United Kingdom: Early certainty of patentability

February 22, 2017

The UKIPO has adopted a number of procedures to provide applicants with a good idea of the chance of successful grant within the first few months from filing. This early certainty is helpful when utilising PPH and managing a global family of patents. The EPO is also well-known for its rigorous approach to the examination of patent applications, and as such a granted European patent is considered to be a valuable and high-quality asset. However, in the past this detailed level of search and examination has sometimes led to delays in the prosecution process, which have been frustrating for both applicants and third parties, and have resulted in a lack of legal certainty. Such delays can be particularly problematic in view of the trend for shortening product lifecycles.

The EPO has now addressed this issue with the implementation of its Early Certainty programme, which sets targets for both the search and examination stages of prosecution.

In relation to the search stage, the target is for the search report and written opinion to be issued within six months of receipt of the application, whether the application is a direct filing or a PCT filing that has entered regional phase processing at the EPO. The EPO is now reporting that this target is being met for practically all applications and that the search backlog has largely been cleared.

In relation to the examination stage, the aim is for the period between the filing of a request for examination and the issuance of a notice of allowance to be reduced to an average of 12 months. The EPO hopes to achieve this target by 2020.

This improvement in output has largely been achieved through the recruitment of additional examiners and the redeployment of existing personnel to examination tasks. Additionally, examiners' workflows have been streamlined in order to increase efficiency, and increased dialogue between examiners and applicants has been encouraged. Quality assurance processes have been implemented to ensure that the improvement in output is not achieved at the expense of standards.