Accelerating Prosecution at the EPO

A question commonly asked about the European patent system is how to speed up prosecution of patent applications at the EPO. Having an application published or granted as early as possible is advantageous in terms of securing rights against possible infringers. Accelerating the prosecution of a European patent application can involve requesting early publication, requesting an early search, requesting early examination, and/or filing a PPH request. Other ways of speeding up prosecution include waiving the invitation to confirm the intention to proceed with examination, waiving the right, for a Euro-PCT application, to the Rule 161/162 Communication if the requirements thereof have been met, i.e., payment of any claims fees due and, where required, submission of a response to the international Written Opinion. An applicant may also request early processing for a Euro-PCT application before expiry of the 31-month time limit for entering the European phase by filing an explicit request for early processing.

As mentioned above, an applicant of a European patent application can speed up the proceedings by submitting a written request for accelerated search or examination of the application, and more specifically, for inclusion in the programme for accelerated prosecution of European patent applications, known as PACE. A PACE request can be filed at any time in the search or examination phase. There is no official fee for requesting PACE. In 2014, PACE was requested for only about 7% of European searches and almost 10% of European examinations. The EPO recently published an updated notice concerning PACE involving some key changes. A PACE request must now be filed using a dedicated form and must be filed online. A request for inclusion in the PACE programme may be filed only once during the search phase and once during the examination phase, and for one application at a time. It is important to note that a PACE request for examination may only be filed once the examining division becomes responsible for examining the application. An application will be removed from the PACE programme if the PACE request has been withdrawn, if the applicant has requested an extension of time for an office action, or if the application has been refused, withdrawn, or deemed to be withdrawn. The application will also be removed from the PACE programme if a renewal fee has not been paid by the normal deadline. It should be noted that not every application is guaranteed to be included in the PACE programme if requested. Factors such as the workloads of search/examining divisions, and limitations in certain technical fields due to the numbers of PACE requests in those fields may influence the likelihood of inclusion in PACE. Further, there is usually a limit on the proportion of PACE requests per applicant. However, as the percentages above bear out, the PACE programme appears to be underutilised by applicants at the EPO.

In terms of timelines, for priority-founding European applications and Euro-PCT applications where the EPO did not act as (S)ISA, the EPO will perform a search within six months of the filing date or six months from expiry of the Rule 161 period, without the need for a separate PACE request. For European patent applications claiming priority, a PACE request for accelerated search can be submitted on filing. In the examination phase, when a PACE request for accelerated examination is submitted, the EPO tries to issue the first examination communication within three months of the application entering the examination phase, the applicant’s response under Rule 70a, or the PACE request (whichever is later).

Turning now to a comparison with the PPH, fulfilling the requirements for a PPH request for an application means that the application enters the PACE program. However, such an application will still be examined independently at the EPO regardless of allowance of the corresponding application in a different jurisdiction. Furthermore, compared to the expediency of filing a PACE request, i.e., simply completing and submitting the PACE form, there are more documents to submit with a PPH request, such as documentation and claims relating to the corresponding application. An application for which PACE has been requested will be prosecuted at the same speed as an application for which PPH has been successfully requested. In view of the above therefore, filing a request for PACE may be more expedient and cost-effective than submitting a PPH request with the associated documentation.

In summary, applicants should be aware of the many ways of speeding up prosecution of their European patent applications, and in particular the advantages of using the simple PACE procedure.

To learn more on this issue, contact Alan Casey, European Patent Attorney, today.