EPO Accelerated Prosecution Procedure (PACE) from 2016
The EPO on 30 November 2015 issued a notice concerning the accelerated prosecution procedure (PACE). Whilst many aspects of the procedure remain unchanged, there are some important modifications that will come into force from 1 January 2016. One key difference is that it will now be possible to request PACE only once during the search procedure and only once during the examination procedure. This means that for any applications where PACE has previously been requested and the application has subsequently dropped out of PACE, and where PACE is still required, it is advisable to file a PACE request before the new procedure comes into force on 1 January 2016.
The PACE procedure at the EPO allows for the search and/or examination of any application to be accelerated. As of 1 January 2016, it will be necessary to file the PACE request online using the appropriate form. Other than this, there are no special requirements to qualify for PACE: the request can be filed at any time, no official fee is payable and no special reasons need be given.
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. In certain technical fields, current backlogs may mean that PACE requests are in practice ineffective. In addition, applicants who routinely request PACE for all or most of their applications will be required by the EPO to select a subset of applications for acceleration.
From 1 January 2016, requests for acceleration of the search procedure and requests for acceleration of the examination procedure will need to be filed separately. Further, from 1 January 2016 it will be possible to file requests for acceleration of the examination procedure only after responsibility for the application has passed to the examining division.
Applications will be removed from PACE if: (i) the PACE request is withdrawn, (ii) the applicant extends a time limit, or (iii) the application is refused, withdrawn or deemed withdrawn. The EPO generally already removes applications from PACE under these circumstances, so this does not in practice represent a significant change to the procedure.
A more significant development is that from 1 January 2016 it will be possible to file a request for PACE only once during the search phase and only once during the examination phase. As a result, if an application is removed from PACE under the new procedure (for example because an extension has been requested), it will no longer be possible to reinstate the application into PACE by filing a further request for PACE. Accordingly, for any applications where PACE is desired and where PACE has previously been requested and the application has subsequently dropped out of PACE, it is advisable to file a further PACE request as a precaution before the new procedure comes into force on 1 January 2016.
The EPO’s notice states that accelerated prosecution will be “suspended” on cases where renewal fees are not paid in due time. Although not stated, the implication is that accelerated prosecution will be resumed if the renewal fee is paid within the six-month grace period.
It is noteworthy that on applications where substantiated observations on patentability under Article 115 EPC have been filed at the EPO by a non-anonymous third party, the EPO will treat the application as if a PACE request has been filed and will accelerate prosecution. However, the filing of such third party observations would not seem to constitute a request for PACE by the applicant, and indeed the applicant may not desire PACE at all. In such circumstances where PACE is initiated by a third party, the applicant cannot remove the application from the accelerated procedure by, for example, filing an extension request. Nor it seems would the earlier filing of a PACE request by the applicant and subsequent removal from PACE preclude the EPO from accelerating prosecution in view of substantiated observations by a non-anonymous third party.
26 November 2015
 The EPO’s notice can be found at http://www.epo.org/law-practice/legal-texts/official-journal/2015/11/a93.html.