Slowing Things Down at the EPO

9 May 2018

Authored and Edited by Sanam Habib; Leythem A. Wall

In recent years the European Patent Office (EPO) has launched a number of initiatives to increase efficiency and timeliness.

Since the introduction of these Early Certainty schemes, the EPO has received mixed feedback with some users expressing concerns regarding possible adverse effects of accelerated examination.

To address this and to give applicants additional time to assess their case requirements, the EPO launched a consultation on a potential new procedural option to postpone the start of substantive examination. The EPO’s proposal, known as ‘User Driven Early Certainty (UDEC)’, was originally set to enter into force on 1 July 2018 with a full review of the programme to take place within three years after entry into operation.

According to a report in the April 2018 edition of the Chartered Institute of Patent Attorneys (CIPA) Journal, this scheme is now on hold and to be revised following a consultation event at the EPO in Rijswijk on 9 February 2018. While we wait for an updated version to surface, outlined below is a summary of the initial proposal.

What is the UDEC scheme?

The scheme enables users to postpone the start of substantive examination at the EPO by up to three years.

What is the UDEC procedure?

The EPO will continue to draw up the (supplementary) European search report with a preliminary opinion on patentability within 6 months. The applicant continues to be obliged to reply to the search opinion and to pay the examination fee in the same way as currently.

Applicants would then have the possibility to request the postponement within six months from the (supplementary) European search or from European Regional phase (where the EPO does not perform the search).

A request for postponement would be via an online EPO form.

Once the three year postponement period has expired, the examination of the application will start in accordance with the Early Certainty for Examination Priorities.

Are there any formal fees associated with postponing examination?

There is no formal fee for filing the postponement, but applicants will be required to pay the relevant fees, including the examination fee falling within the postponed period.

Will the request for postponement be available to the public?

Yes. The request for postponement will be entered in the European Patent Register.

What about divisional applications?

For divisional applications, the three year postponement period will be calculated from filing of the earliest application with the EPO.

Can the postponement request be lifted?

Applicants could start examination before expiry of the three year period by requesting PACE (Programme for Accelerated Examination of European patent applications), PPH (Patent Prosecution Highway) or by explicitly requesting to uplift the postponement.

The postponement will also be lifted if non-anonymous substantiated third party observations are filed.