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Guide for applicants, Part 1: How to get a European patent

 
 
Annex II
Notice from the European Patent Office dated 4 May 2010 concerning the programme for accelerated prosecution of European patent applications – "PACE" 
The entry into force of new Rule 70a and amended Rule 161 EPC means updating the PACE programme. The revised PACE programme[ 5 ] takes account in particular of the changes to the European grant procedure which entered into force on 1 April 2010 concerning the applicant's obligation to file a substantive response under Rule 70a or Rule 161(1) EPC to
- the extended European search report (EESR), 
- the written opinion of the International Search Authority (WO-ISA) drawn up by the EPO, 
- the international preliminary examination report (IPER) drawn up by the EPO, or 
- the explanations under Rule 45bis.7(e) PCT contained in the supplementary international search report (SISR) drawn up by the EPO.[ 6 ]
As in the past, PACE enables applicants who want their applications processed rapidly to obtain the European search report plus opinion under Rule 62(1) EPC, the first examination report and any communication under Rule 71(3) EPC within tight deadlines.
More details of the revised PACE programme, including any peculiarities for Euro-PCT applications, are given below. 
General remarks
1. Accelerated prosecution of European patent applications 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 2007,[ 7 ] they are excluded from file inspection, provided they are made using EPO Form 1005[ 8 ] or on a separate sheet of paper.
2. Accelerated prosecution under the PACE programme can be provided only where practically feasible and subject to the workload of search and examining divisions. In certain technical fields there may be constraints due to the numbers of incoming PACE requests. Applicants requesting accelerated prosecution for all or most of their applications will, as a rule, be required by the Office to limit the number of their PACE requests by making a selection.
Search
3. For European patent applications claiming no priority (first filings),[ 9 ] 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 extended search reports within six months of the filing date.
4. For European patent applications which do claim priority (second filings), if accelerated search is requested on filing the Office makes every effort to issue the extended search report as soon as possible. 
5. In either case, however, an accelerated search is possible only if the application documents on filing are complete enough for the extended search report to be drawn up. 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. Prosecution under PACE will not be feasible 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, or if the claims are filed subsequently.
6. Applicants should bear in mind that if a communication under Rule 62a, 63 or 64 EPC is necessary a search report plus opinion can be drawn up only after receipt of the applicant's response or expiry of the respective time limit.
Examination
7. Accelerated examination can, in principle, be requested in writing at any time. However, to be as effective as possible, it should preferably be requested 
- when filing the European patent application, provided examination is bindingly requested[ 10 ] at the same time, or
- after receipt of the extended search report and together with the applicant's response to the search opinion under Rule 62 EPC.
8. For Euro-PCT applications too, accelerated examination can, in principle, be requested at any time. However, to be as effective as possible, it should preferably be requested 
- on entry into the European phase before the EPO,[ 11 ] or
- together with any response to the WO-ISA, IPER or SISR required under Rule 161(1) EPC.
If requested on entry into the European phase, accelerated prosecution covers formalities examination, the supplementary European search report and/or substantive examination, as applicable. 
9. 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, the applicant's response under Rule 70a or 161(1) EPC or the request for accelerated examination (whichever is later).
The Office aims to produce subsequent examination communications within three months of receipt of the applicant's reply, provided it 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. 
Other ways of accelerating the European grant procedure
10. Before the applicant receives the search report, he can waive the invitation under Rule 70(2) EPC and request examination unconditionally, irrespective of the results of the search. In this case, under Rule 62 EPC the European search report is issued together with a first examining communication under Article 94(3) and Rule 71(1) EPC instead of the opinion on patentability under Rule 62 EPC. A prompt and full response from the applicant then ensures that the proceedings can continue quickly.
11. The applicant can accelerate the processing of an international application by explicitly waiving his right to the communication under Rules 161(1) and 162 EPC. Provided that, on entry into the European phase, he has already taken all necessary steps such as filing amendments or corrections in response to the WO-ISA, the IPER or the explanations contained in the SISR and paying the claims fees, the Office will not issue a communication under Rules 161 and 162 EPC, and can thus start the supplementary European search or examination without having to wait until the time limit under Rule 161 EPC expires.
 
 
[ 5 ] Revised version of the notice last published in Special edition No. 3, OJ EPO 2007, F.1.
[ 6 ] See notice of the EPO of 24 March 2010 concerning the carrying out of supplementary international searches under the PCT, OJ EPO 2010, 316.
[ 7 ] See Special edition No. 3, OJ EPO 2007, J.3.
[ 8 ] EPA/EPO/OEB Form 1005 is available from the EPO website at www.epo.org. It is also 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 contracting states.
[ 9 ] The Office treats European patent applications as "first filings" only if the applicant indicates on filing that he does not intend to claim priority.
[ 10 ] 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).
[ 11 ] 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.