WayS TO ACCELERATE PATENT GRANT IN EUROPE AND GERMANY

 

Our clients often ask us about possibilities for accelerating patent prosecution in Europe and Germany. This IP ALERT lists the main options available.

A. Informal personal interview with the Examiner

Thanks to their close proximity to the European Patent Office (EPO) and the German Patent and Trademark Office (GPTO), the attorneys of LAVOIX Munich can easily arrange an informal personal interview with the Examiner during patent prosecution.

In such a case, the attorney meets the Examiner personally in his/her office to discuss any outstanding objections. Very often, such an informal meeting greatly helps in understanding the Examiner’s position and enables the application to be put in condition for allowance.

LAVOIX Munich offers clients interested in fast prosecution the opportunity for the attorney in charge of the file to contact the Examiner directly after receipt of the first substantive office action, suggesting a personal interview. In general, Examiners agree to such an interview since it allows them to move forward with the file. 

 

B. Request for accelerated search and examination 

 

GPTO 

 

Prosecution at the GPTO can be accelerated on request. The applicant must indicate why they would like the prosecution to be accelerated. The request is free of official charges.

EPO

Prosecution at the EPO can be accelerated using a simple one page request. The request is free of official fees.
The EPO’s accelerated prosecution program is called PACE.

C. Patent Prosecution Highway (PPH)

The Patent Prosecution Highway (PPH) is a framework in which an application whose claims have been determined to be patentable in one Office is eligible to go through an accelerated examination in another Office upon the applicant’s request.

Below, we provide the relevant links regarding PPH at the GPTO and the EPO:

GPTO

PPH based on US application 
PPH based on JP application 
PPH based on CN application
PPH based on CA application 
PPH based on KR application 

EPO

PPH based on US application 
PPH based on PCT application 
PPH based on JP application

 

Before the EPO, we generally advise our clients to file an acceleration request under PACE (see section B. above) instead of a PPH request.


PACE is granted without conditions, whereas with PPH the claims of the EP application must “sufficiently correspond” to the allowable claims of the parallel application.

D. Waiving EPO Communications

Waiving the invitation to proceed further

Before the applicant receives the European search report, they can pay the examination fee and waive the invitation under Rule 70(2) EPC to proceed further with the application, irrespective of the results of the search. In this case the European search report is issued together with a first examination report instead of a search opinion.

Euro-PCT: Waiving the opportunity to file amendments shortly after EP phase entry

The applicant can accelerate the processing of an international application by explicitly waiving their right to the Communication under Rules 161(1) and 162 EPC allowing them to file amendments shortly after EP phase entry.

This is under condition that, on entry into the European phase, the applicant has already taken all necessary steps such as filing amendments or corrections in response to the WO-ISA, the IPER or the explanations contained in the SISR, and paying the claims fees.

The EPO can then immediately start the supplementary European search or examination.

 

E. Conclusion

If you are interested in accelerating prosecution in a specific case, we would be glad to assist you in deciding which of the above options would be best suited. Each option has certain advantages and drawbacks that we could then discuss in detail.

If you have questions on the above, feel free to contact Fabian Lieb.

 

Publication date : February 2013

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