The European Patent Office presents several ways to speed up the prosecution of a patent application, which may be selected according to the examination phase.
Let’s explore several ways that an applicant can use to accelerate the examination of a patent application before the European Patent Office for EP direct or EURO-PCT applications, besides presenting some notes about advantages or drawbacks for the applicant regarding an accelerated prosecution.
The European patent grant procedure takes about three to five years from the filing date to the granting decision. The necessary time for a Patent Office manages patent applications is function of several factors, for example the ratio between patent applications and examiners, the complexity of new technologies, and time limits set forth by patent laws and regulations. According to EPO’s Quality Report 2024, overall end-to-end timeliness (from filing to intention to grant) has an average duration of 38.1 months for all cases.
The regular prosecution time of a patent application can usually be proper for the applicants, namely when there are no patent infringements identified or foreseen by the applicant, or when its invention is not ready to enter the market. On the other hand, there are occasions when an applicant wishes to have his patent granted as soon as possible to quickly enforce it. A faster examination and granting are desirable, for example, when the applicant wants to sue a competitor for an alleged infringement, when the technology has a short lifespan, or when there are negotiations regarding selling or licensing the rights of a patent, wherein a granted patent can be more valuable.
Before starting to comment about the actions that can be taken by an applicant to influence the prosecution speed of a European patent application, it is worthwhile to explain the basic steps of the procedures before EPO.
The pre-grant procedures before EPO have two main stages. The first one comprises the formalities examination, the preparation of the search report and the preliminary opinion on whether the claimed invention and the application meet the requirements of the European patent Convention (EPC), and the second stage comprises the substantive examination and the granting or refusal decision.
The EURO-PCT applications are examined under the very same two main stages, but the formalities examination is carried out during the PCT international phase. When the EPO is the International Search Authority (ISA) and/or the International Preliminary Examination Authority (IPEA) during the international phase, the EPO does not execute a further prior art search in the PCT regional phase, and the patent application goes to the substantive examination phase. On the contrary, when the ISA and the IPEA are not the EPO, the patent application must be submitted to a European Search and both stages are carried out by the EPO.
General measures to accelerate the prosecution
a) PACE
The most basic approach that can be used by the applicant is filing a request for accelerated examination under the program for accelerated prosecution of European patent applications (PACE). This request has no official fees, and can be filed any time, but specific PACE requests must be filed for each one of abovementioned two stages, if the applicant wants to speed up the prosecution during the searching phase and/or during the examination phase.
b) PPH
The EPO is a signatory of Patent Prosecution Highway (PPH) agreements, as an Office of Later Examination (OLE), with 15 Patent Offices. Requesting a PPH acceleration before EPO also has no official fees. Normal PPH allows the applicant to request accelerated examination of a patent application to the EPO, if a corresponding application in the same patent family has been found allowable/patentable by the OEE. Anyway, the examination cooperation program does not mean that the patent will be automatically granted by the EPO after the OEE grants the corresponding patent application.
The PPH MOTTAINAI makes the PPH available for patent applications found allowable/patentable regardless of the Office of First Filing (OFF), wherein the OFF is not the first one to consider a set of claims allowable/patentable. The PPH MOTTAINAI is applicable to a first embodiment wherein the OEE is the Office of Second Filing (OSF), and a PPH request is submitted before the OFF, which becomes the OLE. As a first example, a patent application was filed before the EPO, which was the OFF, and said patent application became the priority document for correspondent patent applications in other countries, such as Japan and the USA. If any one of the Patent Offices of Japan or USA considers that claims are allowable/patentable, the applicant can request accelerated examination under PPH MOTTAINAI before EPO. The PPH MOTTAINAI is also applicable to a second embodiment wherein the earliest application is filed with a third Office (other than the OEE and the OLE). As a second example, a first application is filed before the Portuguese Patent Office and patent family members are subsequently filed before the EPO, the Brazilian Patent Office and the CNIPA, claiming as priority the Portuguese patent application. Subsequently, if the patent is granted in China, the accelerated examination may be triggered by the granting of the patent in China and a further PPH request before EPO.
