Accelerated Processing

In my last post I explained the process of getting a UK patent granted.

To some, the length of the process is helpful, and they use the time to plan their business further, raise funding, make prototypes, set up manufacturing capability, or do other activities which mean they are ready to exploit the patent when it is granted.   To others, especially those in fast moving industries, this whole process seems to take a long time. So there are a few ways in which you can speed up the process, if that is helpful to your business.

The first of these is to use the combined search and examination (CSE) route I mentioned in my last post. There is no special requirement for this – all you have to do is request examination at the same time as you request the search.

This gives you an advantage of knowing all the problems with your application earlier than if you had only asked for a search.  Once you have that first search and examination report, it is then entirely up to you how fast you want to go. If you reply quickly there is every prospect that we can get the application in a position where we can grant it 3 months after publication. (If you want you can also ask for early publication – we would always advise to seek professional advice before doing this, as it could have implications for you, such as if you intend to make applications in other countries).

If your invention has environmental benefits then you could enter the “green channel”. The UK government is committed to supporting environmentally friendly businesses, and so we offer accelerated processing to “green” applications (filing on green paper does not count – what we need is a reasonable assertion that the invention is in some way environmentally beneficial).  This means we will speed up the processing – e.g. if you request an accelerated exam on an application where a search has already been conducted, in 90% of cases we will issue it within two months of that request.  

The final method is to ask for acceleration of your application for some other good, case-specific reason. If you demonstrate that you need the patent granted quickly because you are aware of a potential infringer, or need a faster search, examination or grant in order to secure an investor, then we are likely to accede to your request for accelerated processing.

Further guidance on accelerated processing can be found at http://www.ipo.gov.uk/p-fastgrantguide.pdf

One thing we would always advise you to do before filing a patent application is to seek professional advice. How your patent is written is very important – using a qualified patent attorney or other patent professional will help you get patent protection which best suits your business.

Nigel Hanley

Senior Patent Examiner

Intellectual Property Office

UK Patent Applications – the process from filing to grant 

As promised I want this time to describe the process from application to grant (hopefully) for your UK patent application.  In my last post I talked about the different routes you can use to get a patent granted in the UK.

The first thing that needs to happen is for you to file an application at the Intellectual Property Office (IPO). Most people these days file an application electronically which is both quicker and cheaper – see www.ipo.gov.uk/p-apply-online for further details of how to apply online. (You can still file by post or by hand but this does attract higher filing fees.)

Once you have filed your application you then have 12 months to decide whether you initially just want a search or want a combined search and examination (CSE). If you have requested a search we will send a search report to you; if you asked for a CSE we will also complete a first examination report at the same time as the search. In 90% of applications we receive we will issue these within 4 months of receiving the request.

One advantage of this initial search is that you can decide if you want to continue with your patent application or withdraw it.  Withdrawing the application at this stage means that it does not go on to be published, so you can choose – if you want – to keep your invention a secret.  If you decide to withdraw you must tell us in writing so we can formally stop the application.  The easiest way to do this is to email us at withdraw@ipo.gov.uk

If you decide to continue we will then publish your application 18 months after the filing (or priority) date, in line with international conventions. The purpose of publication is to enable the public to have access to the details of your invention and see exactly what monopoly you are claiming.  We will allow third parties some time to comment on the application and make observations as to whether your invention is patentable or not. This is where “Peer To Patent” comes in as a new way of obtaining comments from people interested.

If you have not already requested an examination you then have six months from publication to decide whether you want to continue by having the application examined. If you decide to get the case examined our job is then to prepare an examination report. At the moment we hope to do this within 24 months of publication.

Once you have received an examination report, it is up to you to file amendments to overcome any objections raised by the examiner, or arguments which explain why you consider those objections to be wrong. Once you submit these we will re-examine the application.  The process of amendment (or argument) and re-examination continues until either the requirements for a patent have been met, in which case a patent can be granted, or until we reach a point where you and the examiner cannot agree.  At that point we would offer you a hearing at the office, before an independent senior official, where you can present a case as to why your patent application should be granted.  The hearing officer will make the final decision to grant or refuse the application; if this decision is unfavourable, it can then be appealed to the Patents Court.

