Accelerated Prosecution at The EPO & UK - IPO

Both the EPO and the UK-IPO offer accelerated prosecution without the need to pay an official fee. At the EPO no reasons are needed. The UK-IPO requires reasons, although most cases of commercial significance will qualify.

The PACE Procedure at the EPO

The PACE procedure at the EPO allows for the search and/or examination of any application to be accelerated. The request can be filed at any time and no official fee is payable. The EPO will accept the request for accelerated prosecution where 'practically feasible and subject to the workload of search and examining divisions'. In practice, PACE requests are usually accepted, but this is at the EPO‟s discretion. In certain technical fields, current backlogs may mean that PACE requests are in practice ineffective.

Under PACE, since 1 January 2016, requests for acceleration of the search procedure and requests for acceleration of the examination procedure need to be filed separately. Once PACE has been requested, the EPO aims to issue a search report within 6 months. For examination, the EPO usually aims to produce an examination report within 3 months, and any further examination reports within 3 months of the applicant's response. In order to maintain the accelerated procedure, the applicant must reply to the examination reports within the original term set by the examiner (i.e. without extensions).

For further information, the EPO's notice regarding the PACE procedure can be found at:

http://archive.epo.org/epo/pubs/oj010/06_10/06_3520.pdf

Accelerated Examination at the UK-IPO

In most cases, the UK-IPO has discretion as to whether to accept requests for acceleration. It is necessary to provide reasons for requesting the acceleration, which should be specific to the case in question. 

Reasons likely to be accepted include being aware of a potential infringer, or the need to secure an investor. Acceleration requests have also been allowed for applications of particular commercial importance. Further, acceleration will be allowed for the purpose of obtaining grant of claims for use in a Patent Prosecution Highway (PPH) request in another country.

If the application relates to 'green technology' the UK-IPO is obliged to allow a request for acceleration. The term 'green technology' is not strictly defined, and so may encompass many inventions if there is any type of 'green' aspect or advantage. However, 'green' accelerated applications are put into a special public database, so may attract more attention than usual.

The UK-IPO is also obliged to accept an acceleration request under the PCT(UK) Fast Track scheme. This scheme allows for accelerated examination in the UK national phase of an International ('PCT') application, if the International application has received a positive International Preliminary Report on Patentability (IPRP) and examination has not already commenced in the UK national phase.

When accelerated prosecution is allowed, the UK-IPO usually issues a first examination report within 2 months, and continues to do so if the applicant's “actions continue to demonstrate a desire to process [the] application quickly”.

For further information, the UK-IPO‟s notice regarding accelerated prosecution can be found at:

https://www.gov.uk/government/publications/patents-fast-grant

Obtaining Accelerated Grant in Order to Apply for Patent Prosecution Highway Procedure at the USPTO

The EPO‟s or UK-IPO's own acceleration procedures may be used to more quickly obtain allowable claims to form the basis of a PPH request on the corresponding case pending before the USPTO. In particular, UK prosecution is relatively cheap, and granted claims can potentially be obtained within nine months. Therefore, accelerated prosecution at the UK-IPO in combination with a PPH request at the USPTO can be a very cost effective way of accelerating prosecution at the USPTO, without the need to pay a large prioritised examination processing fee to the USPTO.

The USPTO will, we understand, accept PPH requests for a US first filing based on claims allowed by the UK-IPO in a British application that claims priority from the US application (either directly, or via a PCT application). Further, a US application derived from a PCT application may benefit from PPH based on claims allowed in the corresponding UK national phase, or claims allowed in an application from which the PCT application claims priority. Therefore, one strategy would be to enter the UK national phase of a PCT application early in order to obtain granted claims for use in a PPH request in the US national phase of the same PCT application.

PPH based on claims granted by the EPO may be obtained in the corresponding circumstances as described for the UK-IPO, with the additional option of using claims found allowable by the EPO when acting as the International Searching Authority or International Preliminary Examining Authority for a PCT application which subsequently enters the US national phase. 

PPH at the EPO or UK-IPO 

A corresponding granted patent abroad can be used to apply for PPH at either the EPO or the UK-IPO (although note that there is no direct PPH agreement between the UK-IPO and the EPO). From January 2014,  the Global PPH (GPPH) scheme expands the number of countries from which a granted patent can be used as the basis for a PPH request at the UK-IPO.  In addition, the IP5 PCT-PPH scheme expands the number of countries from which a positive examination result in the International phase of a PCT application can be used as the basis for a PPH request at the EPO.

However, the only effect of a PPH request is to accelerate the application under the procedures already in place at the EPO or at the UK-IPO, whilst placing extra formal burdens upon the applicant. Neither the EPO nor the UK IPO automatically allows an application if acceleration under the PPH scheme is requested. They each perform their own examination of the claims, based on their own prior art searches. This can be particularly relevant to PPH requests based on US cases, for which different prior art might be citable in Europe or for which a different claim format may be appropriate.

Therefore, we would usually recommend using the EPO's own PACE procedure rather than PPH. Similarly, if a suitable reason for acceleration is available, using the UK- IPO's own acceleration procedure may be more cost effective than a PPH request.

However, PPH is a useful acceleration tool when none of the UK-IPO's usual reasons for acceleration apply. 

8 August 2016

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