Keeping up with the PACE

Keeping up with the PACE – accelerated examination of European patent applications

One of the most common criticisms of the European Patent Office concerns the length of time that it takes for an application to be examined. Pendency periods of five years and more are not uncommon.

In truth, in the majority of cases, such long delays are of little consequence to the applicant. Indeed, the postponement of the time at which decisions must be made on the way in which an application is to be amended in order to achieve allowance, or even whether an application is to be pursued at all, can be beneficial.

That said, for those applicants who do wish to expedite the processing of their European patent applications, the EPO operates a programme of accelerated prosecution called PACE. The PACE programme has now been updated.

A request for participation in PACE must be made in writing. Once an application has been entered into PACE, if the search report has not already been issued the EPO will endeavour to issue a search report within six months (though for recent applications, the EPO aims to meet that target anyway, and so no PACE request is needed). In the examination phase, the EPO will try to issue an examination report within three months, and will also aim to issue subsequent examination reports within three months of the applicant’s response to the previous examination report.

These timescales are not guaranteed, but the EPO will strive to achieve them.

Clearly, when an applicant requests that examination of an application is brought forward under PACE, it is reasonable for the EPO to expect the applicant also to do what it can to progress the application quickly. Under the new PACE regime, there are several circumstances in which an application will be withdrawn from PACE:

a)    where the applicant expressly requests withdrawal from PACE;

b)    where the applicant requests an extension of time, for instance for responding to an examination report;

c)    where the application is refused, withdrawn or deemed to be withdrawn; and

d)    where a renewal fee is not paid on time.

This means that in order to maintain the PACE status of an application, the applicant must be prepared to move more quickly than might otherwise be the case. Failure to meet a deadline, even if an extension of time or another legal remedy such as “further processing” can be used to keep the application alive, will mean that it drops out of the PACE programme and subsequent procedure will follow the normal timescale.

Moreover, under the new regime it is only possible to request PACE once in the search stage of the procedure and once during examination. It will therefore not be possible for an applicant to request PACE, then allow the application to drop out of PACE, for instance by requesting an extension of time, and then restore the PACE status by filing a second PACE request during the same stage of the procedure.

The new PACE regime came into force on 1 January 2016. It applies to all PACE requests submitted after that date, but the rules relating to withdrawal from PACE also apply to applications that had previously entered PACE.

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