I know this seems as if it takes a long time but In my next post I will explain how you can speed up the process.

Nigel Hanley

Senior Patent Examiner

Intellectual Property Office

How to get a patent

In my blog posts to date I have talked about patent law but have neglected to say anything about the various routes available for making a patent application. I hope that this post and the following one will correct this.

One thing I would say before I explain the process is to recommend that you seek professional help when making an application. There is no restriction on doing it yourself but you must be aware that most applicants who represent themselves rarely receive a granted patent. In fact only about 5% of these applications will ever be granted. In the same way as you would hire a solicitor to handle the legal work of buying and selling a house we would recommend you use a patent attorney or other suitably-qualified patent professional to handle your patent application.

This has several advantages for you. Professionally drafted applications will more likely comply with patent law. Professionally drafted applications may also, in some cases, help you get access to investment capital if you need it. How many times have we seen on “Dragons Den” the dragons ask what patent protection an applicant has? I am aware that some will say that professional help is expensive, but if you have spent time and money developing a product, if you are serious about commercialising it, and patent protection matters to your business, then paying for the services of a patent professional may in the long run be an investment worth making.   

There are basically three ways to get a UK patent. The first is to make an application to the Intellectual Property Office for a patent that will cover only the UK. Most people now file their applications online although you can still file by post or by handing the application in at our offices in London or Newport. (If you file online you get a discount on the statutory fees.) An e-filed UK patent application is the cheapest way of getting protection in the UK as the official fees amount only to £230 in order to get a patent to grant.  The renewal fees over the lifetime of a patent would then cost you up to £4550, but spread over 15 years or more.

There are two other ways of applying for a patent which is valid in the UK. Either can be accessed directly or you can use your UK application as a starting point.

The first of these is to make a European Patent Application. This is a patent application made under the European Patent Convention and is searched, examined and granted by the European Patent Office (EPO). Applications made this way have to designate the states in which the patent will, if granted, then be in force. Currently, you can designate up to 38 states and that includes the UK.   Once granted, a European Patent which designates the UK is essentially treated as if it were a patent granted here in the UK. The advantage it offers is that you can make one application to cover a large number of European countries. It does have a few disadvantages as you will need to file translations of claims into at least French and German and is more expensive than making a UK application – the official fees at the EPO amount to approximately 4000Euros. You would also need to add renewal fees to this for each of the states you designate (e.g. up to £4550 for the UK).  .

The final option is to make an international application under the Patent Cooperation Treaty. The administration of this system is handled by WIPO (the World Intellectual Property Organisation – an agency of the UN).  You make an application designating which member states you want it to cover – and in this case there are 144 to choose from.  The application is then searched by one of several International Searching Authorities. The application is also published by WIPO. Once it has been published you then have to decide in which countries you wish to pursue the patent application – by entering the ‘national phase’ in those countries.  This means that the application then gets processed separately in the IP office in each country where you choose to enter the national phase, with each IP Office making use of the work that has already been done centrally.  The advantage of this system is that it gives you access to countries all over the world through one application, and that a good portion of the work needed to process the application is done just once, for all the countries involved. However, it can be expensive. The international fees alone are £2664 but to this you need to add any fees required by the national offices when you enter the national phase and any renewal fees they may charge. For the UK you would need to pay at least a further £200 plus any renewal fees.

I hope that explains the paths you can take to get a patent. I would finish by saying that it is always a good idea to seek professional advice about which path is best for you or your business.

In the next post I will explain the steps in granting a patent and how you can speed it up.

