CABINET CHAILLOT

Acceleration of proceedings before EPO : pros and cons of PACE and PPH

Under the PACE program, a PACE request may be filed only once during each stage of the procedure, i.e. search and examination, and for one application at a time.

A PACE request filed during search will not trigger accelerated examination. If the applicant wishes to have the application examined in an accelerated manner, a PACE request may be filed, once the application has entered the examination phase.

An application will be taken out of the PACE programme if:
–  the PACE request has been withdrawn,
–  the applicant has requested an extension of time limits,
–  the application has been refused, withdrawn or is deemed to be withdrawn.

In such cases it will not be possible to restore the application to the PACE programme.

Additionally, PACE will be suspended in the event of failure to pay renewal fees.

During search, the EPO will try to issue a search report within 6 months from filing of the PACE request, while during examination, the EPO makes every effort to issue the next office action within three months.

PPH is available before EPO with many patent offices worldwide. The list of such offices is available here: https://www.epo.org/en/applying/international/patent-prosecution-highway

PPH must be requested before examination begins and only when a corresponding application was accepted, contrary to PACE. Also, the set of claims must correspond sufficiently to the claims accepted for the corresponding application (claims are considered to fulfil this requirement if they have the same, a similar or a narrower scope).

What to choose? Statistics show that acceleration is more or less the same with PACE and PPH.

A first difference between PPH and PACE relates to the use of available work results. Under PACE program, the European application is “taken out of turn” for search and/or examination, while under PPH the application is processed out of turn and the Examiner is explicitly asked to take into consideration available work results, even if in fact the EPO Examiner is not bound by such search results and can cite new additional documents or even completely different documents.

Another difference is that claims filed under PPH before EPO should correspond sufficiently to claims accepted for the corresponding application. This can result in unjustified limitations before EPO, in particular when documents taken into consideration for assessing patentability are different before EPO and before the office that accepted the corresponding application.

It should also be remembered that support in the application as initially filed for amendments are much stricter before EPO than before other offices, which means that claims adapted for PPH filed before EPO to comply with claims accepted for the corresponding application might raise Article 123(2) EPC objections by the EPO Examiner.

All in all, PACE program might provide more room for adapting claims to documents actually cited by the EPO Examiner for a potentially broader scope, while making sure that amendments filed comply with Article 123(2) EPC.

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