Speeding up patent prosecution

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04 December 2015

In recent official notices the European Patent Office (EPO) commented on different ways to quicken the European grant procedure and particularly revised the conditions applicable to the programme for accelerated prosecution of European patent applications (“PACE”). The respective notices can be found here (notice on the PACE programme) and here (notice on expedited grant procedure).

“PACE” programme

The EPO has clarified the conditions for requesting accelerated processing under the PACE programme (PACE request) and the circumstances under which an application will be removed from the PACE programme.

A PACE request must be filed in writing, using the dedicated request form (form 1005). Importantly, a PACE request may only be filed once per prosecution stage, i.e. once during search and once during examination. Also, a PACE request during the search stage will not automatically lead to accelerated examination: accelerated examination requires a separate PACE request, which can only be filed once the examining division has assumed responsibility for the application.

Upon receipt of a PACE request in the search stage, the EPO aims to issue the search report within 6 months. When receiving a PACE request during examination, the EPO strives to issue its next and subsequent actions within 3 months of the receipt of the request or the applicant’s response. Please note that these time periods are subject to the workload of the respective divisions. Enquiries to the status of an application in the PACE programme are possible.

Importantly, the current EPO practice of automatically performing an accelerated search for certain European patent applications (e.g. first filings claiming no priority – GL E-VII 3.1) within 6 months from filing has not changed: in these situations no PACE request is needed during the search stage.

An application will automatically be removed from the PACE programme (i) upon withdrawal of the PACE request, (ii) when the application is refused or (deemed to be) withdrawn or (iii) when the applicant has requested an extension of time limits. In addition, failure to pay the renewal fees by the due date results in suspension of accelerated prosecution. As a second PACE request for the same application during the same stage is not possible, these conditions should be taken into account during prosecution to avoid irreparable removal from the PACE programme.

The revised PACE programme will enter into force on January 1st, 2016, for all pending applications and PACE request on and after that date.

“Expedited grant”

In addition to accelerated processing under the PACE programme, the EPO summarises other methods to quicken the grant procedure. These include waiving the right to receive certain communications for EP and EURO-PCT applications or requesting early processing upon early entry into the European phase for PCT applications. Please note that these methods are to be distinguished from and are independent of a PACE request.

Another option for speeding up the grant procedure is available under the Patent Prosecution Highway (PPH) pilot programme, which allows for a fast-track examination of an eligible European patent application when a corresponding application has been found patentable by a PPH partner office.

The recent EPO notices thus provide a concise overview of ways to accelerate the proceedings before the EPO. We gladly assist you in determining the optimal strategy for controlling the pace of the grant procedure.

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