Optimizing patent applications at the European Patent Office (EPO)

Strategies and benefits of PACE, PPH, and disclaimers.

In today's competitive global marketplace, patent protection for inventions is critical for companies to protect intellectual property rights and secure competitive advantages. The European Patent Office (EPO) is one of the most important authorities for granting patents, providing inventors and companies with a centralized and streamlined process for obtaining patent protection in Europe. To optimize the processing of patent applications at the EPO in terms of speed and cost, it is significant for applicants to be aware of and utilize various strategies. These include the Patent Prosecution Highway (PPH), the Program for Accelerated Examination (PACE), waiver of rights, and minimization of claim fees. This article discusses these strategies both in the context of general European patent applications and, more specifically, PCT-EP applications, also known as Euro-PCT applications, to provide applicants with a comprehensive guide to optimizing the process before the EPO.

Patent Prosecution Highway (PPH) and Euro-PCT applications

The Patent Prosecution Highway (PPH) is an international cooperative model to expedite the examination process for patent applications filed simultaneously in multiple states. The PPH allows participating patent offices to share each other's work processes to streamline the examination process and improve the quality of patents. If an applicant receives a positive decision on the patentability of his or her invention from one participating office, he or she can request accelerated examination under PPH for the same invention from another participating office.

PPH can be a valuable tool for optimizing the processing of patent applications at the European Patent Office (EPO), especially for applications received by the EPO under the Patent Cooperation Treaty (PCT-EP or Euro-PCT). However, there are some limitations and potential drawbacks to be considered when using the PPH in this context.

Limitations and potential disadvantages of the PPH

Under PPH, the applicant must adhere to the wording of the claims granted (or to be granted) in the parallel proceedings. This limitation may turn out to be a hindrance in certain situations, as it is not possible to make adjustments to take into account-specific case law in different countries or to tailor the scope of protection to specific product features relevant to the European market. Applicants must therefore carefully weigh the advantages of accelerated examination against the possible disadvantages of a limited scope of protection.

For applications from countries with different claim dependency practices ("multiple dependencies"), such as the United States, PPH can be challenging. If an applicant wishes to include multiple patent claim dependencies in the European application, this may make a PPH request impossible or result in termination of the accelerated procedure if the included dependencies differ from the granted set of claims (even if originally disclosed in the description).

Another potential problem with the application of PPH is that the applicant is bound by the granted claim set even if the content of the claim set is against Art. 123(2) EPC on allowable amendments. This may be due to differences in the case law of the various jurisdictions, where amendments are admissible in parallel proceedings but not before the EPO.

Importantly, while the PPH allows for expedited examination, it does not guarantee that the EPO will simply adopt foreign examination results without examination. Rather, EPO examiners generally conduct their searches and examinations independently of the results of parallel examination. Applicants should therefore not assume that a positive result in one country will necessarily lead to a smooth and fast examination procedure at the EPO.

In summary, PPH requests can be a valuable tool for expediting the processing of patent applications at the EPO. However, applicants should carefully consider the limitations and potential drawbacks associated with PPH and weigh them against the benefits of expedited examination.

The PACE-program

The Program for Accelerated Examination of European Patent Applications (PACE) is an initiative of the European Patent Office (EPO) to speed up the examination process for patent applications. Unlike the Patent Prosecution Highway (PPH), PACE is not based on a division of labor with other patent offices, but allows for faster examination within the EPO. Applicants can request an accelerated examination under PACE on a voluntary basis, which allows for greater flexibility in processing applications while providing the same level of acceleration as PPH.

In the author's experience, there is no difference in expediting between PPH and PACE. However, PACE offers some advantages over PPH that make it more attractive to applicants seeking to optimize their patent applications at the EPO.

PACE versus PPH: Which program is better for fast and flexible optimization of patent applications at the EPO?

Unlike PPH, PACE allows applicants to freely amend their claims without being limited by the scope of protection of the claims in parallel proceedings. This flexibility provides applicants with the opportunity to adapt claims to their specific needs, including the introduction of multiple recitations in the claims and the pursuit of a broader scope of protection, while still meeting the requirements of Article 123(2) EPC.

PACE can be requested at any point in the examination process, while PPH must be requested before the examination begins. This flexibility allows applicants to opt for accelerated examination based on the current status of their application and any strategic considerations. In addition, PACE is independent of the status of parallel proceedings and offers applicants the opportunity to accelerate examination before the EPO without relying on the status of their applications in other jurisdictions.

It should be noted that both PPH and PACE are free of charge to the applicant, although administrative fees may be incurred for the preparation of applications.

The Patent Prosecution Highway (PPH) and the Program for Accelerated Examination (PACE): Similarities and Differences.

In both PACE and PPH, it is important to note that applicants must respond promptly to notices, as acceleration ends if the applicant fails to meet the set deadlines. Once a patent application has been excluded from the PACE or PPH system, it is no longer possible to request acceleration again. Applicants are therefore advised not to request an extension of time for applications processed in the PPH or PACE system, as this contradicts the basic idea of accelerated processing.

In cases where applicants systematically request accelerated processing for all or most of their applications, the EPO may invite them to limit the number of their PACE and/or PPH requests by asking the applicant to make a selection. This measure ensures efficient use of resources and effective management of the EPO's workload.

In summary, PACE requests are generally more suitable than PPH requests for applicants seeking to optimize their patent applications to the EPO in terms of speed and flexibility. However, applicants should carefully consider their grant strategy and the specific requirements and limitations of each acceleration program before deciding.

