Hanne Bonge-Hansen September 13 2021 How to speed up EPO procedures Bryn Aarflot AS | Intellectual Property - European Union Hanne Bonge-Hansen Intellectual Property IntroductionPPH requestPACE requestStatus enquiryWaiving EPC Rule 70(2) communicationAcceleration for Euro-PCT applicationsWaiving EPC Rule 71(3) further communication – now abolishedCommentIntroductionThe choice to speed up a procedure before the European Patent Office (EPO) is a strategic one, motivated by factors such as:licensing opportunities;enforcement against infringers;the desire to increase a company's valuation;a short expected time until marketing; andthe need for legal certainty.Shortening the duration of the procedure is particularly important for applicants involved in rapidly evolving technologies.For applicants wanting to expedite their applications through the EPO procedure, the following options – in addition to rapidly complying with all of the EPO's requirements – are available.PPH requestThe Patent Prosecution Highway (PPH)(1) can be used to accelerate the procedure before the EPO by leveraging the positive outcome of an examination that has already been performed by another patent office(2) for a corresponding application. The already-examined application must have the same earliest date as the application in question, and it must have sufficiently corresponding claims, one or more of which must have been deemed allowable by the previous office. It may be a national application or a Patent Cooperation Treaty (PCT) application. Following a PPH request, the EPO makes use of the work of the previous patent office in the examination of the application, while still making its own independent evaluation of the application.The PPH is available for Euro-PCT applications as well as Euro-direct applications, but applications for which the EPO was the international searching authority (ISA) and/or the international preliminary examining authority cannot enter the PPH programme before the EPO as designated or elected office.The PPH request should be filed using the recommended Form 1009.(3) It must be filed before substantive examination of the European application has been initiated, the date of which is available in the European Patent Register.PACE requestThe programme for accelerated prosecution of European patent applications (PACE) is an EPO-provided programme that enables faster processing of applications.(4) There are two types of PACE request – one for searches(5) and one for examinations(6) – and applicants must specify which stage of the procedure they are looking to accelerate. However, for applications filed on or after 1 July 2014, the search is always accelerated and the EPO issues a search report within six months of filing, so PACE requests are not normally necessary for the search stage.At the examination stage, on the other hand, filing a PACE request results in an accelerated process that enables the applicant to obtain communications within tight deadlines. When accelerated examination has been requested, the Examining Division strives to issue a communication within the later of three months from receipt of the request or three months from the applicant's response to a previous communication. The applicant can also expect the subsequent communications within three months from their response.PACE requests are free of charge and applicants need not provide any reasons in support of them. They have to be filed online using EPO Form 1005, one application at a time, and they can be filed at any time once the responsibility for the application has passed to the Examining Division, the date of which is entered in the European Patent Register. For PCT applications entering the European phase where the EPO also acted as the supplementary international searching authority, accelerated examination can, in principle, be requested at any time. PACE requests will not be published and are excluded from file inspection, keeping commercially motivated PACE requests away from the eyes of the applicants' competitors.Applicants should note that their cooperation is required – timely responses to the communications of the Examining Division must be filed, wherein all points raised in the communication are dealt with. The examination will no longer be accelerated if the applicant fails to respond in time or requests an extension. The same is true if a PACE request is withdrawn. A PACE request may be filed only once for each application during each stage of the procedure, so removal from the PACE programme during examination cannot be undone.The processing of requests for accelerated prosecution under the PACE programme depends on the workload of the search and examination divisions. The EPO may restrict the number of allowed requests depending on the applicant and the technical field of the application.Status enquiryThe EPO Early Certainty for Search initiative, launched in response to users' needs for timely delivery of services, enables, in certain cases, an applicant to speed up the processing of an application by enquiring about the status of the file.