Intellectual Property Advisory: The UK Intellectual Property Office Has Recently Announced a New Fast Track Examination Service for PCT Applications
7/28/2010
The UK Intellectual Property Office has recently announced a new fast track examination service for Patent Cooperation Treaty (PCT) applications entering the United Kingdom (GB) national phase which received a positive International Preliminary Report on Patentability (IPRP), under either Chapter I or II of the PCT. This service is known as the PCT (UK) Fast Track.
Under the new fast track service, accelerated examination can be requested for PCT applications entering the GB national phase where the following requirements are met:
- All claims present in the application on entry into the national phase have been examined in the international phase—that is, all claims present in the application must have been considered in the IPRP;
- All claims present in the application on entry into the national phase were found to be novel, inventive, and industrially applicable in the IPRP.
In order to request accelerated examination for such applications, all that is required is a written request for accelerated examination, indicating that the application has received a positive IPRP. There is no official fee. In contrast to the other options for requesting accelerated examination at the UK Intellectual Property Office, no reasons are required.
Once the request for accelerated examination has been filed, it will be considered by an examiner who will confirm whether the request is allowed or refused. Where the UK Intellectual Property Office has not yet received a copy of the IPRP from the World Intellectual Property Office (WIPO), the applicant may be asked to provide a copy to avoid unnecessary delays. If the request is refused, reasons will be given. For cases where the request is allowable, the UK Intellectual Property Office aims to issue the next examination report within two months of receipt of the request for accelerated examination for at least 90% of cases. The examination report will either approve the application or raise minor formal objections. Any substantial issues will have been addressed in the international phase, and therefore a rapid grant can be expected.
The usual opportunity for filing voluntary amendments after receipt of the first examination report will not be lost—therefore it will still be possible to file minor amendments, for example, to correct errors. However, if more substantive amendments are desired, other examination routes may be more appropriate.
The new service is available for all currently pending PCT(UK) applications, as well as those which enter the GB phase in the future. For applications without a positive IPRP, other options for accelerated examination may be available—a guide to additional options can be found at http://www.ipo.gov.uk/p-fastgrantguide.pdf.
For assistance in this area please contact one of the attorneys listed below or any member of your Mintz Levin client service team.
Julian Crump
+44 (0) 20 7776 7302
JCrump@mintz.com
Ivor R. Elrifi, Ph.D.
(617) 348-1747
IRElrifi@mintz.com
Emma Bevan
+44 (0) 20 7776 7379
EBevan@mintz.com
Anne Campbell
+44 (0) 20 7776 7317
ACampbell@mintz.com
Victoria Clarke
+44 (0) 20 7776 7372
VClarke@mintz.com
Isobel Finnie
+44 (0) 20 7776 7318
IFinnie@mintz.com
Alison V. Haile
+44 (0) 20 7776 7351
AVHaile@mintz.com
Susan L. Foster, Ph.D.
+44 (0) 20 7776 7330
SFoster@mintz.com
