The implementation of the recommendations for the Regional Phase of the EP described in the article could lead to a significant reduction in granting times.
Patent prosecution, traditionally meticulous, has emphasized time constraints, costs, and the challenge of addressing office actions while maintaining patent scope. Proceedings before the European Patent Office (EPO) and subsequent validation stages have led applicants to utilize all available time limits, resulting in an average 6-year timeframe for obtaining a granted EP patent (source: EPO- Accelerating your PCT application | Epo.org).
I. RECENT SHIFT
In recent years, the desire for rapid results, as seen in the swift granting of designs within hours and trademarks in 4 months (EUIPO standards), has become commonplace. This acceleration has enabled quick rights acquisition, especially adequate for online marketplaces, but hasn’t yet translated into patent prosecution.
II. INCREASING DEMAND FOR SPEED
Recognizing growing impatience among patent applicants to align with the pace of a fast-changing society, we’ve witnessed a surge in inquiries and requests to expedite proceedings. The goal is to secure a decision much earlier than the standard 6-year timeframe.
III. ACCELERATION STRATEGIES
1. Designate EPO as International Search Authority
When possible (e.g., for Chinese applicants), designating the EPO as the International Search Authority (ISA) eliminates the need for a supplementary search report. This, combined with waivers, can expedite the process by up to 6 months when the application meets patentability requirements.
2. Early Processing
Applicants don’t need to wait for the full 31-month period to start prosecution. By fulfilling all requirements, including filing the application and paying fees, European Patent prosecution can begin immediately after the WIPO publishes the application (18 months). This early procedure can save up to 13 months.
3. Waivers
Waiving the right to Rule 161/162communication within the EPC route allows for an instant 6-month acceleration, with the European Search report as the first communication from the EPO. Waiving the right to receive the Rule 70(2) EPC invitation accelerates the process by an additional 6 months but forfeits examination fee refunds if the European Search report is negative.
4. PACE Requests
The Program for Accelerated Prosecution of European patent applications (PACE), introduced in 2015, enables applicants to request expedited delivery of the Search and examination reports through a standardized petition. It’s subject to the feasibility and workload of the search and examining divisions.
5. Patent Prosecution Highway (PPH)
Similar to PACE, a PPH request may not guarantee streamlined procedures in all cases, but it’s worthwhile due to lower official fees and access to supporting documents.
6. Go slim and grow later
For applicants with fewer cost constraints, accepting a narrowed scope suggested by examiners or focusing on the searched object can lead to quicker grant decisions. Subsequently, filing a divisional application allows pursuing a broader, generic scope for the initial application.
7. Don’t exhaust
Rapidly responding to office actions and minimizing allowable time limits remains an effective strategy for obtaining timely decisions in patent prosecution.
IN SUMMARY…
The demand for swift decision-making in intellectual property matters has prompted a re-evaluation of conventional patent prosecution timelines. Implementing these strategies allows applicants to adeptly navigate the process, securing timely grants for their EP regional phase applications (from 36-48 months down to less than 20-24 months from the EP entering stage). This proactive approach aligns seamlessly with the expectations of a dynamic and fast-paced society.
Source: HERRERO＆ASOCIADOS