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The UK IP Office (UKIPO) recently scrapped plans to introduce a “superfast service” for patent applications. They were dropped after stakeholder feedback suggested that the scheme could lead to a negative impact on patent quality and restrict strategic options for patentees. However, the relative success of a similar programme for ‘green’ patents indicates that fast-tracking may come with its own strategic benefits.
Under the proposals for a “superfast service” first put forward by UK Business Secretary Vince Cable last December, patent applicants would have been given the option to fast-track their application for a fee of around £4,000, to be paid on top of the usual application fees. Patents applied for under the scheme would be examined within 90 days, as opposed to the typical pendency period of about four-and-a-half years.
However, respondents to the UKIPO consultation expressed concerns that 90-day accelerated examination could lead to the granting of patents of a poorer quality and with a lower presumption of validity than those processed using the normal application process, as well as diverting resources away from applicants not using the superfast service.
Another potential drawback of early publication is that it could restrict certain strategic options for patent applicants. An examination period of several years between filing an application and the potential grant of a patent gives businesses time to improve their inventions and to tweak their patent applications accordingly.
It is worth noting, though, that several jurisdictions already offer some level of accelerated examination; the UKIPO itself will prioritise applications at its discretion if there is a valid reason to do so, such as a suspected infringement threat or an impending commercial transaction that relies on a grant. IP Australia similarly offers acceleration of patent applications on request, while the European Patent Office also provides an expedited search and examination service. The USPTO has a number of fast-track schemes available. In addition, Patent Prosecution Highway initiatives give patentees that have filed applications in one participating jurisdiction the opportunity to speed up their application in another.
Several issuing offices around the world – including the UKIPO – also operate expedited application processes specifically for greentech patents. And despite the concerns submitted to the UKIPO consultation, recent research from the International Centre for Trade and Sustainable Development (ICTSD) into these schemes indicates that there could be strategic advantages in obtaining a patent via expedited examination.
As previously reported by IAM, patentees that had made use of greentech fast-track systems told the ICTSD that they tended to select those inventions which they feel have the most potential for commercialisation. The logic is that the sooner a business gets a patent granted, the sooner it can focus on commercialising the technology it covers and licensing it out to third parties. Having a granted patent may also make the business more attractive to prospective investors. Interestingly, the ICTSD research found that green patents that have undergone prioritised examination are cited almost twice as often as those which have not. The main impetus behind the creation of fast-track schemes for green patents is to improve technology diffusion and those citation findings would suggest that is being achieved.
Despite these possible advantages, the uptake of accelerated examination for green patents has been markedly low. The ICTSD research suggests that the UK green patent scheme is the most popular worldwide, with the UKIPO fast-tracking 20% of all the patent applications it receives each year relating to environmentally-friendly technology. By comparison, the next most popular programmes were those offered by the Israel Patent Office (which expedited 13% of total annual green patent applications) the USPTO (8%) and the Canadian IP Office (1.6%).
All in all, it would appear that there simply isn’t enough widespread interest in superfast schemes. It may be that normal pendency timeframes are strategically more beneficial to many patent applicants than expedited examination. A glance at the entities consulted by the UKIPO on the superfast service (which can be viewed on page 12 of the UKIPO consultation, here) contains the names of several trade groups, professional associations, law firms and patent attorney firms, with a handful of research institutions and (large) corporations. By and large, it looks as if patent-owning businesses – and SMEs in particular – either did not respond to the proposals, or did not get the chance to. You can’t help thinking that for many businesses there must be situations where there is a definite competitive advantage in having a patent granted three months, rather than four or more years, after applying for it.
IP management, IP politics, Patents, IP business