Pages 180-182

INFORMATION FROM THE EPO

Notices of the President of the EPO

Notice of the President of the European Patent Office dated 22 October 1991 concerning accelerated prosecution of European patent applications ["Seven Measures"]^*

Due to an ever increasing workload, search and examination backlogs have built up in the EPO. While the backlog in search will be cleared entirely by the end of 1992, it will take somewhat longer to clear that in substantive examination.

In an effort to assist applicants requiring rapid search or examination the Office has, since 1988, operated a programme of seven measures designed to ensure quicker processing of European patent applications (see Notices of the President of the EPO of 6 December 1988, OJ EPO 1989, 40 and 17 November 1989, OJ EPO 1989, 523).

A review of participation in that programme indicates that applicants are not yet fully aware of its advantages. Applicants are therefore reminded of the seven measures which have been further improved (see Measures 5 and 6) and are encouraged to make use of them.

Measure 1

Request for accelerated search/examination

Applicants with a legitimate interest in accelerated search and/or examination may simply request this by a reasoned statement in writing. The Office will then endeavour to comply.

Measure 2

European first filing

European patent applications claiming no priority (first filings) are given top priority. The Office has taken all steps necessary to ensure that search reports for first filings are available to applicants no later than 9 months from the filing date.

Applicants are reminded that a European first filing is a proper basis for claiming priority in respect of a subsequent European patent application filed within the priority year, i.e. it gives rise to a priority right ("internal priority") in accordance with Articles 87 to 89 EPC in the same way and to the same extent as a first filing with a national Office (see Guidelines for Examination in the EPO, C-V, 1.3).

A European first filing is also a proper basis for claiming priority in respect of subsequent patent applications filed within the priority year in any country which is a party to the Paris Convention for the Protection of Industrial Property (see Article 4.A(2) of the Paris Convention and Article 66 EPC).

Measure 3

Substantive response to the search report

The applicant can speed up processing at the examination stage by making a written request for accelerated examination accompanied by a substantive response to the search report without awaiting the first communication from the Examining Division. A substantive response means either reasoned observations or appropriate amendments to the claims, in which case the applicant should indicate why the amendments are considered to render the claims patentable over the documents cited in the search report.

Measure 4

Early request for examination

An early request for examination (Article 94 EPC), accompanied by an unconditional waiver of the invitation by the EPO under Article 96 EPC (see Guidelines for Examination in the EPO, C-VI, 1.1.2), further accelerates the procedure. This waiver, which causes the application to be forwarded more rapidly to the Examining Division, may be made on filing the European patent application (see Request for Grant form, page 5, point B8) or later in a separate communication to the EPO.

An early request for examination is of no disadvantage to the applicant. The examination fee will be refunded in full or at a rate of 75% if, in the light of the search report for instance, the application is withdrawn, or is deemed withdrawn or refused before the Examining Division has assumed responsibility or before substantive examination has begun (Article 10b Rules relating to Fees).

Meaure 5

Rapid issue of the first examination report

When a valid request for accelerated examination (Measures 1 and 3) has been filed, the Office will make every effort to issue the first examination report within 4 months of receipt of the application by the Examining Division or of receipt of the request for accelerated examination, whichever is the later.

The application is forwarded without delay to the Examining Division once it has become responsible. This is the case when a valid request for examination (Article 94 EPC) is present, i.e. when both the written request (already signified in the Request for Grant form by a preprinted cross in its section 5) has been filed and the examination fee paid. If the applicant has filed an early and unconditional request for examination (see measure 4) this is already the case when the search report is transmitted to him (see Guidelines for Examination in the EPO, C-VI, 1.1.2).

Measure 6

Prompt bona fide response by the applicant

A precondition for accelerated examination is a prompt bona fide response by the applicant to the Examining Division communication (see Guidelines for Examination in the EPO, C-VI, 2). Such response should deal precisely with all of the points raised by the Division which only then can bring the case to a quicker conclusion. The Division will make every effort to reply to such response within 3 months of its receipt. Furthermore a request under Rule 84 EPC for an extension of time in which to make the response should not be made unless absolutely necessary.

Measure 7

Accelerated processing at the grant stage

If the application is in order for grant and the applicant has received the communication under Rule 51(4) EPC, the procedure up to actual grant of the European patent can be shortened considerably if the applicant approves without delay the text in which it is intended to grant the patent and does not request further amendments to the application (see Guidelines for Examination in the EPO, C-VI, 4.9 and Notice from the Vice-President, DG 2, dated 20 September 1988, OJ EPO 1989, 43).