Law: Straight off the drawing board

Roger Trapp on the benefits of the fast-track patent scheme
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The Independent Online
Nick Sills is marketing an innovative underwater excavation machine less than a year after he applied to patent it. Normally, he would have had to wait three to four years before making such a move, but Mr Sills was one of the early users of a scheme designed to cut through the tortuous procedures of patent application.

Indeed, the fast-track facility offered by the increasingly commercial Patent Office has proved so popular in the year since it was introduced as an aid to small businesses that many large companies have taken it up.

The fast-track service combines two elements. The first is search, which is an investigation of whether the invention for which a patent application has been made has been published in any way before. If it has already been published, the application will fail. The second is examination, which is an inquiry into whether, in the light of what has been published before, an invention is new and truly inventive. It also seeks to determine the extent to which the claims of monopoly are justifiable. In the 12 months to July, the first full year of the scheme, 1,700 combined search and examinations were carried out - representing some 11 per cent of all 15,000 UK search requests received in that time.

Mr Sills, who is a previous winner of the Queen's Award for Technological Achievement, started the process last September, by submitting requests for the combined search and examination of his application. The report was issued just over three weeks later, the application was published in early December and the patent granted on 15 May. Under the traditional system, the application would have been published after about 18 months, and the patent granted two years later - giving a total of three and a half years, compared with significantly less than a year.

Mr Sills, now a director of a subsidiary of James Fisher, the shipping group that is developing his product, wrote in a letter to the Patent Office: "The ability to progress an application from filing to grant in 10 months has allowed me to attract finance, develop and now market the apparatus commercially with confidence."

Now, patent agents are taking up the opportunities the system offers to boost business with other countries. One pointed out that the ability to obtain an early examination report gave applicants an idea of the suitability for patenting of an invention before having to commit themselves to the cost of applications in mainland Europe and further afield.

It has also been pointed out that the fast-track system is especially valuable in rapidly developing fields, such as biotechnology.

Ron Marchant, head of the patents and designs directorate at the Patent Office, says that one of the motives for introducing the initiative was to enable small businesses and individual inventors to make early use of patents in order to secure licence agreements or access to venture capital.

But he added that for companies outside Europe seeing advantages in it and taking their business to the office was "an added bonus".

However, though the Patent Office thinks there could be even greater demand, the fast-track system does not suit every inventor. The requirement to file an application before any disclosure is made means that applications must be made at the very beginning of the product development process.

Companies in such sectors as pharmaceuticals, where the development and approval times are long, welcome the 18 months of confidentiality between application and publication given by the traditional system.

Nevertheless, Mr Marchant expects demand for the fast-track approach to grow in line with the shortening of product cycles. "We may find increasing numbers who want the protection of patents as early as they can get it, but who let their patents lapse after only a few years," he says.