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1 August, 2010

The time from filing to grant of European patent applications has increased in recent years, particularly in certain technical fields such as telecommunications, software and biotechnology. In some areas, this is a result of the number of applications filed, which has risen faster than the number of examiners able to deal with such cases. Also, the volume of PCT applications designating the EPO as International Searching Authority has caused a knock on effect to increase the delays in examination of other applications. Other major patent offices are experiencing similar problems leading to backlogs.

The European Patent Office (EPO) has addressed these issues by a number of routes, including the recruitment and training of more examiners. Another major change has been the introduction of combined search and substantive examination, to improve efficiency. As part of that scheme, the EPO now issue an opinion on the merits of the application together with the European Search Report. This is similar to the opinion that accompanies the International Search Report in respect of PCT applications.

Since 1 April 2010, the EPO has also required applicants to deal more quickly with objections raised in the opinion accompanying the European Search Report or an International Search Report issued by the EPO. This was brought in under the “Raising the Bar” initiative and is discussed in more detail in our bulletins regarding those developments. However, these obligations on applicants are not mirrored by a corresponding responsibility on the EPO to act more quickly in return.

Nevertheless, options are available for applicants to accelerate the EPO’s processing of an application under its PACE procedure. Acceleration of the search phase and examination phase are possible. These are considered as separate issues by the EPO, so that acceleration of generation of a search report does not place any obligations on the EPO or the applicant with regard to the speed of examination.

Accelerated Search

For searches, a request for accelerated search must be made upon filing the application in Europe. The EPO then promises to produce a search report as soon as possible. There is no fee for requesting an accelerated search and no reasons need be given for the request. If an applicant does wish to request accelerated search, this should be indicated on any letter of instruction sent to us and on instructing us to file an application in Europe.

The PACE regulations do not specify the requirements for accelerating supplementary searches of Euro-PCT applications, where the EPO did not act as International Searching Authority. We have however been advised informally by the EPO that a request to accelerate the European Supplementary Search should normally be filed along with the request to enter the European Regional Phase at 31 months from the PCT priority date if it is to be considered. In any event, we are informed that there is no harm in requesting an accelerated supplementary search at any time after European Regional Phase entry. In that case, the EPO will endeavour to produce the Supplementary Search Report as soon as possible.

Accelerated Examination

Unlike accelerated search, accelerated Examination is available at any time during the prosecution of a European or Euro-PCT application. In common with search though, there is no fee for requesting accelerated examination and no reasons need be given for the request. The EPO will attempt to produce a first office action on the merits within three months of the request. The only obligation placed upon the applicant is to reply within the normal period set (typically, four months); requests for extensions of time to respond will result in the immediate removal of the case from the fast track although there are no further consequences. Subsequent office actions will be issued within three months of the date of reply by the applicant provided that the previous response represents a bona fide attempt to deal with all of the rejections.

Related Matters
The foregoing relates to accelerating the EPO’s processing of European applications. However, applicants can also minimise any delays before the grant of their application, by attending quickly to any European-specific formal issues, such as adding reference numerals to the claims and identifying relevant prior art in the description. Moreover, where the application involves difficult subject matter and/or complex objections, a telephone interview with the responsible examiner can lead to a speedy resolution without protracted written discussions. Your usual advisor will be able to provide guidance on strategies tailored to your requirements.