Revised PACE programme from 1 January 2016

In Insights, Uncategorized

12 February, 2016

The programme for accelerated prosecution of European Patent Applications (PACE) allows applicants to request that the European Patent Office (EPO) processes their application rapidly. The request must be filed in writing, but will be excluded from file inspection.

In certain technical fields there has been constraints on how fast the EPO has been able to process the applications, due to the number of incoming PACE applications. Therefore, as a general recommendation, a PACE request should only be filed for some selected applications of a portfolio.

On January 1, 2016 a revised programme was initiated, in order to help applicants make better use of the programme and enable the EPO to process applications for which accelerated prosecution has been requested as soon as possible (OJ EPO 2015, A93).

Applicants will, from now on, be required to use the dedicated request form and file the request online. Informally filed requests, i.e. without using the form, or on paper, will not be processed.

Further, a request for participation in the PACE programme may be filed only once during each stage of the procedure, i.e. search and examination, and for one application at a time. A PACE request filed during search will not trigger accelerated examination, and the PACE request during examination may only be filed once the Examining division (ED) has taken over responsibility for the application.

An application will be removed from the PACE programme if the PACE request is withdrawn, if the applicant requests extension of time limits, if the application has been refused, withdrawn or deemed withdrawn. It will under those circumstances not be possible to restore the PACE application.

Further, the failure to pay renewal fees will cause the accelerated prosecution to be suspended.

For European patent applications filed on or after July 1, 2014 (including the Patent Cooperation Treaty (PCT) applications entering the European phase where the EPO did not act as the International Searching Authority (ISA)), no PACE request is needed, as the EPO will issue the European search report (EESR) within 6 months under the Early Certainty from Search (ECfS) programme.

For European patent applications filed before July 1, 2014 (including PCT applications entering the European phase where the EPO did not act as ISA) the EPO will make every effort to issue the EESR within 6 months of receipt of the PACE request. Further if the application is a PCT application and the EPO did not act as ISA, the supplementary European search will only be issued faster if the applicant also waives the right to communications pursuant to Rule 161(2) and 162(2) EPC and pays all relevant claims fees due.

During the examination stage the request for PACE can be filed at any stage once the ED has taken over responsibility. For PCT applications where EPO acted as ISA, PACE can be requested at any stage, for instance on entry into the European phase or together with the response to the WO-ISA, required under Rule 161(1) EPC.

Upon receipt of a PACE request the Examining division will make every effort to issue its next action, and any further actions, provided that the application is still within the PACE programme, within three months.

Sofia Willquist, European Patent Attorney

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