Notice from the European Patent Office dated 2 August 2016 concerning the handling of enquiries as to the processing of files
In specific cases, parties to proceedings before the EPO may have an interest in enquiring about the progress of the file and thus obtaining information on when the next Office action is to be expected.
Further to the revision of the conditions applicable to the PACE programme, the implementation of Early Certainty from Search (ECfS) in July 2014 has revealed the need to enhance and clearly define the procedure for the filing and handling of such enquiries.
The revision of the previous practice is aimed at improving the effectiveness and responsiveness of the service provided by the EPO. This is to be achieved by means of a dedicated filing tool and enhanced monitoring of the time frame indicated in the reply to enquiries.
The new procedure is available to all parties to proceedings before the EPO’s departments of first instance. [ 1 ]
Unlike the PACE programme, [ 2 ] however, the filing of enquiries does not imply a general acceleration of the prosecution of European patent applications.
A. Filing of enquiries
1. An enquiry is processed and replied to according to the present notice only if it is filed online using EPO Form 1012. It may be submitted for only one application or patent at a time.
2. The EPO will promptly issue an acknowledgement of receipt.
3. Both the enquiries and the replies from the EPO form integral parts of the file and, as such, are open to public file inspection.
B. Handling of enquiries
4. Specific parameters may have an impact on the handling time for enquiries. For example, the non-payment of the renewal fee by the due date under Rule 51(1) EPC may delay the EPO’s handling of an enquiry.
5. In general, the EPO will reply to enquiries by indicating the period within which the next Office action is to be expected, taking into account the workload in the technical area concerned and the internal deadline for the completion of the pending action. The EPO will strive to produce the subsequent examining communication within the period indicated in the reply to the enquiry.
6. Nevertheless, in the following cases an enquiry will automatically cause the EPO to issue the next action within
one month from receipt of the enquiry
- where the extended/partial European search report in respect of European patent applications filed on or after 1 June 2014 (including PCT applications entering the European phase where the EPO did not act as (S)ISA) has not been issued, under ECfS, within six months from the filing date or from expiry of the period under Rule 161(2) EPC; or
- where an Office action in respect of an application which is being processed under the PACE programme or for which a previous enquiry has been made has not been performed within the committed period;
six months from receipt of the enquiry
- where the extended/partial European search report in respect of European patent applications (including PCT applications entering the European phase where the EPO did not act as (S)ISA) filed before 1 June 2014 and which do claim priority (second filings) has not been issued.
7. Delivery of the next action by the committed date will be closely monitored by the EPO.
8. If the applicant is not satisfied with the time frame indicated in the reply to the enquiry, prosecution of the application can be accelerated by requesting application of the PACE programme.
C. Entry into force
9. The new procedure applies to enquiries filed on or after 1 November 2016.
[ 1 ] For the accelerated prosecution of appeals, see OJ EPO 2008, 220.
[ 2 ] See notice from the European Patent Office dated 30 November 2015 concerning the programme for accelerated prosecution of European patent applications ("PACE"), OJ EPO 2015, A93.