Accelerated examination of European patent applications

During the examination of a European patent application, applicants have the opportunity to propose ways to speed up the examination of their patent applications. The following are the most common ways to speed up the examination:

• PACE request: Submit a special form Form 1005. During the search and examination stages, a PACE application can only be submitted once, and one application can only be applied for once. A PACE application submitted during the search period will not trigger accelerated examination. If the applicant wishes to accelerate the examination of the application, a PACE request can be submitted after the application enters the examination stage. Regardless of the legal remedies provided for in the European Patent Convention, it is not possible to restore the application to the PACE procedure, that is, a second application for the application at the same stage of the procedure will not be processed. In addition, if the annual fee for the third year is not paid in time, the PACT request will also be suspended. The EPO promises to issue the first examination opinion within 3 months from the date of the PACE request, and the second examination opinion within 3 months after the applicant completes the response. The PACE procedure will terminate if the following situations occur:
  • PACE application withdrawn
  • Applicant requests extension of time limit
  • Application has been rejected
  • The application has been withdrawn
• Accelerated search: The EPO strives to issue an extended/partial European search report within 6 months from the filing date. In order for the supplementary European search to start immediately, the applicant must explicitly waive the right to respond under EPC 161(2) and EPC 162(2) when entering the European phase and pay any application fees payable, and the following conditions must be met:
  • Upon receipt of the applicant’s response to a notification under Rule 62a or 63, or upon expiration of the corresponding time limit
  • When all application documents are complete and sufficient for supplementary search, that is, only when the claims, description and its translation, drawings and sequence listing meet the requirements, can the accelerated search be started.
  • For incoming Euro-PCT applications, the EPO does not act as an ISA
• Patent Prosecution Highway (PPH): A PPH request must be submitted before substantive examination begins. Currently, the EPO has signed bilateral PPH agreements with the JPO, KIPO, CNIPA, USPTO, ILPO, CIPO, IMPI, IPOS, IP Australia, SIC, MyIPO, IPOPHL, INPI, INDECOPI and SAIP.
  PCT-PPH: Latest PCT work product established by one of the PPH partner offices as an ISA or IPEA (WO-ISA or IPPR/IPER)
  • PPH based on national work product: any national work product created during the processing of a national application or during the processing of a PCT application entering the national phase at one of the PPH partner offices, the result of an examination indicating an opinion of patentability
  • The following conditions must be met to file a PPH request:
    • The earliest date of the EP patent application, i.e. the priority date or the filing date, must be the same as the earliest date of the corresponding application
    • The corresponding application must have at least one claim that is patentable or has an intention to be granted
    • All claims in an EP patent application must fully correspond, i.e. the claims have the same, similar or narrower scope of protection.
    • At the time of filing the PPH request, substantive examination of the EP patent application must not have begun.
  • Documents required for PPH:
    • Submit Form 1009
    • "Claim Correspondence" Declaration (contained on EPO Form 1009)
    • Copies of OEE national or PCT work product
    • Copies of patentability/claims of intended grant and national examination results, or copies of documents cited in the latest PCT work product. If it is not an official language of the EPO, a translation is required. If the above documents have been provided to the EPO, there is no need to resubmit them. The applicant can also request the EPO to check the documents or translations from the existing dossier search system or Patentscope.
    • The EPO is not a member of the Global Patent Prosecution Highway (GPPH).
    • No request for extension of time limit may be made during the PPH procedure.
• Waiving the invitation under Rule 70(2) EPC: Before the applicant receives the search report, he/she may waive the invitation under Rule 70(2) EPC and request examination unconditionally, regardless of the search results. In this case, the European search report will be issued together with the preliminary opinion.
• Waiving the communication under Rules 161 and 162 EPC: For Euro-PCT applications, the applicant will be informed during the entry procedure that he can amend the application within 6 months after receiving the notice. The notice also informs the applicant that any application fee payable must be paid within the same period. The applicant may file a waiver of the communication, stating: "The applicant waives his right to communicate under Article 161 (1) or (2) and Article 162 of the European Protection Convention".
• Waiving a further communication under Rule 71(3) EPC: The applicant may expressly waive the right to make an amendment or correction on his own initiative. As long as the specific formal requirements are met and the Examining Division has no objection to the amendment or correction, the EPO will not issue a further communication under Rule 71(3) EPC and will proceed with the decision to grant the European patent.
• Early entry into the European phase: The EPO, as designated/elected Office, will not process an international application before the expiration of 31 months from the filing date or, where priority is claimed, from the priority date. An applicant may file a request for early processing to start processing before the expiration of this period.