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Reviewed 5 December 2012

Relaxation of requirements for PCT(UK) Fast Track

Background

1. This notice sets out a change to the requirements for using the Intellectual Property Office's PCT(UK) Fast Track service as set out in a previous notice. The revised requirements and procedures set out below will apply from 8 June 2012.

Introduction

2. Since its introduction on 28 May 2010, PCT(UK) Fast Track has enabled patent applicants to request accelerated examination in the UK national phase if their international application has received a positive International Preliminary Report on Patentability (IPRP). The service is available whether the IPRP has been issued under Chapter I or Chapter II of the Patent Cooperation Treaty (PCT) [1]. If the IPRP has not yet been issued, a positive Written Opinion of the International Searching Authority (WO-ISA) is also accepted as a reason for acceleration under the service, since the WO-ISA will later be re-issued as the IPRP under Chapter I.

3. So far, the service has been restricted to applications that have received a positive IPRP or WO-ISA in respect of all claims present in the international application. It follows that applicants have been unable to use the service if any objections to novelty, inventive step or industrial applicability have been raised against any of the claims in the IPRP or WO-ISA, even if the unacceptable claims are deleted on entry to the UK national phase.

4. The requirements are being relaxed so that acceleration under the PCT(UK) Fast Track will be available where the claims on file in the UK national phase sufficiently correspond to one or more claims indicated as acceptable in the IPRP or WO-ISA. The claim correspondence requirements will be the same as those which are applied under the Office’s Patent Prosecution Highway (PPH) agreements. Under those requirements, applicants will be able to use the service where the IPRP or WO-ISA was positive in respect of some, but not all, claims in the international application, as long as the unacceptable claims are deleted on entry to the UK national phase. Applicants will also be able to use the service where the claims have been amended to be of a narrower scope than the ones found allowable in the IPRP or WO-ISA.

Requirements

5. A request for processing under the PCT(UK) Fast Track must be received before UK examination has commenced.

6. In order to qualify for the service, all claims present in the application at the time of the request must sufficiently correspond to one or more claims that have been examined and found to meet the requirements for novelty, inventive step and industrial applicability in the international phase.

7. Claims are considered to “sufficiently correspond” where, accounting for differences due to translations and claim format, the claims on file in the UK national phase are

 (i)  of the same or similar scope as the claims found acceptable in the IPRP or WO-ISA, or

 (ii)  narrower in scope than the claims found acceptable in the IPRP or WO-ISA.

8. With regard to (ii), a claim that is narrower in scope occurs when a claim found to be acceptable in the IPRP or WO-ISA is amended to be further limited by an additional feature that is supported in the specification (description and/or claims).

9. A claim in the UK national phase which is in a new or different category from those claims indicated as acceptable in the IPRP or WO-ISA is not considered to “sufficiently correspond”. For example, where the acceptable claims relate to a process of manufacturing a product, then the claims in the UK national phase are not considered to sufficiently correspond if they introduce product claims that are dependent on the corresponding process claims.

10. If the IPRP or WO-ISA states in Box III that certain claims have not been examined, then acceleration is only available under this service if those claims have been deleted from the application. Similarly, if objections to novelty, inventive step or industrial applicability have been raised against any of the claims in Box V of the IPRP or WO-ISA, then acceleration is only available under this service if those claims have been deleted from the application or amended such that they sufficiently correspond to allowable claims.

Procedure

11. The applicant must make a request for accelerated examination in writing, indicating that the claims currently on file sufficiently correspond to one or more claims that were indicated as acceptable in the international phase in the IPRP or WO-ISA. The Office will require no further reasons for accelerated examination to take place.

12. It is helpful if any correspondence in relation to accelerated applications is clearly marked as such, for example by boldly indicating “URGENT - ACCELERATED PROCESSING REQUESTED”. This will help us to identify correspondence relating to accelerated applications as early as possible after the Office has received the correspondence and thus ensure that the examiner receives this correspondence as quickly as possible.

13. In the unlikely circumstance that WIPO is delayed in supplying a copy of the IPRP, we may ask the applicant to provide a copy of this document in order to expedite the process.

14. Each request for accelerated examination will be considered by a patent examiner, who will confirm whether the request for accelerated examination has been allowed or refused. If it is not clear how the claims correspond to those indicated as acceptable in the IPRP or WO-ISA, the examiner may contact the applicant to request further clarification.

15. In the event of the request being refused, reasons for refusal will be provided. If the request is allowed, accelerated examination will take place. Our current target is to issue a substantive examination report within 2 months of receipt of the request for accelerated examination, on at least 90% of cases.

16. The usual opportunity for voluntary amendment under rule 31(4) will be available after issue of the first examination report.

Further Information

17. You can find further information about the various accelerated services we offer in our patents fast grant guidance PDF document(45Kb).

Enquiries

18. Any enquiries about this notice should be made to:

Hazel Craven
Tel:  +44 (0) 1633 814083
Fax: +44 (0) 1633 814491

or

Nick Smith
Tel:  +44 (0) 1633 814839
Fax: +44 (0) 1633 814491

Patents Legal Section
Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Sean Dennehey
Deputy Chief Executive and Director of Patents
Intellectual Property Office

8 June 2012

[1] Following receipt of an International Search Report and Written Opinion issued under Chapter I of the PCT, the applicant has the option of requesting an International Preliminary Examination under Chapter II of the PCT. This involves further examination of the patentability of the invention. Whether the application proceeds under Chapter I or Chapter II, an IPRP is issued at the end of the international phase.