The UK National Phase of the PCT

This is a summary of the national phase procedure in the United Kingdom (UK) of an international patent application under the Patent Cooperation Treaty (PCT) (hereinafter referred to as an “international PCT patent application”). Patents can also be obtained in the UK through the European patent application procedure, by filing a direct UK patent application, or by filing an international patent application under the PCT and entering the European regional phase. It is assumed that readers are already familiar with the PCT. If you are not, then we provide an introduction here.

Entering the national phase

The deadline to enter the national phase in the UK is 31 months from the earliest priority date of the international PCT patent application. The requirements to validly enter the UK national phase, are to: i) file the required form, ii) pay the national phase entry fee, and iii) if the international PCT patent application was not published in English, file a translation of the international PCT patent application as filed into English and pay a fee for publication of the English translation. It is possible to enter the national phase in the UK up to two months late as-of-right, with payment of a surcharge.

Amendments made during the international phase

If the international PCT patent application was not published in English and was amended before entry into the UK national phase (i.e. during the international phase), an English translation of the amendments must be filed upon entry to the UK national phase. If the translation of the amendments is not provided, then the UKIPO will set a deadline for providing the translation. If the translation of the amendments is not filed with the UKIPO by the deadline set by the UKIPO, then the amendments will be disregarded.

If the amendments are in English, then amendments do not need to be filed separately( subject to the requirements for early entry into the UK national phase as discussed below).

Voluntary amendments on National Phase Entry

It is possible to amend the claims of the international PCT patent application when entering the national phase in the UK. There are various reasons why the claims could be amended on entry to the UK national phase.

For example, if features of a dependent claim have been found allowable in the international phase of the PCT application by the international examiner, it may be advantageous to amend the independent claims of the UK national phase to include the allowable feature(s). This may result in quicker grant of the patent in the UK.

Another reason why the claims could be amended on UK national phase entry is to reduce the total number of claims to no more than 25 so that excess claims fees are not due.

Search and Examination

The UK Intellectual Property Office (IPO) will conduct its own search and examination of the application. Under most circumstances, the deadline for requesting a search of the application (by paying the search fee) and for requesting examination of the application (by paying the examination fee) is two months after the date on which the UK national phase was entered.

The UKIPO charges an excess claims fee for each claim over 25 which is due as part of the search fee. The UKIPO also charges an excess page fee for each page of the description over 35 which is due as part of the examination fee.

Many applicants choose to pay the national phase entry fee, the search fee and the examination fee together at the time of entering the national phase – and this is our practice, unless instructed to the contrary.

Once the search and examination fees have been paid, the UKIPO will in time issue a combined search and examination report in which the examiner raises any objections they might have to the application. For example, the examiner may argue that the claims cover subject matter which is not new, or which is obvious, over certain documents which will be cited in the report. 

It is then necessary to file a response to the report by the deadline set in the report. In the response, it is possible to either argue against the examiner’s objections or to amend the claims to overcome the objections. This process repeats until the examiner is satisfied that the application meets the requirements for grant.

Grant

Under UK patent law, a UK patent application must be ready for grant by 4.5 years from the earliest declared priority date, or 1 year from the issuance of a first examination report, whichever is later. This is known as the “compliance date”. If the patent is not ready for grant by the compliance date, the application will be refused.

However, it is possible to extend the compliance date by two-months as-of-right. Another extension of a further two months can be requested but will only be permitted at the discretion of the UKIPO.

When the examiner is satisfied that the application meets the requirements for grant, the UKIPO will issue a communication confirming that the UKIPO intends to grant a UK patent from the application. This communication will set a deadline by which any divisional applications must be filed. Only once a patent is granted can it be enforced.

Renewals fees

Renewals fees for a UK patent are only due once a patent has been granted. As a result of this, renewal fees are not due on entry to the national phase because the application is still pending.

In addition, renewal fees for a UK patent are due annually for the 5th year onwards. Since the filing date of the UK patent is the filing date of the international PCT patent application from which it originated, this means that the first renewal date is the fourth anniversary of the date of filing the international PCT patent application. Therefore, it is often the situation that when the patent is granted, there is a backdated renewal fee for the 5th year which become payable when the patent grants.

Provisional Protection

The patent system in the UK allows for ‘provisional protection’ upon publication of a UK patent application in English. Provisional protection means that, in some circumstances, a UK patent (once granted) may be enforced against infringing acts backdated to the date of publication of the UK patent application in English. Patent proprietors may therefore be able to retroactively claim damages for infringing acts backdated to the date of publication of the UK patent application in English.

If the international PCT patent application from which the UK national phase application originates was published in English, then the date on which provisional protection begins is the date of publication of the international PCT patent application. If the international PCT patent application from which the UK national phase application originates was not published in English, then the date on which provisional protection begins is the date of publication of the translation of the international PCT patent application in English as part of the national phase in the UK.

Early entry to the UK national phase

It is possible to enter the UK national phase early, in advance of the 31-month deadline, if desired. If you would like to enter the UK national phase early, it is a requirement to explicitly request that UKIPO begins to process the UK national phase application early. It may also be necessary to file a copy of the international patent application with the UKIPO (including any amendments made to the international application), if the international patent application (and/or the amendments to the application) have not yet been sent to the UKIPO. The same requirements for payment of fees and filing of translations must also be met.

Accelerated processing

In some circumstances, it is possible to potentially speed up grant of a UK patent by requesting accelerated processing of the UK national phase application.

For example, you can request accelerated combined search and examination of a UK national phase application provided that there is an acceptable reason for doing so. Examples of an acceptable reason include that you are aware of a potential infringer, or that a granted patent will be useful for investment purposes.

For UK national phase applications relating to environmentally friendly technology, a request for accelerated processing (e.g. accelerated combined search and examination) can be made via the ‘Green Channel’. It is necessary to make the request by providing a brief explanation of how the invention claimed in the patent application is environmentally beneficial.

For UK national phase applications which originate from an international PCT patent application that was found to have allowable claims in the international phase, a request for accelerated processing (e.g. accelerated combined search and examination) can be made via the ‘PCT(UK) Fast Track’. It is necessary to make the request by indicating how the claims of the UK national phase application correspond to those found allowable in the international phase.

For UK national phase applications which correspond to a patent application in another country (from a select list) that was found to be allowable, a request for accelerated processing (e.g. accelerated combined search and examination) can be made via the ‘Patent Prosecution Highway’. It is necessary to make the request by indicating how the claims of the UK national phase application correspond to the claims of the patent application found allowable in the other country.

Author: Phoebe Hunter. If you have any questions about this article or would like a quote to enter the UK national phase, please do not hesitate to contact us.