Accelerating grant or delaying costs? - Patent prosecution strategy

One of the criticisms we hear often – especially from commentators outside the IP world – is that patents take “too long” to get through. We are told that in fast-moving fields of endeavour patents are irrelevant because the technology has moved on by the time the patent prosecution process has worked its way through.

This sort of sweeping criticism puts us IP professionals on the defensive. It is unhelpful because it suggests that seeking IP advice could be a waste of time because the best possible outcome is potentially years away. It is also unhelpful because it isn’t really accurate. We’ve seen patent applications allowed at the UK patent office in under a year, without any formal acceleration apart from early publication. It can be done if the application is well-focused and the relevant prior art is on the table before the application is filed.

Fast grant is not – of course – the be all and end all. Many clients prefer to spread the cost of prosecution out over time and there can be very good strategic reasons for wanting to slow things down, especially since the legal rights offered by granted patents can potentially be back dated.

In these such circumstances, delaying and mitigating costs becomes hugely important for some applicants. We can help. Depending on what stage your applications are at, there are usually things we can do to slow things down, delay cost stages, or reduce the burden of them.

We’re here to help. Please contact one of our attorneys for more specific advice.

Ed Clarke, Senior Patent Attorney for ip21 Ltd