We recently wrote about changes to the PACE programme offered by European Patent Office (EPO) for accelerating the prosecution of European patent applications. While PACE is the general purpose way of reducing the time between official actions, there are other ways of speeding up prosecution.
These other ways usually take the form of waiving the right to receive a particular communication from the EPO which invites you to complete specific acts, with the proviso that you complete the specific acts at the time of the waiver. However, in the November 2015 edition of its Official Journal, the EPO snuck in a new way of speeding up the prosecution of Euro-PCT applications (European patent applications derived from international patent applications, also known as ‘PCT applications’).
It is the EPO’s standard practice to issue a communication under Rules 161 and 162 EPC shortly after a PCT application enters the European phase. This communication gives you six months to file voluntary amendments to the application, pay any excess claim fees that are due and, where the EPO performed the International Search during the international phase, respond to any objections the EPO might have raised during the international phase.
It is also the EPO’s standard practice to wait until the entirety of the six month term has expired before processing the application further, regardless of the circumstances. Even if you file a speedy response to the Rule 161 communication, or do not want to make any amendments at all, you must wait for the six months to expire before your application can go any further.
Until now, the only way to avoid this problem was to waive your right to receive a Rule 161 communication at the time you file the forms to enter the European Phase. In some cases this is practical, but in others, in particular where you are up against the deadline for entering the European Phase and would have to file a response to objections in order to successfully waive the right, it is less practical.
The EPO has now provided an obvious, but still welcome, solution to the problem. According to the Official Journal, if a response to the Rule 161 communication includes an indication that the applicant does not wish to use the entire six month term, processing of the application will begin immediately.
For further information on ways to speed up prosecution of applications before the EPO, please contact us.
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 any action in reliance on it.