Author: Renata Anduziene, Patent Consultant at METIDA
Applicants who file European patent applications are likely to consider the opportunity to request for the accelerated processing before European Patent Office. “PACE” is one the programmes which applicant can use to speed up prosecution of the European patent applications. The EPO has published a notification regarding changes of PACE program which applies to all pending applications after 1 January 2016. A lot of conditions applicable to the program remain the same, however there are still some changes that should be noted.
Firstly, applicants are required to use the request form (EPO Form 1005), which must be filed online (there is still no fee required for a PACE request). The EPO will issue an acknowledgment of receipt promptly. It is important to mention that EPO will not process anymore requests filed informally, i.e. without using the dedicated form, and/or on paper.
Furthermore, a PACE request may only be requested once during each stage of procedure (i.e. search and examination), and for one application at a time. The PACE request filed during search will not trigger accelerated examination, therefore further PACE request will be required which can only be filed once the examining division becomes responsible for the application.
If an applicant requests PACE for all or most their applications, the EPO will “as a rule” require them to limit the number of PACE requests by making a selection.
A specific attention should be drawn to this condition: an application will be removed from the PACE programme if: the applicant withdraws his request for PACE; a time limit extension request is filed; the application has been refused; the application has been or is deemed to be withdrawn. In such cases it will not be possible to restore the application to the PACE programme, i.e. a second request for that application during the same stage of the prosecution will not be processed. Accelerated prosecution will be suspended if a renewal fee is not paid by the due date.
In conclusion, it is important to remind that there are other options to accelerate process at the EPO too, e.g., to use the Prosecution Highway (PPH) pilot programme, which allows for the accelerating processing of an eligible European patent application when the claims of a corresponding application have been determined to be patentable/allowable by a PPH partner office, while at the same time allowing the EPO to exploit available work results; or waiving the right to the Rule 161/162 letters; early entry to the EPO.