The typical applicant is in no hurry to see their patent application proceed through the stages of examination, allowance and grant. Prosecution and allowance/grant cost money. The faster examination takes place, the faster the final form of the claims will be known, which is not always an advantage. And in most countries, grant closes the window for divisional applications. Overall, it often makes sense not to hurry.
Sometimes, though, there are reasons for speeding things up. A classic reason is a potential infringer. While damages for infringement are usually backdated to publication, many patent applicants are more interested in a fast injunction (i.e., stopping infringement) than damages (and an injunction) later. Alternatively, quick grant may be sought to enable licensing or sale of the rights in the invention, which are usually far more valuable when covered by a granted patent.
Different countries have different processes for expediting patent applications. We’re going to summarize the options in a number of jurisdictions over a series of posts.
Perhaps surprisingly for those who consider the EPO expensive and ponderous, prosecution can be expedited at any time simply by asking for it! The program is called “PACE”. There is no fee (other than the European attorney’s service charge), and as long as the application is in a state that enables the next search or examination step to be taken, the EPO will move as quickly as possible to complete it. Typically, the search report or next examination report will issue within three months. The EPO will also endeavor to issue subsequent communications within three months of receiving an applicant’s reply.
You should also make any claim amendments you require, pay all fees, and address by argument any substantive issues raised in the Written Opinion. Of course, you should also make any amendments required to ensure the specification is in a suitable form for European practice, such as introducing a description of the closest prior art into the Background and adding reference signs to the claims. Your European patent attorney can advise you further about these issues.
There are a few caveats. If you know you want to accelerate prosecution at the time you enter the regional phase, you should be sure to waive your right to a communication under Rules 161 and 162 EPC. That ensures the application will be sent directly to examination after regional phase entry rather than waiting for six months for the Rules 161/162 EPC period to expire. You cannot waive the Rules 161/162 communication after it issues.
Another potential issue is that you should not request extensions of time while in the PACE program. PACE is for applicants in a hurry, and it is assumed that needing to extend a deadline means you’re not serious about expediting prosecution.
While PACE can be requested informally in a letter dealing with other matters relating to the application, it is best if the request is submitted on its own, preferably using the relevant form. Submitted separately in this way, the request is not published, and will not be visible even if a third party requests inspection of the file.
There is no restriction on which applications can be subject to a PACE request, but the EPO will not accept a blanket PACE request for all an applicant’s applications.
Other EPO options
The EPO participates in Patent Prosecution Highway (PPH) programs with the US and Japan. Under this program, search and examination results from one country are used to streamline search and examination in another country.
One difficulty with the PPH is that it requires the independent claims to be amended to include the features of at least one novel, inventive and industrially applicable claim from the foreign patent upon which the PPH request is based. The applicant may prefer to pursue broader claims, or claims of a different scope, in which case the PPH is unsuitable.
Also, the EPO is not under any obligation to use the same prior art or arguments as provided by the other patent office. Anecdotal evidence suggests that the EPO does do further searching, and often finds more relevant prior art, just as when they perform ordinary searching and examination.
And even if you’re happy with the granted claims from the other country, paying a fee to enter the PPH program doesn’t really offer any advantages over simply requesting (for free!) PACE.
And of course, the EPO only has PPH agreements with the USPTO and JPO.
For all these reasons, the PPH program at the EPO is not particularly popular with applicants.
Early regional phase entry
Separately from PACE and the PPH, a PCT applicant can enter the regional phase well in advance of the usual 31 month deadline. Note, however, that in the absence of anything further, the EPO will not commence processing of the application until the 31 month deadline. For early regional phase to be effective, it is therefore necessary to specifically request early processing of the application. This request is separate to the request for PACE.
Subject to the caveats above, PACE requests for accelerated exam have no official fee, result in much faster prosecution, and do not require the applicant to give a reason. The PPH rarely provides any advantage over PACE, and if you want to enter the regional phase into Europe early to get prosecution under way sooner, be sure to request early processing of the application.
Naturally, none of this is legal advice. If you’re interested in expediting prosecution and grant of your European application (or any application, for that matter), you should get advice from the local patent attorney in that country or region. They can give you specific advice tailored to your situation and commercial intentions.
We’ll be back in the near future with tips for expediting applications in other countries. If you have any comments or questions about this material, please feel free to leave a comment below or send us an email.