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Thursday, 3 December 2015

Keeping PACE with the European Patent Office

The eagle-eyed amongst our readers will have noticed that the EPO has issued a notice revising the PACE procedure (Procedure for Accelerated Conduct of Examination) with effect from 1 January 2016.  The changes are said to “streamline the [PACE] programme while increasing its effectiveness.”

For the un-initiated, the PACE programme is a means for applicants for European patents to speed up prosecution of their applications which can otherwise sometimes move at a somewhat glacial - er - pace.  Many points in the new notice consolidate existing practices, such as:
- Requiring applicants who request PACE for all or most of their applications to select which cases should actually be accelerated.
- Applications being removed from the PACE programme if the applicant requests an extension of time.
- Not publishing PACE requests and excluding them from public file inspection.
- Only providing accelerated prosecution when it is practically feasible subject to the workload of EPO employees.
The previous notice regarding PACE can be viewed here .

Merpel has difficulty with acceleration
So, just a useful summary of existing practice?!

“Ah,” Merpel noted, “but that’s not all.  The EPO have laid a few traps for the bleary-eyed practitioner.”  The biggest pitfalls perhaps being that:

(1) PACE requests must now be made using the dedicated form (Form 1005) and must be filed online.  Paper forms or PACE requests in response letters will not cut the mustard. [Here, Merpel wonders whether a mere Notice from the EPO can limit permitted means for filing documents.  Is not a Decision from the President required for this?  Otherwise, how can Rule 2 EPC not apply?]

(2) A PACE request filed during the search stage will not accelerate examination.  Under the previous practice, separate requests were needed to accelerate search and examination but they could be filed at the same time.  Now, apparently, a request for accelerated examination can only be filed once the examining division has assumed responsibility for the application (for which, see Rule 10 EPC).

(3) PACE can only be requested once during each stage of prosecution.  Thus, should an application under examination drop out of the PACE programme, it will not be possible to re-enter the accelerated procedure.  So the cyclic ruse of requesting PACE to speed up the EPO, requesting an extension to give the applicant as much time as possible, and then re-requesting PACE on filing of a response is a no-go under the new streamlined process.  (Merpel says “Shucks”, but wonders whether anyone actually did this.)

An application will be removed from the PACE programme if;
a. the PACE request has been withdrawn,
b. the applicant has requested an extension of time limits,
c. the application has been refused,
d. the application has been withdrawn,
e. the application is deemed to be withdrawn.

Particularly relevant in relation to refusal and deemed withdrawal, it is specifically noted in the Notice that "This applies regardless of the legal remedies available under the EPC", so missing the deadline and then requesting further processing will cause the application to be removed from PACE.

Also worth noting is that accelerated prosecution will be “suspended” if renewal fees are not paid by the initial due date.  On the standard meaning of the words used, it appears that this “suspension” does not remove the application from the PACE programme and that if the renewal fee is paid within the subsequent 6 month grace period, accelerated processing should resume.

The new procedure will apply to all PACE requests filed on or after 1 January 2016.  However, the provisions relating to removal of the application from PACE and suspension of accelerated processing will apply to all applications pending at that date.

Alongside this PACE notice, the EPO have issued a notice summarising other, existing ways in which it is possible to expedite the European grant procedure.

Merpel is also a bit annoyed because she has heard of European attorneys being asked about the new PACE provisions by applicants in Japan, who apparently heard it from visiting Examiners well before this announcement.  Merpel is not against Examiners visiting applicants, but it is unhelpful to say the least to announce changes to users of the European patent system who require representation without representatives having been given the chance to inform themselves.

(Thanks to Tim Belcher for authorial assistance and analysis of the differences between the new and prior Notices).


Anonymous said...

Rule 2 EPC is irrelevant since PACE is not a provision of the EPC. Hence, the EPO is free to determine the circumstances in which it will be implemented.

Darren Smyth said...

Dear Anon, I understand the logic of that view, but Rule 2 is quite general; moreover, a Decision of the President WAS required to exclude PACE requests from the inspectable file - if the logic "PACE is not governed by the EPC" applied, then this would not have been necessary. PACE itself is not a provision of the EPC, but what it relates to are proceedings before the EPO. So Merpel does not see Rule 2 as being irrelevant.

Old man of epo said...

As for expediting proceedings, another (old) option has been missed. Even before the current nervous examiners, a short innocent letter to ask 'it's been a while' /'when can I expect the next official action' tended to get a 3 or 4 month indicator, which is on a par with Pace. Nobody wanted a follow-up to the top of an attorney complaining so you could expect a reaction. Not always of course, but mistakes happen. The vast majority would treat the file asap.

Joeri Beetz said...

Would be nice if that form were available in Epoline and CMS. Or better, just provide a check box in the software and add the request to the auto-generated form.

