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Changes to accelerated prosecution (PACE) at the EPO

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epologoThe EPO offers a number of mechanisms for expediting the grant procedure. As noted in the EPO’s November 2015 notice these include:

  • PACE (see below for changes)
  • Waiving the confirm to proceed notification under rule 70(2) EPC
  • Waiving the rules 161/162 EPC communication
  • Waiving a further communication under rule 71(3) EPC
  • Early entry into the European phase

During post grant proceedings the above EPO Notice also highlights accelerated processing of oppositions where infringement proceedings have been instituted and accelerated processing before the Boards of Appeal.

From 1 January 2016, (Happy New Year everyone!), the EPO has tweaked the operation of the PACE programme slightly. Full details can be found in the EPO’s PACE Notice dated 30 November 2015. The highlights are as follows:

  • The new programme will apply to all PACE requests filed after 1 January 2016. However, the conditions leading to removal from the PACE programme or suspension of the PACE programme will apply to all applications currently under PACE.
  • PACE requests now need to be made electronically using Form 1005. Requests made in a cover letter or on paper will not be processed;
  • PACE may only be requested once during each stage of prosecution (search and exam). A PACE request filed during search will not trigger accelerated exam so a further PACE request will be required which can only be filed once the examining division becomes responsible for the application.
  • PACE will be withdrawn if: the PACE request is withdrawn; a time limit extension request is filed; the application has been refused; the application has been or is deemed to be withdrawn. Once PACE is withdrawn you can’t get it back for that stage of the procedure.
  • PACE will be suspended if you use the grace period to pay a renewal fee.
  • SEARCH PHASE – Under the EPO’s Early Certainty from Search (ECfS) initiative (applies to EP applications filed after 1/7/2014) the EPO aims to issue a search report within 6 months from filing (or the end of the rule 161(2) EPC period). The EPO therefore suggests that PACE is not required in such circumstances.
  • For EP applications outside the ECfS initiative then PACE can be requested after the rule 62a/63 EPC period has expired (or a response has been filed) and once the application documents on file are complete enough. The EPO will then aim to issue the search report within 6 months of the request.
  • For EP-PCT applications where the EPO was not the ISA then a PACE search request can be requested on entry but won’t start until the rule 161(2) period has expired unless the applicant has waived the right to a rule 161(2)/162(2) communication and paid any claims fees. Presumably, this therefore means that even if a response has been filed to a 161(2) communication the EPO will still wait out the remainder of the 6 month period.
  • Where an invitation to pay further search fees has been issued then the applicant’s response to the invitation needs to have been received (or the 2 month period needs to have expired) before the search report can be drawn up.
  • EXAMINATION PHASE – once the examining division assumes responsibility for the case then a PACE request can be filed. For EP-PCT applications where EPO was the ISA then the request can be filed on entry or with the response to the rule 161(1) EPC communication. Once requested the EPO will aim to issue its next action within 3 months of a response to an exam report, the applicant’s response to the rule 161(1) EPC communication or the PACE request (whichever is the latest).
  • Subsequent communications will be issued within 3 months of the applicant’s reply assuming the case has not dropped out of the PACE program for the reasons noted above.

Mark Richardson 5 January 2016

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