Search and examination options when filing an initial UK patent application

This article applies to patent applications at the UK Intellectual Property Office (UKIPO) which are the first filing in a patent family and do not “claim priority” from any earlier application. These applications are usually used to obtain a priority date for an invention and the applicant has a period of 12 months to file further applications in the UK or abroad which claim priority from the first filing. This is a common filing strategy for many applicants.

What are search and examination?

Search and substantive examination are two procedural steps in the patent application process which must be completed before a UK patent is granted. These steps must be applied for by filing a request and paying associated official fees* to the UKIPO, by specific deadlines**.

The search is conducted so that the UKIPO can identify any relevant prior art (such as patents, academic publications etc) that could be prejudicial to the patentability of the claimed invention.

Substantive examination assesses whether, in view of the prior art cited in the search report, the invention is patentable – including whether it is novel (new) and inventive (non-obvious).

Options for requesting search and examination at the UKIPO

1. Do not make a search (or examination) request on filing

When filing an initial UK patent application that doesn’t have a priority claim, it is not necessary to file a request for search and a request for examination straight away.

Omitting both the search and examination requests is the lowest cost option as no search or examination fees need to be paid. Moreover, a priority date will still be established for the claimed invention.

However, on following this option, you will not receive an indication of the patentability of the invention as no search (or examination) report will be received. It is also useful to note that if a search is not filed within the 12-month priority period, the application will be treated as withdrawn. However, this may not matter if a subsequent application is filed, as above.

2. Request a search on filing, or later within the priority year, and file an examination request afterwards

This option is relatively cheap as only the search fee will need to be paid on filing (and not the examination fee).

A search report will be produced by the UKIPO, normally within six months of filing the request. The results of the search report can be used to give an indication of the patentability of the invention.

This option does, however, bring forward some of the costs which otherwise could have been delayed. Moreover, whilst the search report gives an indication of the patentability of the invention, it is not an examination report and so no specific objections relating to the cited prior art are provided. This also means that no response deadline is set.

A search request can also be filed after filing of the application and before the end of the 12-month priority period, although unless a search is requested within a few months of the filing date, the search report may not be received before the foreign filing deadline.

By filing a search request in this way, without an examination request, you can defer the cost of requesting examination while still benefiting from receiving an official search report. However, there is then a long delay until examination will occur and requesting examination before the deadline to do so does not speed up examination. This approach would therefore mean that an examination report would not usually be received until several years after the filing of the patent application.

3. File a combined search and examination request on filing

In this option the examiner at the UKIPO provides a search report and an examination report to the applicant at the same time. This is termed the combined search and examination report. The combined search and examination report lists relevant prior art, and any objections made by the examiner in view of the cited prior art. There is a set deadline for response to any objections raised in the report, although that deadline is usually at least a year in the future.

Requesting both search and examination at the same time on filing is likely to speed up the search and examination stages. In most cases, it is possible to receive a combined search and examination report within six months of filing. By responding to any objections the examination process can be progressed. This can lead to a quicker grant than by either of the first two options.

Moreover, filing a request for combined search and examination on filing of the application is useful in that a patentability assessment is provided by the UK IPO within the 12-month priority period. This can help applicants decide whether to proceed with filing priority-claiming applications in other countries or support a Patent Prosecution Highway request.

This route requires the official fees for both search and examination to be paid upfront. Therefore, if the applicant abandons the first application and files a subsequent UK application with a priority claim, the additional cost of the examination could pessimistically be seen as wasted. However, even in such a case, the results of the combined search and examination report are likely to be of general relevance, and can help to inform strategy going forward.

Acceleration options

It is sometimes possible to accelerate both the search and examination stages, as well as publication of the application.

An acceptable reason for requesting separate accelerated search and examination must be communicated to the UKIPO. This could be due to, for example, potential investment opportunities or risk of imminent infringement. It is possible to request accelerated search and examination for inventions with potential environmental benefits through the Green Channel.

If accelerated publication is requested, publication should occur about six weeks from the request. A patent cannot be granted until at least three months following publication and so early publication can be used to speed up the grant process. There is no requirement to provide a reason when requesting accelerated publication. Accelerated publication has the effect of making the contents of the application available to the public early and many applicants do not want to do this.

*Official Fees

• The official fee for requesting a search of a UK patent application online is £150 + £20 for each claim over 25 (price as of May 2024).
• The official fee for requesting substantive examination of a UK patent application online is £100 + £10 for each page of description over 35 (price as of May 2024).

**Deadlines

For more information the UK patent application process and the deadlines for requesting search and examination please see our more detailed article on the UK patent application procedure.

Below we summarise some of the key deadlines.

• A search must be requested within 12 months of filing the first application.
• Examination must be requested, at the latest, by 6 months following publication of the patent application.
• Search and examination can be requested at the same time or separately.

If you have any questions on this or any other topics concerning the UK patent application procedure please do not hesitate to contact us.

Author: Melissa Walden