Fast and sure: options to quicker processing before the EPO
by L. Petrucci (Administrator, Directorate Patent Procedures Management at the EPO) and
J. Beatty (Director, Directorate Patent Procedures Management at the EPO)
Timeliness of the patent grant process brings greater legal certainty for everyone - patentees and third parties. This has been the driving consideration behind the EPO's Early Certainty from Search initiative (ECfS), launched in July 2014 and which in only 24 months has eliminated the search backlog.
Under ECfS the EPO delivers a high quality search report and written opinion, for all searches, within six-months from receipt of the patent application.
With search timeliness under control the EPO has extended the Early Certainty initiative to Examination and Opposition where it is moving towards completion of the examination procedure within 12 months on average and completion of opposition within 15 months from the end of the period for filing an opposition.
This article explains the options offered by the EPO to provide flexibility to shorten and/or accelerate the grant process.
To shorten the procedure, applicants can waive the right to certain communications: as a consequence the EPO can skip directly to the next step of the procedure without having to wait for the expiration of the time-limits associated with these communications.
To accelerate the procedure, the EPO offers possibilities for fast track treatment of applications, thus resulting in earlier treatment than normally foreseen.
However a request to accelerate the treatment of an application does not dispense with procedural steps and, vice versa, the filing of waivers does not result in fast track treatment.
In the following, the different possibilities for shortening and accelerating the procedure are presented in relation to the processing of an international application entering the regional phase before the EPO. Some emphasis is given to applications where the EPO did not act as the International Searching Authority (ISA); such applications are referred to at the EPO as a EuroPCT-bis.
In addition, some of the more common misunderstandings with respect to the acceleration possibilities will be clarified.
1. Example of a EuroPCT-bis application
This example begins with the initial filing of an application with a non-EPC national office to the grant of the European patent by the EPO. In the following it is assumed that no formal errors are encountered in the treatment of the application, and that the application was filed in 2016.
After the priority year, a PCT application is filed with the International Bureau. At the latest moment possible, i.e. at 31 months from the date of priority (Rule 159(1) EPC), the applicant requests entry into the regional phase before the EPO.The applicant has then six months to amend the application (Rule 161(2) EPC).
Once the application is in order for the search to start, the EPO delivers the supplementary European search report and the accompanying written opinion within 6 months.
Under Rule 70a(2) EPC the applicant has 6 months to reply to the written opinion, thereby confirming that the examination procedure should start (Rule 70(2) EPC). Upon expiry of this time limit the examination procedure can start.
2. Shortening the procedure
2.1 Possibilities to shorten the procedure open to all applicants
Any applicant can shorten the time to grant by:
Explicitly waiving the right to receive a communication pursuant Rule 161(2) and 162 EPC. Since in such a case, the EPO does not have to wait for a reaction from the applicant, it can immediately start with the supplementary European search. This has the effect of saving 6 months from the procedure.
To take advantage of this option, the waiver must be filed when entering the regional phase and any claims fee due must already have been paid. If any of these conditions are not fulfilled, the communication will be issued and the application will be processed only after expiry of the six-month period. For more information see Guidelines E-VIII, 3.1.
It is noted that the applicant can already amend the application on entry into the regional phase: hence, in a way, this waiver concerns merely a second possibility of amending the application before the start of the search procedure.
Waiving the right to receive the invitation under Rule 70(2) EPC to indicate whether it is wished to proceed further with the application. Where this waiver option is applied the supplementary European search report is dispatched without written opinion and the first examination communication is dispatched by the examining division shortly after dispatching the search report. In order to benefit from this waiver, the applicant must file an unconditional request for examination regardless of the results of the supplementary European search.
It is also noted that in this particular case the applicant can amend the application on his own volition when replying to the first communication of the examining division. For more information please see Guidelines C-VI, 3.
Entering the regional phase early. The applicant can enter the regional phase before the expiration of the period applicable under Art. 22 PCT, i.e. before the thirty-one months under Rule 159(1) EPC.
In order for the EPO to be able to process an international application as designated Office, it must have been published and the International search report must be available. In practice this means that an applicant can enter the regional phase at the earliest at 19 months from the priority date. For more information please see Guidelines E-VIII, 2.8.
By using all three of the above possibilities, the time to grant can be reduced by up to 24 months.
2.2 Possibilities to shorten the procedure open only to applicants that can use the EPO as their International Search Authority (ISA)
Where the EPO acts as ISA, the supplementary European search report is dispensed with (Art. 153(7) EPC) as well as the invitation under Rule 70(2) EPC.
The possibilities to waive the right to receive the communication under Rule 161 EPC and to enter the regional phase early remain. However, where a reply to the WO-ISA is required, in order not to receive a communication under Rule 161, any required reply needs to be filed on entering the regional phase.
3. Accelerating the procedure
3.1 Possibilities to accelerate open to all applicants
Since 1995 any applicant can request the prosecution of any application to be accelerated under the Programme for the ACcelerated prosecution of European patent applications (PACE).
The only condition to join the programme is to file EPO Form 1005 on line. There are no fees and no justification is required. Furthermore, the request is not included in the public part of the file by the EPO. To be fair to all, applicants requesting PACE for many or all of their pending applications will be asked to make a selection and reasonably limit the number of their requests to only those which are the most urgent.
