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The procedure for accelerating examination of European patent applications is changing from 1 January 2016.
The major changes are largely technical and just restrict the patent attorney’s methods for requesting acceleration. However, there are changes that applicants should bear in mind too; the European Patent Office (EPO) has reiterated that applicants cannot have search/examination of all or most of their applications accelerated so, if they request acceleration of all or most, they will generally be required by the EPO to make a selection of the applications that are most important.
In addition, the latest notice explains that if the applicant requests extensions of time, or allows the application to be refused, or deemed withdrawn, search/examination will no longer be accelerated and it will not be possible to request acceleration for a second time.
It is also made explicit that if an applicant does not pay a renewal fee in time (instead paying during the six-month grace period), the examiner will not examine the application until the fee is paid.
Largely, however, the mechanics of acceleration remain unchanged, that is to say, no official fee is required for search or examination to be accelerated and no reason is required – it is simply necessary to file the required form. Having requested acceleration, the EPO will aim to issue the first examination report (and any subsequent examination reports) within three months.
One notable point mentioned in the notice is that accelerated prosecution can be provided only subject to the workload of search and examining divisions. In some technical areas, this means that even having requested acceleration, the applicant may wait many extra months, sometimes even over a year.
It is useful to compare this system to the UK approach to acceleration. In common with the EPO (and unlike certain foreign offices), the UK Intellectual Property Office (UKIPO) requires no fee, only a simple request. However, in the UK it is necessary to provide a reason why your application should be dealt with out of turn. Suitable reasons are: the invention relates to environmentally friendly technology (the so-called “Green Channel”); the applicant is aware of a competitor who is carrying out activity which would infringe the patent, if granted; and that the grant of the patent will be of significance to funding, e.g. licensing deals. It is notable that the grant must be of real commercial significance, the fact that, when granted, the patent would be able to reduce corporation tax through the “Patent Box” legislation would not normally be sufficient.
If you wish to explore the possibility of accelerating the grant of any patent applications, please speak to your usual Wilson Gun advisor or contact us and one of our highly qualified attorneys will be in touch.