Controlling the Speed of Prosecution at the EPO If you are familiar with prosecution at the European Patent Office (EPO), you will likely have had times where it is acting more slowly or quickly than you would like. While applicants have limited control over the EPO’s timescales for processing applications, the EPO has made some options available for influencing the speed at which it handles each application. This article is intended to outline some of the available options. Speeding up There are various reasons to speed up the prosecution of an application, from early enforceability to attracting more investment with a granted patent. Beyond the obvious option of responding to communications as quickly as possible rather than waiting for deadlines, there are a number of other options available to further accelerate prosecution.
File a PACE request A PACE request can be used to request accelerated examination. It can be filed at any time during examination and only requires a simple form, with no official fee and no reasons needed for the request. Once filed, the EPO will usually strive to issue its next office action within three months of receipt, and all subsequent office actions within three months of each response. However, this is “only where practically feasible and subject to the workload of the search and examining divisions”. Technically, a PACE request can also be filed for accelerated search. However, under its Early Certainty from Search initiative, the EPO now always strives to issue the search reports quickly (within six months of filing). Hence, a PACE request for accelerated search will often have no effect. It is also worth noting that PACE requests cannot be used too often. The EPO has stated that “Applicants requesting accelerated prosecution for all or most of their applications 22
will, as a rule, be required by the EPO to limit the number of their PACE requests by making a selection.” Pros
Cons
No official fee
Theoretically should not be requested too often – only for a limited number of applications
Simple form Can be requested at any time during examination No reasons needed for the request
File a PPH request Similarly to PACE, the Patent Prosecution Highway (PPH) is a programme that can be used to accelerate examination of European patent applications and is free of charge.
PPH request is based – it will perform its own search and examination and come to its own conclusions. Hence, it is not apparent that a PPH request has any particular positive effect over what a PACE request provides. Pros
Cons
No official fee
Stricter requirements for acceptance than PACE but tends to have the same acceleration effect
Waive the invitation to indicate the applicant’s desire to proceed further
Unlike PACE, PPH does require reasons to be given as to why the PPH request should be accepted. Specifically, it is necessary to include a declaration of correspondence to the allowed claims of a counterpart application at a participating office. See here for a list of participating offices.
Ordinarily, if the request for examination has been made before issuance of the search report, the EPO will issue an invitation under Rule 70(2) of the European Patent Convention (EPC) to indicate whether the applicant wishes to proceed further with the application and shall give them the opportunity to comment on the search report and to amend the description, claims, and drawings.
PPH requests also have stricter time requirements than PACE requests – the PPH request must be filed before substantive examination has begun. Our experience is that, if accepted, a PPH request accelerates proceedings to a similar extent as a PACE request. Our experience is also that the EPO does not tend to simply follow the decision of the office on which the
If the right to receive this communication is waived, the Examining Division can assume responsibility on transmittal of the search report. As a result, instead of the search report being accompanied by a written opinion, it can theoretically be accompanied (or shortly followed) by a communication under Rule 71(3) EPC with the text
