Provisional application in UK

Question

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?

Answer 1

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.

Answer 2

As there is no provisional filing in UK, you have the (nice) option to file a patent and not pay for it. If you do that before 31 March 2021 the cost will be £60, after that date it will be £75 when you decide to pay for the Search £150 and Sustantive examination £100 after the 12 months of the filing date.

When you file (and don't pay) you do not need to include claims nor abstract, you can send that latter (12 months limit)

https://www.gov.uk/patent-your-invention/apply-for-a-patent https://www.gov.uk/patent-your-invention/after-you-apply

But if your plans are to go latter via PCT I would recommend you to go directly without middle steps.

If you want to save money on the PCT search report you have to add someone to the application (applicant of convenience) to increase your ISAs options (International Search Authorities) because if you are an UK citizen living in UK your only ISA available is EP (One of the best/Most expensive).

The search report fees goes from 34 USD (India) to 2091 USD (EP/AT/ES/FI/SE/TR/XN/XV)

https://www.wipo.int/export/sites/www/pct/en/fees.pdf

Further savings can be obtained on the international filing fee depending on the applicant nationality and residency.

Also, if you are short on money you can file the PCT and not pay the search fee to the ISA, the application is still valid to enter on the national stage.

https://www.wipo.int/pct/en/texts/articles/a17.html

(b)  The national law of any designated State may provide that,
where the national Office of that State finds the invitation, referred
to in subparagraph (a), of the International Searching Authority justified
and where the applicant has not paid all additional fees, those parts of 
the international application which consequently have not been searched 
shall, as far as effects in that State are concerned, be considered 
withdrawn **unless a special fee is paid by the applicant to the 
national Office of that State**.

I won't recommend you not to pay the search but to find an indian friend :-)

Further sources: https://www.neifeld.com/pubs/WhichROAndISAShouldYouSelectWhenFilingPCT.pdf