Nigel Hanley

Senior Patent Examiner

Intellectual Property Office

Medical Matters

For this week’s post, I’m stepping in as guest blogger to talk about how we deal with medical (and veterinary) inventions – drugs, medical devices, and methods of using them to treat or diagnose humans and animals.  Section 4A of the Patents Act is devoted to medical inventions, and it reflects two conflicting needs.  On the one hand, patents can encourage the development of new drugs and treatments, not least because of the enormous disparity between the costs and risks of developing new drugs and the cost of manufacturing them.  On the other hand, doctors are highly skilled professionals who may need to make swift, life-and-death decisions and shouldn’t have to consult their lawyers before treating the patient. 

To start with the easy bit, new and inventive products intended for medical use – drugs, surgical tools, scanners et al – can be patented.  However, methods of treatment of humans or animals by therapy or surgery, or methods of diagnosis practised on the human or animal body, can’t be patented.  I’ll explain how we define these terms, but it’s worth noting at the outset that all these exclusions cover treatment or diagnosis of animals as well as humans. 

When we talk about therapy we include the treatment or cure of a disease, and also its prevention (for example by vaccination).  Therefore, a claim to a method of treating, or vaccinating against, disease Y by injecting drug X will not be allowed; though as I will explain below the applicant may still be able to protect the invention in a different way.  The term therapy also includes the alleviation of symptoms (such as pain relief) as well as the treatment of the underlying disease.  On the other hand, purely cosmetic treatments can be patented.

Surgery is defined by the nature of the procedure, and not the purpose.  Surgical methods are physical procedures carried out on the body, and they generally carry significant risk to the patient and so require a high level of professional skill – so, for example, a simple injection to administer a drug would not generally be considered surgical, but a lumbar puncture into the spinal cord would be.  It doesn’t matter why it’s being done: cosmetic surgery still requires skill and can be risky, so you don’t want the surgeon pausing, scalpel in hand, to check whether he’s infringing any patents.

Diagnosis is only excluded if it is “practised on the human or animal body”; tests performed on isolated samples (such as blood or urine tests) can be patented. In addition, only methods which allow you to identify the disease are excluded – a method of measuring body temperature, for example, may be useful in diagnosis but doesn’t give the full picture, and so can be patented.

As in other areas of technology, it can sometimes be difficult to decide whether a claimed method is excluded or not, but the overall picture seems clear: you can get a patent for a new drug or device for medicine, but not for a new method of medical treatment or diagnosis. 

However, there is one very important proviso: a new use for a substance or composition – but not a medical device – can be protected, through what is known as a medical use claim.  What do I mean by this?

A “first medical use” claim of the form “substance X for use in therapy” is considered to be new if substance X has never previously been used in medicine, even if the substance itself is known and has been used for other purposes.  Similarly, a “second medical use” claim of the form “substance X for use in the treatment of disease Y” is considered to be new if substance X has never previously been used to treat that particular disease.  This is an exception to the normal rules of claim interpretation and novelty which apply in any non-medical field.  For example, a claim to “substance X for use in sterilising medical devices” will not be regarded as new if substance X is already known and would be suitable for sterilisation. 

One final point about medical use claims: they must be supported by some evidence, in the application, that the drug in question does – or is likely to – work to treat the disease in question.  It doesn’t have to be clinical evidence – animal or test tube experiments may be enough – but it has to be more than just a bald statement that it works.  This can be a fatal objection – if the evidence isn’t there in the application as filed, you can’t add it later.

Richard Sewards

Patent Examiner

Intellectual Property Office

Examining Patents – The end is in sight

So I have now examined your application to make sure it is novel, inventive and not excluded. What’s left to do, you might ask?

The final step left to consider is whether the application is clear and sufficient and the claims supported by the description.

What do I mean when I say it must be clear? In a nutshell, if you are to get a patent it must be clear enough for someone to be able to read and understand it. This sounds very simple but the examination reports written on many applications raise objections on this point.

