At The EPO : Slow And Steady Wins The Race

Author:Mr Grégoire Desrousseaux, Francois Pochart and Geoffroy Thill
Profession:August & Debouzy
 
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From July 1st, 2018, the European Patent Office contemplates to authorize applicants to request postponement of the examination procedure for a period of 3 years.

At the present time, the average duration of the examination procedure before the European Patent Office (EPO) is 23.2 months1. The examination time period should be reduced to 12 months by 20202. The decreasing duration of the examination procedure comes under criticisms from some applicants. According to its detractors, the faster procedure would prevent applicants from raising funds or submitting complementary data during the examination phase. The EPO acknowledged those observations and suggested to postpone the start of substantive examination upon request.

POSTPONEMENT OF THE EXAMINATION PROCEDURE

This new procedure shall enable applicants to postpone the start of examination for 3 years.

In practice, the applicants shall request postponement of the examination procedure within the time limit set forth in the European patent convention to reply to the European/International search report3. The applicants shall request the postponement of the examination together with the filing of the reply4. In this case, the EPO will not initiate the substantive examination before the expiry of the period of 3 years5.

The 3 years period runs from the beginning of the entry into the European phase in case of Euro-PCT applications or from expiry of 6 months after the time limit according to rule 70(1) for direct European applications. For divisional applications, the time period of the postponement is not extended and ends 3 years from the entry into the European phase of the earliest parent application for Euro-PCT applications or 5 years from the filing date or the priority date of the earliest parent application for divisional applications stemming from direct European applications (which is similar to a period of 3 years from the expiry of the 6 months' time window under rule 70(1)).

The postponement procedure will be optional and at no cost. However, the applicants shall keep paying regularly the official fees (examination fee, designation fee, extension fees, validation fees or renewal fees).

The examination procedure shall resume before the termination of the 3 years' time period, through a simple request from the applicant or the filing of a request for PACE or PPH. The EPO shall also initiate examination before expiry of the maximum period in case of third party observations...

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