During these unprecedented times, many innovators are focussing on swiftly delivering solutions to tackle the Covid-19 pandemic. Patent rights play a crucial role in helping small to medium sized innovators commercialise inventions. Sometimes, potential investors may require a positively examined patent application, or even a granted patent, before committing crucial funds. Accelerating the examination of patent rights at the Patent Office has, therefore, become all the more important as innovators look to expedite their Covid-19 patent applications through to grant and, ultimately, secure the investment needed to bankroll product development. Even for those with the necessary financial resources to advance their products without the need for investor funding rounds, acceleration of patent applications at the Patent Office ensures that products can safely enter the market without their patent protection lagging far behind.
This article explores the various acceleration avenues available to Covid-19 related patent rights at the United Kingdom Intellectual Property Office (UKIPO) at a time when it is needed most.
Whilst the acceleration routes discussed below are available at the UKIPO under certain circumstances, this article does not aim to provide an exhaustive list of patent acceleration methods available to UK patent applicants. Patent filers considering any of the routes discussed in this article should first contact their Patent Attorney to discuss the suitability of the available acceleration options for their specific scenario.
Covid-19 related acceleration at the UKIPO
Unlike other Patent Offices, such as the United States Patent and Trademark Office, the UKIPO has yet to launch a formal scheme offering applicants prioritized examination of Covid-19 cases. There are still, however, a number of more universal acceleration mechanisms available to applicants in the UK that can be used.
Patents Fast Grant System
The UKIPO provides applicants with the opportunity to jump the examination queue using its Patent Fast Grant System. Here, a request for accelerated search and/or examination must be filed with an "adequate reason". The UKIPO's guidance on what constitutes an "adequate reason" is reasonably broad and open-ended, and the UKIPO will exercise discretion when assessing the specific reasons for each request. Typically, if an applicant states that it is aware of a potential infringer, then the request for acceleration is likely to be granted. Stating that fast examination is required to secure investment is also indicated by the UKIPO to be an adequate reason.
Patent filers working on Covid-19 related inventions can submit acceleration requests if the reasons for doing so fall within the scope of examples provided in the UKIPO's published guidance, such as those mentioned above. In addition, on enquiry with the UKIPO, we have been informed that filing acceleration requests which are not necessarily encompassed by the examples provided by the UKIPO but have clear relevance to Covid-19 are likely to be allowed also. It should be noted that the UKIPO is clear that a letter clearly communicating an adequate reason for the acceleration is a prerequisite to acceptance. It is therefore advisable that applicants, looking to prioritize examination of their patent applications, should prepare a reasoned request taking into account the UKIPO's published guidance. Whilst not explicitly mentioned in the guidance, Covid-19 related reasons might also be accepted as mentioned above. We recommend that applicants contact their Patent Attorney for assistance when seeking acceleration at the UKIPO using the Patent Fast Grant System.
Green Channel
The UKIPO's Green Channel service allows applicants a route to accelerate the processing of their patent applications, if the invention covered has "environmental benefit". A request must be made with an explicit indication of how the applicant's patent application is environmentally friendly. Applicants who make a "reasonable assertion" that the invention has some environmental benefit are likely to be successful with entry into the Green Channel. The UKIPO's guidance states that a detailed investigation of the request will not be conducted to qualify the assertion. Clearly unfounded assertions however will be rejected.
As with the Patents Fast Grant System, the Green Channel opens the doors for Covid-19 related patent applications to be accelerated if the underpinning technology has an environmental benefit. That is, if an acceleration request demonstrates that the technology covered by the patent application has an associated beneficial environmental aspect, in addition to its Covid-19 application, it will almost certainly qualify for the Green Channel.
PCT(UK) Fast Track
Under UKIPO's PCT(UK) Fast Track scheme, applicants with international patent applications (PCT applications) which have entered the UK national phase may be accelerated if the international application has received a positive International Preliminary Report on Patentability (IPRP) or a positive Written Opinion of the International Search Authority (WO-ISA).
With this scheme, it is not necessary to provide a reasoned or adequate justification in order for a patent application to qualify, however, certain qualifying criteria must be met at the time of request. This requires that the claims on file at the UKIPO at the time of the request must "sufficiently correspond" to one or more claims that have been examined and found to meet the requirements for novelty, inventive step and industrial applicability in the international phase. The 'sufficiently correspond' standard imposed by the UKIPO when assessing suitability for this scheme necessitates that the claims on file in the UK national phase are either (i) of the same or similar scope as the claims found acceptable in the IPRP or WO-ISA or (ii) narrower in scope than the claims found acceptable in the IPRP or WO-ISA.
So, for those applicants that have Covid-19 related international patent applications which have either entered the UK national phase already or have yet to do so, the PCT(UK) Fast Track scheme offers yet another acceleration route up for grabs. Importantly, the international patent application must have received a positive report during the international phase by virtue of acceptable claims specified in the IPRP or WO-ISA for this route to be a possibility.
Patent Prosecution Highway (PPH) and Global Patent Prosecution Highway (GPPH) pilot program
The PPH initiative available at the UKIPO provides applicants with the opportunity to accelerate examination of patent applications if examination work has already occurred at another qualifying Patent Office. The PPH programme allows the acceleration of patent applications at the UKIPO that have had claims allowed by a first participating Patent Office. This allows UK Patent Examiners to piggyback on the work already done at other participating Patent Offices, and is considered to greatly improve the efficiency and quality of the work performed by the UKIPO.
As it stands, the UKIPO has entered bilateral PPH agreements with both the Brazilian and Chinese Patent Offices. However, in addition to these agreements, the UKIPO also launched its wider reaching Global Patent Prosecution Highway (GPPH) pilot program in 2014. Here, the GPPH allows applicants who have had claims allowed by participating Patent Offices to request acceleration of corresponding patent applications at any or all of the other participating Patent Offices. A large number of Patent Offices have signed up to the GPPH and further details can be found on the PPH Portal.
Whilst both the PPH and GPPH are certainly worth a mention these acceleration options do require patent filers, Covid-19 related or otherwise, to have filed a corresponding patent application in one of the other participating Patent Offices. For applicants with global patent filing strategies, this may be an attractive option.
Final word
The UKIPO has yet to comment on whether it will launch a scheme to specifically advance Covid-19 technologies like the recently launched Covid-19 Prioritized Examination Pilot Program in the US. Innovators and Intellectual Property professionals will however be hoping that this is soon to follow and no doubt will be keeping a watchful eye on this space.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