It is perhaps easier to illustrate what I mean by examples of the sort of thing we pick up in an examination. A common clarity issue is that we just don’t understand the claim – if it can’t be understood then it needs some work. In many cases this is as a result of a translation from another language, but there are always examples where this excuse is not available!

Another common problem is the inconsistent use of terms when referring to a specific thing. If you call it a widget then you should keep referring to it as a widget. Other common problems are incorrect references to numbers in figures and, my personal favourite, referring to application numbers of patents rather than a published patent number – only public documentation can be referred to in the patent specification and so the publication number must be included.

Sufficiency is not an objection that is raised on a regular basis. The patent system is a bargain between the state and the inventor. We grant you the right to prevent others using your invention, and in return you must provide full details of your invention. If you don’t provide enough detail then the application is not sufficient. What we are looking for here is enough information in the specification to allow the skilled person to work the invention. It doesn’t need to have infinite detail as, if you recall from earlier posts, the skilled person already has some knowledge – but it should set out in full how your invention works.

The final major issue we will consider is support. In brief, the subject matter of the claims must be supported by the description. What we do not want to see is a claim to something that has never been mentioned in the description. For example, if you have a claim that says the widget is connected to the reticulating arm by a sprocket we would expect to see this in a diagram or the description. If the sprocket is never mentioned then it may well be the case that the claim is unsupported.

That concludes my short tour through the patent examining role and I hope people found it useful. If you think you might be interested in becoming an examiner we are recruiting – details can be found at http://www.ipo.gov.uk/careers-patentexaminer.htm

Nigel Hanley

Senior Patent Examiner

Intellectual Property Office

Novelty and Inventive Step

As promised this post is about how we examine an application for novelty and inventive step.

When we examine any application the main area we concentrate on is the claims. It is the claims of an application that define what features the applicant is trying to get a patent for. Sometimes the claims can be relatively simple (unfortunately rare from the examiner viewpoint) and might only cover a very simple feature. Occasionally, they can be very complex, have lots of features and be very long (and are usually examined through gritted teeth whilst emitting strange curses known only to long suffering examiners). More often than not though, it is relatively straight-forward to identify the key features that the applicant claims make their invention novel and inventive.

For a claimed invention to be novel, the features claimed must include something new. To assess this we will compare the features of the claimed invention with the features disclosed in those citations which have been marked as category “X” on the search report. For example, the claim might define a circular widget having a hole in the centre. If the citation shows a circular widget with a hole in the centre then the claim does not define a novel invention. Put another way, if the claim lists features A, B and C and the citation or prior art shows the same arrangement of features A, B and C then the claimed invention is not novel.

But what happens when there is a difference between the features shown in the citations and those present in the claim? At this point we need to consider whether those differences involve an inventive step. This is often the most difficult part of the examining process.  How we deal with this has developed over the years and we now use what we call the Windsurfing/Pozzoli approach which comes from two court cases. This approach has a number of steps which examiners need to work through.

The first thing we do is to identify who the skilled person is and having done that ask “what is their common general knowledge?” In short, what would we expect the person working in the area of the application to know? For example, if the application were for a traffic light the skilled person would be someone experienced in designing traffic lights who knows how they work and would know any relevant legal requirements and common practices in the area.

The second thing we do is to identify the inventive concept in the claim. This is really the nub of the invention – what is it that the inventor is trying to do? In my traffic light example this could be, for example, the addition of another light to indicate an approaching emergency vehicle.

Next we need to identify the current state of the art and any differences between it and the inventive concept. We do this by looking at the documents cited on the search report. Using my traffic light example you might have documents that show traditional traffic lights as well as documents showing a traffic light type device outside a fire station that flashes to indicate a fire engine is leaving the station.  These documents could be listed on the report as category “Y”, indicating that they may demonstrate a lack of inventive step when two (or more) of them are considered together.

The examiner may also look at the “X” documents and consider if any differences could be said to form part of the skilled person’s general knowledge. It may be the document does not specify the colour of the lights but common general knowledge would suggest that making them red, amber and green would be obvious.

