Main tool for accelerating the procedure: PACE
Legal basis
The PACE program (or « Programme for accelerated prosecution of European patent applications« ) is provided for by the « Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93.
Form
It is possible to request accelerated processing of an application (for the extended search report or the first communication as soon as possible) by submitting a simple written request (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 1) using EPO Form 1005.
Confidentiality
PACE requests are not published and are excluded from public inspection (« Decision of the President of the European Patent Office, dated 12 July 2007, concerning documents excluded from file inspection« , OJ 2007, Special Edition No. 3, J.3, A1(1) c) and « Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 3).
Limitation on the number of requests
If an applicant files nearly all their applications with a PACE request, they may be asked to limit their requests and select those they truly wish to prioritize (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 6).
Furthermore, this program is constrained by the EPO’s workload (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 6).
Certain technical fields may be subject to restrictions if there are too many applications (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 6).
Patent Prosecution Highway (or PPH)
Under the « Patent Prosecution Highway » (or PPH) program, it is possible to obtain accelerated examination similar to PACE (point D) if (« IP5 Patent Prosecution Highway pilot programme based on PCT and national work products« , OJ 2019, A106):
- at least one claim is deemed patentable (point B.2) for:
- a US application;
- a JP application;
- a KR application;
- a CN application;
- a PCT application (where the ISA or IPEA is US/JP/KR/CN);
- all claims of the EP application must be identical or similar to those of this application (same or analogous scope, point B.3);
- the EP application must have the same effective date as this application (point B.1), for example:
- it claims priority from this application;
- it is the priority application for this application;
- it shares a common priority document with this application;
- it results from the same international PCT application as this application (where the ISA or IPEA is US/JP/KR/CN);
- the EP examination must not have commenced (point B.4).
Similarly, agreements have been concluded with national offices. It is possible to obtain accelerated examination similar to PACE if at least one claim is deemed patentable for:
- a CA application (or PCT where the ISA or IPEA is CA, « Patent Prosecution Highway pilot programme between the European Patent Office and the Canadian Intellectual Property Office based on PCT and national work products« , OJ 2017, A107);
- a IL (Israel) application (or PCT where the ISA or IPEA is IL, « Patent Prosecution Highway pilot programme between the European Patent Office and the Israel Patent Office based on PCT and national work products« , OJ 2017, A108);
- a MX application (or PCT where the ISA or IPEA is MX, « Patent Prosecution Highway pilot programme between the European Patent Office and the Mexican Institute of Industrial Property based on PCT and national work products« , OJ 2020, A21);
- a AU (Australia) application (« Patent Prosecution Highway pilot programme between the European Patent Office and IP Australia based on PCT and national work products« , OJ 2016, A54);
- a SG (Singapore) application (« Patent Prosecution Highway pilot programme between the European Patent Office and the Intellectual Property Office of Singapore based on PCT and national work products« , OJ 2017, A110);
- a CO (Colombia) application (« Patent Prosecution Highway pilot programme between the European Patent Office and the Superintendence of Industry and Commerce of Colombia based on PCT and national work products« , OJ 2016, A75);
- a RU (Russia) application (« Patent Prosecution Highway pilot programme between the European Patent Office and the Federal Service for Intellectual Property based on PCT and national work products« , OJ 2020, A11);
- a MA (Malaysia) application (« Patent Prosecution Highway programme between the European Patent Office and the Intellectual Property Corporation of Malaysia based on PCT and national work products« , OJ 2021, A82);
- a PH (Philippines) application (« Patent Prosecution Highway programme between the European Patent Office and the Intellectual Property Office of the Philippines based on PCT and national work products« , OJ 2021, A83);
- a Eurasian application (« Patent Prosecution Highway pilot programme between the European Patent Office and the Eurasian Patent Office based on PCT and national work products« , OJ 2017, A77);
- a Brazilian application (« Patent Prosecution Highway pilot programme between the European Patent Office and the National Institute of Industrial Property of Brazil based on national work products« , OJ 2019, A95);
- a Colombian application (« Patent Prosecution Highway pilot programme between the European Patent Office and the Superintendence of Industry and Commerce of Colombia based on PCT and national work products« , OJ 2019, A78);
- a Peruvian application (« Patent Prosecution Highway pilot programme between the European Patent Office and the National Institute for the Defense of Competition and Intellectual Property Protection (Peru) based on PCT and national work products« , OJ 2019, A107).
