Changes to Accelerated Examination at the EPO

Recently the European Patent Office (EPO) has been looking at ways of improving efficiencies and allowing patents to be granted more quickly. Following the implementation of Early Certainty for Search (ECfS) in July 2014, the EPO has reviewed and clarified the conditions applicable to the programme for accelerated prosecution of European patent applications (“PACE”). Any changes and clarifications regarding the programme were documented in a notice from the EPO dated 30th November 2015 (Official Journal November 2015, Article 93).

As before, the PACE programme enables applicants to obtain the European search report and search opinion, the first examination report and any further communication more quickly.

Previously, requesting accelerated prosecution required a written request, either using EPO Form 1005 or on a separate sheet of paper. Thereon in, the process was relatively straightforward, with the entire prosecution accelerated unless the applicant decided or acted on the contrary. On request for accelerated prosecution the office made every effort to issue the first examination report within 3 months of receipt of the application, and aimed to produce each subsequent communication thereafter within 3 months of the applicant’s response also.

In light of the recent review, the revised PACE programme came into force on the 1st January 2016 and will now apply to any requests filed on or after this date. There is still no official fee for requesting acceleration. However, the programme still delivers no assurances for accelerated prosecution, stating that it is only available where practically feasible, and subject to the workload of the search/examining division.

The new enforcements stipulate that the request must be filed online using EPO Form 1005 and a PACE request must now be filed during each stage of the process, i.e. a request filed during search will not trigger accelerated examination. The revision also indicates that once an application has been retracted from the programme, it is not possible to restore the application to the programme. An application will be retracted from the programme if the PACE request is withdrawn, extension of time limits are requested, renewal fees are not paid, or if the application is refused, withdrawn or deemed withdrawn.

On top of the PACE programme, there are additional methods for expediting the European grant procedure, namely by waiving the invitation under rule 70(2) EPC and any communication under rule 161(1) and 162 EPC. For PCT applications, the process can be accelerated by early entry in to the national phase, though it should be noted that early entry in to national phase does not constitute a request for accelerated prosecution, which must be filed separately. Since its introduction, the further communication under rule 71(3) EPC can also be waived to speed up the grant.

A further option is available under the Patent Prosecution Highway (PPH) pilot programme. However, the PPH pilot programme is only available for eligible European patent applications for which claims of a corresponding patent application have been deemed allowable by a PPH partner office.

If you have any questions about the PACE programme or expediting the European grant procedure in general, please don’t hesitate to get in touch with your usual contact at Swindell & Pearson or [email protected].