Having looked at the documents the examiner will have come to a conclusion about the state of the art and decided what the difference is between that known art and the invention being considered. In our example it might just be the combination of the traditional traffic light with an additional warning light.

The final step is then to decide, from the view of the skilled person we identified at step 1, whether the difference is inventive, or whether it would be obvious to the skilled person. There is one proviso in this decision, the examiner must avoid hindsight. We must put ourselves in a position of the skilled person who has not read the application. Many things appear obvious after you have been told them and that is hindsight.  So, the question is “would the person experienced in designing traffic lights consider it obvious to add an emergency vehicle warning light to an existing traffic light. ?”

In my earlier post on inventive step I mentioned a few things we need to consider. For example, one of the things we would look at would be whether it is obvious to try what’s claimed, another is whether there has been a long felt need for the claimed invention. These are the sort of things we would consider when deciding the final step.

Just in case anyone thinks that the example was a good idea you might want to take a look at US5889475 and US6980125. Figure 2 of the first citation may well show it lacks novelty anyway but the second would in all likelihood show it was not inventive either.

Links

US 5889475

http://worldwide.espacenet.com/publicationDetails/biblio?DB=EPODOC&II=0&adjacent=true&locale=en_gb&FT=D&date=19990330&CC=US&NR=5889475A&KC=A

US 6980125

http://worldwide.espacenet.com/publicationDetails/biblio?DB=EPODOC&II=0&adjacent=true&locale=en_gb&FT=D&date=20051227&CC=US&NR=6980125B1&KC=B1

Nigel Hanley

Senior Patent Examiner

Intellectual Property Office

Examining for Excluded Matter (Part 2) – Computer Programs

 
Firstly, many apologies for the delay in posting – a week off work (yes we are allowed them) meant the return to a pile of work awaiting my return.

As promised in my last post I said that I would talk about how we examine patent applications that involve computer programs. Whether patents should be granted for computer programs is without doubt a complex and sometimes controversial question and is not something I want to explore here.  I want to concentrate on how we examine them within the current law.

As examiners what we are doing when examining an application that involves a computer program is making a distinction about whether the invention is just “a computer program” in which case it is not allowable, or if it does more by way of making a “technical contribution”, which is allowable.

To help us in this decision there are several things we look at.   In effect, what we are looking for is an indication that that there is something more going on than just the running of a computer program.  

One of the first things we look for is whether the program has an effect outside the computer. We look at whether the computer program causes something to happen outside the computer system e.g. does it control a valve in a factory, the brakes in a car braking system or a lock on a door. In other words, if the computer program controls an external process or system it may well be allowable.

We also consider the level at which the program operates and specifically whether it involves something within the architecture of the computer no matter what data is being processed. We take this to mean that programs that control how the internal components of the computer (such as the hard disk or memory) work are allowable.  These operate at a level of functionality that is not linked to the data being processed. On the other hand, a program that operates on specific data such as business data would not be allowable.

Another valuable pointer is whether the computer operates in a new way or if there is an improvement in the speed and reliability of the computer. I’m sure all programmers will tell you that their program is faster and more reliable but that is not what we are looking for here. What we need to see is a clear indication that the underlying computer and not the program is faster, more reliable or operating in a new way. For example, a program that uses the computer’s resources in a different way, such as minimising the power it uses or how it controls the processors, may be allowable. Similarly, a program that releases memory in a more reliable or faster way when an application finishes may also be allowable.

The final consideration we take into account is sometimes the most difficult. What we are looking for here is whether the invention is a solution to an identifiable problem and not just a work around. A good example is where a system needs to synchronise information received on several networks operating at different speeds.  Simply slowing the synchronisation to the slowest network would be considered to be a “circumvention” – it does not solve the problem of the slow networks. I mentioned that it must solve a problem. This must be a technical problem, such as a problem with a component, rather than for example an economic problem.

