The EPO's annual report includes the average time of EPO examination proceedings. For the most recent report, 2021, this figure was 23.0 months. However, this average is somewhat misleading, as it does not include the formalities and search phases. Moreover, for cases that entered the EP regional phase with a positive International Preliminary Report on Patentability (IPRP) from the EPO, grant could be immediate, resulting in an examination time of essentially 0 months. For cases requiring substantive arguments and/or amendments, a more realistic timeline is around 4 years from filing to grant.
There is a need to balance prosecution timescales and the quality of examination. The EPO is keen to maintain its reputation as a provider of high-quality examination. Because of this reputation, many applicants are keen to obtain rapid grant at the EPO as a granted EP patent can be helpful to accelerate prosecution elsewhere.
There are some actions that can be taken on filing or on entering the EP regional phase to accelerate prosecution, such as waiving the right to certain communications. A positive IPRP from the EPO will certainly help too. However, the options once EP prosecution has begun are more limited, as discussed below.
PACE Requests
The EPO allows applicants to file requests for accelerated processing, known as PACE requests. There is no official fee for filing these, and requests will not be visible on the EPO Register. There is, however, a question mark over how effective these are. PACE requests are exactly that - requests - not guarantees. If PACE has been requested, the EPO will aim to send the next communication "within three months", but this is only subject to the workload of the relevant Examining Division. It is also worth noting that, if many requests are filed by the same applicant, the EPO will ask the applicant to prioritize their cases, so this approach cannot be used to blanket accelerate an entire portfolio.
It is worth noting that applications will be removed from PACE if an extension of time is requested (this includes using further processing). If an application is removed from PACE, it is not possible to later reinstate the application into PACE.
Informal Requests
Applicants can file an informal request into the processing of the file. The EPO then responds to say that the applicant can expect to receive the next communication within "X months", often between 3 and 9 months. While this is not an acceleration request per se, it can help to bring a file to the attention of the Examiner, which in turn may accelerate proceedings.
Align with granted US claims?
It can be tempting to use a granted US patent to try and accelerate grant at the EPO. However, this strategy is rarely successful. While it is well-known that the USPTO and EPO approaches to added subject-matter and inventive step are very different,1 even determination of novelty can be different. For example, disclaimer practice is very different between the two patent offices, as is the standard for dealing with inherent disclosures in the prior art. There are significant subject-matter eligibility differences too. It is consequently unlikely that claims granted by the USPTO will be allowed at the EPO without further arguments/amendments.
For similar reasons, while Patent Prosecution Highway (PPH) requests can be filed at the EPO, their success rate is generally low. Notably, there is no compulsory recognition of work results obtained from the Office of Earlier Examination, meaning that the EPO is free to ignore these. For practical purposes, a PPH request filed at the EPO has essentially the same effect as a PACE request, but with more paperwork involved.
Go narrow?
One way to accelerate prosecution for those with sufficient budget can be to accept narrow claim scope simply to obtain rapid grant. A divisional application can then be filed to pursue broader claim scope. This strategy can be helpful to obtain rapid grant of specific embodiments (such as exemplified compounds) and then pursue broader, generic scope, via a divisional application. Often EPO Examiners will highlight a claim that they consider to be allowable which may be helpful. There is no double patenting concern in this scenario, as the parent and divisional claims are different in scope.
Examiner Interview?
The EPO does not have a formal "Examiner Interview" process that is comparable to the USPTO. However, if the Examiner is amenable, a telephone call can help to speed up prosecution, particularly if there is an ambiguity in an objection that prevents the applicant from responding to an Examination Report in full. A limitation here is that the Primary Examiner cannot give any indication of allowability of claim amendments. All claim amendments need to be assessed for added subject-matter, and this is not possible over the phone. Moreover, the application needs to be approved by all three members of the Examining Division. Therefore, while the Primary Examiner can give a preliminary indication of what amendments/arguments may be acceptable, they do not have the final word on allowability.
Takeaways
The only formal route for accelerating prosecution at the EPO is to file a PACE request. Unlike the USPTO, the EPO did not offer any acceleration for Covid-related applications during the pandemic, and there is no "Track One" equivalent. The UKIPO also offers an acceleration scheme for applications having environmental benefits,2 but there is no corresponding scheme at the EPO. Hopefully this unmet need can be addressed by the EPO soon to give applicants more options for acceleration and greater certainty for third parties.
Footnotes
1. We have pre-recorded webinars comparing inventive step (EPO) and obviousness (USPTO) that can be found here and here. We have an upcoming webinar comparing EPO and USPTO approaches to added subject-matter on 28 June 2023. Register here.
2. See https://www.gov.uk/guidance/patents-accelerated-processing
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
