Obtaining Patent Protection in the UK from a PCT Application.

A Patent Cooperation Treaty (PCT) application provides the opportunity to acquire patent protection within a large number of countries, including the UK. Looking in particular at the UK in more detail, there are multiple ways to obtain patent protection within the UK from a PCT application.

These include:

  • Entering the European regional phase from the PCT application; or
  • Entering the national phase in the UK directly from the PCT application.

There are a number of advantages and some disadvantages with each of the above approaches, which are set out in further detail below.


1) Entering the European Regional Phase

Deadline

The deadline for European regional phase entry is 31 months from the filing date or, if priority is claimed, from the earliest claimed priority date.


Requirements

The requirements for EP regional phase entry are set out in Rule 159 EPC and include at least the following:

  • Specifying the application documents on which the European procedures are to be based;
  • Attending to payment of the filing fee;
  • Attending to payment of the search fee, where a supplementary search is to be drawn up (such as in cases where the EPO was not the ISA);
  • Attending to payment of the designation fee; and
  • Requesting examination and attending to payment of the examination fee.


Late Entry

It is possible to enter the European regional phase later than 31 months using “Further Processing” at the EPO. This provides at least an additional 2 months for entry (at least 33 months from filing/priority), however it adds considerably to the cost as the further processing fee requires payment of each of the fees mentioned above along with an additional 50% surcharge.

The deadline for using further processing to enter the European regional phase is determined by the notification of loss of rights issued by the EPO after the 31-month deadline has passed. The Applicant has two months from the notification of this communication to enter the European regional phase using further processing.

It is also worth mentioning that the notification of loss of rights communication in respect of failing to enter the European regional phase is sent directly to the Applicant named in the PCT application and not to any representatives involved. This can present difficulties if the ownership of the PCT application changed during the international phase but was not timely recorded prior to the end of the 31-month period.


EP Regional Phase

Once the requirements of entry are met, the international application enters the European regional phase, is now referred to as a Euro-PCT application, and has the status of a regular European application. It will then undergo examination before the EPO until such time that it proceeds to grant or is refused.

Upon grant, the European patent can be validated in any of the EPC member states, including the UK. Once validated in the UK the European patent is treated as the equivalent of a UK national patent. A point to note is that, for a period of 9 months, the European patent is open to opposition from third parties. Accordingly, the granted European patent could be subjected to revocation or amendment.


2) Entering the National Phase in the UK Directly

Deadline

The deadline for UK national phase entry is 31 months from the filing date or, if priority is claimed, from the earliest claimed priority date.

 

Requirements

Again, there are basic requirements to be fulfilled in order to enter the national phase in the UK as set out at Section 89A of the UKPA. This includes:

  • Specifying the application documents on which the European procedures is to be based;
  • Payment of a national phase fee;
  • Requesting a search and attending to payment of a search fee; and
  • Requesting examination and attending to payment of an examination fee.

The request for a search can be filed within two months of the entry into the national phase; however it is advisable to file the search request on entry. Similarly the request for substantive examination must be filed 33 months after the priority date, or if later, two months from National Phase entry. However, again it is advisable to file the examination request on entry.

 

Late Entry

The deadline for entry into the UK national phase can be extended by a further 2 months as of right however unlike the EPO, the UKIPO does not communicate that the applicant has failed to observe the conditions of entering the national phase within the prescribed period. The deadline for entering the UK national phase may be extended as of right by 2 months on request, with the payment of the associated fee and the completion of the relevant form.

A further extension of two months is also possible; however the Applicant will have to show that the failure to meet the national phase entry deadline was “unintentional”.

 

UK National Phase

Upon fulfilment of these requirements, the application enters the UK national phase. Shortly thereafter the application enters the prosecution stage, and like with a European application, the procedure involves a series of communications between Examiner and applicant until a decision is reached as to whether the invention meets the patentability requirements and is in order for grant.

A point of note with UK patent procedure is that a UK patent application has a maximum pendency period of four years and six months from the filing date or priority date, if there is one claimed, or 12 months from issuance of the first examination report, if this expires later. This is known as the compliance period.

Unlike a European patent, the UK patent does not undergo an opposition period.


Which route to take?

When choosing between entering the EP regional phase and the UK national phase, there are a number of factors to take into consideration. For example, generally a UK patent is granted between one to four years from the date of national phase entry, whereas a European patent is granted between two to five years. Further, UK national phase applications tend to incur substantially less cost than Euro-PCT applications in filing and procedure.

However, by entering the European regional phase, upon grant of the European patent, the applicant will have the choice of obtaining patent protection in 37 other countries in addition to the UK. The UK does not however have opposition in a manner similar to the EPO. There is also nothing preventing an applicant from entering both the UK and EP national/regional phases thus potentially allowing for a faster grant in the UK whilst also pursuing the European patent.

In short, there are merits in certain circumstances in filing a European regional phase, or in filing a UK national phase application, and the applicant must evaluate which route is the most appropriate for them.


If you have any question regarding which route it the most appropriate or any questions regarding any of the above please contact Stephen Murphy (s.murphy@frkelly.com) or Alex Mulholland (a.mulholland@frkelly.com) for further advice in relation.

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