Having considered the above, if the examiner considers that the invention is an allowable computer program then it will still need to be novel and involve an inventive step, which brings me neatly to the subject of next week’s blog.

Nigel Hanley

Senior Patent Examiner

Intellectual Property Office

Examining for excluded matter

As I said in two of my earlier posts on excluded matter, you cannot get a patent for some types of invention.  In those two posts I talked about the law but this leaves the question of how does the Examiner decide whether an application is for an excluded invention?

From personal experience, this can be a very difficult part of the examining job. Over time the way we deal with this issue has evolved as a result of court judgments and our understanding of them. This means that we now have a standard practice that all examiners can follow.

In examining applications for excluded matter we apply a four step test known as the “Aerotel Test”. (It’s called Aerotel as they were one of the parties in a patent case heard by the Court of Appeal in London in 2006).

The first step is to “construe the claim”. What this means is that the examiner tries to understand what the claim means. On most occasions this is not difficult as it is usually fairly clear. However, there are always exceptions and sometimes you need to work out what some specific terms mean especially when the applicant comes up with their own.

Having decided what the claim means, the second step asks the examiner to decide what the actual or alleged contribution is. The judges in Aerotel helpfully pointed out that you have to ask the question:  What has the applicant added to the stock of Human Knowledge? Please trust me when I say that this can be very hard to do in practice.  In the main, the examiner will be able to use their own experience and knowledge of the area in which they work to decide what the contribution is. For example, well known equipment such as a standard computer will not form part of the contribution.

Deciding on the contribution is the hardest part of the steps. If you have done it correctly the next step of asking whether the contribution lies entirely in an excluded area should be a simple yes or no. By this we mean is it a method of playing a game, business method, computer program or any of the other exclusions. 

At this point, I am going to leave computer programs for further discussion in the next post.

The final step is to ask if the application is technical, but is only considered if the application passes the third step – it is sometime helpful to think of it like the big red balls on the “Total Wipeout ^RTM”obstacle course – if you fall off at the third one you don’t get to restart at the fourth one.

The fourth step is there to ensure that things like a method of training a sheepdog are not patentable. It is very rarely used and most if not all cases fail at the third step.

This is the basic approach to how the examiner will decide if an application is patentable or not. In most cases they will add a reference to court cases to justify their decision. How they choose the court case to use depends not only on the reason for excluding the application but it maybe that it is same or very close to the facts of the application they are examining.

Nigel Hanley

Senior Patent Examiner

Intellectual Property Office

Plurality

 “The human mind, if it is to keep its sanity, must maintain the nicest balance between unity and plurality.”

Irving Babbitt

This week’s blog is about plurality or rather why your patent application can only be for one invention.

The claims of an application set out the invention the applicant wants to protect. It is a longstanding point of patent law that you can only claim one invention per application.

At the examination stage, this is one of the first things I will look at. In most cases an examiner will already have looked at plurality of invention at the search stage. At that point, they may have decided the claims are all related to the same thing or have already warned the applicant that they may have two inventions – there are remedies for this that I shall come to later. At examination we have to make a more formal objection, so it is important to understand what we mean by plurality of invention.

Most cases of plural inventions are quite easy to see.  A simple example would be an application that claims a torch and separately claims a battery. Whilst they may work well together a torch and a battery are two different inventions. One way an examiner may be able to tell if plurality exists is by looking at where they would classify an application – if it is in two very different areas then that may be an indication that there are different inventions. (See our earlier post about classification)

Unfortunately, (from the examiner’s point of view) not all cases of plurality are that easy to spot.  Often we will be faced with a claim that has features A, B, C and D and another claim that has features A, B, C & E. You could look at this and say they are probably the same invention because they feature the same “common subject matter” (A, B and C). In some cases that will be enough to say that the claims relate to the same invention – particularly where A, B and C are new and inventive features.  However, what if the common subject matter (A, B and C) was well known, such as a computer, display and a keyboard? In that case, we would consider the claims to relate to different inventions because feature D & feature E are really what define the invention in each claim respectively, and these features are different.

