On January 1, 2016, changes to the programme for accelerated prosecution of European patent applications (PACE) came into force at the European Patent Office (EPO). In this article, we explain the PACE programme and the recent changes.
Accelerating Search and Examination with PACE
The PACE programme provides an easy way to expedite the search
and examination of European patent applications. Unlike some patent
offices' costly and complicated procedures for accelerating
prosecution, PACE is free of charge and requires only a simple form
to be filed. All European patent applications are eligible to
participate in the PACE programme, and there is no need to give a
reason for requesting acceleration or to provide any additional
PACE can be requested at any time during the search and/or examination procedures. During the search procedure, the EPO aims to issue a search report within six months of PACE being requested. When PACE is requested during the examination procedure, the EPO aims to issue each office action within three months. There is no need to request PACE during the search procedure for applications filed on or after July 1, 2014, since an accelerated search is always performed for such applications.
There are a few limitations to the PACE programme, however. First, the PACE programme should be used sparingly because the EPO may require applicants who request PACE for all or most of their applications to limit their number of PACE requests. Second, PACE is not available during opposition or appeal proceedings, which can only be expedited in exceptional circumstances.1,2
With the median pendency of European applications currently around five years,3 the PACE programme is a useful tool for applicants to expedite prosecution of their most urgent applications.
Changes to PACE
Under the changes that came into force on January 1,
2016,4 it is now possible for an application to lose its
accelerated status irretrievably. In particular, an application
will be removed from the PACE programme if an extension of time is
requested, or if the application is refused, withdrawn, or deemed
to be withdrawn. Such an application cannot regain its accelerated
status through the filing of a further PACE request or the use of
legal remedies such as "further processing."5
The only exception to this new sanction is that nonpayment of a
renewal fee (annuity) will merely result in accelerated prosecution
being suspended until the renewal fee is paid, but the application
will not be removed from the PACE programme altogether.6
Thus, it is now more important than ever for applicants and their
attorneys to meet deadlines for applications in the PACE
Another change is that a request for accelerated examination must now be filed during the examination procedure to be effective. Previously, it was possible to request acceleration of both the search and examination procedures at the outset. However, following the recent changes, a request for accelerated examination will be disregarded if it is filed during the search procedure. For an application to remain within the PACE programme, a new PACE request should be filed at the time of paying the examination fee or when confirming the intention to proceed further with the application under Rule 70(2) EPC.7
The final noteworthy change, which is of particular importance to European patent attorneys, is that PACE requests must now be filed online using EPO Form 1005. Requests made in any other manner will not be effective.
Despite these changes, the PACE programme remains one of the best procedures for accelerating prosecution offered by any of the world's major patent offices, in terms of its cost, simplicity and accessibility.
PACE Versus PPH
We are often asked about the relative merits of the PACE programme and the Patent Prosecution Highway (PPH). In general, there is no advantage to using the PPH at the EPO because applications processed under the PPH are treated in the same way as those in the PACE programme.8 The time and expense needed to satisfy the formal requirements imposed by the PPH do not yield any benefits for applicants.
1 For accelerated processing of oppositions where infringement proceedings have been instituted, see the Notice from the EPO dated 17 March 2008 (Official Journal of the EPO 2008, 221).
2 For accelerated processing before the Boards of Appeal, see the Notice from the Vice-President Directorate-General 3 dated 17 March 2008 (Official Journal of the EPO 2008, 220).
3 World Intellectual Property Organization (WIPO), "World Intellectual Property Indicators2015 Edition."
4 Notice from the European Patent Office dated 30 November 2015 concerning the programme for accelerated prosecution of European patent applications (PACE) (Official Journal of the EPO 2015, A93, available at http://www.epo.org/law-practice/legal-texts/official-journal/2015/11/a93.html).
5 Article 121 EPC.
6 See http://www.epo.org/news-issues/news/2016/20160101.html for clarification of the consequence of nonpayment of a renewal fee.
7 If the right to receive a Communication under Rule 70(2) EPC has been waived, a new PACE request should be filed with the response to the extended European search report under Rule 70a(2) EPC.
8 See, e.g., "Patent Prosecution Highway pilot programme between the IP5 Offices based on PCT and national work products" (Official Journal of the EPO 2014, A8 (footnote omitted)), which states, "The conditions applicable to the PACE programme shall apply by analogy to the prosecution of EP applications processed under the IP5 PPH pilot programme."
Originally printed in Finnegan's Full Disclosure Newsletter, February 2016.
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.