FAQs On UK & European Practice

We answer your most frequently posed questions on UK and European IP practice.

What routes are available to obtain patent protection in the UK or Europe?

Protection in Europe may be obtained by filing a convention European application or by entering the European regional phase of a PCT application.

Protection in the UK may be obtained by filing a convention UK application or by entering the UK national phase of a PCT application. Another route via which protection may be obtained in the UK is by validating a European patent (obtained by any route) in the UK.

What is the deadline to enter the UK national phase or the European regional phase of a PCT patent application?

The normal filing deadline is 31-months from the earliest priority date for a UK national phase or a European regional phase of a PCT application.

Is it possible to enter the UK national phase or the European regional phase of a PCT application late?

Late entry into the UK national phase is possible up to 33-months from the earliest priority date upon payment of an official fee surcharge.  Any additional extension to the deadline is discretionary and requires the applicant to demonstrate that the missed deadline was unintentional, i.e. that there was always an underlying intention to enter the UK national phase.

Late entry into the European regional phase is possible until at least 33-months from the earliest priority date. If the normal 31-month deadline is missed, the European Patent Office will issue (usually within 1 to 2 months) a “Loss of Rights” communication. However, the loss of rights can be reversed if, within a two month deadline, the applicant requests “Further Processing” and pays additional fees. However, those fees include a 50% surcharge of the official fees due.

In theory, it is possible to revive an application after expiry of the Further Processing deadline. However, this is discretionary and the circumstances in which applications can be successfully restored are severely limited.

 

Does the applicant need to sign any documentation (e.g. a Power of Attorney) to initiate a convention filing in the UK or in Europe or entry into the national/regional phase of a PCT application in the UK/Europe?

No power of attorney (or indeed any other documentation) is required.

Can the processing of a UK or European patent application be accelerated or decelerated?

Yes – various options are available. The PACE Scheme, Waiving the Rule 70(2) EPC Communication, early Entry into the European Regional Phase (of a Euro-PCT), Patent Prosecution Highway (PPH), and more are explained in our “Options For Speeding Up Or Slowing Down A European Patent Application” briefing download and accompanying video.

Can divisional applications be filed in the UK or in Euope? If so, when?

Divisional applications can be filed based on European applications at any point while the parent European application is pending. All subject matter in a divisional application must find basis in its parent application. It is permitted to file subsequent divisional applications based on pending applications that are divisionals themselves.

Divisional applications can be filed based on UK applications while the parent UK application is pending, and by 3 months before the expiry of the compliance period of the parent UK application.

While it is technically possibly to chain divisional applications in the UK, all divisional applications are subject to the same compliance period as their parent application, and so it is advisable to file any required UK divisional applications as early as possible.

What is the “compliance period” for UK patent applications?

There is a deadline by which time a UK patent applications must be in order for grant. This deadline is the later of 4.5 years from the earliest priority date or 12 months from the issuance of the first examination report. Significantly, the compliance date of any divisional applications is the same as the compliance date of their parent application, and so it is advisable to file any required UK divisional applications as early as possible.

When do renewal fees fall due on UK and European patents and patent applications?

Maintenance fees are due on pending European patent applications from the 2nd anniversary of their filing date. For European regional phases of PCT applications, the required maintenance fees are calculated from the filing date of the PCT application.

Renewal fees are due on UK granted patents from the 4th anniversary of their filing date. For UK national phases of PCT applications, the required renewal fees are calculated from the filing date of the PCT application. Renewal fees are only payable after grant in the UK – for UK Patents granted later than 3 years 9 months from their filing date, their accrued Renewal Fees are due shortly after the Patent is granted.

What effect has Brexit had on UK or European patents and patent applications?

Neither UK nor European patents or patent applications have been affected by “Brexit”, and as UK and European patent attorneys we can continue to represent clients directly before the UK Intellectual Property Office and the European Patent Office.

Global Counsel Liaison

We have a dedicated contact for global counsel. Fiona McKenzie has worked in the IP industry for almost 20 years, and has extensive experience of providing tailored and cost-effective solutions for a global client base.

Contact Fiona

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