Beakers and Bunsens: UK IPO – EPO co-operation brings positive news for biotech innovators

11 February 2019

On 1 February 2019 the UK IPO issued a notice that brings welcome news for biotech innovators wanting to use the services of the UK IPO. Searches on all UK initial patent filings in the biotech sector should be sped up, and for some applicants significant cost savings should be available in connection with subsequent European or PCT applications claiming priority from that UK patent filing.

The United Kingdom Intellectual Property Office (UK IPO) is renowned for producing low-cost but high-quality searches, which are usually issued within 6 months of filing a UK patent application that does not claim priority. This makes the UK a highly attractive jurisdiction for first filings because applicants are able to get a valuable insight into the patentability of their invention well within the priority year, giving time to consider the subsequent global filing and prosecution strategy before priority claiming applications (e.g. a PCT application) need to be filed.

Unfortunately, due to backlogs at the UK IPO, applicants in the field of biotechnology have had to wait longer than 6 months to receive the UK IPO’s search results. To tackle this backlog and to ensure that the UK IPO can continue to issue search reports quickly, the UK IPO announced on 1 February 2019 that they have signed a co operative searching agreement with the European Patent Office (EPO). Under this agreement, the EPO will perform 200-300 searches per year for UK applications relating to biotech inventions. The agreement will last for at least two years and is based on similar co-operation agreements which already exist between the EPO and other EPC contracting states including Cyprus, Greece, Italy, Latvia, Lithuania, Malta, Monaco and San Marino.

This is positive news for biotech innovators because all applicants using the UK IPO can expect to receive the valuable information they are seeking in a useful time frame.

Although UK applicants cannot chose whether their UK application is searched by the EPO, the search report will indicate which authority has performed the search and applicants whose searches are performed by the EPO may be entitled to the following additional benefits.

Firstly, where the EPO has completed the search for a UK application, a later filed European application claiming priority from the UK application could be eligible for a refund of up to 100% of the European search fee. Similarly, a later filed PCT application claiming priority from the UK application could be eligible for a refund of up to 84% of the international search fee where the EPO is the International Search Authoring (ISA). In view of the fact that the search fee for a UK application is currently only £150 - compared to €1,300 for a European application and €1,775 for an international search by the EPO - this could result in significant cost savings for applicants.

Secondly, a PCT application claiming priority from a UK application that was searched by the EPO may be eligible for PCT Direct. Using this service applicants can file, together with their PCT application, comments in response to any objections raised in the search opinion drawn up by the EPO in respect of their UK priority application. The EPO as ISA will take these comments into account when drawing up the written opinion of the ISA (WO-ISA), which can help applicants to obtain a positive WO-ISA.

Continued issuance of high-quality search reports in a short time frame alongside these new, additional benefits make the UK an even more attractive jurisdiction for first filings.

For further information on patent protection for inventions in the field of biotechnology or on how to best harness the services of the UK IPO for new patent filings, please contact Isobel Finnie, Jo Rowley or email hlinfo@haseltinelake.com

Isobel Finnie

Isobel Finnie

Partner

Joanna Rowley

Joanna Rowley

Trainee Patent Attorney

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