C. PROCEDURE BEFORE SEARCH, EXAMINING AND OPPOSITION DIVISIONS
C.1 Grant procedure in general
Notice from the European Patent Office dated 30 November 2015 concerning the programme for accelerated prosecution of European patent applications ("PACE")1
The implementation of Early Certainty from Search (ECfS) in July 2014 has revealed a need to review and clarify the conditions applicable to the programme for accelerated prosecution of European patent applications ("PACE").
This revision is intended to help applicants make better use of the programme and enable the Office to process applications for which accelerated prosecution has been requested as promptly as possible. Overall, the revision aims to streamline the programme while increasing its effectiveness.
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.
Information regarding additional ways to expedite the European grant procedure - such as waiving the invitation under Rule 70(2) EPC, waiving the communication under Rules 161 and 162 EPC, waiving a further communication under Rule 71(3) EPC, early entry into the European phase, the accelerated processing of oppositions where infringement proceedings have been instituted, and accelerated processing before the boards of appeal - is provided in the related notice published in OJ EPO 2015, A94.
A further option is available under the Patent Prosecution Highway (PPH) pilot programme, which allows for the accelerating processing of an eligible European patent application when the claims of a corresponding application have been determined to be patentable/allowable by a PPH partner office, while at the same time allowing the EPO to exploit available work results.2
A. General remarks
1. Accelerated prosecution of European patent applications occurs only on written request. Applicants are required to use the dedicated request form (EPO Form 1005), which must be filed online. The EPO will issue an acknowledgment of receipt promptly.3 It will not process requests filed informally, i.e. without using the dedicated form, and/or on paper.
2. A request for participation in the PACE programme (PACE request) may be filed only once during each stage of the procedure, i.e. search and examination, and for one application at a time. A PACE request filed during search will not trigger accelerated examination. A request for accelerated examination may be filed once the examining division becomes responsible for examining the European patent application.4
3. The EPO does not publish requests for accelerated search and/or examination and, by decision of the President dated 12 July 2007,5 they are excluded from file inspection.
4. An application will be removed from the PACE programme if
- the PACE request has been withdrawn,
- the applicant has requested an extension of time limits,
- the application has been refused,
- the application has been withdrawn,
- the application is deemed to be withdrawn.
This applies regardless of the legal remedies available under the EPC. In such cases it will not be possible to restore the application to the PACE programme, i.e. a second request for that application during the same stage of the procedure will not be processed.
5. Additionally, accelerated prosecution will be suspended in the event of failure to pay renewal fees by the due date stipulated in Rule 51(1) EPC.
6. 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.
7. Applicants may enquire with the EPO customer services as to the status of an application for which a PACE request has been filed.
8. For European patent applications filed on or after 1 July 2014 (including PCT applications entering the European phase where the EPO did not act as (S)ISA), the Office under ECfS strives to issue the extended/partial European search report within six months from the filing date or from expiry of the period under Rule 161(2) EPC. Hence no PACE request is needed.
9. For European patent applications (including PCT applications entering the European phase where the EPO did not act as (S)ISA) filed before 1 July 2014 and claiming priority (second filings), on receipt of a PACE request the Office makes every effort to issue the extended/partial European search report within six months from receipt of the request.
10. Applicants should bear in mind that an accelerated search can only start
ii. in all cases: when the application documents on file 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;
iii. for PCT applications entering the European phase where the EPO did not act as (S)ISA: after expiry of the six-month period under Rule 161(2) EPC, even if acceleration has been requested under the PACE programme. In order for the supplementary European search to start immediately, on entry into the European phase, the applicant must explicitly waive the right to communications pursuant to Rules 161(2) and 162(2) EPC and pay any claims fees due (see the notice from the EPO dated 30 November 2015, OJ EPO 2015, A94).
11. If the EPO has invited the applicant to pay further search fee(s) under Rule 64(1), second sentence, or 164(1)(b) EPC, it cannot start drawing up the final search report under Rule 64(1), last sentence, or 164(1)(c) EPC until it has received the applicant's response, or until the two-month time limit set in the invitation has expired.
12. Accelerated examination can, in principle, be requested at any time once responsibility for the application has passed to the examining division.6
13. For PCT applications entering the European phase where the EPO did also act as (S)ISA, accelerated examination can, in principle, be requested at any time, for example
- on entry into the European phase before the EPO,7 or
- together with any response to the WO-ISA, IPER or SISR required under Rule 161(1) EPC.
14. When accelerated examination is requested, the Office makes every effort to issue its next action within three months of the examining division's receipt of the application, the applicant's response under Rule 70a or 161(1) EPC or the request for accelerated examination (whichever is latest).
15. The Office strives to produce subsequent examination communications within three months of receipt of the applicant's reply, provided that the application is still being processed under the PACE programme (see paragraph 4 above).
D. Entry into force
16. The revised PACE programme will enter into force on 1 January 2016, and its conditions will apply to PACE requests filed on or after that date.
17. Notwithstanding paragraph 16, the conditions of paragraphs 4 and 5 above concerning respectively the removal of an application from the PACE programme and the suspension of its accelerated prosecution will apply to pending applications from the entry into force of the revised programme.
3 Regarding access to the acknowledgment of receipt please consult the relevant online filing tool functionalities.
7 With Euro-PCT applications, the applicant can speed up entry into the European phase by expressly requesting early processing under Article 23(2) or 40(2) PCT, OJ EPO 2015, A94. However, accelerated examination in the European phase will not be performed unless requested separately under the PACE programme.