Williams Powell

British and European Patent and Trade Mark Attorneys

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Williams Powell

11 Staple Inn
London
WC1V 7QH
United Kingdom

T: +44 207 242 7005

F: +44 207 242 7115

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Recent News:

Delays to Opening of Unified Patent Court?
It was understood that UK Government had planned to ratify the UPC agreement in May 2017 so that the Unified Patents Court could open by the end of the year.  However, that timetable now looks li...
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UK Government Preparing to Ratify Unified Patent Court Agreement
On 28 November 2016 the UK government confirmed that it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA), which is part of the process required to establish the Unit...
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EPO Added Subject Matter Test is Relaxed
Over the past few years, the assessment by the European Patent Office of any amendments made to an application or patent in connection with the issue of added subject matter has been extremely strict....
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UK Procedures Assist German Patent Litigation
There are two primary schools of thought in patent litigation proceedings in Europe: 1) the unitary trial system followed for example by the UK Courts, where the issues of validity and infringement of...
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Practical tips for UK and EU design registrations in view of the UK Trunki decision
In the wake of the UK Supreme Court's Trunki decision, designers may now be questioning the value of registered designs to protect their products in the UK.  However, during a panel discussion at...
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UK Patent Box to be Revised

The UK Patent Box has enjoyed a good level of success.  According to the UK Government, by mid 2015 over 639 companies had used it and received a benefit totaling £335,000,000.  

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The Patent Prosecution Highway, PPH, system represents a cost-effective way of progressing patent applications.  In particular, we have found that UK PPH first filings are particularly effective in bringing forward examination and allowance in the USA.

However, as with all systems, it is not without its potential pitfalls... Here is our advice on how best to proceed to make the most benefit of the system.

Content of UK Application

The initial UK application should be filed complete, that is with claims and abstract.  If the UK application is to be used in particular for supporting a subsequently filed US application, it is best to set the UK application in a “US format”, that is to have description, drawings and claim language consistent with those commonly used in and accepted at the USPTO.  In particular, the claims should not include “means plus function” elements, all claimed features should appear in the drawings and so on.  We are typically file claims in the UK without multiple dependencies (even though these are allowed in UK without cost), although we understand the USPTO would accept the preliminary amendment which removes the multiple dependencies.

Procedural Steps Taken on Filing

On filing, the UK application should be accompanied by both the request for search and for substantive examination, as well as a communication to the British Patent Office Examiner bringing the Examiner’s attention to prior art which would have to be supplied to the USPTO (in particular) in an information disclosure statement.  This can usefully be in the form of an information disclosure statement.

It is also best to address the matter of inventorship and entitlement of the applicant at the time of filing the UK application, although this can be delayed.  

Formal drawings can be filed after the filing of the application.

UK Search and Examination Procedure

The British Patent Office aims to issue a combined search and examination report within six months of filing the application.  In our experience most reports issue between four to five months from filing.

Although any examination report issued by the British Patent Office will give a very long period for response, any early response filed is likely to result in fast re-examination of the application.  We are currently advising filing a response within around one month of receipt of the examination report responding in this manner can achieve early acceptance of the application, we are achieving preliminary acceptance within the 12 months of the UK filing for over 90% of the applications we are filing.

The British Patent Office will not issue a formal notice of allowance or grant before publication of the British application.  The reason for this is that the Examiner has to carry out a top-up search on publication, to search through prior art which itself may not have been published at the time of his first search.  UK procedure also provides a three-month period for third parties to raise objections to the application.  The patent is granted only after the top-up search and the third party observation period, subject to there being no new objections raised.  The USPTO has, however, indicated to us that it will accept for the US PPH program the provisional notice of acceptance from the UK Patent Office and experience to date has shown us that the USPTO Examiners are abiding by this.  

Subsequent Filing of PPH Application 

A bundle of the history of the examination carried out at the British Patent Office should be produced for the foreign Patent Office.  This should include copies of the application as originally filed, communications to and from the UK Patent Office in chronological order, as well as a preliminary amendment for the foreign application which conforms the claims on the foreign application to the accepted claims in the UK (preferably in clean copy form and also in marked-up format).  We would be happy to prepare this documentation for you.