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Applicant's possibilities of acceleration in EP proceedings


Summary:

Available for EP-direct applications and for PCT-EP applications:

  • PACE "Program for accelerated prosecution of European patent applications"
  • PPH "Patent Prosecution Highway"
  • Waiver to receive a communication under Rule 70 EPC

Available for PCT-EP-applications only:

  • Immediate Handling/Early Entry (Art. 23(2) or Art. 40(2) PCT)
  • Waiver to receive a communication under Rules 161/162 EPC

Explanations:

PACE program (offering 2 separate requests without official fee):

  • Request for accelerated search
    Such request may be filed earliest 6 months after the filing of the patent application, provided that the European Patent Office (EPO) did not issue a search report (EESR) within this time frame. If applicants wish to file this PACE request, we will observe the expiry of the 6 months and file the request in case that the EESR has not been received in the meantime.
  • Request for accelerated examination
    Such request may be filed earliest at the time of entering into actual (substantive) examination or at any time during examination. If applicants wish to file this PACE request, we will file it at the relevant/desired stage of the proceedings. Please mind: Should applicants cause any delay of the proceedings (e.g. filing extensions), the application will drop out of the PACE program and no further PACE request may be filed.

PPH
The "Patent Prosecution Highway" will allow applicants to request (without official fee) accelerated examination of the EP application, if one or more of their claims have been accepted/granted in another application of the patent family (e.g. priority application or parallel application in another country) provided that the Patent Office handling this family member is participating in the PPH program. The most relevant countries/Patent Offices in this regard are amongst others: EP, DE, JP, US, CN and KR. The PPH-request may also be based on a positive PCT office action.

  • PRO: In case that the European Patent Office (EPO) does not find any further relevant prior art during its own search, the PPH may very effectively lead to a quick grant of the patent. However, the EPO is not bound to the findings of the other Patent Office and may raise own objections, too.
  • CON: The EPO examines the application based on the claims in the PPH-request, which means that limitations incorporated in the acceptable/granted claims of the other Patent Office might possibly not be removable again. Moreover, clarity objections of the EPO might require further claim amendments.

Note: Participation in the PPH program excludes the filing of PACE requests!

Immediate Handling / Early Entry
Applicable to PCT-EP-applications that are filed with the European Patent Office (EPO) prior to the expiry of the 31 months deadline applying to such regional phase applications. If a request for immediate handling is filed, the EPO will not await the expiry of the 31-months (cf. Art. 23(1) or 40(1) PCT) but will commence the processing without delay. Please note, that we always file this request (no official fees, and without additional costs for the applicant) unless we are explicitly instructed not to do so.

Waiver to receive a communication under Rules 161/162 EPC, provided that the European Patent Office (EPO) has not been International Search Authority (ISA) for the underlying PCT-application

Based on such communication, the applicant may file voluntary amendments (e.g. amended claims) within 6 months from the communication. These amended documents shall then form the basis for EPO's issuance of the Extended European Search Report (EESR). If the waiver is filed, both the issuance of the communication and the delay of time up to 6 months will not occur.

  • PRO: No procedural delay up to 6 months.
  • CON: Loss of the possibility to amend the application documents (claims in particular) at an early stage of the proceedings in order to overcome objections raised in the previous International Search Report (ISR). The EESR will be based on the documents/claims submitted when entering the EP regional phase application.

Waiver to receive a communication under Rule 70 EPC

In applications for which the examination fee has been paid before issuance of the Extended European Search Report (EESR), the European Patent Office (EPO) invites the applicant to indicate, within a period of 6 months from such communication, whether he wishes to proceed further with the application, and gives him the opportunity to amend the application documents (claims in particular), which then form the basis for the subsequent substantive examination. If the waiver is filed, both the issuance of the communication and the delay of time up to 6 months will not occur.

  • PRO: No procedural delay up to 6 months.
  • CON: Loss of the possibility to amend the application documents (claims in particular) before entering substantive examination in order to overcome objections raised in the previous EESR. Devoid of a communication under Rule 70 EPC, the EPO will directly issue an office action under Art. 94(3) EPC. As a consequence, the examination fee will not be refundable in case that the application is passively abandoned or actively withdrawn.

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Legal note:

This brief information cannot replace the consultation/examination of the patent attorney in a specific case. Any liability based on this general information is excluded. For general questions and/or specific queries in the individual case, please do not hesitate to contact us.

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