On receipt of the PACE request form 1005, the EPO will do its utmost to deliver the next substantive action within three months. In 2016, the EPO delivered in more than 70% of the cases on time.
When considering filing a PACE request, the following is to be noted:
an applicant has to show continued collaboration in the fast processing of the application for it to remain in the PACE programme;
Since under ECfS, the EPO issues all search reports with written opinion within six months from the filing date or from expiry of the period under Rule 161(2), no PACE request is needed for the search of European patent applications filed on or after the start of ECfS (1 July 2014). This includes PCT applications entering the European phase where the EPO did not act as (S)ISA).
Further details on the PACE programme can be found in Guidelines E-VII, 4.
To achieve maximum speed in getting to grant, a PACE request is best used in conjunction with the above mentioned waivers. It is the combination of both the shortening and the acceleration that clears the procedural path so that the search or the examining division can start work on the file as early and quickly as possible.
As a counter-example, in the event that a PACE request to accelerate examination is filed on entry into the regional phase without the waivers for a EuroPCT-bis application, the search division would not be able to work on the file until the six-months' time limit under Rule 161(2) has expired. This would mean that the search report with opinion would only be dispatched within six months after the expiry of the six months' time limit under Rule 161(2) EPC.
3.2 Possibilities to accelerate open only to applicants that can use the EPO as their International Search Authority
Under ECfS, in the case of a positive International Preliminary Report on Patentability (IPRP) by the EPO, following entry into the regional phase, the EPO will do its utmost to dispatch a communication under Rule 71(3) EPC (intention to grant) within four months from the moment the examining division can start work on the application.
With a positive IPRP and entering the regional phase early, the applicant could receive an intention to grant notification within 23 months.
Furthermore the positive IPRP can be used to enter accelerated proceedings before the national offices with which the EPO has signed a Patent Prosecution Highway (PPH) agreement. These partner offices are JPO (Japan), KIPO (South Korea), SIPO (China), USPTO (USA), ILPO (Israel), CIPO (Canada), IMPI (Mexico), IPOS (Singapore), IP Australia (Australia) and SIC (Colombia).
In order to be able to optimise the claims while receiving a positive IPRP, applicants can make use of the PCT-Direct programme; at the moment this programme is offered worldwide only by the EPO and ILPO. Under the PCT-Direct programme,
- an applicant either files a PCT application with any Receiving Office as office of first filing and designates the EPO as ISA or files the application directly with the EPO as office of first filing;
- the EPO dispatches the (international) search report within six months;
- the applicant then files a (second) international application claiming the application under (i) as priority. The applicant requests to have the (second) international application processed under PCT Direct and files a letter ("PCT Direct letter") containing informal comments aimed at overcoming objections raised in the search opinion established by the EPO for the priority application under (i).
In this way the applicant is in effect able to react to any objections raised in the search opinion and thereby can optimise the claims to be searched in the second application.
Further details on the PCT-Direct programme can be found in PCT-EPO Guidelines B-IV, 1.2.1.
3.3 Patent Prosecution Highway (PPH)
PPH enables an applicant whose claims have been determined as patentable/allowable by a partner office to have a corresponding application filed at the EPO processed in an accelerated manner, with the EPO able to exploit the available work results from said partner office..
Once the request for participation in the PPH has been granted, the EP application will accelerated. The same conditions as applicable to the PACE programme apply to the prosecution of European applications processed under the PPH (see point 3.1 above).
PPH is a programme under which the prosecution of the application will be accelerated, but within the legal framework of the EPC. This means, in particular:
The (substantive) prosecution of an application can only begin once all the formal requirements of the EPC have been respected, for example only once the time-limit under Rule 161 has expired.
A requirement of the PPH pilot programmes is that the PPH request must be accompanied by a copy of the claim(s) found patentable/allowable by the partner office.
These claims form part of the documentation required for participation in the PPH pilot programme; however the EPO will not consider these claims as amendments to the respective application. To file amendments to the application, the applicant must file a second copy of the amended claims and indicate explicitly that these claims are an amendment.
However, it is to be noted that such filed amended claims will only be taken into consideration at the stage where the procedure under the EPC permits the application to be amended.
For example, where an applicant files a PPH request for a EuroPCT-bis before the supplementary European search has been carried out, but after expiry of the period under Rule 161(2) EPC, the claims accompanying the PPH request will not be taken into consideration even with an explicit request of the applicant, as filing of amendments to the application is not foreseen by the EPC (Rule 137(1) EPC) at this stage of the procedure. The supplementary European search is therefore based on the last set of claims filed up to expiry of the period under Rule 161(2) EPC (c.f. Guidelines E-VIII, 3.1).
The Early Certainty initiative already assures delivery of all searches within six months from receipt. Applying the procedural options described above to an individual application has a further impact in reducing pendency.
The EPO Early Certainty initiative brings greater legal certainty to the European patent system by delivering high quality products in a timely manner
- Figures of July 2016 see http://www.epo.org/about-us/office/quality/quality-indicators.html.
- For more details on how to file a PPH request with the EPO can be found in OJ 2014, A8 for the agreement with JPO, KIPO, SIPO and USPTO; OJ 2015, A6, A7 and A70 for the agreements with ILPO, IMPI and CIPO respectively; and OJ 2016, A54, A68 and A75 for the agreements with IPOS, IP Australia and SIC.