How to speed up or slow down the patent procedure

In certain circumstances you may be interested in having your application processed slower or faster. In this article, you can learn about your options in this regard.

Duration of the European patenting process 

Obtaining a granted patent will take years. The European patenting process lasts 2-5 years, depending on many factors.

Since 2014, when the EPO introduced the "Early Certainty from Search" scheme, the EPO aims to issue all search reports and written opinions on patentability within 6 months of filing. Receiving the search report at early stage benefits applicants, since it provides a sound basis for their future patenting strategies early. Obtaining an opinion on patentability in 6 months helps decide where to file subsequent patent applications in the priority year. 

On average, preparing a search report took 4.8 months in 2021, while the length of the examination was 23 months in 2021.* The EPO aims moving towards the completion of the examination procedure within 12 months on average.

Why would you want to slow down the procedure?

You might be interested in slowing down the procedure, if you need more time to raise funds and would like to defer costs. During a longer procedure, you can still enjoy the benefits of having the "patent pending" status. In Europe, slowing down examination may be beneficial, since by delaying the grant you can defer the validation costs as well.

How to slow down the procedure?

1. Extend time limits, when possible

   Not every time limit is extendable, but some of them are. For example, when you are invited to respond to the EPO's office action during substantive examination (communication under Article 94(3) EPC), you are allowed to extend the time period even without naming a specific reason. You have to file your request before the expiry of the original period. (The maximum period cannot be normally longer than 6 months. Any request for a longer extension – if the total period set exceeds six months – is allowed only exceptionally.)

2. Use the maximum length of time period provided

   This point might be quite straightforward and evident, but it is a simple and free option. For example, you have 6 months to request examination. If you do not benefit in the early start of the examination, you can wait until the last weeks or even days to take the necessary steps. (However, make sure not to miss any deadlines, because a mistake and a missed deadline can cost a lot – in some cases even your application.)

Why would you want to accelerate the process?

Depending on your objectives and IP strategy, you might be interested in accelerating the European patenting procedure for any of the following reasons:

• Only a granted patent allows you to sue for patent infringement, i.e. enforcing your patent right against infringers.

• A granted patent brings greater legal certainty for everyone, patent proprietors and any third parties, including competitors, investors and licensees.

• A granted patent can give you considerable leverage in undergoing negotiations regarding licensing and royalty.

• A granted patent can also improve your patent portfolio and put you in an advantageous position for your discussions with (potential) investors.

How to accelerate the process?

1. Act quickly

   Again, this might be too evident, but acting promptly can save you months, if not years. For example, you can accelerate the process by requesting examination shortly after publication (instead of waiting 6 months), responding to office actions within weeks (instead of 4 months), and making sure to file professionally prepared documents that satisfy the requirements in order to minimize the number of office actions. Also, if you are in the Euro-PCT route, you do not have to wait 31 months to enter the European phase, you can file the necessary documents and pay the appropriate fees earlier as well.

2. Request PACE

   The EPO has a dedicated programme for accelerated prosecution of European patent applications, called "PACE". PACE stands for Programme for the ACcelerated prosecution of European patent applications. Requesting "PACE" provides applicants with the possibility of receiving examination reports within three months. (They do not guarantee this, but make every effort to issue subsequent office actions within this period.) In order to request PACE, no reasons need to be given and no fee has to be paid. A PACE request may be filed only once during each stage of the procedure, i.e. one for search and one for examination. A PACE request filed during search will not trigger accelerated examination.

   However, please note that the EPO will remove you from the PACE programme, if, for example, you request an extension of time limit, use further processing, or your application is deemed to be withdrawn. (After you lose your PACE status, you cannot request PACE again.) This is because the EPO wants you to show collaboration in the fast processing of your application.

3. Request early publication

   According to Art. 93(1)(b) EPC, you can request early publication. If the publication takes place earlier, you can also request examination earlier.

   If you become aware of a potential infringer early on during the application procedure, it might be advisable to request early publication so that the provisional protection extends from the earliest date possible.

4. Waive your right to some communications

   Applicants can waive their right to certain communications, and as a consequence, the EPO will skip directly to the next step without having to wait for the expiration of the time-limits associated with these communications. As an example, in the request for grant form, you can waive your right to the invitation to confirm the request for examination.

   The next example is only relevant in the Euro-PCT route, however, it is a very important example, since it shortens the procedure with 6 months. After you enter the European national phase in the PCT application procedure, you have 6 months to amend your application. However, to skip this long period, you should rather amend when you enter the European phase and waive the communication under Rule 161 EPC to be asked whether you would like to amend.

* Data from the EPO statistics 2021. You can find the report here.

Author: Zsofia Pintz
Published: August 2020
Updated: July 2023