IP-Fälle und Artikel

Updated PACE patent application prosecution procedure

A revised programme for accelerated prosecution of European patent applications (PACE) procedure came into force at the European Patent Office (EPO) on 01 January 2016.

The key feature of the PACE programme remains unchanged in that it allows applicants to accelerate the search and/or examination of both European applications filed directly at the EPO and Euro-PCT applications (PCT applications that have entered the European regional phase) for no official fee.

The EPO maintains that it is not obliged to accept an application into the PACE programme, and may refuse based on its workload in the relevant technical field. While largely relying on the responsible use of PACE by applicants, the EPO does retain the right to limit the number of PACE requests submitted by an individual applicant, if they ask for a large percentage of their European portfolio to be accelerated.

One of the most significant changes introduced is that a PACE request filed during the search stage will not result in the application automatically being examined under the PACE procedure. Separate requests for accelerated search and examination must be filed at the appropriate time during the prosecution of an application.

Acceleration of search

Since the implementation of the EPO's 'early certainty from search' (ECfS) initiative (under which the EPO strives to issue the European Search Report within six months from receipt of the request) PACE requests for the acceleration of the search procedure have effectively become redundant and as such are unlikely to be needed. PACE requests filed in respect of older applications where the European Search Report has been significantly delayed are therefore more likely to be accepted. For these older applications, upon receipt of a PACE request the EPO will make every effort to issue the European Search Report within six months of the request.

Acceleration of examination

Applicants who wish to accelerate the examination stage of their application may only file a PACE request once the examining division has been given responsibility for the application (and not before as was previously allowed). Upon receiving a request for accelerated examination, the EPO will attempt to issue its next examination report within three months of the examining division receiving the application, the applicant's response under R70a or 161(1) EPC or the PACE request (whichever is the latest). In addition the EPO will attempt to issue further examination reports within three months of the applicant's response. These are of course only targets and the EPO makes no guarantee that they will be met in every case.

EPC form 1005

Another key change to the PACE procedure is that all future PACE requests must be made using EPO form 1005 which must be filed online. Requests that do not include this form will not be processed.

Removal from PACE

In addition to the procedural changes mentioned above, the EPO have clarified that they will remove an application from PACE if:

  1. The PACE request is withdrawn.
  2. The applicant requests an extension of time limits.
  3. The application has been refused, withdrawn or is deemed withdrawn.

This will apply regardless of any legal remedies available eg, further processing.

In addition, the EPO will 'suspend' the accelerated prosecution of cases where renewal fees are not paid in due time. This indicates that providing the renewal fee is paid within the six-month grace period, accelerated prosecution will be resumed.

PACE programme requests

It is noteworthy that requests to enter the PACE programme can now only be made once during each stage (search or examination) of prosecution. This means that if an application is removed from accelerated processing for any reason, it will not be possible to restore PACE during that stage of prosecution. Applicants should bear this in mind during the prosecution of any applications that are being examined under the PACE programme.

Other opportunities to accelerate European patent prosecution

The PACE programme is only one of a number of ways of accelerating the prosecution of a European patent application.

Other options available to applicants include requesting participation in the Patent Prosecution Highway (PPH) programme (if corresponding applications have granted) and waiving the right to certain official communications.