The documents to be submitted are indicated in point C (« IP5 Patent Prosecution Highway pilot programme based on PCT and national work products« , OJ 2019, A106).
A similar program also exists in the US, CN, KR, JP, CA, SG, MX, AU, and IL.
Acceleration at different stages
At the national phase entry stage
Early national phase entry
The EPO, as the designated/elected Office, does not process an international application before the expiration of the 31-month period from the filing date or, if priority has been claimed, from the priority date.
The applicant may request the commencement of processing before the expiration of this period by filing an explicit request for early processing (« Notice from the European Patent Office, dated 30 November 2015, concerning ways to accelerate the European grant procedure« , OJ 2015, A94).
Early processing of the Euro-PCT application
Normally, even in the case of early national phase entry before the 31-month period from the priority date, the EPO does not process the application unless the applicant expressly requests it (« Notice from the European Patent Office, dated 21 February 2013, concerning the request for early processing« , OJ 2013, 156, in accordance with A23.2 PCT or A40.2 PCT).
If the express request for early national phase entry is submitted before the publication of the international application, the applicant or the EPO must additionally request the IB to communicate the application documents under A20 PCT (A23.2 PCT or A40.2 PCT together with R47.4 PCT).
No specific form is required for this request.
The applicant must then comply with the national phase entry requirements (e.g., pay the filing fee, the additional fee if the application exceeds 35 pages), submit a translation, specify the application documents, and pay the search fee (« Notice from the European Patent Office, dated 21 February 2013, concerning the request for early processing« , OJ 2013, 156).
Immediately after national phase entry
Waiver of the R161-R162 EPC communication
Upon national phase entry, the applicant may waive their right to receive the R161 EPC communication allowing amendments to the application (« Notice from the European Patent Office, dated 30 November 2015, concerning ways to accelerate the European grant procedure« , OJ 2015, A94).
To do so, the applicant must, at the time of national phase entry (« Notice from the European Patent Office, dated 30 November 2015, concerning ways to accelerate the European grant procedure« , OJ 2015, A94):
- have filed amendments in response to the written opinion of the ISA (or the SISA or IPEA, as applicable);
- paid the necessary claim fees.
Waiver of the full 6-month period under R161-162
When a communication under R161 EPC and R162 EPC has been issued, the applicant is entitled to the full six-month period to file amendments.
If the applicant does not wish to use the full six-month period, they may request the immediate commencement of the search or examination.
The request may, for example, be worded as follows: « The applicant requests the immediate commencement of processing and waives their right to use the remainder of the six-month period referred to in R161 EPC and R162 EPC » (« Notice from the European Patent Office, dated 30 November 2015, concerning ways to accelerate the European grant procedure« , OJ 2015, A94).
At the search stage
For applications filed before 1 July 2014
Applications without priority
Applications not claiming priority and filed before 1 July 2014 are already in an accelerated procedure: there is no need to request PACE.
The EPO already ensures that the extended search reports (ESRs) are available within 6 months from the filing date (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 9).
Applications with priority
It is possible to request PACE for applications claiming priority: a search will be carried out as soon as possible (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 9).
To conduct an accelerated search, the EPO must have (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 10):
- the claims,
- the description,
- the required translations,
- the drawings (if applicable),
- the sequence listing (if applicable).
For applications filed after 1 July 2014
There is nothing to do… normally, the EPO processes them as if a PACE request had been filed (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 8).
At the examination confirmation stage
If the applicant files the examination request before receiving the search report, they may waive the invitation under R70(2) EPC to confirm the examination (i.e., filing an unconditional examination request, regardless of the search results) (« Notice from the European Patent Office, dated 30 November 2015, concerning ways to accelerate the European grant procedure« , OJ 2015, A94).
In this case, a communication under A94(3) EPC or R71(3) EPC (Guidelines C-VI 3 and R62(1) EPC) will be issued a few days after the transmission of the supplementary European search report (which will not include an opinion on patentability).
At the examination stage
Principle
It is possible to request PACE at any time (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 12), provided that the Examining Division is competent.
In the case of automatic debiting, the examination fee is debited upon receipt of the PACE request (« Arrangements for the automatic debiting procedure« , OJ 3/2009, supplement, p19, point 6.1.b).
In the case of accelerated proceedings, the EPO makes every effort to issue the first communication within 3 months (the latest expiry date being retained, « Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 14):
- from the receipt of the request, or
- from the applicant’s response under R70bis EPC or R161(1) EPC, or
- from the PACE request.
