How to get a European Patent quicker

The choice to speed up procedure before the EPO is a strategic one, motivated by factors such as licencing opportunities, enforcement against infringers, the desire to increase a company’s valuation, a short expected time until marketing, and the need for legal certainty. Shortening the duration of the procedure is particularly important for applicants involved in rapidly evolving technologies.

For applicants wanting to expedite their applications through the EPO procedure, the following options – in addition to rapidly complying with all requirements from the EPO – are available:

1. PPH request

The Patent Prosecution Highway (PPH) (GL E-VII, 4.3 https://www.epo.org/law-practice/legal-texts/html/guidelines/e/e_viii_4_3.htm)

; OJ EPO 2016, A106) can be used to accelerate the procedure before the EPO by leveraging the positive outcome of an examination that has already been performed by another patent office for a corresponding application. The already examined application must have the same earliest date as the application in question, and it must have sufficiently corresponding claims, one or more of which must have been deemed allowable by the previous office. It may be a national application or a PCT application. Following a PPH request, the EPO makes use of the work of the previous patent office in the examination of the application, while still making its own independent evaluation of the application. Currently, PPH agreements exist between the EPO and the offices of Australia, Brazil, Canada, China, Colombia, Eurasia, Israel, Japan, Republic of Korea, Mexico, Malaysia, the Philippines, Russia, Singapore, and the USA.

The PPH is available for Euro-PCT applications as well as Euro-direct applications, but applications for which the EPO was the ISA and/or IPEA cannot enter the PPH programme before the EPO as designated or elected office.

The PPH request should be filed using the recommended Form 1009 as set out in OJ 2016, A44. It must be filed before substantive examination of the European application has been initiated, the date of which is available in the European Patent Register.

2. PACE request

The programme for accelerated prosecution of European patent applications (PACE) is an EPO provided programme that enables a faster processing of applications (OJ 2015, A93; GL E-VIII, 4 https://www.epo.org/law-practice/legal-texts/html/guidelines/e/e_viii_4.htm ). There are two types of PACE request, one for search (GL E-VIII, 4.1) and one for examination (GL E-VIII, 4.2), and applicants must specify which stage of the procedure they are looking to accelerate. However, for applications filed on or after 1 July 2014, the search is always accelerated, the EPO issues a search report within six months of filing, so PACE requests are not normally necessary for the search stage.

At the examination stage, on the other hand, filing a PACE request results in a speeding-up that allows the applicant to obtain communications within tight deadlines: When accelerated examination has been requested, the Examining Division strives to issue a communication within the later of three months from receipt of the request and the applicant’s response to a previous communication. The applicant can also expect the subsequent communications within three months from their response.

The PACE request is free of charge. No reasons must be provided in support of the request. It has to be filed online using EPO form 1005, for one application at a time, and it can be filed at any time once the responsibility for the application has passed to the Examining Division, the date of which is entered in the Register. For PCT applications entering the European phase where the EPO also acted as (S)ISA, accelerated examination can, in principle, be requested at any time. The PACE request will not be published and is excluded from file inspection, keeping commercially motivated PACE requests away from the eyes of the applicants’ competitors.

Applicants should note that their co-operation is required – timely responses to the communications of the Examining Division must be filed, wherein all points raised in the communication are dealt with. The examination will no longer be accelerated if the applicant fails to respond in time or requests extension of a period. The same is true if the PACE request is withdrawn. A PACE request may only be filed once for each application during each stage of the procedure, so removal from the PACE programme during examination cannot be undone.

The processing of requests for accelerated prosecution under the PACE programme depends on the workload of the search and examination divisions. The EPO may restrict the number of allowed requests depending on the applicant and the technical field of the application.

3. Status enquiry

The EPO Early Certainty for Search initiative, launched in response to their users’ needs for timely delivery of services, allows, in certain cases, an applicant to speed up the processing of an application by enquiring about the status of the file (OJ EPO 2016, A6).

The response of the EPO will be an indication of the period within which it intends to issue the next communication. The delivery of the communication by the indicated date will be closely monitored by the EPO. Further, if a communication was not issued within the committed period, and a previous enquiry has been filed or the application is being processed under PACE, the next communication will be issued within one month from receipt of the enquiry.

The status enquiry is free of charge. It must be filed online using EPO Form 1012. The status enquiry is entered in the file and is open to public inspection.

