PCT (UK) Fast Track: Accelerated Examination in the United Kingdom National Phase

As of 28 May 2010, patent applicants can request accelerated examination in the United Kingdom (GB) national phase if their international application has received a positive International Preliminary Report on Patentability (IPRP).  This service is available whether the IPRP has been issued under Chapter I or Chapter II of the Patent Cooperation Treaty (PCT).  The United Kingdom Intellectual Property Office (an operating name of the Patent Office) has provided the International Bureau with the following information on this new service.

Requirements

In order to qualify for this service, all claims present in the application on entry into the national phase must have been examined and found to meet the requirements for novelty, inventive step and industrial applicability in the international phase.  Therefore all claims present in the application on entry into the national phase must have been considered in the IPRP.  If the IPRP states in Box III that certain claims have not been examined, or if any objections to novelty, inventive step or industrial applicability have been raised in Box V of the IPRP, then acceleration is not available under this service.

This service will apply to existing PCT applications which have already entered the GB national phase as well as to applications entering the GB national phase from 28 May 2010 onwards.

Procedure

Applicants must make a request for accelerated examination in writing to the UK Intellectual Property Office, indicating that their application has received a positive IPRP.  No further reasons will be required for accelerated examination to take place.

It is helpful if any correspondence in relation to accelerated applications is clearly marked as such, for example by boldly indicating “URGENT – ACCELERATED PROCESSING REQUESTED”.  This will help identify correspondence relating to accelerated applications as early as possible after the Office has received it and will thus ensure that the examiner receives it as quickly as possible.

In the unlikely circumstance that WIPO is delayed in supplying a copy of the IPRP, the applicant may be asked to provide a copy of this document in order to expedite the process.

Each request for accelerated examination will be considered by a patent examiner, who will confirm whether the request for accelerated examination has been allowed or refused.  In the event of a refusal, reasons for refusal will be provided.  If the request is allowed, accelerated examination will take place.  The UK Intellectual Property Office currently aims to issue a substantive examination report within two months of receipt of the request for accelerated examination, for at least 90% of cases.  

The usual opportunity for voluntary amendment under rule 31(4) of the UK Patents Rules 2007 will be available after issue of the first examination report. 

Further Information

Information on this new service was published by the UK Intellectual Property Office in a press release at:

        http://www.ipo.gov.uk/press-release-20100528

Information about the other accelerated services offered by the UK Intellectual Property Office is available at:

         http://www.ipo.gov.uk/p-fastgrantguide.pdf

Enquiries

Any enquiries about this notice may be made to:

           Sarah Barker
           Patents Legal Section
           Intellectual Property Office
           Concept House
           Cardiff Road
           Newport
           South Wales NP10 8QQ
           United Kingdom

           Tel:   (+44–(0)1633) 81 48 07

           Fax:  (+44–(0)1633) 81 44 91

Note that, although the PCT (UK) Fast Track service permits applicants to request accelerated examination in the national phase as does the PCT-Patent Prosecution Highway (PPH) procedure that was announced in previous issues of the PCT Newsletter (notably, the pilot among the Trilateral Offices (the United States Patent and Trademark Office (USPTO), the European Patent Office and the Japan Patent Office) (see PCT Newsletter No.  02/2010) and between the USPTO and the Korean Intellectual Property Office which started operating on 1 June 2010 (see below)), the PCT (UK) Fast Track service is different from the PCT-PPH procedure in that it applies to all IPRPs regardless of which authority issued the IPRP, and it has been launched independently, rather than as a bilateral or multilateral agreement.