The lifespan of the patent is unaffected by the date of grant, and there may be good strategic reasons for accelerating the search and examination stages of a pending application, or the examination of an appeal, at the EPO. In a previous article, we discussed channels for accelerating prosecution of patents at the UK IPO, but here we consider the reasons for accelerating prosecution at the EPO, together with the practicalities involved.
One of the principal benefits of early grant is the business certainty it provides. Once a right is in place, investors will be encouraged by the assurance it brings, and potential infringers will be deterred by the right being in place. Grant of a patent may also be a pre-requisite for entry into patent sharing agreements, which can be advantageous to the patent owner, such as those for Standard Essential Patents.
The outcome of EPO proceedings is influential on parallel patent proceedings outside Europe, as well, so the earlier the grant takes place, the earlier that this influence can be used.
Perhaps most importantly, in order to enforce patent rights against infringers, a patent usually needs to have been granted.
A downside may be the cost of separate annuities in all the designated countries, which fall due only after grant, and can exceed the cost of the annual maintenance fees payable to the EPO whilst the application is pending.
Another disadvantage of having the early completion of an application is that flexibility is lost after grant, since scope broadening is prohibited, and divisional applications may no longer be filed; and if competitors are planning to oppose grant, then this will happen earlier, putting the whole patent at risk.
Appeals can add two or three years to the examination or opposition process, and often, but not always, it is desirable to have the certainty of a final decision.
The EPO has a policy of processing applications as quickly as possible, and has a system of placing them in order of priority. Examiners are supposed to focus on new searches (to achieve “Early Certainty from Search”) and on completing cases where examination has already begun. This priority order can be changed, to a limited extent, by taking advantage of a programme called PACE. As from 1 January 2016, this is done only by filing a form 1005 online, specifying either Search or Examination, not both. The form also must specify just one application – which may be intended to inhibit companies submitting blanket requests for their entire portfolio.
Where the EPO has not already carried out its search (ie it was not the International Searching Authority on a PCT-EP application), then the search is the first procedure that can be accelerated under PACE, by filing the form 1005.
Only after the EPO has issued its search will it process a form 1005 for accelerating examination. If the form is filed before the Examining Division has assumed responsibility for the application, the EPO will, we understand, issue a letter telling the applicant it will not be processed, and so care should be taken with timing. For the fullest use of PACE, both search and examination should be expedited, requiring two different forms 1005 to be filed successively. There is no official charge for this, and no reasons need to be given.
Acceleration of examination then lasts until grant or refusal, and even if an annuity is paid late, but ceases if an extension of time is obtained. The PACE request is not made public.
The Boards of Appeal respond to requests by letter to expedite their examination, provided that reasons are given to justify this – examples perhaps being that the patent or application is suspected of being infringed, or that legal proceedings for invalidation or infringement are underway in a designated country.
Resources at the EPO are stretched, so there is bound to be a limit to the effect of an acceleration request, and such requests may not always be acceded to at all.
But what if some of the disadvantages of accelerating grant, discussed above, mean you instead want to put the brakes on your application? Or what if you wish to validate an existing pending patent application as a Unitary Patent (UP), to cover most of the EU in a single designation? The new UP system may not come into effect until early 2017, and you will not be able to take an already granted European patent and convert it into a UP – so applicants may want to defer grant until then.
The EPO does not have a procedure to decelerate prosecution and will not normally suspend an application (exceptions being when the applicant is legally incapacitated, or entitlement proceedings are underway). All an applicant can do is to delay responding to official actions, including the advance notice of grant under Rule 71(3), by making use of extensions of time (normally adding two months), and of deemed withdrawal followed by further processing (adding typically about three to four months). It is possible to delay the final stage of an application another month or two by requesting even a minor amendment in reply to the Rule 71(3) notice. It should be noted that the EPO may regard the systematic use of artificial delaying tactics as an abuse of procedure and even as unethical, so caution is advisable. Requesting oral proceedings before the examining division will also add considerably to the length of an application – these are then arranged by the EPO but only if written proceedings cannot lead to allowance.