For the un-initiated, the PACE programme is a means for applicants for European patents to speed up prosecution of their applications which can otherwise sometimes move at a somewhat glacial - er - pace. Many points in the new notice consolidate existing practices, such as:
- Requiring applicants who request PACE for all or most of their applications to select which cases should actually be accelerated.
- Applications being removed from the PACE programme if the applicant requests an extension of time.
- Not publishing PACE requests and excluding them from public file inspection.
- Only providing accelerated prosecution when it is practically feasible subject to the workload of EPO employees.
The previous notice regarding PACE can be viewed here .
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| Merpel has difficulty with acceleration |
“Ah,” Merpel noted, “but that’s not all. The EPO have laid a few traps for the bleary-eyed practitioner.” The biggest pitfalls perhaps being that:
(1) PACE requests must now be made using the dedicated form (Form 1005) and must be filed online. Paper forms or PACE requests in response letters will not cut the mustard. [Here, Merpel wonders whether a mere Notice from the EPO can limit permitted means for filing documents. Is not a Decision from the President required for this? Otherwise, how can Rule 2 EPC not apply?]
(2) A PACE request filed during the search stage will not accelerate examination. Under the previous practice, separate requests were needed to accelerate search and examination but they could be filed at the same time. Now, apparently, a request for accelerated examination can only be filed once the examining division has assumed responsibility for the application (for which, see Rule 10 EPC).
(3) PACE can only be requested once during each stage of prosecution. Thus, should an application under examination drop out of the PACE programme, it will not be possible to re-enter the accelerated procedure. So the cyclic ruse of requesting PACE to speed up the EPO, requesting an extension to give the applicant as much time as possible, and then re-requesting PACE on filing of a response is a no-go under the new streamlined process. (Merpel says “Shucks”, but wonders whether anyone actually did this.)
An application will be removed from the PACE programme if;
a. the PACE request has been withdrawn,
b. the applicant has requested an extension of time limits,
c. the application has been refused,
d. the application has been withdrawn,
e. the application is deemed to be withdrawn.
Particularly relevant in relation to refusal and deemed withdrawal, it is specifically noted in the Notice that "This applies regardless of the legal remedies available under the EPC", so missing the deadline and then requesting further processing will cause the application to be removed from PACE.
Also worth noting is that accelerated prosecution will be “suspended” if renewal fees are not paid by the initial due date. On the standard meaning of the words used, it appears that this “suspension” does not remove the application from the PACE programme and that if the renewal fee is paid within the subsequent 6 month grace period, accelerated processing should resume.
The new procedure will apply to all PACE requests filed on or after 1 January 2016. However, the provisions relating to removal of the application from PACE and suspension of accelerated processing will apply to all applications pending at that date.
Alongside this PACE notice, the EPO have issued a notice summarising other, existing ways in which it is possible to expedite the European grant procedure.
Merpel is also a bit annoyed because she has heard of European attorneys being asked about the new PACE provisions by applicants in Japan, who apparently heard it from visiting Examiners well before this announcement. Merpel is not against Examiners visiting applicants, but it is unhelpful to say the least to announce changes to users of the European patent system who require representation without representatives having been given the chance to inform themselves.
(Thanks to Tim Belcher for authorial assistance and analysis of the differences between the new and prior Notices).