The PCT-PPH allows the applicant to request PPH based on PCT working documents including a written opinion of an international search authority (WO/ISA), a written opinion of an international preliminary examination authority (WO/IPEA), and an international preliminary examination report (IPER). Providing a third example, if a PCT patent application has selected the CNIPA as the ISA and in its WO/ISA indicates that at least a claim is allowable, a request for a PPH may be filed before the EPO.
In general, to request a PPH acceleration examination, the applicant shall file a PPH request before the EPO and file: a set of claims that correspond to the set of claims considered allowable/patentable by the OEE; copies of the prior art documents considered relevant by the OEE; and translations of the substantive examination reports issued by the OEE, when applicable.
Specific measures to accelerate the prosecution for EURO-PCT applications
a) Select the EPO as the ISA
Choosing the EPO as the ISA will save 12 months in total once your application is in the European phase. The EPO's international search report replaces the European search report, and the application can therefore go straight to the EPO examining division as soon as it has entered the European phase.
b) Early processing
An international patent application can enter the EPO’s regional phase within 31 months after the priority date. When acting as a designated/elected Office in the PCT system, the EPO must not process or examine an international application before expiry of said period. If an applicant wishes to enter the European phase quicker and does not have to wait for expiring the 31 months period, an express request for early, free of Official fees, processing must be filed before the EPO, which can be done when entering the EPO’s regional phase. This measure can save up to 15 waiting months for the applicant.
c) Waiver of the Rule 161 EPC
The EPO carries out a prior art European search report and drafts a written opinion when it was not the ISA or IPEA in the international phase, but the EPO sends a notification to the applicant, under the Rule 161 (2) EPC, inviting the applicant to present comments on the international written opinion within six months counting from the notification date, before starting the European prior art search. It is possible to request a waiver of said notification under Rule 161 (2) EPC, and the EPO’s search division starts promptly its work. The applicant will make this action even more effective if comments on the on the international written opinion and amendments in the specification are filed when the patent application enters the EPO regional phase, which will be taken into consideration by the EPO’s search division.
If the EPO was the ISA or the IPEA during the international phase, the patent application will be sent to the examination division when it enters the EPO regional phase, but a notification under Rule 161 (1) EPC will be sent to the applicant providing six months to present comments on the international written opinion drafted by the EPO. Similarly to the provision mentioned in the previous paragraph, it is possible to request a waiver of said notification under the Rule 161 (1) EPC, saving six months of prosecution time, but the applicant must expressly request said waiver and present comments on the international written opinion and amendments in the specification, if suitable, when the patent application enters the EPO regional phase.
Drawbacks regarding examination acceleration
However, an applicant must be aware that accelerating the examination can also be a shortcut to receiving bad news, such as to face the refusal of the patent application, if the invention does not meet the patentability criteria; or to have a very limited granted claims with a narrow scope of protection.
Moreover, even if the applicant receives good news and gets a granted patent meeting its planned objectives, the quicker granting will be joined by anticipated post-granting costs. The post-granting procedures comprise the national validations of the European patent and/or requesting a Unitary Patent.
According to the national validations system, the European patent owner must submit validations requests before each one of the 39 National Institutes of the EPO’s State Members, where the Owner is interested in validating the European patent. The validation must be carried out within three months from the publication of the European patent, and official fees are applied to several countries. Furthermore, it may be necessary to file a translation of the complete patent specification or the granted claims into the official language of a selected country, according to the respective Patent National Law. Besides validation fees, and translation costs, the patent owner must pay renewal fees of the patent for each one of the selected National Institutes.
The Unitary Patent, which has been in force since June 2023, is a significantly cheaper way to enforce a European patent, including 18 signatory countries, namely Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovenia, and Sweden. This new system can be cheaper for the patent owner, because the renewal fees shall be paid only to the EPO, and a single translation of the patent into another European Union (EU) language shall be filed.
In conclusion, measures to accelerate examination can significantly reduce prosecution timelines before the EPO, and these mechanisms may be employed in combination to achieve an earlier decision.
Nevertheless, faster examination may also result in an undesirable early refusal or the grant of a patent with a narrower scope of protection. Moreover, it can lead to the anticipation of costs associated with post-grant proceedings.
Author: Vítor Sérgio Moreira, Patent Manager at Inventa.
