Assistant to Patent Attorney
The variants for accelerating an examination regarding the applications filed with the European Patent Office
The European Patent Convention (EPC) provides a possibility of obtaining patent defence in thirty-eight European countries by filing only one application. In this case, an applicant himself determines in which of these countries the defence should be obtained.
A European patent is granted by the European Patent Office (EPO) within the framework of a single procedure for all Contracting States, the procedure of granting the European patent being carried out in one of the three official languages of the EPO, namely in English, German or French.
After filing an application with the EPO and before receiving a decision to grant a patent, the applicant can wait for on average about 3.5 years. But there are several variants to accelerate a period of considering the application.
Thus, for example, after filing a request for carrying out a substantive examination, the EPO, based on a search report, considers the issue of compliance of the application and the claimed invention with the EPC requirements and, in particular, whether the invention is patentable. In turn, the applicant, having received the search report, may choose one of two variants: to withdraw the application, if he considers that the examiner’s opinions are of an insuperable nature, or to continue the procedure of obtaining a patent. If the applicant has chosen the second variant, then before receiving the first request for the substantive examination, he has a possibility to amend the application materials taking into account the search results. This measure helps to accelerate considering the application at a stage of the substantive examination by several months.
The applicants, who need a faster search and examination, and who thereby want to reduce the period of considering the application filed with the EPO, may request for their applications to be processed within the framework of accelerated considering the European patent applications (the PACE program), which the EPO provides specifically for such applicants. The PACE program allows accelerating the patent search (within 6 months) or the patent examination (within 3 months) simultaneously only for one national application in case of requesting a priority regarding this application. Thus, the applicant can expect that the period of considering the application will be reduced to 12 months and he will not have to wait for 3.5 years. At the same time, there are not any special requirements for obtaining the right to participate in the PACE program: the request may be filed at any time, an official fee is not paid, and the special reasons are not required.
The application for participating in the PACE program is filed online using a special request form (the EPO 1005 form) and since January 1, 2016, it may be filed only once for each procedure, that is, once to accelerate the patent search and once to accelerate carrying out the examination regarding the application. The PACE application filed to accelerate the patent search will not accelerate carrying out the examination. If the applicant wishes his application to be considered in an accelerated manner, the application to participate in the PACE program may be filed as soon as the application enters the examination stage.
Notably, the EPO does not publish the request for carrying out the PACE procedure, it is confidential and is not included in a dossier of the application.
The applicants may be refused to participate in the PACE program in the following cases:
– if the request for carrying out the PACE procedure has been withdrawn,
– if the applicant has requested for extending any period regarding this application,
– if a refusal has been rendered regarding the application,
– if the application is withdrawn or deemed to be withdrawn.
In the above cases, it will not be possible to reinstate the request for carrying out the PACE procedure, and the second direction of such request at the same stage of the procedure will not be accepted. In addition, the accelerate procedure will be suspended in case of a non-payment of the fees for the extension within the period indicated in Rule 51 (1) of the EPC.
It should be noted that the request for carrying out the PACE procedure may be satisfied in the cases, when it is feasible practically, and depending on the workload of the departments involved in carrying out the searches and the examinations. There can be restrictions in particular technical fields due to the number of incoming requests for carrying out the PACE procedure. However, in practice, these requests are usually satisfied.
Another variant to accelerate the examination regarding the applications filed with the European Patent Office is filing a request for carrying out an accelerated patent paperwork (the PPH procedure). The parties to the PPH agreements agree that if the patent office of one of the parties has determined the application as patentable and has found at least one independent claim to be complying with the patentability criteria, then the office of another party chosen among the participating countries of the PPH program may apply accelerated considering the procedure regarding this application. The PPH procedure is based on recognition of the search results obtained in the first patent office, usually in the office of a host country, by the second patent office. Thanks to filing the application for carrying out the PPH procedure, the following advantages are achieved: a possibility to obtain fast a foreign patent in the countries of interest to the applicant (within 12 months) appears, the costs for the patent offices during the examination of the corresponding applications are reduced, the number of the requests are double reduced, what entails economic benefit for the applicant, the guarantees for the defence of the applicant’s rights in other countries are increased and the quality of the examination is improved.
The PPH procedure is implemented on the basis of the bilateral and multilateral treaties between the patent offices. A combination with the Patent Cooperation Treaty (PCT) confers additional actuality, when the Written Opinion/WO and the International Preliminary Examination Report/IPER prepared by the International Preliminary Examining Authority/IPEA are accepted in addition to accelerated considering.
There are also other ways to reduce the period, though not as significant compared to the PACE program and the PPH procedure. For example, the refusal of the applicant from an invitation according to Rule 70 (2) of the EPC: before the applicant receives the search report, he may refuse from the invitation in accordance with Rule 70 (2) of the EPC and request for the examination unconditionally, irrespective of the search results. In this case, in accordance with Rule 62 of the EPC, the European search report will be issued together with the first request according to Article 94 (3) and Rule 71 (1) of the EPC, instead of the Opinion on Patentability in accordance with Rule 62 of the EPC. A fast and complete response of the applicant will allow continuing considering the application as early as possible.
In addition, the applicant may refuse from his right to a notification in accordance with Rules 161 (1) or (2) and 162 of the EPC, according to which the applicant may amend the application within six months after the receipt of this notification in case of transferring the applications to a regional phase to Europe (in case of the Euro-PCT applications). If the right to a notification in accordance with Rules 161 (1) or (2) and 162 of the EPC has not been revoked at the request of the applicant, the notification will be sent and considering such application will begin after the expiration of the six-month period stipulated by these Rules.
The applicants may also refuse from the right to receive an additional opinion in accordance with Rule 71 (3) of the EPC, in which it is suggested that the applicant should amend or correct the text transferred by the Examination Department. Provided that the formal requirements are met, the EPO will not send a further opinion in accordance with Rule 71 (3) of the EPC and it will proceed with making a decision to grant a European patent.
Among other things, the applicant may request for an early entry of the international application to a European phase. In accordance with Article 22 (3)/39 (1) (b) of the PCT and Rule 159 (1) of the EPC as a designated/chosen office, the EPO will not process the international application before the expiration of the 31-month period from the date of filing or, if a priority is requested, from the priority date. However, in accordance with Article 23 (2)/40 (2) of the PCT, the applicant may request for beginning considering the application before the stipulated period.
As you can see from the examples described above, there are many variants to accelerate the examination regarding the applications filed with the EPO. If the applicant wants to accelerate the process of obtaining a patent, so that to be defended from offenders and to consolidate his position in the market, then the fast actions can be particularly important. Another reason for the desire to obtain a patent faster is the situation, when the applicant is seeking investments or negotiating with a potential licensee. The parties interested in a commercial use of the technical solution often need trust, which is accompanied by the patent granted. However, if the applicant wants to delay and/or to reduce the costs, the variant of accelerating the paperwork will unlikely be of interest to him.