PACE and other acceleration options at the EPO

PACE and Other Acceleration Options at the European Patent Office (EPO)

Obtaining a European patent is usually a lengthy process. The search, publication and examination stages each takes time, especially examination, where correspondence with the examiner in response to examination reports can take months or years. Typically, it takes 3 to 5 years, or even longer, to obtain a European patent.

In many cases, applicants are not in a hurry to expedite prosecution. A slower process helps delay costs. Keeping an application pending allows the applicant to amend claims based on market developments, product optimisations, or strategic considerations such as keeping competitors guessing about the final claim scope. However, there are situations where accelerating prosecution is beneficial, such as providing early certainty, securing enforceable rights to deter competitor market entry, or attracting investment.

This article outlines key strategies to accelerate European prosecution for both direct European (EP) patent applications and international (PCT) applications entering the European phase (Euro-PCT applications).

Programme for accelerated prosecution of European patent applications (PACE)

Whether filing a direct EP application or a Euro-PCT application, applicants can request accelerated processing through the EPO’s Programme for Accelerated Prosecution of European Patent Applications (PACE). To do so, they must submit a PACE request using EPO Form 1005. No official fee is required, and no reason needs to be provided. The EPO does not publish PACE requests; therefore, this acceleration strategy remains confidential between the applicants and the EPO.

Once a PACE request is filed, the EPO makes every effort to issue the next official communication within three months of receiving the request. The applicant should address any outstanding actions, such as responding to the search opinion or dealing with the objections in an examination report.

It should be noted that participation in PACE comes with strict conditions. If the applicant requests an extension of a deadline or misses a deadline, requiring further processing, the application will be removed from the PACE programme, and re-entry is not permitted.

A PACE request may be filed only once during each stage of the prosecution (i.e. search and examination), and for one application at a time. As we will explain below, PACE is more effective at certain stages than others.

Patent Prosecution Highway (PPH)

The European Patent Office (EPO) has Patent Prosecution Highway (PPH) programmes with several other offices, for example, Japan, China, the USA, Canada and Australia. If a corresponding application, having the same earliest effective filing date as the European application, has been searched or examined by one of these other offices and at least one claim has been found allowable, the applicant may consider requesting participation in the PPH programme.

The PPH is designed to improve efficiency by allowing the EPO to re-use the work already carried out by another office. However, unlike the PACE programme, the EPO publishes PPH requests, making them visible to the public, including the applicants’ competitors.

The PPH request must be filed before the EPO begins substantive examination. Additionally, all European claims must sufficiently correspond to (or be narrower than) the claims found allowable by the other office. While the PPH aims to accelerate examination, it is important to note that EPO examiners are not bound by the positive conclusions of other offices. They may still raise objections based on their independent assessment of patentability.

Applicants should carefully consider whether they are comfortable limiting their European claims to those already found allowable elsewhere, or even narrowing them further. The decision to participate in the PPH requires a case-by-case assessment with advice from a European patent attorney.

Strategies to accelerate a direct European patent application at different stages

Search

With any direct EP application, the EPO strives to issue a search report within six months of the filing date. However, if the application is the first filing for an invention, the search examiner rarely issues a report within the first four months due to the time required for a thorough search. Due to this prioritisation of searching, filing a PACE request during the search stage is often unnecessary and may have no effect. If a PACE request is filed during the search stage, the applicant must ensure that the EPO has all necessary documents to carry out the search (e.g. description, claims, drawings, sequence listings if applicable).

Publication

The EPO publishes the application as soon as possible after the expiration of 18 months from the earliest effective filing date. A published application may provide provisional protection. For instance, in some European countries, this allows backdated damage claims if the infringement falls within both the published and granted claims. Applicant can request early publication gaining earlier provisional protection, but must ensure filing and search fees are validly paid and that the application documents have no formal deficiencies.

Examination

Once the search report is published, the EPO will issue a communication (i.e. Rule 70(2) communication) setting a 6-month deadline from the publication date of the search report for the applicant to request examination, indicate whether they wish to proceed, respond to any objections in the search opinion, and pay the designation fee. If all required actions are completed within this period, the application moves to the examination stage.

Applicants may explicitly waive this communication to accelerate prosecution by six months. In this case, they must promptly pay the examination fee and still pay the designation fee within six months of the search report’s publication. The EPO will then transmit the search report without a search opinion, and the Examining Division takes over to directly issue an examination report.

