16 March 2022
Applicants seeking patent protection in European markets have two routes available: via the European Patent Office (EPO), which provides a single examination procedure for all EPC contracting states; or the ‘national route’ which involves filing individual national applications in each country where protection is sought. Whilst there are benefits and drawbacks to both, below are some reasons to consider the national route in the UK.
The UK system provides the option to receive a combined search and examination report (CSER) approximately two months after filing. If a reply that addresses any objections raised in the CSER is filed promptly, it is possible for a patent to be granted in around eight months. This is, on average, much faster than EPO timescales. Furthermore, for inventions with environmental benefits, the UK offers a Green Channel which allows applicants to request accelerated processing, resulting in a CSER being issued in just six weeks.
It is also common in the UK for agreement to be reached on allowable claims by telephone call with the examiner, which can substantially accelerate prosecution, without reliance on written formalities. This may be advantageous to keep a short file wrapper, which can be helpful if the patent is ever litigated.
The UK system has a compliance period of four and a half years from the date of filing, meaning all UK applications must be ready for grant beforehand, preventing ongoing prosecution extending over many years. In practice, examiners may review applications that are close to the end of their compliance period more quickly. While this may be helpful for some, it can be disadvantageous for others who favour long pendency and flexibility to file a series of divisional applications.
The UKIPO is well respected and provides a high standard of examination which can provide a basis for accelerating grant in other territories. Under the Patent Prosecution Highway (PPH), granted UK patents can be used to accelerate prosecution in Australia, Canada, Germany, Israel, Japan, New Zealand, Russia, Singapore, South Korea, and the United States, amongst others.
Patent application and associated grant costs in the UK can be lower than in many territories. For example, where the EPO may charge £3,000+ for filing an application, requesting search and examination, as well as grant fees, in the UK it could cost just £310. Renewal fees are also far cheaper at UKIPO than at the EPO.
It is relatively rare to be summoned to a hearing at the UKIPO, unless requested or as a last resort, as opposed to the EPO where oral proceedings are reasonably common. Furthermore, the EPO Guidelines (C-III, 5) permit the issuance of a Summons to Oral Proceedings as the first action in examination. As preparation for a hearing is more expensive than written communications, the UK approach can help to keep costs down during prosecution.
If you are only interested in protection in a few European countries, such as the UK, France and Germany, direct filings with the national patent offices can be more cost effective than a European patent application.
Furthermore, registration systems also exist which allow UK patents to be re-registered in a selection of overseas territories including Hong Kong and Gibraltar. Re-registration can provide a cheap and easy way to obtain patent protection elsewhere.
The UKIPO gives applicants more opportunity to amend claims than the EPO does, and discretionary amendments are rarely not permitted. The UKIPO also provides options to have more than one claim set searched, and there is no deadline on a second search request, giving applicants the opportunity to be more informed about the potential patentability of their invention(s) and their protection strategies, e.g. before a decision is made as to whether or not to file a divisional application.
There is no hard rule on conciseness in the UK, and multiple independent claims in the same category can be accepted in circumstances which may not be allowed by the EPO, which can again help to reduce costs and obtain a broader scope of protection in a single application.
At the UKIPO, the EPO’s ‘problem and solution’ approach does not need to be followed (although it will be accepted) and the UKIPO inventive step approach is less rigid. Arguments based on the relative age of documents and the commercial success of the invention can be given more weight at the UKIPO than at the EPO.
The UKIPO is well respected, so having a patent granted in the UK relatively early on acts as a deterrent to potential infringers in other territories who might be considering engaging in infringing activities, as they may expect you to obtain similar patent coverage in other territories.
The UK offers fast track patent litigation in a specialist court with expert judges and commercially reasonable limits on liability for the other side’s legal costs. If enforcement is necessary, the UK’s Intellectual Property Enterprise Court (IPEC) offers procedures that resolve certain cases (limited to claims of <£500,000) more quickly than disputes heard in the High Court. The IPEC has been set up to be time- and cost-effective, and ability to resolve disputes in such a way is highly desirable.
The UK Patents Court (Chancery Division of the High Court) consists of specialist judges with IP expertise. There are also several highly experienced IP expert judges in the Court of Appeal and Supreme Court, for hearing more complex cases that reach these higher-level courts.
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