Quite often, when examining an application, we will see a series of claims to a method followed by ones to an apparatus and a computer program. These are invariably covering the same invention – there is a method that runs on a set of apparatus using a computer program. These are the simple ones – sometimes you get claims to two different parts of the same system. For example, a set of claims to a fuel container and another to a burner specifically for use with that fuel container are usually allowable.

What do we do if we find that the claims are for different inventions? The most common thing is to ask the applicant to delete the claims to the second invention and, if they wish, file them again in what we call a divisional application. In effect what they are doing is filing a “child” application which is entitled to the same priority and filing date as the original “parent” application. In some cases where there are more than two independent inventions it is not uncommon to get to “grandchildren” or “great- grandchildren” applications.

Hopefully, that gives you a flavour of plurality and how an examiner deals with it. Next week, I will revisit patentability and talk about how we go about deciding if an application is for excluded matter.

Nigel Hanley

Senior Patent Examiner

Intellectual Property Office

Examining a Patent Application (part 1)
 

“Knowledge is of two kinds. We know a subject ourselves, or we know where we can find information on it.”

Samuel Johnson

What does an examiner do when examining a patent application? Hopefully over the next few weeks I will give you a flavour of what is involved and some of the assessments the examiner has to make.

This week I want to cover how the examiner will prepare to do the examination.

So the case is on my desk (in reality my mailbox on the electronic case system but desk still sounds better), the exam fee has been paid and the applicant is eagerly awaiting news that his application is allowable. What happens next?

The first part of the examination process is actually more about information gathering to help inform my decision. In the UK we will have already undertaken a search so I will in most cases have a list of documents found by the search examiner. However, it may well be that the application has equivalents (known as family members) in other countries, for example the US or Japan. The applicant may have also filed an international application under the Patent Cooperation Treaty (PCT) or a European application with the European Patent Office (EPO).

The first thing I will do is to look to see what has happened on the family members – it’s a bit like looking at people’s Facebook^RTM  pages to see what they are up to.  In some cases such as a PCT or EPO application there will already be a search report. Sometimes this uses the same citations as the UK search report or it may use new documents. Often we will get the situation on PCT cases where the report is prepared by the Japanese, Chinese or Korean office and will contain national language applications. Not being terribly conversant in any of these languages it can be very helpful to gain the insight of the search examiner as they will undoubtedly be in a better position to understand these documents.

For some countries, the search is not done until they come to do the examination after the application has been published. The US is a good example and I will often look the case up on the USPTO file inspection service (PAIR) to see what the US examiner has found. I will also do the same with the Japanese and Korean offices’ website services if there are family members in these countries. We also have an agreement with Australia and Canada to exchange our search reports so I will look at these if appropriate.

A PCT case may also have been issued with a Written Opinion or an International Preliminary Report on Patentability. These are reports that give a preliminary view on whether the invention meets the requirements for patentability and explain in a little more detail why the documents support this view. In some cases the preliminary view may be that the application is novel, inventive and industrially applicable. (If this is the case the applicant can ask for an accelerated examination at the IPO – more details can be found at www.ipo.gov.uk/pro-p-fasttrack.)

The final thing I have left to do is to undertake the “top up” search. In common with other IP offices we publish applications at 18 months after the priority date. The aim of the “top up” search is to find any relevant documents that have an earlier priority date (see my earlier post on dates) but were not published when I did the original search.

This is also where Peer To Patent comes in. On those cases that are in the Pilot I will also have received a report from the system. I will look at the prior art listed and add that to my list of documents to consider during the examination.

I will now have a complete picture of the prior art for the application I am working on. My next step is then to decide if I have an application for one or more inventions, of which more next week.

Nigel Hanley

Senior Patent Examiner

Intellectual Property Office