Win-win for patent applicants seeking early certainty – high quality, accurate and fast searches now available at low cost as the UK IPO becomes first national patent office to supercharge its searching
The UK Intellectual Property Office (UK IPO) is the first national intellectual property office to upgrade its in-house search facilities to use the ‘SEARCH’ cloud-based patent search tool. Searches by the UK IPO have always been well regarded on the international stage, but the government body’s recent announcement means that now its searches are being supercharged.
Filing a UK application to obtain a reliable search from the UK IPO opens up a host of benefits.
Benefits to patent applicants worldwide
UK IPO searches can be used by applicants from locations around the globe, enabling everyone to benefit from this service. Barker Brettell frequently files UK patent applications with a request for search for patent applicants from a range of countries, sometimes as the first filing or sometimes as a second filing following on from an application in their home country, to access this search service at an early stage in the patent process and gain valuable advance knowledge on how a patent examiner views the invention.
The UK IPO will normally return search results within about six months, and there are acceleration options available for an even faster turnaround.
When obtained within the priority year, search results provide early confidence in the patentability of a technology. This can assist with making decisions and obtaining funding and can provide a springboard to commercialisation. Being aware of relevant prior art within the priority year also allows the patent text to be updated before submitting a PCT patent application or other patent filings, to strengthen the applicant’s position and improve the chance of grant. In particular, it can be advantageous to include extra fallback positions to move further away from the prior art, and to include explanations regarding the key differences between the claims and the prior art.
Improved effectiveness and speed
Described as “more powerful and flexible than any patent search software” the UK IPO has used previously, we look forward to seeing how the new SEARCH tool will further enhance the quality of the already excellent searches that the UK IPO performs.
SEARCH was developed by the European Patent Office (EPO), which is often regarded as the best patent office for searches, and this tool has been used by EPO examiners for the past couple of years.
The new cloud-based searching tool also promises to speed up the analysis and delivery of search results.
UK IPO and EPO searches are now on a level playing field – but UK IPO search costs are considerably lower
It was previously considered that searches performed by the EPO were slightly better in terms of quality than those performed by the UK IPO. However, that difference will disappear following the supercharging of the UK IPO’s search tools.
With the EPO and the UK IPO now using the same searching tool, the main difference between the searches performed by these patent offices is now the cost. The EPO’s search fee is currently about eight times higher than the UK IPO’s search fee. Where a search would have previously been requested at the EPO, switching to using the UK IPO could result in substantial savings per application in official fees.
Clear advantages to using the UK route for an early search
This improvement brings great news for any patent applicants who would appreciate the early certainty gained from a patent office search within the priority year. The UK IPO search now offers the triple benefit of high-quality searches within a quick timeframe and at very affordable costs.
We look forward to continuing to assist our clients worldwide with accessing searches performed by the UK IPO via a suitable filing strategy involving a UK patent application as a first or second filing.
Please let the author, or your usual Barker Brettell attorney, know if you would like to find out more about obtaining searches from the UK IPO.
