Principal tool for accelerating the procedure: PACE
Legal basis
The PACE program (or « Programme for accelerated prosecution of European patent applications« ) is provided for in the « Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated processing 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 processing 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 public 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 processing 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 processing of European patent applications (« PACE »)« , OJ 2015, A93, point 6).
Furthermore, this program is subject to the EPO’s workload (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated processing of European patent applications (« PACE »)« , OJ 2015, A93, point 6).
Certain technical fields may be subject to restrictions if there is an excessive number of applications (« Notice from the European Patent Office, dated 30 November 2015, concerning the programme for accelerated processing 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 under PACE (point D) if (« IP5 Patent Prosecution Highway pilot program based on PCT and national work products« , JO 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 (the ISA or IPEA being US/JP/KR/CN);
- all claims of the EP application must be identical/similar to that application (identical or analogous scope, point B.3);
- the EP application must have the same effective date as that application (point B.1), for example:
- it claims the priority of that application;
- it is the priority application for that application;
- it shares a common priority document with that application;
- it results from the same international PCT application as that application (the ISA or IPEA being US/JP/KR/CN);
- the EP examination must not have commenced (point B.4).
Similarly, certain agreements have been concluded with national offices. It is possible to obtain accelerated examination under PACE if at least one claim is deemed patentable for:
- a CA application (or PCT for which the ISA or IPEA is CA, « Pilot Patent Prosecution Highway program between the European Patent Office and the Canadian Intellectual Property Office based on PCT and national work products« , JO 2017, A107);
- an IL (Israel) application (or PCT for which the ISA or IPEA is IL, « Pilot Patent Prosecution Highway program between the European Patent Office and the Israel Patent Office based on PCT and national work products« , JO 2017, A108);
- an MX application (or PCT for which the ISA or IPEA is MX, « Pilot Patent Prosecution Highway program between the European Patent Office and the Mexican Institute of Industrial Property based on PCT and national work products« , JO 2020, A21);
- an AU (Australia) application (« Pilot Patent Prosecution Highway program between the European Patent Office and IP Australia based on PCT and national work products« , JO 2016, A54);
- an SG (Singapore) application (« Pilot Patent Prosecution Highway program between the European Patent Office and the Intellectual Property Office of Singapore based on PCT and national work products« , JO 2017, A110);
- a CO (Colombia) application (« Pilot Patent Prosecution Highway program between the European Patent Office and the Superintendence of Industry and Commerce of Colombia based on PCT and national work products« , JO 2016, A75);
- a RU (Russia) application (« Pilot Patent Prosecution Highway program between the European Patent Office and the Federal Service for Intellectual Property based on PCT and national work products« , JO 2020, A11);
- a MA (Malaysia) application (« Patent Prosecution Highway program between the European Patent Office and the Intellectual Property Corporation of Malaysia based on PCT and national work products« , JO 2021, A82);
- a PH (Philippines) application (« Patent Prosecution Highway program between the European Patent Office and the Intellectual Property Office of the Philippines based on PCT and national work products« , JO 2021, A83);
- a Eurasian application (« Pilot Patent Prosecution Highway program between the European Patent Office and the Eurasian Patent Office based on PCT and national work products« , JO 2017, A77);
- a Brazilian application (« Pilot Patent Prosecution Highway program between the European Patent Office and the National Institute of Industrial Property of Brazil based on national work products« , JO 2019, A95);
- a Colombian application (« Pilot Patent Prosecution Highway program between the European Patent Office and the Superintendence of Industry and Commerce of Colombia based on PCT and national work products« , JO 2019, A78);
- a Peruvian application (« Pilot Patent Prosecution Highway program between the European Patent Office and the National Institute for the Defense of Competition and the Protection of Intellectual Property (Peru) based on PCT and national work products« , The documents to be submitted are indicated in section C (« Patent Prosecution Highway pilot program between the IP5 offices based on PCT and national work products« , JO 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 a designated/elected Office does not process an international application before the expiry 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 expiry 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« , JO 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« , JO 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 transmit the application documents pursuant to 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), file 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« , JO 2013, 156).
Shortly after national phase entry
Waiver of receipt of R161-R162 EPC
Upon national phase entry, the applicant may waive the right to receive the notification R161 EPC, which allows for amendments to the application (« Notice from the European Patent Office dated 30 November 2015 concerning ways to accelerate the European grant procedure« , JO 2015, A94).
To do so, the applicant must have, 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« , JO 2015, A94):
- 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 six-month period under R161-162
Where a notification 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 entire six-month period, they may request the immediate commencement of the search or examination.
This 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 expedite 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 participation in the PACE program.
The EPO already ensures that the 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 processing of European patent applications (« PACE »)« , OJ 2015, A93, point 9).
Applications with priority(ies)
It is possible to request participation in the PACE program 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 processing of European patent applications (« PACE »)« , OJ 2015, A93, point 9).
To carry out an accelerated search, the EPO must have (« Notice from the European Patent Office dated 30 November 2015 concerning the programme for accelerated processing of European patent applications (« PACE »)« , OJ 2015, A93, point 10):
- the claims,
- the description,
- the required translations,
- the drawings (where applicable),
- the sequence listing (where applicable).
For applications filed after 1 July 2014
There is nothing to be done … 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 processing of European patent applications (« PACE »)« , OJ 2015, A93, point 8).
At the examination confirmation stage
If the applicant files the request for examination before receiving the search report, they may waive receipt of the invitation under R70(2) EPC requesting confirmation of examination (i.e., filing an unconditional request for examination, regardless of the search results) (« Notice from the European Patent Office dated 30 November 2015 concerning ways to expedite the European grant procedure« , OJ 2015, A94).
In this case, a notification under A94(3) EPC or R71(3) EPC (Guidelines C-VI 3 and R62(1) EPC) will be issued a few days after transmission of the ESR (which will not include an opinion on patentability).
At the examination stage
Principle
It is possible to request to benefit from the PACE program 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 payment by automatic debit, the examination official 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 prosecution, 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 application, 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.
Euro-PCT applications
It is also possible to request to benefit from the PACE program at any time.
If the applicant requests early entry into the European phase (A23.2 PCT if « designated » or A40.2 PCT if « elected »), this does not mean that the PACE program is requested; it must be explicitly requested (« 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 may 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):
- upon entry into the European phase before the EPO, or
- together with the response to be provided 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 unchanged.
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 the translations of the claims provided.
Waiver of a second 71(3)
If the applicant proposes amendments in response to a 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 European grant proceedings« , OJ 2015, A94).
Of course, if the applicant waives the 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 where an infringement action has been brought« , OJ 2008, 221, point 1).
This request may be filed at any time.
It must be submitted in writing and be reasoned.
The EPO will then do its utmost to perform the next procedural act (the longest applicable time limit being taken into account) (« Notice from the European Patent Office dated 17 March 2008 concerning accelerated processing of oppositions where an infringement action has been brought« , OJ 2008, 221, point 1):
- within a period of 3 months from receipt of the request;
- if the request was filed within the opposition period, within a period of 3 months from receipt of the proprietor’s response to the notice of opposition.
This acceleration will also be applied 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 where an infringement action has been brought« , 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 where an infringement action has been brought« , OJ 2008, 221, point 3).
Straw man case
We know that it is possible to file an opposition through a straw man.
In this situation, care should be taken because accelerating the procedure will be difficult to justify since it is not possible to invoke reasons relating 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 only a relatively short 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 competent courts or 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 evidence (Article 10(3) of the RPBA).
Grounds for urgency
The grounds must be related to the nature of the case.
The RPBA is silent on the grounds that may constitute urgency.
However, we may 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 take 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.