UK Biotech Patent Application Searches: Cheap as DNA Chips!

Biotech patent applicants filing their priority applications at the UK Intellectual Property Office (UKIPO) could now benefit from significant savings in search fees.  This is another great reason to file your first applications in the UK.

The UKIPO has today officially announced that they will be working with the European Patent Office (EPO) to reduce the significant backlog of searches in the Biotechnology area that has been building up at the UKIPO.  We have heard whisperings about this for a little while as the UKIPO and EPO have been in discussions but we now have more details of the scheme.  Under this bilateral agreement which entered into force on 1 July 2018, the EPO will complete biotechnology patent searches on behalf of the UKIPO on selected applications sent from the UKIPO.  The agreement will be in effect for an initial 2 year period.  The UKIPO estimate that approximately 200 to 300 UK searches will be conducted by the EPO each year.

What does this mean for applicants? Well, if your biotech patent application is forwarded to the EPO for search, then you will be getting an EPO search for the price of a UKIPO search.  The EPO search fee is currently 1,300 Euro and the UKIPO search fee is currently 150 GBP, which represents a significant saving.  The UKIPO decide which applications to forward to the EPO so it appears that applicants cannot influence this.  A number of UKIPO applications have already been sent to the EPO for search and this could apply to any application filed after 1 July 2018.

Further, when you file your priority-claiming international (PCT) application using the EPO as international searching authority (or file a direct priority-claiming European application), you could then receive a significant refund of your international or European search fee, providing the earlier EPO search is useful for the international search.  This refund could be up to 84 % of the international search fee and up to 100% of a European search fee (the amount refunded will depend on the similarity of the subject matter searched and whether or not the earlier search also contained an opinion in patentability).

This scheme could represent great value for money for applicants in the biotech sector filing priority applications at the UKIPO, particularly if they plan to later file a PCT application.  Anyone can file an application at the UKIPO, although certain countries require the first application to be filed locally so some non-UK applicants may need to consider local law before seeking to file an application at the UKIPO if they have not already filed an application locally.

If you are a biotech company, either based in the UK or abroad, and would like to hear more about this scheme, then please get in contact via gje@gje.com