17 October 2012

Relaxing the PCT UK Fast Track

The UK Intellectual Property Office (UKIPO) has announced a relaxation in the requirements for using the PCT(UK) Fast Track service.

Since its introduction on 28 May 2010, the PCT(UK) Fast Track service has enabled applicants to request accelerated examination in the UK national phase provided their application fulfilled particular requirements.  Specifically, the original scheme was only available if the derivative international (PCT) application had received a positive International Preliminary Report on Patentability (IPRP) or a positive Written Opinion of the International Searching Authority (WO-ISA) on all of the claims.  The service was unavailable if any objections to novelty, inventive step or industrial applicability had been raised against any of the claims, even if these claims were deleted on entry to the UK national phase.

With effect from 8 June 2012, the requirements have been relaxed so that acceleration may be requested where all the claims on file in the UK national phase sufficiently correspond to one or more claims indicated as allowable in the IPRP or WO-ISA.  The claim correspondence requirements are the same as those applied by the UKIPO under the Patent Prosecution Highway (PPH) which is a similar scheme that allows an applicant to request accelerated examination if the claims of an application have been found to be acceptable by certain other foreign intellectual property offices.

It is now possible for applicants to use the PCT(UK) Fast Track service provided the unacceptable or non-examined claims are deleted on entry to the UK national phase or if the claims are amended to be of a narrower scope than those found allowable in the IPRP or WO-ISA.
A request for processing under the PCT(UK) Fast Track must be received before UK examination has commenced, indicating how the claims currently on file sufficiently correspond to one or more claims that were indicated as acceptable in the international phase in the IPRP or WO-ISA.  The UKIPO requires no further reasons for accelerated examination to take place.  If the request is allowed, accelerated examination will take place and the UKIPO aims to issue a substantive examination report within 2 months of receipt of the request in at least 90% of cases.

This service is available in addition to the other types of fast track service provided by the UKIPO including accelerated search and examination, which can only be requested if the applicant gives suitable reasons for the request, and the Green Channel for patent applications relating to a ‘green’ or environmentally-friendly technology.