Provisional application in UK

1

According to the official documentation, the equivalent of provisional applications in the UK is to file an application without requesting search or examination, and subsequently, within 12 months, submit a related priority application for that invention.

What isn't clear in that documentation is whether this initial application needs to contain the claims or simply full disclosure in form of description + related work + figures is sufficient.

If that's the case, would there be any benefit in adding claims to the initial application, or would it be more convenient to add them only to the priority application?

And related question: if an inventor would like to take this route to get to a PCT application, would the deadline be 12 months from the initial filing? If so, going provisional with the UK filing would mean that the patent would still have to be evaluated by the time of the PCT application, or how much time would the applicant have to apply for PCT from the initial application in the UK?

In this case, what would be the correct procedure and timeline to go 1. provisional 2. final 3. PCT 4. individual countries?

Pa_

Posted 2021-02-09T21:50:49.430

Reputation: 115

Answers

2

I am not familiar with the requirements of UK's IPO when it comes to according a filing date, which is the relevant act for generating a priority right. At the EPO you can follow the same procedure suggested in the documentation you refer to, i.e. file an application but not proceeding further with it, and for according a filing date all you need is:

(a) an indication that a European patent is sought;

(b) information identifying the applicant or allowing the applicant to be contacted; and

(c) a description or reference to a single previous application.

The EPO is very explicit, you just need a description to accord a filing date. So the addition of claims is entirely up to you, and in no way that will influence the generation of a priority right. Perhaps at the UKIPO it is the same, but I do not know.

Should filing claims not be necessary, then adding them in that 'provisional' strictly speaking has no real advantage if the description is well-written. Notwithstanding, I personally like to have claims drafted and have them written somewhere in the application, just because they provide explicit support for claim amendments later on. The dependencies of the claims are very useful in that regard, but if you draft the description carefully you can have the very same support even without claims.

Regarding the other question, the provisional will start the priority timer. At the end of the 12-months period from the provisional you must file every application you want to file that is to benefit from that priority. So if you ultimately want to have a PCT application with a valid priority, that PCT shall be filed no later than 12 months after the provisional.

The provisional UK application will not be examined or searched by the patent office, so you will not have any patentability opinion by the time you file the PCT. If you want a patentability opinion you need to pay the fees, but I do not know if the UKIPO is committed to draw up a search report like the EPO does in 6 months.

the Europeist

Posted 2021-02-09T21:50:49.430

Reputation: 1 183

@the Europeist: thanks for the clear answer. My main interest in going UK first is in the relatively inexpensive fees. And, also to buy some time in order to wait for the upcoming EU Unitary Patent when it comes to coverage in the EU. I'm not very knowledgeable on the matter, but from what i could read, it would be a lot of convenience both in practical terms and in economic terms.

So with this approach would it be correct to say Month 0: file UK provisional Month 12: progress UK, file PCT Month 30: file EU unitary patent (and other countries of interest) ? – Pa_ – 2021-02-10T22:34:05.357

1@Pa_ Not sure what you mean by 'progress UK'. Other than that, yes, PCT at month 12 at the latest, and you can enter into EP regional phase up to month 31 (you can delay it by approx. 3 months paying some additional fees). I'm not very optimistic about Unitary Patent, I think it will still take some years. Not everyone sees UP as positively as you do, depending on where you want to protect the invention it will be more expensive than the regular EP, and if it gets revoked at the Unitary Courts you lose protection in all States. – the Europeist – 2021-02-11T10:15:01.363

@GeorgeWhite You have the same benefit with the pseudo-provisional. It is a regular filing but it doesn't cost you a single penny. You must file a non-provisional so to speak at month 12 at the latest, so the 20-year term starts at that time. But if you pay fees in the first application (say EP), you get a search report at month 6, you can abandon that application and file the definitive application (e.g. EP, PCT) and get the search fee reimbursed. That provisional de facto will cost you less than 200USD and you get a search report during the priority year. – the Europeist – 2021-02-11T10:20:14.213

thanks for this interesting suggestion. You saying that the most cost-effective strategy to buy time is to file a EU patent application and pay the search fee to get the search result, but then drop it (how?) and file a PCT priority application instead using the initial application to claim priority? And then at month ~30, for EU do what? file a new EU application? or how would it work at this point? And a related question: during the initial window (before PCT priority application): would it be possible to amend the application if applicants want to make changes? – Pa_ – 2021-02-11T20:03:28.157

1@Pa_ It all depends on your interests. If all you want to do is buy time at the minimum cost, you file the 'provisional' UK or EP without paying any fees, file the PCT 12 months afterwards, and enter from the PCT into the European regional phase at month 31. If you want to have an opinion about your invention (novelty, inventive step, clarity, sufficiency of disclosure), you file the EP first paying taxes, get the search report, and then file the PCT. – the Europeist – 2021-02-11T21:14:54.317

1@Pa_ Very limited amendments in the description are possible. The PCT is a brand new application, so you can file that PCT with different contents, but not amend it afterwards. That is why a European Search Report is so useful at month 6 or 7, because if there are problems in your original EP application maybe you can fix them when filing the PCT. – the Europeist – 2021-02-11T21:17:48.640

@ the Europeist: thanks again for the very useful explanation and suggestions. I was checking the fees, and would it be correct to say that 'provisional' UK with an opinion and search is substantially cheaper than EU application? just checked EPO fees, and they ask 1000+€ for the search alone. – Pa_ – 2021-02-13T23:34:28.197

@Pa_ I do not know what the cost is in a UK application, whether they are committed to provide a search report in 6 months, and whether you can get the international search fee refunded in the PCT. – the Europeist – 2021-02-14T11:17:54.353