Rapid Grant at the EPO

Introduction

Obtaining a granted patent anywhere in the world can be a lengthy process, and the European Patent Office (EPO) is no exception, sometimes taking several years to grant meaningful, wieldable protection. There are numerous essential substantive and administrative hurdles to navigate between filing the initial request for the grant of a patent and receiving the notice of the EPO’s intention to grant.

However, options are available to applicants which can enable them to speed up this process, should they wish. Whilst none of these options improve the eventual chances of obtaining a granted patent, they do allow the applicant to accelerate the process, either by skipping certain steps, completing certain steps more rapidly, or a combination of these two strategies. This article aims to outline the options available to applicants, and to evaluate their relative merits.

Why would I want to accelerate the prosecution process?

In some circumstances, it may not be advisable to accelerate the process, for example if you want to delay costs. Indeed, there are many conventions and procedures that are specifically designed to defer costs and prosecution. However, there are several situations where speeding up the process is desirable. For instance, if you are unsure of the likelihood of obtaining a patent, it may be beneficial to have the initial search results before deciding on an eventual filing strategy. It can also be desirable to have an early indication of patentability in order to attract or allocate investment.

As a patent (once granted) can only be enforced against infringement that takes place after the publication date of your application, it may be advantageous to request early publication. This is particularly important if you are aware of potential infringers during the early stages of the application process. Furthermore, if your patent is granted sooner, it will also allow you to take action against infringers earlier, thereby maintaining your monopoly, or obtaining valuable sources of licensing income.

Filing strategies: balancing the need for speed and deferring costs

Often, UK applicants prefer to file their initial priority application at the UKIPO. The UKIPO offers a preliminary search and examination report on priority applications, which can provide applicants with a useful steer on the strengths and weaknesses of their case, at reasonably low official fees. The applicant then has 12 months to file any further applications for this invention, with one option being a PCT application.

Those familiar with the PCT process will know that a PCT is a bundle of options for national and regional patent applications, and is essentially a vehicle for deferring costs. It is the most common and cost-effective route for applicants with international ambitions to obtain a series of national patents. A PCT application is generally filed at 12 months from the earliest priority date. Alternatively, applicants who are particularly keen for speed might choose to file their PCT earlier, or might even choose to skip the PCT step completely, and file a direct EPO application within the 12-month priority period.

However, an applicant might otherwise choose to file their priority application directly at the EPO. Although the EPO official fees for an initial search are higher than those at the UKIPO, this route might be of interest to applicants wishing to have maximum visibility at an early stage of how their application will be received by the EPO. Moreover, this route provides applicants with the option of progressing their priority application as a stand-alone application at the EPO, instead of (or alongside) a PCT.

Whilst some of these strategies may shorten the eventual term of the patent, and bring costs forwards, they might be an attractive option to applicants who wish to accelerate the route to grant as much as possible.

Accelerating the Euro-PCT process

Despite the fact that the PCT application’s usual function is to defer costs, there is a range of options available at the EPO to speed up the prosecution process when entering the European phase. The simplest of these is to enter the European phase early. The deadline for entry into the European phase nominally expires at 31 months after the earliest priority date. However, entry into the European phase can be expressly requested before this deadline to accelerate the timeline.

Where the International Searching Authority is the EPO

A search is a necessary part of a PCT application’s prosecution, and this can be carried out by a number of patent offices – in each case the chosen patent office is referred to as the International Searching Authority (ISA). Where the EPO has acted as the ISA, once the case enters the European phase, the applicant receives an invitation (referred to as the Rules 161(1) and 162 EPC communication) to respond to the written opinion of the ISA within 6 months. No supplementary search by the EPO is necessary and, in turn, examination may begin sooner. The process may be accelerated further by the applicant providing their response to the written opinion of the ISA immediately on entry to the European phase, and waiving their right to the Rules 161(1) and 162 EPC communication.

Where the International Searching Authority is not the EPO

Where the EPO has not acted as the ISA, an applicant receives an invitation (referred to as the Rules 161(2) and 162 EPC communication) to make comments and/or voluntary amendments before the EPO publish their supplementary search report and observations on the patentability of the invention (the written opinion). After this, the applicant receives an invitation (referred to as the Rule 70(2) EPC communication) to respond to the observations of the written opinion within 6 months, and to confirm that they wish to proceed further with the application. Once this is confirmed, examination can begin. The applicant has the option to waive their right to each of these communications, each saving up to 6 months.

Programme for the Accelerated prosecution of European patent applications (PACE)

PACE is available to all applicants, irrespective of what route they have taken to apply for a European patent. Whilst PACE is questionable as an acronym, it can be a very useful tool for accelerating the prosecution of your European patent application. A PACE request can be submitted without any justification or fee, and the EPO will in turn do their utmost to issue the first examination communication within three months. Combining a PACE request with the abovementioned waivers is an extremely effective way of accelerating the prosecution of a patent application.

As a result of its popularity, the EPO requires the applicant to keep to the deadlines set out in the examination communications. If any due date is missed, or an extension request is filed, the application loses its PACE status and examination returns to its normal speed.

Patent Prosecution Highway (PPH)

If a set of claims have been deemed allowable by a patent office that is also a member of the PPH, the EPO may accelerate the processing of your corresponding European application, while at the same time allowing the offices¹ involved to exploit available work results. The PPH request must be filed before substantive examination has begun, enclosing the claims that were found allowable by the partner office. However, these will not be considered the claims subject to examination by the EPO unless expressly stated by the applicant.

If the PPH request is granted, the EPO will aim to issue communications according to the same timeline as for the PACE programme. This can be a particularly efficient way of rapidly obtaining granted patents in multiple jurisdictions, as the list of the EPO’s partner offices keeps growing.

Conclusion

In summary, the EPO offers many ways for applicants to speed up the patent prosecution process, and the most effective way is to combine the various options that are available. Taking advantage of these options can allow you to gain certainty earlier on the prospects of your application, take action earlier against infringers and help businesses seeking investment give confidence to investors.

Despite the acceleration options available, and although the arguments and amendments made in response to the various EPO communications during prosecution are critical to convincing the examiner that the invention is suitable for grant, the most decisive steps of the entire process are often pre-filing – the drafting of your patent application and, in particular, your claims, is crucial in determining the success of a patent application.

Common pitfalls, such as using parameters in claims, covetous claiming or filing an application without enough supporting data, can lead to significant delays, and at worse, prove fatal if the invention cannot be defined clearly or the technical effect of the invention cannot be supported.

The options referred to above may shorten or accelerate the process, but they will only provide early legal certainty if you have a patentable invention. Only a well-drafted and clearly distinguished set of claims will maximise the chances that the EPO will grant a patent.

If you would like more information, or you are considering how best to speed up the prosecution of your patent applications, please get in touch via gje@gje.com or find our contact details here and here.

¹ Partner offices that are members of the Patent Prosecution Highway are JPO (Japan), KIPO (South Korea), CNIPA (China), USPTO (USA), ILPO (Israel), CIPO (Canada), IMPI (Mexico), IPOS (Singapore), IPA (Australia), SIC (Colombia), ROSPATENT (Russian Federation), MyIPO (Malaysia), IPOPHL (Philippines), EAPO (Eurasia), INPI (Brazil) and INDECOPI (Peru).