News

The UK IPO introduces timeliness target for re-examination of patent applications

14 November 2016

In most jurisdictions a patent will not be granted until it has been examined and approved by the relevant patent office. This examination process is referred to as ‘patent prosecution’ and often entails multiple rounds of Examination Reports issued by the patent office and ‘responses’ filed on behalf of the patent applicant. Consequently, the patent prosecution timescale can be protracted and is also very much dependent on the queue of applications at the examining patent office.

During patent prosecution, re-examination of a patent application occurs once amendments and/or arguments have been submitted, in response to objections raised in a previous Examination Report. As can be seen from the UK Intellectual Property Office’s (UK IPO) own published figures (a graph of which is reproduced below), large numbers of patent applications are being filed, searched and examined every year. Whilst this is a good indicator of thriving innovation, this popularity seems to be worsening the backlog of cases waiting for examination and re-examination, which seems to be the spur for the UK IPO’s latest initiative.

The UK IPO has recently announced their intention to prioritise re-examination of patent applications which are approaching the end of their ‘compliance period’. UK patent applications must be ready for allowance by the end of this period or else they will be treated as refused. The compliance period is calculated as the latter of i) four and a half years from the earliest filing date, or ii) one year from the date on which the first Examination Report is issued.

Anecdotally, we are noticing significant delays in examination of ‘standard’ (non-accelerated) patent applications. In many subject areas, we now receive a first Examination Report more than four years from the earliest filing date, and in extreme cases we receive a first Examination Report more than six years after that date.  In such situations the second criteria for the compliance period applies, meaning that examination must normally be completed within one year of the first examination report.

Under the UK IPO’s proposals, patent applications approaching the end of their compliance period will be prioritised for re-examination to ensure that sufficient rounds of examination can be completed before the default refusal. The UK IPO is endeavouring to achieve re-examination within half of the time remaining in the compliance period. This means that patent applications which are four months from the end of their compliance period could expect re-examination within two months. Similarly, this means that for patent applications which receive a relatively early examination report, say two years before the end of the compliance period, re-examination would be expected to take place within a year.

It is encouraging that the UK IPO will now be prioritising patent applications which are approaching their compliance deadline to ensure each application undergoes thorough examination. However, these changes will mean that for some patent applications re-examination will be significantly delayed, causing even further delays to the overall patent prosecution timeline.

If such delays to examination are of concern, we would advise clients to consider requesting accelerated examination which can considerably speed up patent prosecution. According to the UK IPO’s own figures for 2015/2016, 96{e27634494e39db391c4a3c1babcce9c96667e0da0c02f00a98e80c871bbff07c} of requests for an accelerated two-month turnaround for search, publication or examination were fulfilled. There are several different options for requesting accelerated examination which may be applicable in any given situation. For further advice in this regard, please contact your usual Withers & Rogers attorney.

Jonathon Hauser and Michael Jaeger
Electronics, Computing & Physics group

If you require further information on anything covered in this briefing, please contact Jonathon Hauser (jhauser@withersrogers.com; +44 207 940 3600) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP, November 2016