I Think I Need a Patent ASAP – How Quickly Can I Get One?

Introduction:

There are some instances where an inventor or applicant would want to know how quickly they could get a patent. For example, it may be because they have a brilliant idea that they would like to protect before disclosing it to the public or to investors (first case). Or they may simply want to get a patent in order to stop others from infringing on their newly patented invention (second case).

In the first case, it would be sufficient to file a patent application at the Patent Office and potentially wait for its publication. In the second case, the patent would need to be granted and in force i.e., with renewal fees paid for an up-to-date, before it can be enforced against infringers.

In the first case, it may well be that an investor wants to see a granted patent before they are willing to invest. In the second case, the applicant may have identified a potential infringer and may want to get a quicker grant in order to be able to take action against the infringer.

In this article, we will look at the patenting process, and the stages involved to gain a better understanding of how long it typically takes to get a granted patent – assuming the invention is patentable. We will then look at measures that can be taken to potentially speed up the process if that is what appears to be a favourable approach.

Pre-grant Stages that a Patent Application Undergoes:

There are formal requirements that need to be met upon filing a patent application in order for it to proceed to search and examination.

The patent application should include documents indicating a patent is sought, documents identifying the applicant enabling them to be contacted, and a description of the invention or reference to an earlier relevant application (priority application).

Not all patent applications have a priority application to refer back to – this only applies if you are ‘claiming priority’ i.e., are filing a subsequent application that refers back to a priority application for the same invention, by at least the same applicants, in order to retain the same original filing date (priority date).

The abstract and claims can be filed within the later of 12 months from the priority date (where priority is claimed) or 2 months from the filing date.

Similarly, the application fee, request for search and search fee as well as any excess claim fees (where there are more than 25 claims) need also to be filed/paid within the later of 12 months from the priority date or 2 months from the filing date.

A declaration of inventor must also be filed within the later of 16 months from the priority date and 4 months from the filing date.

A certified copy and translation of an earlier relevant application may also be required, and this should be filed within the later of 16 months of the priority date and 4 months from the filing date.

All of the above-mentioned deadlines can be extended by a further 2 months.

Once the above formalities are paid for and/or filed, the patent application may proceed to search i.e., a search to identify any prior art that the Examiner may use to form objections on grounds of novelty or inventive step.

The request for examination, examination fee, and any excess page fees (where there are more than 35 pages of description) need to be filed/paid within 6 months of publication.

That said, this deadline is the final opportunity, and the examination fee could otherwise be paid much earlier including, for example, at the time of filing the patent application. Hence, the applicant could request a ‘combined search and examination’ report to help speed up the process.

The patent application is published at around 18 months from the priority date (same as filing date where there is no priority application), and preparations usually take place 5 weeks prior to the publication date.

Therefore, the applicant has up until 24 months after the priority date to request examination, after which they will need to wait for a s.18(3) examination report from the Patent Office. Once the examination report is issued, the applicant would typically have 4 months to respond.

Once a search report and s.18(3) examination report are issued, then depending on the search and exam results, the applicant may need to amend the application to overcome the Examiner’s objections e.g., where the Examiner finds that the invention is not new and/or inventive and that the claims are not patentable.

By amending the claims and description, the applicant may then re-submit the application for consideration by the Patent Office. Alternatively, the applicant may argue against the Examiner’s objections. In either case, the timeline for getting a granted patent is subjective at this stage, unique to each patent application, as it is largely dependent on the rounds of examination and/or the applicant’s responses.

The Patent Office may issue further s.18(3) examination report(s) and this process continues until the patent application is refused. The applicant can then appeal the decision or request a hearing.

A patent application has to abide by the ‘compliance period’ or R.30 period. By the end of this period, the application must be in a form that the Patent Office can grant or refuse the patent. The compliance period is calculated as the later of 4.5 years from the priority date or 1 year from the first s.18(3) examination report.

However, if the Examiner deems the patent application is patentable, then a s.18(4) report will be issued, notifying the applicant of the intention to grant – this forms the administrative grant date. Pre-grant procedures end at this administrative grant date.

A s.18(4) notification of intention to grant may well be issued on first examination, in which case no s.18(3) examination report will be issued against the patent application. In this case, the patent application may proceed to grant without any patentability objections being raised by the Examiner.

The earliest possible administrative grant is 3 months after publication. This is for the Patent Office to allow 3 months for any third party observations, where anyone can raise objections against the published patent application proceeding to grant. If third party observations are filed, then this can delay things further.

Limbo Period:

The applicant has a 1-month window to file voluntary amendments once the s.18(4) examination report is issued.

Where the s.18(4) report was issued on first examination i.e. no s.18(3) examination report(s) were issued, the applicant would have a 2-month window to file any voluntary amendments.

During this 1- or 2- month period, the patent application cannot proceed to grant, and patent application is therefore pending – and so the applicant could also file a divisional application (which must always be filed before grant).

The applicant also has to pay a grant fee as well as to settle any excess claim or page fees (since they were last dealt with at the request for search/exam).

Once these matters are dealt with, the patent application will be published in the Official Journal and this is when monopoly rights begin, and where the post-grant life of the patent begins.

