The European Patent Office (EPO) has implemented more stringent rules for the PACE programme – which kicks in when anyone wants to accelerate their patent applications.
The EPO will not accept any request from an applicant to delay office actions (any more), renewal fees must be paid on time and the applicant is responsible for ensuring the procedure runs smoothly (patents will be granted or rejected after one or two office actions). Are the changes an improvement?
When you submit a PACE request, the EPO will do its utmost to accelerate the procedure. This is good news for the applicant in a number of situations. For example, if a competitor wants to launch an infringing product. However, what users of the system do not always consider is that their patent applications can just as easily be rejected quickly as a result of this programme. In such a situation, any appreciation of the accelerated procedure will soon become a thing of the past. Third parties are able to deduce this negative message from the file too. The PACE programme has a number of other potential disadvantages too. For example, PACE applicants need to be flexible and perhaps even be prepared to accept a limitation in the claims to be granted. In addition, the costs applicable once a European patent has been granted would seem to be increasing quickly.
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With effect from 1 January 2016, a PACE request will only be permitted once for the search stage and once for the examination stage. If the PACE status has been lost after a ‘due date’ has been missed, it may not be requested again. It would seem to me that this measure is designed to avoid the EPO organising an accelerated search that the applicant subsequently does nothing with. As such, the new measure encourages the applicant itself to respond quickly to the office actions. This seems fine to me; the EPO has a high enough workload already and no-one will welcome the introduction of unnecessary PACE procedures. PACE ought to be used selectively and this is something that this measure stimulates.
PACE will continue to be useful to us. We are sometimes approached by inventors from India, a country in which applications have to be submitted locally before anywhere else. Although these applications can then be followed up with applications in Europe, the priority year has already started. For us, it is important to receive a good European search as soon as possible during the course of the first year, which will give us plenty of time to consider follow-up filings elsewhere. However, as these applications are not first filings, the EPO will only carry out an accelerated search when asked to do so. To ensure that a European search report is still received promptly in such cases, we will continue to use PACE with the new rules in place.
Janssen Pharmaceutica NV