UK: Accelerated processing of European patent applications

February 24 2016

It is established practice at the European Patent Office to offer accelerated processing of patent applications simply on request by the applicant, without the need to pay additional fees. This is in contrast to other patent offices, such as the USPTO or the UKIPO, which will only allow accelerated processing in specific circumstances (for example, when potentially infringing activity has been identified) or for particular categories of applications (for example, inventions having an environmental benefit).

Accelerated processing of applications at the EPO is offered under the PACE programme. Processing of the application can be speeded up at both the search and examination stages, but the programme is perhaps most relevant at the examination stage, since the EPO has already put in place target times for issuing search reports. A request for accelerated examination has the effect that the EPO aims to issue an office action within three months of receipt of the request, and to produce subsequent communications within three months of receipt of the applicant's reply.

Naturally, accelerated processing of applications can only be provided subject to the workload of the search and examining divisions in the particular technical field of the application. Bearing this in mind, the EPO has recently published guidance on the operation of the PACE programme, to help streamline the procedure. This guidance confirms existing aspects of the procedure, such as the fact that requests for accelerated processing are confidential and excluded from public file inspection. As was previously also the case, applicants requesting accelerated processing for large numbers of applications will be asked to limit their request to specific urgent cases.

New aspects of the procedure include the fact that accelerated processing can only be requested once during each of the search and examination stages. The EPO has also clarified the events that will lead to an application losing its position in the PACE programme. These include the request by the applicant of an extension of time, and failure to meet time limits such that the application is deemed withdrawn. In the event of failure to pay renewal fees by the due date, accelerated processing will be suspended.

Although other mechanisms exist for speeding up the prosecution of European patent applications, these tend to operate in the early stages of the application process. For this reason, the ability to request accelerated processing under the PACE programme is generally most useful for applications that are perhaps several years into the examination stage. It should be noted that the EPO will generally inform the applicant, on request, of the expected timing of the next office action. This allows the applicant to decide whether a request for accelerated processing might be helpful.