Using ‘PACE’ at the EPO
Speedy prosecution before the European Patent Office can be critical to patent strategy in the chemistry and pharmaceutical sectors, whether in the context of alignment with commercial objectives, attracting investment, supporting enforcement plans or even setting the scene for prosecution in other jurisdictions. The EPO’s programme for accelerated prosecution of European patent applications (’PACE’) can be a useful tool in that regard.
This article looks at the mechanics of PACE and what applicants should keep in mind when considering PACE for their applications.
If you would like to discuss accelerating prosecution of your European application, or have any questions about EPO practice, please do not hesitate to get in touch.
PACE - the basics
In general, applicants wishing to speed up prosecution of their EPO applications can file a request for accelerated processing under PACE.
A PACE request must be filed online using a dedicated form, and can be filed in respect of only one application at a time. No justification for the request is required, nor is it necessary to pay an official fee.
It is possible to file a PACE request during the search and/or the examination stage, and it is necessary to file separate requests for each stage. A PACE request can only be filed once per stage.
An application will be removed from PACE if the applicant requests an extension of time or if the application is withdrawn or deemed to be withdrawn (e.g. due to a missed deadline that necessitates the use of further processing). It is not possible to return the application to the PACE programme if that happens.
However, if a renewal fee is not timely paid, the EPO suggests that prosecution under PACE will be ‘suspended’ (thus implying that prosecution under PACE would be resumed following the timely payment of the renewal fee with a surcharge).
PACE requests are not placed on the public file wrapper, unlike requests for prosecution under Patent Prosecution Highway (PPH). In some instances, the fact that the application is prosecuted under PACE might be deducible from the file wrapper itself - be it by the dates of substantive communications from the EPO (more on that below) and/or the applicant’s behaviour (timely, complete responses to examination reports - see above).
There seems to be no specific limit on the number of PACE requests an applicant can file. However, the EPO may require applicants who request PACE ‘for all or most of their applications’ to limit the number of PACE requests by making a selection.
PACE in the search stage
For newly filed European applications, the EPO strives to issue the extended/partial European search report within six months from the date of filing of the application (direct EP filings) or from expiry of the period under Rule 161(2) EPC (applications entering the EPO regional phase, where the EPO did not act as an ISA/sISA).
With the above in mind, the Guidelines for Examination at the EPO state that ‘no PACE request is needed’. Indeed, PACE requests seem to be generally more effective when filed during examination.
Nevertheless, in general, if a PACE request for search is filed, any accelerated search can only start once all relevant formal requirements have been complied with.
As an example, for applications entering the EPO regional phase (where the EPO did not act as an ISA/sISA) - for a search to start immediately after the regional phase entry, it is necessary on the EPO regional phase entry to: (1) pay any excess claim fees due in respect of the claims to be searched and (2) expressly waive the right to the Rule 161(2) EPC communication.
In that case, it may be helpful to consider making any desired claim amendments on entry (a) to ensure that the claims to be searched cover the commercially relevant subject matter and (b) to minimise the risk of formal objections delaying the search.
PACE in the examination stage
As a general rule, a request for accelerated examination under PACE can be filed at any time after an application has been passed to the Examining Division. This offers some flexibility - in some instances, it may be desirable to file a PACE request early, e.g. together with a response to a search opinion, while in other cases, an applicant may wish to accelerate prosecution only after receiving an examination report indicating that the application is in order for allowance.
When an application is in the examination stage and it is prosecuted under PACE, the EPO makes every effort to issue subsequent examination reports within three months of receipt of the applicant’s response. Of course, those timelines are not guaranteed, and there may be delays for applications in very active technical fields.
For applications entering the EPO regional phase for which the EPO acted as an ISA/sISA, accelerated examination can also be requested on entry into the EPO regional phase or in responding to the communication under Rule 161(1) EPC.
However, if an applicant wishes that examination starts immediately after the regional phase entry, it is necessary on entry to: (1) pay any excess claim fees due and (2) address (by way of claim amendments and/or arguments), as appropriate, any objections raised in the WO-ISA/IPER/sISR.
If accelerated examination is requested in this way, it may, again, be useful to also consider making voluntary claim amendments.
Conclusion
While possible backlogs at the EPO mean that accelerated timelines under PACE cannot be guaranteed (especially in heavily congested technical fields), PACE remains a valuable strategic mechanism for applicants, offering a practical route for gaining traction in prosecution strategy. Applicants should proactively consider whether PACE could be deployed to support commercial goals or facilitate portfolio management.
If you have any questions about PACE or other procedural quirks of the EPO, feel free to get in touch.
This article is for general information only and is not intended to constitute legal advice. If you would like tailored advice on a specific matter, please do not hesitate to contact me.
