Accelerating your PCT application
How to accelerate the Euro-PCT procedure
The standard procedure for granting a Euro-PCT application can take up to six years, with the international phase lasting for 31 months and the European phase then taking up to another 38 months. Fortunately, there are four possible ways you can shorten or cut out certain steps and so accelerate the proceedings.
You can save the most time by selecting all four options but, if you prefer to target only certain procedural steps, you can also choose the individual ones that best suit you. The various options are described in more detail below. The first one is already available in the international phase, while the other three all become available on entry into the European phase.
- Shorten the European phase by 12 months by choosing the EPO as your ISA
The first option is to choose the EPO as your International Searching Authority (ISA) when filing your international application. The EPO can act as ISA if the receiving Office where you file your international application has specified the EPO as a possible ISA. Most receiving Offices in the world have done so, including the USPTO, the JPO and, more recently, the CNIPA, which has appointed the EPO to act as ISA in a pilot project for applications filed in English.
Choosing the EPO as your ISA will save you 12 months in total once your application is in the European phase. Firstly, the EPO's international search report (ISR) replaces the European search report, which means there is no need for it to carry out a European search and so saves you the six‑month period allowed for this. Secondly, dispensing with the European search report means there is also no accompanying written opinion and so cuts out the six-month period available for replying to it under Rules 70(2) and 70a(2) EPC. If the EPO acts as ISA, your application can therefore go straight to the EPO examining division as soon as it has entered the European phase.
Choosing the EPO as your ISA also makes the process cheaper as you no longer need to pay any supplementary European search fee in the European phase.
- Save up to 15 months by requesting early entry into the European phase
The second option is to request early entry into the European phase by submitting a "request for early processing".
Pursuant to Article 23(1) PCT, the EPO acting as designated Office does not normally start processing Euro-PCT applications until the 31-month time limit that marks the end of the international phase has expired. However, by filing a request for early processing pursuant to Article 23(2) PCT, you can enter the European phase earlier and so shorten the time spent in the international phase by up to 15 months. If you choose this option (by checking box 12.1 on EPO Form 1200) - and you fulfil all the requirements for validly entering the European phase - the EPO can start processing your Euro-PCT application as designated Office as soon as it receives the international search report (ISR). If you selected the EPO itself as your ISA, it will have issued the ISR within three months of receiving your application where it claims priority from an earlier application or within eight months from the priority date where it is a first filing. Since the EPO as ISA establishes the written opinion accompanying its ISR in one of its official languages (English, German or French), it does not need any translation by the International Bureau (IB) - as would be required, for example, for a written opinion in Chinese - and so it can start processing your Euro-PCT application as soon as it receives your valid request for early entry.
- Save six months with a Rule 161/162 EPC waiver
The third option is to waive your right to amend your application by filing what is known as a "Rule 161/162 EPC waiver" when submitting EPO Form 1200 to enter the European phase. Rule 161 EPC gives you the right to amend your application (again) before the EPO as designated Office. This right is enshrined in the PCT itself (Articles 28 and 41 PCT) and so - even if you have already filed amendments together with your EPO Form 1200 - the EPO remains obliged to offer you the opportunity to make further amendments.
However, if you do not need or want to amend your application - or if you have already amended it when filing EPO Form 1200 and paid any claims fees due (claims fees must be paid from the 16th claim onwards) - you can save six months by stating that you do not want to receive the communication under Rules 161 and 162 EPC and so waiving your right to amend your application in response to it. To do this, check box 12.2 on EPO Form 1200.
If you did not waive your right on entry into the European phase, or if your waiver was invalid (e.g. because you had not paid the claims fees due), the EPO will issue the communication under Rules 161 and 162 EPC. However, you can still shorten the process by filing an early reply and explicitly forgoing the remainder of the six-month period available. The EPO will then not wait until the end of this whole period before moving on to examine your application.
- Request accelerated examination ("PACE")
The fourth and final option for speeding up processing is to file a request under the "PACE" programme for accelerated examination of European patent applications. If you file a PACE request, the examination division will strive to issue its next official communication within three months of your most recent procedural action. To file a PACE request, you must use EPO Form 1005 and check the "accelerated examination" box; it is best to file this form together with EPO Form 1200. Bear in mind that you can make only one PACE request during the examination stage. A PACE request will also not shorten the six-month time limit under Rules 161 and 162 EPC, which you must waive separately (see above for more information). It is also very important that you do not delay the proceedings by, for instance, requesting time extensions, as this will remove your application from the PACE programme.
- Enter the European phase earlier using PCT Direct
The EPO's PCT Direct service is another way that can help you to enter the European phase earlier. PCT Direct is available if you are filing an international application that claims priority from an earlier national, European or international application already searched by the EPO and enables you to react to any objections it raised in the search opinion it drew up for that priority application. This helps to simplify its assessment of your international application.
You can have your international application processed under PCT Direct by filing a letter containing informal comments aimed at overcoming the EPO's objections raised in its search opinion for the priority application. The EPO will then take these comments into account when preparing its international search report and written opinion for your international application.
Use the Patent Prosecution Highway (PPH) to speed up your applications at other patent offices
Choosing the EPO as your ISA can also help you speed up the grant procedure before other patent offices in the world. If the EPO as ISA has found your claims to be patentable or allowable and you then file an application with another office that has a PCT Patent Prosecution Highway agreement with the EPO, you can ask that other office to reuse the EPO's findings, which will help it to conduct its grant procedure faster. The EPO currently has PPH agreements with the patent offices of Australia, Brazil, Canada, China, Colombia, Israel, Japan, Korea, Malaysia, Mexico, Peru, the Philippines, Singapore and the United States. Using the PPH programme is also free of charge.