How to Harness Speedy Services from the UK IPO to Improve Your Patenting Strategy

by Mintz Levin - Copyright & Trademark Matters

Since 16 March 2013 the America Invents Act (AIA) has expanded what constitutes prior art. The run-up to this law change date saw a spike in new patent applications filed with the United States Patent and Trademark Office (USPTO) from applicants wanting to take advantage of the pre-existing first-to-invent rules. It is likely given the numbers involved that some applications filed to beat the law change were prepared with less than the usual consideration of existing art. If this is correct, how can you now get timely and good quality information on relevant prior art in a cost effective manner? Your answer could come from the UK’s Intellectual Property Office (UK IPO). The UK IPO offers rapid services that can be leveraged at very low cost, making filing a patent application with the UK IPO a valuable tool in reaching the objectives of your patenting strategy. These tools are under-utilized due to lack of awareness of the services and the advantages and value they provide. Applicable tools to this situation are explained below.

The UK IPO provides a search report on first filings comparatively quickly so that you get information on prior art relevant to your invention at a time when that information can be used to shape your patent filing strategy.

The UK IPO has a stated agency target to provide a search report for 90% of all first filings (applications that do not claim priority) within four months of filing the search request – a level of service not available from the USPTO even with an expensive request for accelerated prosecution. UK IPO searches are performed using the same search strategies and prior art databases as other major patent offices, so the quality of results is equally reliable. The combination of the UK IPO’s search timeliness and quality will be valuable in correctly positioning your invention and framing your claims for subsequent priority claiming applications.

The following is an example of how to helpfully incorporate this service from the UK IPO into your patenting strategy. If your US patent application was filed in early March 2013 you will have received the filing receipt which includes your foreign filing licence allowing patent applications for that invention to be filed elsewhere. You can now file a patent application for the same invention with the UK IPO (without claiming priority) and with a search request. A search report from the UK IPO should be received within four months. Consequently, the UK IPO search report should be received in plenty of time to consider the cited documents and make any required adjustments to your priority claiming patent applications before expiry of the 12 month priority period in March 2014.

An extra flourish to this strategy is to request combined search and examination when filing your UK application. You will then have the benefit of receiving both a search report from the UK IPO and an initial examination report within four months from the filing of these requests.

We can then help you apply the newly acquired information from the search report or combined search and examination report to enhance your future patenting strategy.

As will be appreciated, using these services from the UK IPO could also add valuable and timely information regarding relevant prior art for your patenting strategy considerations for any patent filings, including those under the AIA.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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Mintz Levin - Copyright & Trademark Matters

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