasons. Another acceptable reason is that your invention relates to a ‘green’ technology.

Recently the UKIPO had a consultation about the possibility of introducing a superfast acceleration service. The idea is that, instead of giving a reason for acceleration, an official fee will be paid. The level of that fee as proposed is high, but the scheme is expected to give extremely fast grant of patents—within only three or four months.

Why slow?

Delay may be desirable to spread out the (sometimes very high) costs of the patenting procedure. In other cases, more time might be wanted to decide whether the application is valuable, or to give more opportunity for filing experimental data. Most obviously, the applicant may not yet have identified the candidate product for future exploitation. Delaying the application procedure ensures that there is time to identify and select the products for commercial exploitation, and to plan the patent prosecution and focus the claims accordingly.

“A further advantage of prolonging patent examination in a competitive field is the potential uncertainty this creates for third parties.”

Life science applicants whose business model is based on licensing-out will also want to delay as much of the patenting costs as possible until the technology is licensed. Other applicants may need to delay until a funding round is completed.

A further advantage of prolonging patent examination in a competitive field is the potential uncertainty this creates for third parties, especially if the scope of the claims which may eventually be granted is unclear.

In Europe in particular, the grant stage of a patent can be extremely costly. The reason is that a significant amount of translation work is generally needed. This is an issue that is particularly acute for life science applicants, since the applications in that field are often very long, and are therefore more costly to translate than those in other technical fields.

Slowing down

In contrast to acceleration, deceleration is generally not provided for by official schemes.

In the UK, the law states that every patent application must be in order for grant by four years, six months from its filing date (with a small extension of time available).

This means that long delay is generally not possible. Most time limits set by the UKIPO can be extended, so this gives some option for slowing things down, but the ultimate limit still exists.

Renewal fees at the UKIPO are low and there is no grant fee, so having a UK patent granted quickly does not put a large financial burden on applicants.

On the other hand, at the EPO grant costs can be extremely high.

When considering trying to slow down prosecution at the EPO, it is worth noting that in many technical fields, including biotechnology, the EPO’s internal delays mean that many years can pass between office actions being issued. It is not unheard of for cases to take more than 10 years before they are granted or finally refused. This is particularly the case for controversial areas of biotechnology, such as those relating to stem cells, where the general principles of patentability may need to be formulated or developed over time.

In addition, there are options for extending due dates set by the EPO, usually at no or modest extra cost. For example, an examination report setting a four-month period for response might actually be answered as many as eight or nine months after it issued, with no detriment to the application.

Finally, at the EPO renewal fees are levied. However, they can be paid up to six months late, at extra cost. The EPO tends not to take any substantive action in those six months (since it does not know if the application is to be abandoned). Therefore, depending on the timings involved, the tactic of deliberately not paying a renewal fee can be used to stretch out prosecution.

As explained above, there are opportunities for applicants to accelerate and decelerate the prosecution of their patent applications as required. The steps taken can be tailored to the specific needs of the company. So it’s always worth keeping your patent attorney informed if a faster (or slower) prosecution will be helpful to you.

Jonathan Wills is a partner of Mewburn Ellis LLP. He can be contacted at: jonathan.wills@mewburn.com

Matthew Smith is a patent attorney at Mewburn Ellis LLP. He can be contacted at: matthew.smith@mewburn.com

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