Pressing pause on your intellectual property: Part one – patents

This three-part series examines how intellectual property protection can continue in a productive and effective way, during this time of remote working, shifting priorities, uncertainty and change.

The process of protecting intellectual property is unsurprisingly dependent on inventors, innovators and lawyers having access to their physical workspace – a lab, a shop floor, a workshop, or a courtroom. As governments continue to restrict or prohibit movement of people, it has become difficult to progress patent/trademark prosecution and legal matters in the normal way.

Abandoning a patent/trade mark prosecution or legal action commenced before our movement was restricted, can mean investment, rights or commercial advantage is lost. Conversely, pushing forward with a prosecution or legal action without the necessary input from inventors, innovators, lawyers or other stakeholders, means that those efforts are far less likely to achieve desired outcomes.

Extending the lifecycle of a prosecution or litigation, effectively pressing pause on the process, may buy enough valuable time to allow scientists to return to the lab, product developers to return to the shop floor, and lawyers and judges to return to court. Elongating timelines can keep prosecutions and legal matters alive, whilst normal scientific and product development has effectively stopped.

Pressing pause on patents

The devices and strategies available to help slow a patent prosecution will differ depending on the context.

  • Patent applications in the priority year
  • European patent applications at the European Patent Office (EPO)
  • GB patent applications at the UKIPO
  • Oppositions at the European Patent office

Strategies include restarting the prosecution clock, strategically timing deadline-driven tasks, requesting extensions, and more.

Patent applications in the priority year

Within twelve months of filing a first application, a PCT application or applications in other countries may be filed. Many applicants use this time within this “priority year” to further develop the invention and obtain additional data required to support the claims.

However, during this time of restricted movement, home working and closed offices and labs, it may not be possible to obtain this data within the requisite time. As business focus shifts, funding international applications may not be a priority.

In either case, one option may be to withdraw the priority application and refile later. This restarts the clock on the priority year, giving valuable time to develop the invention further. This approach should be used with caution however, as the original priority date will be lost. Therefore, any publication by the inventor or any third party will be taken into consideration when assessing patentability of the newly filed application.

European patent applications at the European Patent Office (EPO)

For a patent application on file at the EPO, there are a number of points at which prosecution could be slowed down.

Early stages of examination

Commonly, examination communications provide a four-month period for reply. If required, this can be extended by up to six months.

Also, examination and other types of deadlines can be extended through non-response. Typically, the EPO will provide a notification of loss of rights within one month from expiry of the given deadline.  The notification of loss of rights provides a further two-month period to proceed using “further processing”. Using this method incurs official fees, so the overall costs increase, but it can be a useful way to extend the process by a few more months.

Using the above two methods, an examination communication setting a four-month window for reply  can be extended by a total of approximately five months, albeit at a cost.

Late stages of examination

If the application is considered allowable, a communication notifying the intention to grant will be issued. The applicant has four months to pay the grant and publishing fee, and to file the claims translations.

In response, it is possible to file minor corrections or amendments to the claims or description, triggering a second notification of grant communication within approximately one month. This second notification sets a new four-month period to pay the fee for grant and publishing, and to file the claims translations.

The above procedures may allow an applicant to delay paying the fee for grant and publishing and providing the claims translations by a period of approximately five months, for a small cost.

As mentioned it is also possible to extend the above four-month periods through non-response and requesting further processing, although this will attract official fees.

Renewal fees

Renewal fees are due on the last day of the month in which the anniversary of the European application patent filing date falls. These fees can be paid up to six-months late, however, late payments will incur a fifty percent surcharge.

Importantly, examiners are less likely to examine the application if the six-month surcharge period has begun. Therefore, although this method of extension comes at a cost, it also slows down the examination procedure.

Accelerated prosecution

Note that an application accelerated under the PACE programme will be removed from PACE if any of the actions noted above are taken (Early stages of examinationLate stages of examination and Renewal fees).

GB patent applications at the UKIPO

In comparison to the EPO, there are relatively few ways to slow prosecutions pending before the UKIPO.

It is also important to bear in mind that UK patent applications must be put “in order for grant” within a fixed timescale, known as the compliance deadline. This deadline is usually the later of four and half years from the effective priority date or twelve months from issuance of the first examination report.

During examination

The time period set by an examination communication can be extended as of right by two months

Accelerated prosecution

Note that if your application has previously been accelerated, it is possible to request that your application is removed from this program.

After grant

Renewal fees are due on the last day of the month in which the anniversary of the UK application patent filing date falls. These fees can be paid up to six-months late, however, late payments will incur a surcharge of £24 per month, following the first month of the surcharge period.

The above procedures are the most frequently used methods for slowing prosecution of patent applications before the EPO and UKIPO. However, the applicability of these options should be assessed on a case by case basis.

Please note that due to the current circumstances surrounding COVID-19 both the UKIPO and EPO have extended most (but not all) deadlines. See here for more information.

Oppositions at the European Patent office

A notice of opposition must state the grounds for opposition as well supporting facts and evidence. Oppositions often rely on experimental data/evidence normally obtained in a lab, to demonstrate insufficiency of disclosure, or the lack of a technical effect in relation to inventive step. When restricted movement means scientists cannot access labs, how can an opposition case be made when the experimental evidence is not yet available?

The EPO’s guidelines state:

In deciding whether to admit facts, evidence or grounds for opposition not filed in due time, their relevance to the decision, the state of the procedure and the reasons for belated submission are to be considered

In our view, the key will be presenting the facts in a manner that makes it as easy as possible for the EPO to exercise their discretion, to admit the late filing of the evidence when it does become available.  This would include:

  1. Demonstrating clear intention to carry out the experiments at a later date, including providing details of the intended experimental set-up; and
  2. Demonstrating, by way of evidence, that it is currently not possible for the experiments to be carried out due to the COVID-19 situation.

When the experimental evidence is then submitted later on, it has already been clearly foreshadowed, and the reasons for the delay in presenting it will be abundantly clear, increasing the likelihood of the evidence being admitted.

Please note that the above information is not intended to be comprehensive and should be discussed with a qualified Patent Attorney.

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