(7)The EPO's response will be an indication of the period within which it intends to issue the next communication. The EPO will closely monitor the delivery of the communication by the indicated date. Further, if a communication was not issued within the committed period, and a previous enquiry has been filed or the application is being processed under the PACE programme, the next communication will be issued within one month from receipt of the enquiry.The status enquiry is free of charge. It must be filed online using EPO Form 1012. The status enquiry is entered in the file and is open to public inspection.Waiving EPC Rule 70(2) communicationIf an applicant files a request for examination before the transmission of the search report, the European Patent Convention (EPC) Rule 70(2) communication invites the applicant to indicate whether they want to proceed further with the application given the results of the European search report and the search opinion. By paying the examination fee early and waiving the EPC Rule 70(2) communication, the applicant requests examination unconditionally, accelerating the procedure since the examining division can assume responsibility on the day of transmission of the search report rather than awaiting the response from the applicant.(8) The first communication under article 94(3) of the EPC, possibly even under Rule 71(3) of the EPC, rather than the search opinion, will be transmitted together with the search report.Acceleration for Euro-PCT applicationsIn addition to the aforementioned approaches, Euro-PCT applications can be fast-forwarded in various other ways.Early entry into European phaseThe EPO as designated or elected office may not process an international application before the expiry of the 31-month time limit from the date of filing or priority date under articles 23(1) and 40(1) of the PCT. This ban may be lifted by the applicant by the filing of an express request for early processing with the EPO.(9)For the request to be effective, the applicant must comply with the requirements of Rule 159(1) of the EPC as if the 31-month time limit expired on the date that early processing is requested.(10) The request will become effective only once all requirements are complied with.The request:may be filed at any time before the expiry of the 31-month period;is free of charge;does not require a specific wording; andcan be made using Form 1200.If the EPC Rule 70(1) period for requesting examination has yet to expire on entry, the prosecution can be further accelerated by filing the request for examination together with the request for early entry.(11)Waiving EPC Rule 161 and Rule 162 communication In the regional phase, the processing of a Euro-PCT application can be accelerated by waiving the EPC Rule 161 and Rule 162 communication.(12) The EPO will then, rather than await the expiry of the six-month period for response, proceed directly to the supplementary European search or to examination.The waiver may be filed using Form 1200 or by a separate letter. The applicant must also fulfil all requirements of Rules 161 and 162 of the EPC.The remainder of the period may also be waived by filing a waiver together with or after filing a response.(13)PCT DirectUnder the PCT Direct procedure, an applicant of a PCT application designating the EPO as the ISA and claiming priority from an earlier patent application – national, European or international – may file informal comments regarding any objections raised in the search opinion for the priority application.(14) Hence, the applicant gets an early opportunity to argue in favour of patentability of the PCT application, and the PCT Direct procedure can be used to accelerate the procedure for that application. The informal comments must be filed together with the PCT application.(15)PCT Direct offers an early opportunity to argue in favour of the patentability of the claims of the PCT application over prior art cited against its priority application in a search opinion that was drawn up by the EPO.PCT Direct can therefore fast-forward the procedure for PCT applications that claim priority from an application already searched by the EPO.Waiving EPC Rule 71(3) further communication – now abolishedFrom 1 July 2015, it was an option for applicants to accelerate the grant procedure by expressly waiving their right to receive a further communication under Rule 71(3) of the EPC. However, since few applicants made use of such waivers to speed up the procedure, the EPO decided to abolish this option. Consequently, the EPO will not process waivers filed in response to EPC Rule 71(3) communications dated 1 July 2020 or later; instead, the normal procedure under Rule 71(6) EPC will be followed. Waivers filed in response to such communications dated before 1 July 2020 will still be processed.CommentIn summary, while the process of obtaining patent protection is seldom referred to as quick, it can be accelerated by taking one or more of the steps outlined above.For further information on this topic please contact Hanne Bonge-Hansen at Bryn Aarflot by telephone (+47 46 90 30 00) or email ([email protected]). The Bryn Aarflot website can be accessed at baa.no.Endnotes(1) Official Journal of the EPO, 2016, A106, Guidelines for Examination, Part E-VII, 4.3.(2) Currently, PPH agreements exist between the EPO and the offices of Australia, Brazil, Canada, China, Colombia, Eurasia, Israel, Japan, Republic of Korea, Mexico, Malaysia, the Philippines, Russia, Singapore and the United States.(3) Official Journal of the EPO, 2016, A44.(4) Official Journal of the EPO, 2015, A93, Guidelines for Examination, Part E-VIII, 4.(5) Guidelines for Examination, Part E-VIII, 4.1.(6) Guidelines for Examination, Part E-VIII, 4.2.(7) Official Journal of the EPO, 2016, A6.(8) Official Journal of the EPO, 2015, A94.(9) Official Journal of the EPO, 2015, A94, Guidelines for Examination, Part E-IX, 2.8.(10) Ibid.(11) Official Journal of the EPO, 2013, p 156.(12) Guidelines for Examination, Part E-IX, 3.1; Euro-PCT guide 5.1.038.(13) Official Journal of the EPO, 2015, A94.(14) Guidelines for Search and Examination at the EPO as PCT Authority, Part B-IV, 1.2.(15) Guidelines for Search and Examination at the EPO as PCT Authority, Part A‑IV, 1.2.