Subsequent communications are issued within the same 3-month period from the applicant’s response if (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 15):
- the response is filed within the time limit; and
- the response addresses all points raised in the previous communication.
Case of Euro-PCT applications
It is also possible to request PACE at any time.
If the applicant requests early national phase entry (A23.2 PCT if « designated » or A40.2 PCT if « elected »), this does not mean that PACE is requested; it must be requested explicitly (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 13 and its footnote).
In the case of PCT applications entering the European phase for which the EPO acted as ISA or SISA, accelerated examination can in principle be requested at any time, for example (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated prosecution of European patent applications (« PACE »)« , OJ 2015, A93, point 13):
- at the time of entry into the European phase before the EPO, or
- together with the response to the written opinion of the ISA, the international preliminary examination report, or the supplementary international search report in accordance with R161(1) EPC.
The other points remain the same.
At the grant stage
Principle
If the applicant approves the text without delay, the grant will follow promptly.
Of course, all due official fees must also be paid, and translations of the claims provided.
Waiver of a second R71(3)
If the applicant proposes amendments in response to an R71(3) EPC, they may simultaneously waive the right to receive a further R71(3) EPC (« Notice from the European Patent Office, dated 8 June 2015, concerning the possibility of waiving the right to receive a further communication under Rule 71(3) EPC« , OJ 2015, A52 and « Notice from the European Patent Office, dated 30 November 2015, concerning ways to accelerate the European grant procedure« , OJ 2015, A94).
Of course, if the applicant waives their right to receive a further R71(3) EPC, they must, at the same time as this waiver, perform all necessary acts to give their approval (see above: official fees, translations, etc.).
At the opposition stage
Infringement action
If an infringement action has been brought before a national court, a party may file a request for accelerated processing (« Notice from the European Patent Office, dated 17 March 2008, concerning accelerated processing of oppositions when infringement proceedings have been instituted« , OJ 2008, 221, point 1).
This request may be filed at any time.
It must be made in writing and substantiated.
The EPO then makes every effort to perform the next procedural step (the latest expiry date being retained) (« Notice from the European Patent Office, dated 17 March 2008, concerning accelerated processing of oppositions when infringement proceedings have been instituted« , OJ 2008, 221, point 1):
- within 3 months from receipt of the request; or
- if the request was filed within the opposition period, within 3 months from receipt of the proprietor’s response to the notice of opposition.
This acceleration will also be carried out if a competent court or authority notifies the EPO that an infringement action is pending (« Notice from the European Patent Office, dated 17 March 2008, concerning accelerated processing of oppositions when infringement proceedings have been instituted« , OJ 2008, 221, point 2).
The cooperation of the parties is essential (« Notice from the European Patent Office, dated 17 March 2008, concerning accelerated processing of oppositions when infringement proceedings have been instituted« , OJ 2008, 221, point 3).
Case of a straw man
We know that it is possible to file an opposition through a straw man.
In this situation, care must be taken because accelerating the procedure will be difficult to justify, as it is not possible to invoke reasons related to the « true » opponent (T872/13).
Other cases
The EPO will also accelerate the procedure if (Guidelines D-VII 1.2):
- the duration of the examination procedure has significantly exceeded the average duration;
- the duration of the opposition procedure has significantly exceeded the average duration;
- other cases (e.g., divisional applications) depend on the outcome of the opposition;
- the next stage of the examination requires relatively little time.
At the appeal stage
Principle
This acceleration is provided for in Article 10(3) to (6) of the RPBA.
Who may request
Any party with a legitimate interest in expediting the procedure may request it, including courts or competent authorities of a contracting state (Article 10(3) of the RPBA).
Request
The request must be addressed to the competent board of appeal at any time during the proceedings (Article 10(3) of the RPBA).
It must set out the reasons for urgency and refer to supporting documents (Article 10(3) of the RPBA).
Reasons for urgency
The reasons must be related to the nature of the case.
The RPBA is silent on the reasons that may constitute urgency.
However, we can draw inspiration from the « Notice from the Vice-President of Directorate-General 3, dated 17 March 2008, concerning the acceleration of proceedings before the Boards of Appeal« , OJ 2008, 220, which has since been repealed in favor of the RPBA:
- an infringement action has been brought or is contemplated;
- the decision to enter into a license depends on the outcome of the appeal;
- the opposition must be processed in an accelerated manner;
- due to the disadvantages caused by the suspensive effect of the appeal (exceptional);
- etc.