9 December 2015

The updated PACE procedure for accelerating prosecution at the EPO

The EPO is revising the existing “PACE” procedure for accelerating prosecution of European patent applications. These changes will come into force on 1 January 2016.

There are presently several ways to accelerate the progress of a patent application towards grant, and one of these is the EPO’s PACE programme. This programme can be used to accelerate the search and/or examination procedures for both directly filed applications and for PCT applications entering the European regional phase.

The PACE programme should not to be confused with the “Patent Prosecution Highway (PPH)”: these are separate programmes both of which are offered by the EPO.

The core details of the PACE programme remain unchanged. There are still no official fees associated with the request and it is not made public. The EPO has maintained the existing practice that it is not obliged to enter the application into the PACE programme; refusal can be based on the EPO’s workload in the particular technical field. The EPO also has retained the right to ask individual applicants to limit their PACE requests if they have requested to accelerate most or all of their applications. However, to enter the PACE programme the applicant’s request is now required to be filed online using EPO Form 1005.

The main changes now introduced are to PACE requests for the acceleration of the search procedure. These requests have become less relevant since the implementation of Early Certainty from Search (ECfS) at the EPO. The ECfS scheme effectively means that all applications filed on or after 1 July 2014 are accelerated and the EPO will aim to issue a search report within 6 months of filing. Thus a PACE request for accelerating search is now redundant. Before 1 July 2014 only first filings were treated in this way, and so applications filed before this date that claim priority still need to be formally entered into the PACE programme if the applicant requires acceleration of the search procedure.

Under the new PACE procedure accelerated examination can be requested at any time once the examining division has assumed responsibility for the application, thus the new procedure is less flexible than the old procedure, whereby the request to accelerate examination could be filed during the search. The details of the acceleration remain the same as under the old procedure: the EPO will then attempt to issue the next, and any subsequent, action within three months. If the PACE request is filed before the first examination report then the examining division will attempt to issue the first report three months from the later of their receipt of the application or within three months of the applicant’s response to the normal official communications. Effectively this means that the report will be issued three months from when the examining division is able to start examination.

Entry onto the PACE programme is not permanent and the applicant can voluntarily withdraw. The EPO will also remove applications from the programme should the applicant request to extend any time limits, if the application is refused, if the application is withdrawn, or if the application is deemed to be withdrawn. In addition, accelerated prosecution will be suspended should a renewal fee due date be missed. The new procedure states that once an application has left the PACE programme it cannot be re-introduced for the same stage of the procedure.

As alluded to at the beginning of this article, the PACE programme is only one way of accelerating the prosecution of a European patent application. Other options include the PPH, and the ability to waive the right to certain official communications allowing the applicant to circumvent several time periods. Should you require any more information on the choices available, or the benefits of accelerating your application, please contact your preferred Venner Shipley attorney.