13 Aug 2018

The UK Intellectual Property Office sets the standard for patent filing and prosecution and is emulated by many other countries, yet it is often overlooked by overseas patent applicants.

Businesses tend to seek UK patent protection through a European patent application, but there are many advantages of filing directly in the UK.

Here are five reasons why:

1) Patents can be granted far more quickly

The standard patent application process will result in a patent being granted, if at all, about four years after filing.

In the UK, it is possible to receive a combined search and examination report (CSER) around two months after filing. If you can address any objections raised in the report and request accelerated processing, a patent can be granted in as little as eight months from filing.

2) A UK patent can be used as the basis for grant in other countries

Generally, each country where a patent is applied for, will follow their own search and examination procedure which can result in different claim scopes in different countries.

The Patent Prosecution Highway, available in the UK, shares the workload between patent offices, so that when a patent is granted in one country, the same claims can be granted in other participating countries.

Currently, a UK patent can be used as the basis for grant in countries including Australia, Canada, Germany, New Zealand, Israel, South Korea, Japan, Russia, Singapore and the United States.

3) It’s a useful deterrent

Evidence of a patent in one territory strongly indicates that patents would be granted with a similar claim scope in other territories. This can cause potential infringers to think twice before proceeding with their activities and help secure market advantage prior to patent grant.

4) It costs less

The cost of obtaining a granted patent in the UK can be very low. Even with the increase in UK Intellectual Property Office fees introduced in April 2018, the cost is much lower than in most other territories.

The total official fees for making the application, search and examination can be as low as £310. The European Patent Office can charge up to £3,000 and the United States more than £1,500.

In most cases, patent protection in European countries is sought through a European patent application. However, if protection is only required in the UK, France and Germany (as is often the case), it is far more cost effective and quicker to file directly in those countries. This requires careful planning as it is not possible to file in France based on a PCT, or international, application.

5) It can help block competitors

The UK is one of the big three European markets and the seventh biggest global market, so patent protection here can block competitors from entering a major territory. Patent protection would provide a cause of action if a competitor were to manufacture or sell in the UK or attempt to import goods into the UK. Blocking off one of a competitor’s major markets with an early patent grant with pending applications in other major territories sends a strong message to potential infringers.

Reconsider your patent strategies

A European patent application is still a sound strategy for those seeking IP patent protection, but businesses can save time and money by reassessing their patent filing methods.

There are different tools and acceleration options available in most territories, especially in the UK. Furthermore, Brexit will not affect how patents are filed in UK or UK professionals’ rights of representation, so it will remain one of the most efficient and beneficial territories in which to file a patent application.

For further information on filing patent applications in the UK, or intellectual property in general, please contact Samantha Kaye.