{"id":8038,"date":"2020-04-30T13:53:56","date_gmt":"2020-04-30T12:53:56","guid":{"rendered":"https:\/\/www.hgf.com\/?p=8038"},"modified":"2026-02-02T15:58:49","modified_gmt":"2026-02-02T15:58:49","slug":"fast-track-or-slow-lane-patent-strategy-or-ip-cost-control","status":"publish","type":"post","link":"https:\/\/www.hgf.com\/de\/knowledge-hub\/articles\/fast-track-or-slow-lane-patent-strategy-or-ip-cost-control\/","title":{"rendered":"Fast track or slow lane: Patent strategy or IP cost control?"},"content":{"rendered":"

The patent application procedure is notoriously slow and driven by fixed deadlines. We are often asked how to speed up the process and also how to slow down the procedure when big costs approach such as validation of a granted European patent.<\/p>\n

The issue becomes even more pressing when you have patent applications running simultaneously in Europe and the United States. Your patent attorney can help you align the patent application procedure with your commercial milestones.<\/p>\n

Why slow down?<\/h5>\n

You might ask why one would want to slow down the procedure as it already typically takes several years for a patent to be granted. However, keeping an application pending can give a commercial advantage in that it creates uncertainty for competitors who cannot be sure what scope of monopoly might be granted to you. Your options are kept open, for example, to amend the claims later or to file a divisional application for subject matter that can be separated from the main invention. Bear in mind, though, that the European Patent Office charges annual renewal fees on pending patent applications, the cost of which should be factored into your approach. Slowing the process can be achieved by using the maximum time permitted to respond to the examiner\u2019s objections, requesting extensions of time where possible and, at the EPO using the \u201cfurther processing\u201d procedure whereby an additional 2-3 months of time can be gained for a fee of EUR265.<\/p>\n

Speeding up process<\/h5>\n

Speeding up the patent application procedure can be useful to get an earlier indication of patentability that can be used for early stage investment rounds. For technology that is likely to be contentious, you may wish to get through the EPO\u2019s opposition period (whereby anyone can oppose the grant of a European patent within nine months of its grant) as quickly as possible before the product is launched. The UK\u2019s Patent Box tax regime requires a granted patent for you to participate.<\/p>\n

European patent applications can be accelerated using the PACE procedure whereby a simple form (with no fee) is filed. No reason needs to be given for wanting accelerated handling. A PACE request can be filed once in each of the search and examination phases and the EPO undertakes to provide the next communication within 6 or 3 months respectively. You have to keep your side of the bargain though \u2013 if you subsequently request an extension, or pay renewal fees late, your PACE request will be cancelled.<\/p>\n

Acceleration program examples<\/h5>\n