Anonymous said...


the reason why a Decision of the President was necessary to make PACE confidential is unrelated to the legal status of the PACE program but rather comes from the fact that the default position under the EPC is that everything related to an application goes into the public file, unless explicitly excluded - Art. 128(4) EPC. So, to exclude PACE from file inspection the President had to take a decision under Rule 144 EPC to make this happen.

The argument related to the online form and Rule 2 EPC has more merit but it fits with the mentality "substance over form" which rules these days. Anyone feeling like filing a PACE request on a paper form for the express purpose of obtaining a decision open to appeal and then seeing what the Legal Board of Appeal has to say on the matter? I didn't think so.

Finally, the trips to Japan were mainly made by managers of the EPO. Examiners, insofar they were involved, were generally accompanied by and specifically instructed to give this sort of advice by their managers.

The reasons why these trips were made is that some big Japanese companies have all but stopped filing at the EPO and are going national while others are threatening to do the same (I leave it to the readers to decide whether a public institution of Europe should care at all about these threats, except by taking into account objectively the criticism on which they are based). Historically, one of the complaints about the EPO from Japanese applicants is that the office is slow, and the new scheme of Early Certainty from Search (ECfS) is going to make Japanese applicants particularly unhappy if they don't learn to make use of PACE. On the other hand, clever use of PACE would probably increase their satisfaction with the EPO.

I know that some representatives were told about the virtues of PACE in a number of events even before the trips to Japan took place, so I don't think the office was purposefully trying to keep patent attorneys in the dark. In any case, from the representatives' point of view, the best solution would probably be a comprehensive publication of the algorithms used under ECfS to rank files in the examiners' dockets so that they can better appreciate the effects of PACE and figure out by themselves what is the best strategy for their clients.


Anonymous said...

Amicus Curiae

This may be an attempt to win back some reputation, following the queue jumping blog about Microsoft et al., see here:

The reader may note that the EPO is applying thumbscrews now to the applicants, e.g. only electronic, only after examining division is competent, etc.

The result of the PACE request depends on the workload of the examiner, cf. EPO notice A.6 "Accelerated prosecution under the PACE programme can be provided only where practically feasible and subject to the workload of search and examining divisions."

One might ask the question why the EPO is not able or not willing to commit to a clear deadline, like 4 or 6 months for the next communication. The applications in question could be prioritized. If the workload is too high, the PACE request should simply be refused. That, of course, could trigger an appeal to a Legal Board. Very likely not what the EPO wants.

Japanese applicants (others as well) have several times expressed their concerns about various changes. Well known examples are the time limit on divisionals (now reversed) and on amendments/arguments when entering the EP phase of a PCT application which had been handled by the EPO (now reversed, too). These changes and their reversals were not well received.

It seems that the EPO has elevated efficiency and effectiveness to its core values. Quality of the regulations, legal certainty, concrete applicability, stability of the process and user-friendliness have apparently become secondary issues.

Meldrew said...

The algorithms won't help unless you know the workload of the examiner.

Better would be to show real-time ranking on the register "this application is 99th in the examiner's queue....". That would let users (and third parties) know where they were.

ding dong merrily on high said...

@ old man

While asking for a time estimate for the next communication sometimes works, I would say it is a lot more patchy than you imply, at least in my experience. It is a fairly regular occurrence for the reply to estimate 12 months, and in several cases I have had to call to follow up after 12 months, because we still had not received a communication.

The turn around seems to vary massively between different technology areas. We have one client who gets fantastic service from the EPO - they always request PACE, and they get cases through to grant very quickly indeed.

EPO-TGV said...

Meldrew: the queue is fluid. PCT searches jump to the top, for example. Hence, 99th one day could be 123rd the next.

Old Man: You can do this, but it tends to provoke a 6 month or 12 month commitment date rather than the circa 4mo you could expect with PACE.

I have in the past found helpful telephoning Examiners and letting them know which applications they could probably wave through to 71(3) on the basis of my last response. Now, however, queue-jumping of this sort is heavily discouraged, even if the outstanding issues were easily resolved by e.g. deletion of claims or purely formal amendments.

Anonymous said...

"Merpel says “Shucks”, but wonders whether anyone actually did this."

I have absolutely had a client with a somewhat lax attitude to time management push me into the "PACE request, two month extension, PACE request" cycle more than once.

My protestations that this was perhaps not especially helpful were not well heeded. I am glad that there is now a Notice to back me up.

Old man of EPO said...

Yes and no. The order can change from day to day. In practice number 99 may rise and fall as more urgent cases jump in and even lower ones can jump as they become more urgent. The list doesn't mean number 99 will be done 99 actions from now.

Sally Cooper said...

For me PACE will always call to mind the Police And Criminal Evidence Act ...

Anonymous said...