During examination, a PACE request can expedite the process. To maximise its effectiveness, the applicant should cooperate promptly with the examiner. A response to any outstanding examination report should be submitted. If further correspondence is required, the examiner generally aims to issue a report within three months of receiving the applicant’s response. By responding to objections promptly in each round of correspondence, the applicant can further streamline the process and significantly reduce overall prosecution time.

As mentioned earlier, if the applicant requests a time extension or further processing, the EPO will remove the application from the PACE programme, and it will not be possible to request PACE again.

Once the applicant and examiner have agreed on a set of allowable claims and the description has been adapted accordingly, the EPO will issue an 'intention to grant' communication. This sets a 4-month deadline for the applicant to approve the text for grant, submit translations of the claims, and pay the required official fees. To expedite the process, the applicant should address these matters promptly upon receiving the communication. If further amendments are needed, the applicant should disapprove the proposed text and submit the amended version as soon as possible. Additionally, if the application is not yet under PACE examination, filing a PACE request at the same time can accelerate the process. This encourages the EPO to issue a second ‘intention to grant’ swiftly and, once the approval, translations, and fees are submitted, to proceed quickly to grant of the patent.

Strategies to accelerate a Euro-PCT application at different stages

Early entry into the European phase

A PCT applicant seeking European protection must enter the European phase by the 31-month deadline, counted from the earliest effective PCT filing date. However, the applicant can enter earlier and request ‘early processing’, allowing the EPO to begin the process immediately instead of waiting for the 31-month deadline to expire.

Requesting early processing does not require any official fees nor any specific wording—as long as the applicant clearly expresses their wish for the EPO to process the application early. The easiest way is to check the relevant box on EPO’s entry Form 1200. Additionally, the applicant must meet all relevant requirements, such as paying the filing fee, submitting the required documents, and addressing fees for search, examination, designation, and renewal if due by the 31-month deadline.

Waiving the right to receiving the Rule 161/162 communication

Shortly after European phase entry, the EPO issues a Rule 161/162 communication, setting a 6-month deadline for the applicant to amend the application, submit patentability arguments, and pay excess claims fees for claims beyond 15.

The rule 161/162 communication can be waived by checking the relevant box on Form 1200 or submitting a signed waiver letter to the EPO, avoiding a 6-month delay.

If validly waived, the prosecution moves directly to the next stage, search or examination, depending on whether the application was searched during the international phase.

Search and Examination

Most of the acceleration strategies previously discussed for direct-EP applications at the search and examination stages also apply to Euro-PCT applications.

If the EPO conducted the international search, a valid waiver of the Rule 161/162 communication allows the application to proceed directly to examination, where strategies like PACE can speed up the process. Without a PACE request, the application will be placed in the queue and reviewed in turn, which may take several months to over a year, depending on the examiner’s workload. Filing a PACE request moves the application forward in the queue, with the examiner aiming to issue the first report within three months of receiving the request. As with direct EP applications, once a PACE request is filed, it is advisable to engage proactively with the examiner to address any objections raised.

If another office conducted the international search, the EPO will first perform a supplementary search and then issue the Rule 70(2) communication. It usually takes the EPO about 6 months to complete a quality search; therefore, requesting PACE at this stage is typically unnecessary. The Rule 70(2) for the Euro-PCT can also be waived, reducing prosecution time by 6 months, as previously discussed for direct-EP applications. Additionally, the applicant can request PACE to accelerate examination.

Overall, to maximise acceleration of a Euro-PCT application, the applicant should enter the European phase early by filing Form 1200 and submit a PACE request using Form 1005 alongside Form 1200. In Form 1200, the applicant should select options to request early processing, waive the Rule 161/162 communication; and waive the Rule 70(2) communication.

For this fast-track approach to be effective, it is advisable to meet all necessary requirements upon European phase entry, including paying all relevant fees, submitting required documents, and, where applicable, filing the mandatory response to the international search report issued by the EPO.

Conclusions

As discussed, the EPO offers several acceleration mechanisms for European applications. Among these, PACE is often the most effective for expediting prosecution. When combined with other strategies outlined in this article, such as early processing and waiving communications, applicants can further streamline the process to significantly reduce delays.

Author: Julia Li

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