Guide for Applicants - Part 1:How to get a European patent: ANNEX II Notice from the President of the European Patent Office dated 1 October 2001 concerning the...

Guide for Applicants - Part 1
How to get a European patent

E / D / F


How to get a European patent

ANNEX I Chart showing the procedure for the grant of European patents

ANNEX III Examples of European patent applications

ANNEX II

Notice from the President of the European Patent Office dated 1 October 2001 concerning the programme for accelerated prosecution of European patent applications - "PACE" *

Text Official Journal 10/2001, page 459

Over the last five years, the number of applications filed annually with the European Patent Office has more than doubled. The Office has therefore taken numerous steps to cope with this enormous increase in its workload and thereby minimise delays in grant proceedings. One such step has been to further improve and simplify the PACE programme for accelerated prosecution of European patent applications.

PACE ensures that applicants who want their applications processed rapidly obtain the search report, the first examination communication and any ensuing European patent as soon as possible. Taking flexible account of applicants' specific needs, the programme thus reduces processing time considerably compared with the average.

As explained in more detail below, accelerated processing of European patent applications is carried out on written request. The EPO does not publish requests for accelerated search and/or examination and, by decision of the President dated 7 September 2001¹, they are excluded from file inspection, provided they are made using EPO Form 1005 (see p. 463)² or on a separate sheet of paper.

Unless otherwise stated, PACE is also available for international applications entering the European phase before the EPO ("Euro-PCT applications").

For European patent applications claiming no priority (first filings), the Office ensures that as a rule applicants obtain their search reports within six months of the filing date. In such cases, accelerated search is automatic; no separate request need be filed.

For European patent applications which do claim priority, accelerated search can be requested in writing when the application is filed. In such cases, the Office makes every effort to issue the search report as soon as possible.

Examination

Accelerated examination can be requested in writing at any time: when filing the application, in response to the search report, or subsequently.

For Euro-PCT applications, it can be requested on or after entry into the European phase before the EPO³. If requested on entry, accelerated prosecution covers formalities examination, drawing up the supplementary search report, and substantive examination. Where no supplementary search report is necessary⁴, it covers formalities and substantive examination.

When acceIerated examination is requested, the Office makes every effort to issue the first examination communication within three months of receipt by the examining division of the application or the request for accelerated examination (whichever is the later).

All subsequent examination communications are issued within three months of receipt of the applicant's reply, provided this is received within the time limit set by the examining division in its previous communication and deals with all the points raised.

Other ways of accelerating the European grant procedure

The applicant may request examination early (Article 96(1) EPC). He may also unconditionally waive his right to receive an invitation from the EPO to confirm that he desires to proceed with the application⁵. This waiver allows the application to reach the examining division more quickly, and may be made when filing the European patent application, or later by separate communication to the EPO.

The applicant may file a substantive response to the search report, or - in the case of a Euro-PCT application entering the European phase before the EPO as elected Office - to the international preliminary examination report, without waiting for the first examination communication. A "substantive" response means reasoned observations or appropriate amendments to the application.

If the application is ready for grant and the applicant has received the communication under Rule 51(4) EPC, the subsequent procedure can be shortened significantly if the applicant approves the text without delay and requests immediate grant under Article 97(6) EPC ⁶.

For such a request to be valid, the applicant must, when filing it
(if not before):

pay the fees for grant and printing

file the translations of the claims

pay any additional claims fees and

file any translation of the priority document required or the corresponding declaration (Rule 38(5) EPC).

The request will be processed only if the designation fees (Article 79(2), Rule 51(8a) EPC) and any renewal fee (plus surcharge) already due have been paid. If the request is made less than three months before the due date of the next renewal fee, applicants are advised to pay that fee too together with the request⁷.

Revised and expanded version of the notice last published in OJ 1997, 340.

See OJ EPO 2001, 458.

EPA/EPO/OEB Form 1005 11.01 is obtainable free of charge from the EPO (preferably from Vienna, but also from Munich, The Hague and Berlin) and the central industrial property offices of the contracting states. An editable version in pdf and Word for Windows formats will be available on the Office's Web site at http://www.european-patent-office.org

With Euro-PCT applications, the applicant can speed up entry into the European phase by expressly requesting early processing under Article 23(2) PCT or Article 40(2) PCT. However, this does not automatically lead to accelerated examination in the European phase; that requires a separate request under the PACE programme.

⁴

This is the case if the international search report was drawn up by the EPO or the Austrian, Spanish or Swedish patent offices.

⁵

This applies mutatis mutandis to Euro-PCT applications entering the European phase and for which a supplementary European search report must be drawn up.

⁶

See OJ EPO 1995, 841.

⁷

Applicants using the automatic debiting procedure may have to pay these fees separately, ie outside that procedure, to ensure rapid grant (see point 12 of the Arrangements for the automatic debiting procedure and the EPO's explanatory notes - Supplement to OJ EPO 6/1994).