4. Waiving the invitation under Rule 70(2) EPC

If an applicant files the request for examination before the transmittal of the search report, the R. 70(2) EPC communication invites the applicant to indicate if they want to proceed further with the application given the results of the European search report and the search opinion. By paying the examination fee early and waiving the R. 70(2) EPC communication the applicant requests examination unconditionally, accelerating the procedure since the examining division can assume responsibility on the day of transmittal of the search report rather than awaiting the response from the applicant (OJ EPO 2015, A94). The first communication under Art. 94(3) EPC, possibly even under R. 71(3) EPC, rather than the search opinion, will be transmitted together with the search report.

5. Acceleration for Euro-PCT applications

In addition to the above-mentioned approaches, Euro-PCT applications can be fast-forwarded in the following ways:

5.1 Early entry into the European phase

The EPO as designated or elected Office may not process an international application before expiry of the 31-month time limit from the date of filing or priority date, Art. 23(1) and 40(1) PCT. This ban may be lifted by the applicant by the filing of an express request for early processing with the EPO (OJ 2015 A94, GL E-IX, 2.8 https://www.epo.org/law-practice/legal-texts/html/guidelines/e/e_ix_2_8.htm)

For the request to be effective, the applicant must comply with the requirements of Rule 159(1) EPC as if the 31-month time limit expired on the date early processing is requested, as explained in GL E-IX, 2.8. The request will only become effective once all requirements are complied with.

The request may be filed at any time before expiry of the 31-month period, is free of charge, and does not require a specific wording. It can be made using Form 1200.

If the R.70(1) EPC period for requesting examination has yet to expire on entry, the prosecution can be further accelerated by filing the request for examination together with the request for early entry (OJ 2013 p.156).

5.2 Waiving the communication under Rules 161 and 162 EPC

In the regional phase, the processing of a Euro-PCT application can be accelerated by waiving the R. 161/162 EPC communication (GL E-IX, 3.1 https://www.epo.org/law-practice/legal-texts/html/guidelines/e/e_ix_3_1.htm ; Euro-PCT guide 5.1.038 https://www.epo.org/applying/international/guide-for-applicants/html/e/ga_c5_1_8_2.html ). The EPO will then, rather than await the expiry of the six-month period for response, proceed directly to the supplementary European search or to examination.

The waiver may be filed using Form 1200 or by a separate letter. The applicant must also fulfil all requirements of R.161 and 162 EPC.

The remainder of the period may also be waived, by filing a waiver together with or after filing a response (OJ 2015 A94).

5.3 PCT Direct

Under the PCT Direct, an applicant of a PCT application designating the EPO as ISA and claiming priority from an earlier patent application – national, European or international – may file informal comments regarding any objections raised in the search opinion for the priority application (GL/PCT B-IV, 1.2 https://www.epo.org/law-practice/legal-texts/html/guidelinespct/e/b_iv_1_2.htm ). Hence, the applicant gets an early opportunity to argue in favour of patentability of the PCT application, and the PCT Direct can accelerate the procedure for that application. The informal comments must be filed together with the PCT application as specified in GL/PCT-EPO A‑IV, 1.2 https://www.epo.org/law-practice/legal-texts/html/guidelinespct/e/a_iv_1_2.htm .

PCT Direct offers an early opportunity to argue in favour of the patentability of the claims of the PCT application over prior art cited against its priority application in a search opinion that was drawn up by the EPO.

PCT Direct can therefore “fast forward” the procedure for PCT applications that claim priority from an application already searched by the EPO.

6. Waiving a further communication under Rule 71(3) EPC – now abolished

Since 1 July 2015, it has also been an option for applicants to accelerate the grant procedure by expressly waiving their right to receive a further communication under Rule 71(3) EPC. However, since few applicants made use of such waivers to speed up the procedure, the EPO has decided to abolish this option. Consequently, the EPO will not process waivers filed in response to R.71(3) EPC communications dated 1 July 2020 or later, instead the normal procedure under R. 71(6) EPC will be followed. Waivers filed in response to such communications dated before 1 July 2020 will still be processed.

In summary, while the process of obtaining patent protection is seldom referred to as very quick, it can be sped up by taking one or more of the steps outlined above. Bryn Aarflot can help you with accelerating your European application towards grant; feel free to contact us with any questions.

Written by Hanne Bonge-Hansen