There are many reasons why an applicant may wish to speed up the prosecution of an application. For example, an applicant may want a patent granted quickly for a licensing agreement, or in order to commence infringement proceedings. Helpfully, there are several different ways that prosecution can be accelerated at the EPO. Some of the options are outlined here.
Patent prosecution highway (PPH)
PPH offers a mechanism by which positive examination results from one patent office can be used to accelerate examination of a corresponding application at another.
The EPO collaborates with a number of patent offices under this scheme, including the US, Australia, Brazil, Canada, Colombia, China, Israel, Japan, South Korea, Malaysia, Mexico, the Philippines, Russia, Singapore and Eurasian.
In 2015 the EPO clarified the procedure relating to the use of the PACE program. Under the new procedure where an application is under PACE the search report should be issued within 6 months, the first examination report should be issued within 3 months and each subsequent examination report should be issued within 3 months of the Applicant’s previous response. These times are provided by the EPO as guidelines; the actual time taken will depend on the workload of the department responsible.
Importantly, applications can be removed from PACE. This can happen where the Applicant explicitly withdraws their request for PACE, and also where the Applicant requests an extension of time, or where an application is refused or withdrawn, or deemed withdrawn, or where the Applicant fails to pay a renewal fee on time.
It is only possible to request PACE once during each prosecution stage (search and examination). This means that if PACE is lost for an application, it is not possible to restore the application to PACE during that stage of prosecution. Applicants who have requested PACE should bear this in mind when faced with an EPO deadline to make sure that PACE isn’t irrevocably lost for their application.
In 2016, the EPO implemented a scheme for responding to Applicant enquiries requesting information about when the next action on a case can be expected. When the enquiry is made on the appropriate official form, the EPO will indicate a period in which they will aim to produce the next action. If the EPO does not reply in that period, a further enquiry from the Applicant will result in the next action being issued within 1 month. For example, if in response to an initial enquiry the EPO say they will produce the next action within 6 months and they do not do so, the Applicant can submit a further enquiry and under the new scheme the EPO will produce the next action within 1 month. This provides the Applicant with a clear idea of when they will obtain the next action for a case and a means of chasing the EPO if this time period is missed.
Rule 71(3) communications
Previously, if the EPO issued a Rule 71(3) communication (the communication stating their intention grant an application) and the Applicant wished to make any amendments to the text for grant the Applicant had to disapprove the text and submit their proposed amendments. The EPO would review the amendments and, if happy with them, issue a further Rule 71(3) communication. This increased the time taken for the application to grant which may be unsatisfactory for some Applicants, particularly in the case where only minor amendments were needed.
Following changes in 2015, the EPO introduced the option to waive the right to receive a further Rule 71(3) communication. This was introduced with a view to increasing procedural efficiency. In order to waive the right to a further Rule 71(3) communication the Applicant must: expressly indicate that they wish to waive the right; file a translation of the claims in the two other official languages; pay the fees for grant and publishing and pay any claims fees needed; and identify the amendments or corrections made. If all the formal requirements are fulfilled and the Examining Division has no objection to any amendments or corrections, no further communication under Rule 71(3) will be sent and the application will proceed directly to grant.
Early certainty from search
In 2014 the EPO announced a program entitled ‘Early Certainty from Search’ designed to improve legal certainty and speed up the grant of some applications. Under the scheme, work performed by the EPO is categorised into four different priority areas.
Priority 1 work must be completed on time and includes Searches, PCT Examination, Opposition, Limitation and Revocation and Fast Track Examination (including PACE and PPH).
Early certainty from opposition
The EPO opposition procedure allows third parties to object that a granted EP patent should not have been granted. It can often take a number of years before a final decision is made by the Opposition Division. In order to provide legal certainty for all parties in a timelier manner the EPO launched an ‘Early certainty from Opposition’ scheme in 2016.
The aim of the new ‘streamlined’ opposition process is to provide a decision within 15 months from the expiry of the opposition period (i.e. a total of 24 months from grant to a decision). In many cases this will represent a significant reduction in the time taken for a decision to be made. The 15 month target is intended for straightforward cases, for example, cases where there is only a single opponent.
In order to provide this streamlined process, extensions of time during opposition will only be allowed in exceptional cases. Examples of exceptional cases are cases with multiple opponents or where experiments need to be performed. Previously, a 2-month extension of time limits was readily available.