In July this year the European Patent Office announced a new scheme to improve legal certainty on pending patent applications, published here. The scheme essentially boils down to the EPO prioritising the processing of certain types of application.
All Search Reports Within Six Months Of EP Filing
Under the scheme, which is being called the “Early Certainty from Search” scheme, the EPO aims to issue all search reports and written opinions on patentability within six months of the filing of an EP application. This is intended to improve certainty for the general public by providing an early view of patentability and prior art on pending patents, which will be on the public record as of the date of publication of the European application. The EPO also believes that this will be of benefit to applicants by giving them an early view on validity.
Faster Processing For Applications With Third Party Observations
To the same end, the EPO is now prioritising the processing of applications on which observations have been filed by third parties. But in order for processing to be prioritised the third party must have identified themselves. How the EPO will determine whether the person or company named as filing the observations is really the person or company behind the observations is not clear.
Faster Processing For Applications Already In The Examination Phase
Applications for which examination has already started will now be prioritised over applications waiting to begin examination. This is perhaps a response to the fact that there is a significant cohort of applications at the EPO that have been pending for a long time, with gaps of five years between examination reports not being uncommon in some technical areas.
Faster Processing For Applications With Clear Search Reports & For Oppositions
The EPO is also expediting grant of applications with positive search opinions and prioritising processing of oppositions and requests for limitation or revocation.
Is There A Downside?
While this appears to be very positive news, in the absence of a massive boost in resources at the EPO, all of this prioritising and expediting must come at the expense of slower processing for other applications. Perhaps now if you have pending applications at the EPO that have been searched but for which you have not yet received a first examination report, you can expect to wait a bit longer than before.
It remains to be seen how significant an effect this scheme will have in practice. But if you do need examination to get started on one or more of your pending applications, it is possible to request accelerated examination under the EPO PACE scheme. This does not involve any additional fees or work for the applicant, and no reason for requesting PACE need be given. The EPO should then issue an examination report within three months, although no guarantees are given.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.