EPO applies the brakes to accelerated prosecution
In 2015 we looked at ways of speeding your patent application at the European Patent Office (EPO). We recommended the prosecution acceleration programme, PACE.
The EPO has recently revised the PACE rules, making it more difficult to apply for, and maintain, acceleration of prosecution at the EPO, despite its public commitment to speeding the prosecution process.
Previously the applicant filed a single request, in a letter, for accelerated prosecution under PACE. The EPO automatically applied accelerated prosecution status to the application. While standard requests for extension would lose acceleration status to be lost the applicant could make a second request and have the accelerated status restored. By 2015, the EPO stopped removing accelerated status even when applicants made a standard extension request.
Under the new rules, applicants must make an accelerated prosecution request separately, using the official on-line form.
The EPO also requires applicants to request the accelerated procedure separately for each of search and examination.
As before, the EPO will not make public the accelerated prosecution status of an application. However, the EPO will not remind an applicant for an accelerated search application that it needs to ask for separate examination acceleration. Forresters will watch all our files undergoing accelerated search and will remind the applicants of the need to make a separate accelerated examination request.
The most telling change to the PACE process is that the EPO will only accept a single request for accelerated examination of any application. If the applicant requests an extension, the EPO will automatically remove the accelerated prosecution status from the case. They cannot restore the lost acceleration status.
The EPO reasons that it should only prioritise an application if the applicant also prioritises. There are circumstances, however, in which an extension of term is necessary despite the applicant’s prioritisation. The most common is when the applicant needs to generate evidence to address an examiner’s objection.
The EPO has advised us that it need not take such exceptional circumstances into account.
If you wish to keep accelerated examination of you application at the EPO, you must file every examination report response within the initial term, even if that response is incomplete due to time constraints.
Many of the advantages of accelerated prosecution under PACE remain. In particular, there is no official fee, and you do not need a reason for the acceleration.
We maintain our advice, given in 2015, that applicants wishing to accelerate prosecution at the EPO should still use the PACE system and not the patent prosecution highway (PPH). The PPH still has noticeable disadvantages compared with PACE.