The UK Intellectual Property Office sets the standard for patent filing and prosecution and is emulated by many other countries, yet it is often overlooked by overseas patent applicants.
Businesses tend to seek UK patent protection through a European patent application, but there are many advantages to filing directly in the UK.
Here are five reasons to consider a direct UK application:
1) Patents can be granted far more quicklyTypically, a standard patent application takes around four to five years to grant, if it meets the requirements for patentability.
In the UK, it is possible to receive a combined search and examination report (CSER) around two months after filing. By addressing any objections raised in the report promptly under the accelerated prosecution process, a patent can be granted in as little as eight months. Accelerating the process incurs no official fee.
2) A UK patent can be used as the basis for grant in other countriesGenerally, each patent office will follow their own search and examination procedure, which can result in the patentee obtaining a different scope of protection in different countries.
The Patent Prosecution Highway is a system intended to share the workload between patent offices so that, when a patent is granted by one office, the same claims can be granted by cooperating offices.
Currently, a UK patent can be used as the basis for grant in countries including Australia, Canada, Germany, New Zealand, Israel, South Korea, Japan, Russia, Singapore and the United States.
3) It's a useful deterrentEvidence of a patent in one territory strongly indicates that patents will be granted in other territories. This can make potential infringers think twice before proceeding with their activities and help secure market advantage prior to patent grant.
4) It costs lessThe cost of obtaining a granted patent in the UK can be very low. Even with the increase in UK Intellectual Property Office fees introduced in April 2018, the cost is much lower than in most other territories.
The total official fees for filing the application and requesting search and examination can be as low as £310. By comparison, the European Patent Office can charge up to £3,000 and the United States more than £1,500.
In most cases, patent protection in European countries is sought through a European patent application. However, if protection is only required in the UK, France and Germany (as is often the case), it is far more cost effective to file directly in those countries. This option requires prior knowledge of your intended markets, however, since it is not possible to enter the French national phase directly from a PCT application.
5) It can help block competitorsThe UK is one of the three biggest European markets, alongside France and Germany, and is the seventh biggest global market. Patent protection here can block competitors from entering a major territory, should they wish to manufacture or sell in the UK or attempt to import goods into the UK. Blocking off one of your competitor's major markets by obtaining an early granted patent sends a strong message to potential infringers.
Reconsider your patent strategiesA European patent application remains a sound strategy for those seeking patent protection, but businesses looking to save time and money should consider their patent filing strategy by supplementing their patent portfolio with a UK application. There is nothing preventing you filing in both the UK and Europe, provided you later withdraw either the direct UK or the European-derived UK patent.
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