Early Certainty at the EPO
There are several routes available in order to accelerate prosecution of a patent application at the EPO, such as simply requesting accelerated prosecution by using PACE, to utilising the more complicated Patent Prosecution Highway (PPH).
Early Certainty at the European Patent Office (EPO) was an initiative launched by the EPO in 2014 which aims to increase efficiency and reduce the time taken from filing to grant of a European patent application. Initially, the aim was to deliver the search report and written opinion on patentability to applicants within six months of the filing of an application. In 2016, the EPO further built on the positive feedback received from the initial phase of Early Certainty at the EPO to extend to concluding examination within 12 months from filing (currently averaging 22.6 months), by 2020. It was also proposed that by 2020, opposition proceedings at the EPO should be concluded within 15 months from the end of the opposition period (9 months from publication of the mention of grant of a European patent ).
The EPO received mixed feedback regarding both phases of the Early Certainty programme in 2018, primarily that applicants required more time to make commercial decisions regarding their patent applications. In order to counteract these comments, the EPO proposed a programme known as User Driven Early Certainty (UDEC) which was planned to enter into force in mid-2018. This programme would allow applicants the opportunity to delay the start of examination by up to three years following the receipt of the supplementary European Search Report (or from entry into the European regional phase whereby the EPO has not performed the international search).
However, the launch of UDEC was postponed until February 2019 upon which it was heavily debated during an EPO consultation event. One key issue which was discussed in detail was that there are clear disadvantages for third parties such as prolonged legal uncertainty, especially regarding freedom to operate undertakings. The launch of the UDEC was therefore cancelled following the consultation.
The Early Certainty scheme is in operation and does place pressure on the applicant to make decisions in a timely fashion, which can affect issues such as success in funding rounds, commercialisation decisions and business forecasting. Early Certainty also places increased pressure on the EPO to process applications quickly, which although aids the well-known back-log of applications at the EPO, is not always ideal for smooth and adequate processing of applications and opposition proceedings.
For further advice on patent prosecution strategy before the EPO, please contact our expert Attorneys at Avidity IP.