Rights & wrongs of an IP protection acceleration strategy in Europe

In this second blog post part of our mini-series on the rights and wrongs of an IP protection acceleration strategy, we are exploring what options applicants have at their disposal in Europe.

The European Patent Office (EPO) offers two distinct schemes for speeding up patent prosecution – the Patent Prosecution Highway (PPH) and the Program for Accelerated Prosecution of European Patent Applications (PACE).

PACE

The PACE procedure is only provided by the EPO when ‘practically feasible’, and is subject to the workload of the relevant searching and examining divisions. As such, the expedition speed may be affected by the number of PACE requests made in a given technical field or by a given applicant.

PACE acceleration can only be requested once for each stage, namely, one PACE request is allowed for accelerated search, and one PACE request is allowed for accelerated examination. PACE requests are not published and are excluded from public inspection.

Applicants should note that diligence is required, as failure to respond to examination reports in a timely manner will result in the application being removed from the PACE scheme. If PACE status is lost for any reason (for example, by requesting an extension of time for response to an examination report or if maintenance fees are not paid in a timely manner) it cannot be requested again in that stage.

There is no official fee for requesting PACE handling.

Search

If a request is made for early search, the EPO will aim to search an application as soon as possible. However, accelerated search may not be possible in certain circumstances, such as when the claims are filed later than the rest of the application.

Publication

While it is possible to request early publication of a European patent application, publication may not occur for up to five months after the request is received.

Examination

Accelerated examination can be requested in writing at any time after the Examining Division has taken responsibility for the application. An examination report will normally be issued by the EPO within about 3 months after the request for acceleration of the substantive examination has been made, provided that all necessary earlier procedural steps have been completed. The EPO aims to issue any subsequent examination communications within 3 months after a response is received.

If accelerated examination is requested, it is necessary to file any responses to the examination reports without requesting extensions of time, in order to maintain the expedited examination process. If any extensions of time or further processing are used, PACE status will be lost and cannot be regained.

Do

• Consider PACE if examination has already begun
• Review whether it is in your best interest to expedite prosecution, for example, the earlier your patent application is published the earlier the technology is in the public domain

Don't

• Miss deadlines for response or request extensions of time as PACE acceleration cannot be regained for a stage once lost
• Rely on PACE acceleration as a guarantee to speed up protection

Patent Prosecution Highway (PPH)

The PPH is an initiative operated by a group of Patent Offices around the world. It allows the examination work product from one participating Patent Office to be re-used by another participating Patent Office, providing applicants with a means of accelerating examination. To apply for PPH at the UKIPO or EPO, the same case must have been allowed or granted by another participating Patent Office.

If the applicant has a patent that has been granted by one Patent Office in the scheme, examination of a corresponding patent application at another Patent Office can be completed more quickly, as the first Patent Office has already done much of the work.

In the UK, a positive examination report from the Austrian, Australian, Canadian, Chinese, German, Danish, Estonian, Spanish, Finnish, Hungarian, Israeli, Icelandic, Japanese, Korean, Mexican, Norwegian, Portuguese, Russian, Swedish, Singaporean or US patent office can be used to accelerate examination of a corresponding UK application.

At the EPO, a positive examination report from the Canadian, Chinese, Israeli, Japanese, Korean, Mexican, Singaporean or US patent office, or a positive report from one of those offices in their capacity as an International Search or Examination Authority can be used to accelerate examination of a corresponding European application.

Applicants should note that PPH may not be desirable if the later Examining Patent Office is one that would be expected to take a more liberal view during examination than the earlier Patent Office. In such cases, using PPH is likely to result in a narrower scope of patent protection at the later Patent Office than might have been available through normal examination.

There is no fee for using the PPH at the UKIPO or EPO, although applicants should note that:

• Examination must not have begun;
• The claim set must correspond in scope, or be narrower than, the allowed or granted claims; and
• At least one claim must have been found to be allowable by the first Patent Office.

If PPH is requested, the EPO will normally handle the application with at least a level of acceleration corresponding to the PACE program.

Do

• Consider PPH if you have a granted patent in another territory
• Review whether the amendments made in the granted patent may raise added matter or other objections in Europe
• Consider whether the granted patent encountered prior art that wouldn’t be citable in Europe

Don't

• Apply for PPH if examination has already begun
• Forget to review whether a broader scope of protection may be achieved under standard examination

If you require any further information or assistance in connection with your intellectual property or the intellectual property of your business then please contact Murgitroyd.