Notice from the European Patent Office dated 30 November 2015 concerning ways to expedite the European grant procedure
A further option is available under the Patent Prosecution Highway (PPH) pilot programme, which allows for the accelerated 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. [ 3 ]
I. Ways to expedite the European grant procedure in addition to the PACE programme
A. Waiving the invitation under Rule 70(2) EPC
1. Before the applicant receives the search report, he can waive the invitation under Rule 70(2) EPC and request examination unconditionally, irrespective of the results of the search. In this case, under Rule 62 EPC the European search report is issued together with a first examining communication under Article 94(3) and Rule 71(1) EPC instead of the opinion on patentability under Rule 62 EPC. A prompt and full response from the applicant then ensures that the proceedings can continue quickly.
2. In the case of Euro-PCT applications, the applicant is informed upon entry into the European phase that he may amend the application within six months after notification of the communication. The communication further informs him that any claims fees due must be paid within the same time limit.
3. The applicant may waive his right to the communication under Rules 161(1) or (2) and 162 EPC. For efficiency reasons and to ensure that the waiver is duly considered, the applicant is recommended to check the box in section 6.4 of Form 1200. If the waiver is filed by separate letter it may, for instance, be worded as follows: "The applicant waives his right to the communication under Rules 161(1) or (2) and 162 EPC."
4. The EPO will not issue a communication under Rules 161(1) or (2) and 162 EPC only if, in addition to the waiver, on entry into the European phase the applicant has also fulfilled all the requirements of Rules 161 and 162 EPC (i.e. payment of any claims fees due and, where required, submission of a response under Rule 161(1) EPC) for the application to proceed directly to the supplementary European search or to examination. Where the right to the communication under Rules 161(1) or (2) and 162 EPC has not been validly waived, the communication will be issued and the application will be processed only after expiry of the six-month period provided for under those rules, even if a request under the PACE programme has been filed.
5. Where a communication under Rules 161(1) or (2) and 162 EPC has been issued, the applicant is entitled to the full six-month period for filing amendments. The supplementary European search or the examination will be based on the application documents as last amended at the expiry of the six-month period. If an applicant does not wish to use up the entire six-month period, he may request the immediate start of the search or examination. Such a request may be filed together with amendments. It need not be in any particular form and may, for instance, be worded as follows: "The applicant requests the immediate start of processing and waives his right to use the remainder of the six-month period under Rules 161(1) or (2) and 162 EPC". The request is effective only if the applicant has also fulfilled all the requirements of Rules 161 and 162 EPC as set out above.
6. Applicants are reminded that waivers and PACE requests are to be distinguished and have to be filed separately.
C. Waiving a further communication under Rule 71(3) EPC
7. Applicants can expressly waive the right to receive a further communication under Rule 71(3) EPC where amendments or corrections to the text communicated by the examining division by means of a previous Rule 71(3) EPC communication are requested. Provided that specific formal requirements are fulfilled and the examining division has no objections to the amendments or corrections, the Office will not send a further communication under Rule 71(3) EPC and will proceed to issue the decision to grant the European patent. For further details reference is made to the notice from the European Patent Office dated 8 June 2015 concerning the possibility to waive the right to a further communication under Rule 71(3) EPC, OJ EPO 2015, A52.
D. Early entry into the European phase
8. The EPO as designated/elected Office will not process an international application before expiry of the 31-month time limit from the date of filing or, if priority has been claimed, from the priority date (Articles 22(3)/39(1)(b) PCT, Rule 159(1) EPC). The applicant may request the start of processing before expiry of this time limit by filing an explicit request for early processing (Articles 23(2)/40(2) PCT). For the request to be effective, the applicant must comply with the requirements of Rule 159(1) EPC as if the 31-month time limit expired on the date early processing is requested (payment of fees, submitting translations, etc.). A PACE request does not affect the start of processing. Conversely, a request for early processing does not constitute a PACE request. Both have to be requested separately. Detailed information is provided in the notice from the EPO dated 21 February 2013 concerning the request for early processing. [ 4 ]
II. Accelerated processing of oppositions where infringement proceedings have been instituted, and accelerated processing before the boards of appeal
9. Finally, reference is made to the notice from the European Patent Office dated 17 March 2008 concerning accelerated processing of oppositions where infringement proceedings have been instituted[ 5 ] and to the notice from the Vice-President Directorate-General 3 dated 17 March 2008 concerning accelerated processing before the boards of appeal. [ 6 ]
[ 1 ] Revised version of the notice from the European Patent Office dated 5 April 2011 concerning updated Form 1200 (entry into the European phase) and the possibility to waive the right to the communication under Rules 161(1) or (2) and 162 EPC, OJ EPO 2011, 354.
[ 4 ] OJ PO 2013, 156; see also Guidelines for Examination in the European Patent Office, E-VIII, 2.9; Euro-PCT Guide (8th edition, 2015), points 427 et seq.
[ 5 ] OJ EPO 2008, 221; Guidelines for Examination in the European Patent Office, E-VII, 4.