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16 May 2022

Controlling the Speed of Prosecution at the EPO

If you are familiar with prosecution at the European Patent Office (EPO), you will likely have had times where it is acting more slowly or quickly than you would like. While applicants have limited control over the EPO’s timescales for processing applications, the EPO has made some options available for influencing the speed at which it handles each application. This article is intended to outline some of the available options.

Speeding up

There are various reasons to speed up the prosecution of an application, from early enforceability to attracting more investment with a granted patent. Beyond the obvious option of responding to communications as quickly as possible rather than waiting for deadlines, there are a number of other options available to further accelerate prosecution.

File a PACE request

A PACE request can be used to request accelerated examination. It can be filed at any time during examination and only requires a simple form, with no official fee and no reasons needed for the request.

Once filed, the EPO will usually strive to issue its next office action within three months of receipt, and all subsequent office actions within three months of each response. However, this is “only where practically feasible and subject to the workload of the search and examining divisions”.

Technically, a PACE request can also be filed for accelerated search. However, under its Early Certainty from Search initiative, the EPO now always strives to issue the search reports quickly (within six months of filing). Hence, a PACE request for accelerated search will often have no effect.

It is also worth noting that PACE requests cannot be used too often. The EPO has stated that “Applicants requesting accelerated prosecution for all or most of their applications will, as a rule, be required by the EPO to limit the number of their PACE requests by making a selection.

File a PPH request

Similarly to PACE, the Patent Prosecution Highway (PPH) is a programme that can be used to accelerate examination of European patent applications and is free of charge.

Unlike PACE, PPH does require reasons to be given as to why the PPH request should be accepted. Specifically, it is necessary to include a declaration of correspondence to the allowed claims of a counterpart application at a participating office. See here for a list of participating offices.

PPH requests also have stricter time requirements than PACE requests – the PPH request must be filed before substantive examination has begun.

Our experience is that, if accepted, a PPH request accelerates proceedings to a similar extent as a PACE request. Our experience is also that the EPO does not tend to simply follow the decision of the office on which the PPH request is based – it will perform its own search and examination and come to its own conclusions. Hence, it is not apparent that a PPH request has any particular positive effect over what a PACE request provides.

Waive the invitation to indicate the applicant’s desire to proceed further

Ordinarily, if the request for examination has been made before issuance of the search report, the EPO will issue an invitation under Rule 70(2) of the European Patent Convention (EPC) to indicate whether the applicant wishes to proceed further with the application and shall give them the opportunity to comment on the search report and to amend the description, claims, and drawings.

If the right to receive this communication is waived, the Examining Division can assume responsibility on transmittal of the search report. As a result, instead of the search report being accompanied by a written opinion, it can theoretically be accompanied (or shortly followed) by a communication under Rule 71(3) EPC with the text intended for grant (assuming the Examining Division does not have any objections and has been able to carry out its search for conflicting European applications according to Article 54(3) EPC).

Request early processing (Euro-PCT applications only)

The EPO has a 31-month deadline from the priority date of a PCT application to enter the European phase. Ordinarily, if all the acts necessary to enter the European phase are completed prior to the 31-month deadline, the EPO will not process or examine the application until expiry of this deadline.

To avoid this situation, it is possible to request early processing. This is very simple and can be done by checking a box on the form used to enter the European phase. In this case, the EPO will be able to process and examine the application prior to the expiry of the 31-month deadline.

Waive the Rule 161/162 EPC communication (Euro-PCT applications only)

Once a Euro-PCT application enters the European phase, the EPO issues a Rule 161/162 EPC communication. This sets a six-month time limit to file any voluntary amendments if desired (as well as requiring a mandatory response to the EPO’s objections in the international stage if it acted as the international search authority (ISA)).

In order to skip this procedural step, it is possible to waive the Rule 161/162 EPC communication. As with a request for early processing, filing this waiver is very simple and can be done by checking a box on the form used to enter the European phase (and paying any necessary excess claims fees for the existing claims). However, if the EPO acted as the ISA, it is also necessary to file a substantive response to the EPO’s objections from the international stage for the waiver to take effect.

Slowing down

There are legitimate reasons to try to slow down the prosecution of an application, including to delay costs, to keep amendment options open, or to keep a patent pending that might ultimately be refused. When looking to slow down prosecution, you should of course make full use of the periods set for responding to each official communication and not use any of the actions discussed above that accelerate prosecution. While there are not many formal options available for slowing down prosecution, some are available.

Request an extension

It is not possible to request extensions of time for responding to all types of communication issued by the EPO, but it is possible to do so for many types.

A common example is an examination report. A two-month extension will normally be granted on request, without any official fee or reasons for the request being needed, provided the total period set does not then exceed six months. The total period can be extended beyond six months, but only in exceptional circumstances.

File the claims late

Strictly, the filing of claims is not required at the EPO to obtain a date of filing. If no claims are included in the application on filing, the EPO will issue an invitation under Rule 58 EPC inviting the application to file the claims within two months.

By waiting for this invitation from the EPO before filing the claims, the prosecution of the application can be delayed by a few months – the EPO cannot perform a search until claims are present.

This is not an option that we recommend for most applications given the strict added subject-matter requirements at the EPO. Specifically, to comply with Article 123(2) EPC, it would be necessary for the entire subject-matter of the claims to already be included in the previously filed description.

This is, however, a useful delaying tactic for divisional applications. The subject-matter of a divisional application cannot extend beyond the content of the parent as filed. As a result, provided the entire content of the parent application is included in the divisional application as initially filed (e.g. by adding the subject-matter of the claims of the parent to the description of the divisional), there is no risk in filing the claims late (because the total contents that can be included in the divisional application have already been decided by the parent and the claims cannot add anything further).

Summary

As discussed above, there are numerous tactics that can be used for controlling the speed of prosecution of your European application, both to speed it up and to slow it down.

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