25/01/2016
The European Patent Office (EPO) grant procedure typically takes about three to five years from the date an application is filed, although it can take longer than this. In some circumstances, it may be advantageous to expedite the grant procedure. For example, if an applicant becomes aware of a potential infringer, they may wish to obtain an enforceable granted patent sooner – obtaining a granted patent may be beneficial for the purposes of negotiating a licence or for securing investment.
At the EPO it is possible to accelerate the progress of a patent application using the Procedure for Accelerated Conduct of Examination (PACE) programme, which has been available at the EPO for a number of years and does not require payment of an official fee. From 1 January 2016, the EPO introduced a number of changes. The PACE programme, in its new form, is summarised below:
- The applicant’s request must be filed using Form 1005
- A request for participation in the PACE programme may be filed only once during each stage of the procedure, i.e. search and examination, and for one application at a time. A PACE request filed during search will not trigger accelerated examination.
- The EPO does not publish PACE requests and they are excluded from file inspection.
An application will be removed from the PACE programme if:
- the PACE request has been withdrawn;
- the applicant has requested an extension of time limits;
- the application has been refused;
- the application has been withdrawn; or
- the application is deemed to be withdrawn.
It will not be possible to restore the application to the PACE programme. In other words, a second request for that application during the same stage of the procedure will not be allowed.
Additionally, accelerated prosecution will be suspended in the event of failure to pay renewal fees by the due date. However, filing a PACE request is no guarantee of accelerated prosecution because the EPO has made it clear that the PACE programme can be provided only where practically feasible and is subject to the workload of search and examining divisions. In certain technical fields there may be constraints due to the number of incoming PACE requests. Applicants requesting accelerated prosecution for all or most of their applications will, as a rule, be required by the EPO to limit the number of their PACE requests by making a selection.
PACE during the search procedure
In July 2014, the EPO introduced a scheme called the Early Certainty from Search (ECfS) which included the EPO’s aim to issue all search reports and written opinions on patentability within six months of filing. The introduction of the ECfS scheme means that for applications filed on or after 1 July 2014, a PACE request is not required. However, for European patent applications filed before 1 July 2014 and claiming priority, a PACE request may still be required if the applicant wishes to accelerate the search procedure. From receipt of the PACE request, the EPO will make every effort to issue a search report within six months.
PACE during the examination procedure
A PACE request can be filed at any time during examination. The EPO makes every effort to issue its next examination report within three months of the examining division’s receipt of the application, the applicant’s response under Rule 70a or 161(1) EPC or the request for accelerated examination (whichever is latest).
The EPO will strive to produce subsequent examination reports within three months of receipt of the applicant’s response, provided that the application is still being processed under the PACE programme.
In addition to PACE, the EPO offers other options for applicants who wish to accelerate prosecution. For example, applicants may take advantage of the Patent Prosecution Highway (PPH) or may waive the right to receive certain communications from the EPO. For further information on ways to accelerate prosecution at the EPO, please contact us.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
