European Patent Office: EPO reviews accelerated prosecution

January 26 2016

In 2010, the EPO introduced the PACE programme, which allowed applicants to accelerate prosecution of patent applications pending before the EPO. Under the PACE programme, the EPO would make every effort to issue a first examination communication within three months of the PACE request.

It appears that the EPO is still struggling with the backlog of patent applications, and has therefore introduced a number of restrictions into the PACE system.

The most significant changes are:

Only one PACE request per application: Once PACE is requested, a patent application may fall out of the PACE system for a number of reasons (for example, if the applicant requests an extension of a deadline). A further PACE request will not be possible.

Mandatory use of the official form (Form 1005): Previously, PACE could be requested in a letter to the EPO, and was often carried out together with for example a response to an examination report. However, under the new practice, PACE requests which do not use the official online form will not be allowable.

Accelerated prosecution is not universally applicable: The EPO has introduced a proviso to the PACE programme, and will allow PACE "only where practically feasible and subject to the workload of search and examining divisions". Effectively, if a certain technical field has a particularly high backlog of applications, PACE will not always be guaranteed.

Blanket PACE requests will not be acceptable: If an applicant requests accelerated prosecution for all or most of their applications, they will be requested by the EPO to select those applications which are of most relevance.

Separate PACE request for examination: A PACE request filed during the search stage of an application will not automatically accelerate examination proceedings. An applicant wishing to accelerate examination proceedings must wait to file a PACE request until the examining division has assumed responsibility for the application.

The updated PACE programme applies from January 1 2016.