INFORMATION FROM THE EPO
Notices of the President of the EPO
Notice from the President of the European Patent Office dated 1 August 1996 concerning the programme for accelerated prosecution of European patent applications - "PACE" *
To assist applicants requiring rapid search or examination the Office has improved and simplified its programme for accelerated prosecution of European patent applications, which is now called PACE and replaces the EPO's "Seven Measures Programme"1 dating back to December 1988. The programme also applies to international applications entering the European phase before the EPO ("Euro-PCT applications") unless otherwise indicated.
Where the applicant complies with the options available under PACE, he may considerably shorten the proceedings in comparison with the average processing time from filing up to grant of a European patent.
Search
1. In respect of European patent applications claiming no priority (first filings), the Office ensures that search reports will be available to applicants, as a rule, no later than six months from the filing date. Accelerated search is automatic in these cases, no request needs to be filed.
2. In respect of European patent applications claiming priority, accelerated search can be requested in writing on filing the application. In such a case the Office will make every effort to issue the search report as soon as possible.
Examination
3. Accelerated examination can be requested in writing at any time, eg on filing the European patent application, in response to the search report or later.
For Euro-PCT applications it can be requested on or after entry into the European phase before the EPO2. If requested on entry into the regional phase, accelerated prosecution of Euro-PCT applications comprises the formalities examination, the establishment of the supplementary European search report and substantive examination. Where a supplementary search report is not necessary3, the accelerated prosecution comprises formalities as well as substantive examination.
4. When a request for accelerated examination has been filed, the Office will make every effort to issue the first examination report within three months of receipt by the examining division of the application or the request for accelerated examination (whichever is the later).
Further examination reports will be issued within three months of receipt of the applicant's reply, provided that it is received within the time limit set in the previous examination report and deals with all the points raised by the examining division.
Further options for accelerating the proceedings to grant
5. The applicant may submit an early request for examination (Article 96(1) EPC). He may also make an unconditional waiver of his right to receive an invitation from the EPO to confirm that he desires to proceed further with the application4. This waiver, which allows the application to be forwarded more rapidly to the examining division, may be made on filing the European patent application or later in a separate communication to the EPO.
6. The applicant may file a substantive response to the search report or, in the case of a Euro-PCT application, on entering the European phase before the EPO as elected Office, to the international preliminary examination report, ie reasoned observations or appropriate amendments to the application, without awaiting the first examination report.
7. If the application is in order for grant and the applicant has received the communication under Rule 51(4) EPC, the subsequent procedure can be shortened significantly if the applicant approves the text without delay and requests that the patent be granted immediately in accordance with Article 97(6) EPC.5
This request takes effect only if the applicant has performed the following acts at the latest at the time he makes the request:
- payment of the fee for grant and the fee for printing,
- filing of translations of the claims,
- payment of fees for any additional claims, and
- filing of a translation of the priority document where necessary or the corresponding declaration (Rule 38(4) EPC).
Furthermore, the request may only be processed if payment of the renewal fees and any additional fees already due has been made. If the request according to Article 97(6) EPC is made less than three months before the due date of the next renewal fee the applicant is advised to pay this fee at the same time as filing the request.
* Revised version of the notice published in OJ EPO 1995, 485.
1 Last published in OJ EPO 1994, 244.
2 In Euro-PCT applications the applicant can speed up entry into the European phase by an express request for early processing of the application under Article 23(2) or 40(2) PCT. However, this does not automatically lead to accelerated examination in the European phase - to achieve this a separate request under the PACE programme must be filed.
3 This is the case where the international search report has been drawn up by the EPO, the Swedish Patent Office, the Spanish Patent Office or the Austrian Patent Office.
4 This applies mutatis mutandis in the case of Euro-PCT applications entering the European phase where a supplementary European search report has to be drawn up (see also Supplement No. 1 to OJ EPO 12/1992, p. 9, C. 2, last paragraph, and p. 24, B.III.2, last paragraph).
5 See OJ EPO 1995, 841.