Accelerating Search & Examination... for Free

This article was included in our Spring/Summer 2012 edition of Inside IP magazine.

PACE (Programme for accelerated prosecution of European patent applications) is nothing new, and has long been available to applicants wishing to have their applications processed by the European Patent Office (EPO) in an expedited manner.

When it was first introduced, the take up rate for PACE was at 4-5% of the total applications filed.  This rose to 6.3% in 2009, and EPO’s view is that it has now steadied around 6-7% (levels observed for 2010 and 2011).  But with the ever increasing demands and expectations of international applicants, it may be too early to conclude that this will stay at the current level.

The biggest selling points of PACE are that there is no official fee for a PACE request, and that no reasons need to be given.  Furthermore, the EPO does not publish the requests for PACE, and the requests are excluded from public inspection (provided that it is made in a separate sheet or using the EPO Form 1005).

Overall, PACE is a very simple and accessible procedure available to all applicants at no cost.  In this respect, we advise applicants interested in getting a patent granted relatively quickly to use PACE.  The effectiveness of PACE and the ease at which PACE status can be obtained is the main reason that the Patent Prosecution Highway (PPH) is rarely used for European patent applications.

PACE can be requested to accelerate search and examination.  To accelerate search for European patent applications which claim priority, a PACE request should be made on filing the application.  The EPO then makes every effort to issue the extended European search report as soon as possible.  Accelerated examination can be requested at any time for European or Euro-PCT applications.  The EPO then makes every effort to issue a first office action within 3 months of the request.  Our experience is that the EPO is quite good at turning PACE cases around quickly.

However, applicants should be aware that PACE does not place the burden just on the EPO; the applicant also is expected to take part.   For example, the applicant is expected to reply to EPO communications within the normal period set; if an extension of time is requested, accelerated status is lost.  Also, although there is no set limit as to how many PACE requests an applicant can make, too many requests will be frowned upon.  If the applicant requests PACE for all or most of its applications, the EPO will require the applicant to limit the number of PACE requests.

Finally, the EPO is entitled to reject PACE requests depending on the workload of its search and examining divisions.  But that said, the EPO has said that the number of PACE requests made since its introduction has not been above what they had originally expected.  This suggests that EPO is not overloaded with PACE requests for now.  Maybe it’s time to check your PACE.

Jae-Woo (Jae) Park 25 May 2012

Return to news list