Ahhh ... if only "PACE 1984" applied at the EPO. We have PACE, and a 1984 scenario, which doesn't have the same synergy somehow.

Garfield said...

Even though it might change, it would still be useful to know the current position in the queue. An estimate in terms of the number of months or years would be even better. And this should be on the public register, since it would be useful not only to the applicant, but also to third parties who might be watching the file.

For example, the third party might decide "I'm concerned about this application. If it will take two years until it is examined, maybe I will pay my attorney to file reasoned third party observations so it is accelerated under Early Certainty from Search." This has the effect of helping the EPO to prioritise cases which are commercially important.

Of course, it must be accepted that the estimate is fluid and might change. The register should make this clear, perhaps with a link to a webpage outlining the ECfS priorities which the EPO has already made public.

Meldrew said...

Old Man of EPO

I accept that the list will be fluid, and cases may even fall back in priority, but that is the whole reason for wanting to know where a case is in the priority list.

If a case is 99th in the queue and a year later is 49th in the queue, then it gives some (uncertain) guidance and is less likely to lead to an enquiry than does the present situation where one is completely ignorant of where a case is in the queue.

If a case is 99th in the queue, and a year later is still 99th in the queue or even further back, it gives a different sort of guidance, such that the applicant or third party (whichever is more interested) will know they have to do something.

Of course, if you prefer to have a system where applicants are kept in the dark and have to make telephone enquires that are logged and may be used by management to guess something (justified or not) about how an individual examiner is doing, then stick with the present one.

MaxDrei said...

Meldrew on your point about EPO management monitoring telephone traffic at the desks of Examiners, is this a factor contributing to the inclination many EPO Examiners have, of not taking calls from EPO attorneys.

Unintended consequences? EPO management wants cases early through to issue but intimidates its Examiners so much that such speed and efficiency is frustrated?

When it is my case, I want EPO Examiners available on the phone. But when it is the other fellow's case, I don't. Why? There is nothing more frustrating than to follow a case that in written proceedings reaches an impasse. Then there is a phone call to the Examiner and the case is allowed. Why, we have no idea from the public part of the EPO file.

As to putting cases on the PACE program, persons outside Europe perhaps don't appreciate that a 3rd Party can trigger it just as effectively as the Applicant, simply by filing (in the name of a European patent attorney) a reasoned observation on patentability. The observing attorney has no need to reveal for whom he or she is acting.

Anonymous said...

@Garfield @Meldrew (also @ding dong merrily on high)

If "Old man of EPO" is right, then it won't help (neither you, nor the public) to know where a case lies in a division's workload. If the "queue" is indeed dynamic, and your case is 99th, then it won't take 98th cases before it is processed (as already discussed), but:
- it doesn't even have go down the list over time (it could be 123th, rather than 49th, a year later);
- it could well become 1st within a day (depending how often workloads are updated over there).
If that's so, then there is no queue, just an ordering updated with every addition or removal of cases. That could explain why "ding dong etc" had to follow-up his/her cases: you were given a date, while the employees are given e.g. the top 10 cases of the workload (which may not include your case). Is that so?

Anonymous said...

Here is the prioritisation of applications according to ECfS
(taken from one of the slides of a presentation during the EPO-US Bar Partnership for Quality Meeting earlier this year,


First filings searches
Search for First Filings (National, PCT Chap I, including SIS, and EP)
Searches with committed dates:
Search PCT Chap I 2nd filings
RASE and promised dates
PCT Chapter II examination
Opposition, Limitation, Revocation
Second filings searches
A1 publications for all EP 2nd filings
Euro-PCT supplementary searches
National second filings
Fast track examination
Direct Grants after positive ESOP or WOISA
Request for Accelerated Examination (RAEX), promised dates and non-anonymous
Not anonymous and substantiated third party observations

Priority 2 : Further examination actions

Priority 3 : First examination actions

Priority 4 : Search backlog on 01/07/2014
All EP 2nd filings which have been published without search report (A2) before 01/07/2014
All Euro-PCT supplementary search already overdue on 01/07/2014

The due date depends on the type of file (eg 1st or 2nd filing) as indicated in the presentation in the link given above.


Anonymous said...

HelloKitty says:

Jiggy is globally right, but the directors can change the priorities of individual files and some are using it as a means to insure the directorate reach its global objectives. Some directors want their bonus as well (or fear to be sent to pension).

Also: there are instructions not to allow examiners who have a large prio 1 stock to take Christmas leave. As one can only transfer so many days, they will lose their leave. That motivates some to work only on files with "top" priority, which may or may not be PACE files.

As to the idea that PACE must be filed online, the Office has saved so many posts in patent admin, that this division does not properly function any more. The idea of the management is to run everything through software (online and automatically), which actually means that the applicants will have to do the work themselves. But they won't get a discount, of course.

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