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Annex II
Special edition No. 3, OJ 2007, F.1.
Notice from the European Patent Office dated 14 July 2007 concerning the programme for accelerated prosecution of European patent applications - "PACE" 4
The entry into force of the revised European Patent Convention (EPC 2000) means updating the established PACE programme. Besides the changes to the European patent grant procedure made in the EPC 2000, the revised PACE programme also takes account of the extended European search report (EESR) introduced in 2005.
As in the past, PACE enables applicants who want their applications processed rapidly to obtain the search report, the first examination report and any communication under Rule 71(3) EPC within tight deadlines5. This also applies to the opinion on patentability (under Rule 62(1) EPC) which is sent to the applicant together with the search report.
More details of the PACE programme, including any peculiarities for Euro-PCT applications, are given below.
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1.
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Accelerated prosecution of European patent applications normally occurs on written request. The EPO does not publish requests for accelerated search and/or examination (PACE requests) and, by decision of the President dated 12 July 20076, they are excluded from file inspection, provided they are made using EPO Form 10057 or on a separate sheet of paper. |
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Search |
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For European patent applications claiming no priority (first filings)8, the Office always performs an accelerated search; no separate request is needed. In such cases, the Office ensures that as a rule applicants obtain their search reports within six months of the filing date. |
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3.
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For European patent applications which do claim priority (second filings), accelerated search can be requested when the application is filed. In such cases, the Office makes every effort to issue the search report as soon as possible. |
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4.
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In either case, however, an accelerated search is possible only if the application documents on filing are complete enough for the search to be performed. That means in particular providing the Office at that time with the claims, the description, the translations required and, where applicable, the drawings and a sequence listing conforming to the rules for the standardised representation of nucleotide or amino acid sequences. In particular, prosecution under PACE is not possible if use is made of the possibility of referring to an earlier application (see Rule 40(1)(c) in conjunction with (2) EPC) or of subsequently filing parts of the description, or drawings under Rule 56 EPC, as well as where the claims are filed subsequently. |
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Examination |
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5.
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Accelerated examination can be requested in writing when filing the European patent application, provided examination is bindingly requested9 at the same time, in response to the search report, or subsequently. |
For Euro-PCT applications, it can be requested on or after entry into the European phase before the EPO10. If requested on entry, accelerated prosecution covers formalities examination11, drawing up the supplementary European search report, and substantive examination.
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6.
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When accelerated examination is requested, the Office makes every effort to issue the first examination communication within three months of receipt by the examining division of the application or the request for accelerated examination (whichever is later). |
The Office aims to produce all subsequent examination communications within three months of receipt of the applicant's reply, provided this is received within the time limit set by the examining division in its previous communication and deals with all the points raised.
Accelerated examination can be carried out efficiently only if the applicant co-operates with the Office.
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Other ways of accelerating the European grant procedure |
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8.
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The applicant may file a substantive response to the search report or - in the case of a Euro-PCT application entering the European phase before the EPO as designated Office - to the extended international search report, without waiting for the first examination communication. A "substantive" response means reasoned observations or appropriate amendments to the application. |
4 Revised and expanded version of the notice last published in OJ EPO 2001, 459.
5 However, this service can be provided only where practically feasible, and in certain technical fields there may be constraints due to the numbers of incoming PACE requests.
6 See Special edition No. 3, OJ EPO 2007, J.3.
7 EPA/EPO/OEB Form 1005 11.01 is obtainable free of charge from the EPO (preferably from Vienna, but also from Munich, The Hague and Berlin) and the central industrial property offices of the member states. It is also available from the EPO website at http://www.epo.org
8 The Office treats European patent applications as "first filings" only if the applicant indicates on filing that he is not claiming priority.
9 I.e. the applicant has paid the requisite fee and unconditionally waived the invitation from the Office under Article 94 in conjunction with Rule 70(2) EPC).
10 With Euro-PCT applications, the applicant can speed up entry into the European phase by expressly requesting early processing under Articles 23(2) or 40(2) PCT. However, accelerated examination in the European phase will not be performed unless requested separately under the PACE programme.
11 This is the case if the EPO did not draw up a supplementary European search report, i.e. if it drew up the international search report or if, for international applications filed before 1 July 2005, the Austrian, Spanish or Swedish patent office did (see OJ EPO 2005, 422 and 546).