Post-grant matters can include post-grant amendments, renewals, restoration, infringement, validity, revocation, corrections, transfers etc. and will be discussed in other articles as part of The Patent Alphabetical blog.

Timeline:

As can be seen from the above stages that a patent application would go through, even if the applicant ensures all of the formalities are dealt with in a time-efficient manner, then the earliest administrative grant can take place is at around 21 months after the priority date which is based on publication after 18 months followed by 3 months for third party observations – and that’s if a s.18(4) report is issued on first examination which is not always likely – and then at 23 months from the priority date, the mentioned of the granted patent in the Official Journal completes the timeline.

The compliance period on the other hand is also a good indication of how long a patent application can take before a decision on granting or refusing a patent is made by the Patent Office – which could be the later of 4.5 years from the priority date or 1 year from the first s.18(3) examination report.

Typically, a patent application will go through at least one round of examination before it fulfills the requirements for patentability. Therefore, the time period from filing to grant is usually between these limits, say somewhere between 3 to 4 years from its filing date.

Rights Conferred on Publication:

A 3 to 4 year patent prosecution period can seem a little disheartening, but it is important to note that although a patent can only be enforced after grant, publication of a patent application confers ‘provisional protection’.

If the claims as granted are the same as those as published, then damages or account of profits can date back to publication. For this to apply, however, a potential infringer would have to have been put on notice such that any infringement that took place before the patent application was granted does not benefit from an innocent infringement defense.

Therefore, it may well be possible to ‘flex’ the patent once it is published – taking care to avoid any unjustifiable or actionable threats but simply drawing attention to the existence of the patent to a manufacturer or importer.

That’s why if an applicant notices a potentially infringing act by a potential infringer against its ‘not-yet-granted’ patent application, the applicant may decide to make some pre-grant amendments to improve the impact of the ‘provisional protection’.

The applicant would also send the potential infringer a copy of the published patent application to put them ‘on notice’. Other options could include trying to buy the infringer’s product to assess the infringement or even offering a license where there is some mutual benefit.

Therefore, although it is the grant of a patent that is required to actually enforce it, filing of a patent application carries a benefit of enabling a public disclosure without anticipating novelty of a patent application – and similarly, the publication of a patent application carries the benefit of enabling provisional protection – both are important milestones towards ultimately, enforcement that is made possible once the patent is granted.

Accelerating Patent Prosecution to Grant:

There are several measures that a patent applicant can take to accelerate patent prosecution to grant.

Combined Search & Examination:

As already mentioned in this article, a request for search and search fee as well as any excess claim fees need to be filed/paid within the later of 12 months from the priority date or 2 months from the filing date.

Similarly, the request for examination and examination fee as well as any excess page fees need to be filed/paid before the end of 6 months after publication of the patent application. However, these are the latest opportunities i.e., final deadlines and the applicant wishes to do so, they may complete these earlier – as early as when the patent application is filed. As such, the patent applicant can request a ‘combined search and examination report’ to speed up the patent prosecution process.

Requesting combined search and examination will start the examination process much sooner and may help get the application ready for grant more quickly.

There is no need to provide any reasons for requesting a combined search and examination. Typically, the search and the examination reports are received within six months of the request being made.

Request Early Publication:

Typically, a patent application is published around 18 months from the priority date. If a request for early publication is made, however, then the patent application may be published earlier – usually 6 weeks from receipt of the request by the Patent Office (assuming the search has been completed). That said, the patent still cannot be granted until after 3 months from publication to allow for third party observations.

Early publication could inadvertently notify others about your activities and shorten the time available for you to build your market, as publication would make your invention public. Early publication on the other hand would enable earlier ‘provisional protection’ allowing the proprietor to put potential infringers on notice, and potentially dating back infringement – once the patent is granted – to the date of publication.

Request Accelerated Prosecution with Reason:

A request for accelerated search or examination should be made in writing. It can be requested at the same time as filing the application by including a cover letter indicating whether accelerated search or examination or both is requested. The Examiner will consider the request based on the reasons provided.

Green Channel:

The Green Channel for patent applications was introduced on 12 May 2009. It offers expedited processing for patent applications relating to technologies with environmental benefits.

Applicants can request acceleration in writing, specifying the environmental-friendliness of their invention and the processing steps they want to accelerate i.e., search, examination, combined search and examination, and/or publication – acceleration is not automatic.

The service is available to applicants asserting a reasonable environmental benefit, without detailed investigations.

A database exists to search for applications accelerated under the Green Channel, and the service is free of charge.

Conclusion:

Accelerating patent prosecution to achieve grant quickly may or may not be in the applicant’s best interest.

The earlier a patent application is published, the earlier the technology is made available (via patent publication) in the public domain. However, the patent proprietor may intend to disclose the technology prior to publication, and after filing of the patent application.

Sometimes, applicants prefer a slower prosecution process as this may provide more time to build the business model that supports the technology.

If a faster grant is requested for example, for investors, or enforcing the patent against infringers, then there are several options by which patent prosecution can be accelerated. The stages involved in the patenting process are fixed but ensuring requests and payments are made in a timely manner can help to achieve this.