UK: Increasing the PACE at the EPO

June 22, 2016

The results of the EPO's recently published Patent Filings Survey illustrate that the European patent is more popular than ever, with this upwards trend predicted to continue. A detailed study of the survey reveals that the strong growth in filings at the European Patent Office is driven by increased patent filing activity in both the UK and China, alongside a continued rise in other major territories.

Any increase in European patent filings is obviously associated with a concomitant increase in the workload of the EPO. As such, accelerating the prosecution of a patent application through the EPO is likely to become a more frequent client request.

In the case of Euro-PCT applications, accelerated examination under PACE may be requested at any time. However, for the request to be as effective as possible it should be made upon entry into the European phase, or together with any response to the WO-ISA, IPER or SISR required under Rule 161(1) EPC.

To further accelerate prosecution, an applicant may waive the right to a communication pursuant to Rule 161(1) or (2) and 162, pay any claims fees due and, where required, submit a response under Rule 161(1) upon entry into the European phase. Any request for accelerated examination at this time will encompass the formalities examination, the supplementary European search report and/or substantive examination as applicable.

It is important to note that accelerated examination of an application will cease if any request for an extension of time for response is made to the EPO. Additionally, accelerated examination may only be requested once per application, thus any re-entry into the accelerated examination procedure before the EPO is not possible.

Finally, accelerated examination will be suspended if any renewal fees due before the EPO are not paid before their initial due date. Here, any application may be returned to accelerated prosecution with the payment of the renewal fee within the six-month grace period.

Accelerated prosecution provides an excellent means of ensuring the timely prosecution of pending European patent applications. However, it is essential the intricacies of the system are fully understood to achieve the best results for attorneys and clients alike.