Author: Sarah Merrifield
13 January, 2016
With effect from 1 January 2016, the European Patent Office has introduced a number of changes to the PACE Programme for requesting accelerated processing of European patent applications.
The PACE programme continues to be available free of charge but a PACE request must now be filed on-line and on the dedicated request form (EPO Form 1005).
Furthermore, a PACE request may only be filed once during each stage of the application procedure, i.e., once during search and once during examination only. A PACE request filed during the search stage will not trigger accelerated examination. Instead, a further PACE request may be filed once the Examining Division has assumed responsibility for examining an application.
It is important to note that an application will now be removed from the PACE programme if the applicant requests an extension of time limits, or if the PACE request itself is withdrawn, or the application refused, withdrawn, or deemed withdrawn. Once an application has been removed from the PACE programme, it will not be possible to file another PACE request during the same stage of the procedure. Thus, it is important to note that during examination, it will not be possible to request an extension of time for responding to an Examination Report and still maintain or re-file a PACE request.
In addition, an application will be suspended from the PACE programme if a renewal fee is overdue and until the renewal fee is paid.
A PACE request must be filed separately for each application and if an applicant attempts to request PACE for all of its applications, the EPO will generally ask the applicant to select only a smaller number of cases to be covered by the PACE Programme.
Under the EPO’s Early Certainty from Search (ECfS) Programme, the Office already endeavours to provide Search Reports within six months of filing a European application, or entering the European phase for a PCT application. Accordingly, there may be no major benefit to filing a PACE request for cases falling under the ECfS Programme, although it may still be worthwhile for older cases. In any event, an accelerated search can only start when the application documents are sufficiently complete, and after receipt of any response to a Communication under Rule 62a or 63 EPC or expiry of the respective time limit, if such a Communication is issued. Furthermore, for European regional phase applications derived from a PCT, accelerated search cannot begin until expiry of the six month period for voluntary amendments under Rule 161(2) EPC. Therefore, to accelerate search, the client should waive the right to the Communication under Rules 161 and 162, and pay any required claims fees, at time of entry into the European phase.
If the applicant receives a partial Search Report and requests to pay further search fees, the EPO cannot begin drawing up the final Search Report until the applicant has responded or the time limit has expired.
During examination, where a PACE request is filed, the EPO will endeavour to issue its next Official Action within three months of receipt of either the application by the Examining Division, or the applicant’s response to the Communication under Rule 70a, or the filing of a PACE request, whichever is the latest.
Please contact your usual advisor for further information on how best to accelerate processing of any of your European patent applications.