Acceleration of PCT-EP applications at the EPO through waivers

In addition to requesting accelerated examination under PPH or PACE, applicants can also optimize in particular the processing of PCT-EP applications at the European Patent Office (EPO) through various waivers. These waivers can help speed up the start of the grant process and streamline the overall procedure.

The first waiver option is to waive the expiration of the 31-month EP entry period for PCT applications, i.e., to request early processing of PCT EP applications. A request for early processing under Art. 23(2) or 40(2) PCT can be filed with the EPO at any time before the expiry of the 31-month period. Without the waiver, the EPO would not begin examination or search until after the 31-month period has expired. This early start can help accelerate the examination process so that the applicant receives a decision on his application more quickly.

Another possibility is for applicants to request an immediate start of work and waive their right to use the remaining six-month period under Rule 161(1) or (2) and Rule 162 EPC. As a reminder, in the PCT EP Entry, the applicant must take certain actions under Rule 161/162 EPC depending on whether the EPO was the International Searching Authority (ISA) or not. If the EPO was the ISA, the applicant must file a relevant response on the international search report within the time limit specified in Rule 161/162 EPC. If the EPO was not the ISA, the applicant has the option of amending the claims (e.g., by reducing the number of claims) within the period referred to in Rule 161/162 EPC. Based on these amendments, the EPO carries out the search and draws up the extended European search report (EESR).

Waiver of the right to use the remaining six-month period under Rule 161(1) or (2) and Rule 162 EPC requires immediate payment of all claim fees due. If the EPO has invited the applicant to pay further search fee(s), the final search report cannot be drawn until the applicant's reply to the invitation to pay further search fee(s) has been received, or the relevant time limit has expired.

The third waiver option is the waiver of the right to be asked under Rule 70(2) EPC whether the applicant wishes to maintain the application. This waiver may be relevant in particular in cases where the EESR is predominantly negative so that it appears pointless to pursue the application. Furthermore, the waiver may be relevant in cases where the applicant is already convinced that the application is ready for grant due to parallel search or examination results. By waiving this right, the applicant can arrange for the immediate dispatch of the communication under Rule 71(3) EPC, provided that the EESR is also positive in all respects.

In summary, the use of waivers can be an effective strategy to expedite the grant procedure before the EPO, especially for PCT-EP applications.

Saving costs on patent applications: Reducing the number of claims at the EPO

One factor that can have a significant impact on the cost of a patent application at the European Patent Office (EPO) is claim fees. For each claim exceeding 15, a fee of currently €265 per claim must be paid. In applications claiming a foreign priority or PCT-EP entries, the applicant may therefore be inclined to reduce the scope of his original claims by deleting fewer relevant claims for cost reasons. This may be done with the subsequent application (claiming priority) or after receipt of the communication under Rule 161/162 EPC. In both cases, search and examination are then carried out based on the reduced set of claims.

Applicants beware: Here's what to watch out for when deleting claims in patent applications

When deleting claims, however, there are some pitfalls that applicants should be aware of:

When deleting claims, it is important to check whether the features of the deleted claim can still be largely derived from the description. It is usually uncertain whether the deleted claim features can become relevant again in the future.

Moreover, considering the EPO's rather restrictive requirements for amendments under Article 123(2) EPC, the subsequent adoption of deleted claim features from the description may lead to an inadmissible intermediate generalization. As a reminder, the isolated removal of a particular feature from an originally disclosed combination of features and its use to delimit the claimed subject is only permissible if there is no structural and functional relationship between the features of the combination of features. However, features are often mentioned in the patent specification with other features, specific embodiments, etc. This can make it difficult to reintroduce deleted features into the claims isolated.

The deletion of claims also means that the EPO will not explicitly search for the corresponding claim features. If these features are not covered by the search concept used by the EPO, their later re-introduction may not be allowed. According to G 2/92, if not all claimed inventions have been searched, the applicant must in principle limit the claims to one of the searched inventions.

Therefore, the deletion of claims should be approached with caution. To optimize the prosecution of patent applications at the EPO in terms of speed and cost, applicants should carefully consider the potential impact of claim deletion.

A comparison of PACE, PPH, and waivers: Advantages and disadvantages for optimizing the EPO patent application process.

The processing of patent applications at the European Patent Office (EPO) can be optimized for speed and cost through several strategies, including the Patent Prosecution Highway (PPH), the Program for Accelerated Examination (PACE), waiver of rights, and minimization of claim fees. Each strategy has its advantages and limitations, and applicants should carefully consider which approach best meets their specific needs and goals.

PPH is a useful tool for expediting the examination process, but has certain limitations, such as being tied to the claim drafting of an issued parallel case. PACE, on the other hand, provides greater flexibility for claim changes and can be requested at any time during the review period. Waiving rights for PCT EP registrations can further expedite the examination process by allowing early processing by the EPO. Finally, minimizing claim fees is critical to optimizing costs, but applicants should exercise caution in dropping excess claims to avoid potential pitfalls for future filings.

Summary and recommendations

In summary, steps to optimize the processing of patent applications at the EPO require careful consideration of the various strategies, considering their respective advantages and disadvantages. If applicants are aware of and apply these strategies, they can efficiently navigate the patent granting process and secure valuable patent protection in a timely and cost-effective manner.

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Author: Dr. Michael Schmid