The unwritten rules of the european patent office
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The Unwritten Rules of the European Patent Office. Richard Howson Kilburn & Strode, UK. Background. Is the EPO becoming less applicant-friendly? What, if anything, can we do about it?. “Mastering the Workload”. EPO drive to shorten the pendancy of applications

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The Unwritten Rules of the European Patent Office

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The Unwritten Rules of the European Patent Office

Richard Howson

Kilburn & Strode, UK

The Unwritten Rules of the EPO – Richard Howson


Background

  • Is the EPO becoming less applicant-friendly?

  • What, if anything, can we do about it?

The Unwritten Rules of the EPO – Richard Howson


“Mastering the Workload”

  • EPO drive to shorten the pendancy of applications

  • “Bringing Examination and Search Together” – BEST

  • Extended European search reports

  • Streamlining EPO’s role in intnl. phase

  • Reducing period for final stages in grant procedure

The Unwritten Rules of the EPO – Richard Howson


The Points System

  • The EPO uses a points system to asses the productivity of its examiners

  • Generally: two-thirds of a point are awarded for the search (or EESR); remaining one-third awarded when the case is finally disposed of

  • No points for later examination reports

The Unwritten Rules of the EPO – Richard Howson


The Points System: Effects

  • No incentive for examiner to prolong examination

  • If he feels unable to grant after the first examination report, the temptation is to refuse or to appoint a hearing (“oral proceedings”)

  • Therefore, fewer opportunities to put a case in order; and a greater likelihood of oral proceedings

The Unwritten Rules of the EPO – Richard Howson


What can we do?

  • We now have fewer opportunities to put a case in order – fewer “bites of the cherry”

  • We should make more of the opportunities we do have

  • Take the initiative, rather than just being reactive

  • Make is as easy as possible for the examiner to grant the case (without sacrificing applicant’s best interests)

The Unwritten Rules of the EPO – Richard Howson


Making it easy for the Examiner to Grant

  • The “votum” - a checklist of sorts:

    • Acknowledged closest prior art?

    • Reference numerals in claims?

    • Independent claims in two-part form?

    • What is the technical problem solved?

    • Reasons why claimed solution not obvious?

  • Can we prosecute in a way that fits this, but doesn’t compromise applicant’s interests?

The Unwritten Rules of the EPO – Richard Howson


Opportunities for influencing prosecution

  • Drafting or pre-filing review

  • Voluntary submissions, such as following the extended European search report (EESR)

  • Responses to examination reports

  • Interview with examiner

  • Before and during oral proceedings

  • (Appeal)

The Unwritten Rules of the EPO – Richard Howson


Drafting or Pre-Filing Review

  • Draft a generic independent claim

  • Business method and software cases:

    • Make the title sound technical, e.g. “Data Processing System” is better than “Booking System for Tourism Industry”

    • *Specify a technical problem that the invention solves using technical means*

  • Make the case look more “European”:

    • remove references to related applications?

    • remove reference to “spirit” of invention?

    • remove section headings?

The Unwritten Rules of the EPO – Richard Howson


Extended European Search Report (EESR)

  • EESR is a conventional search report plus an opinion on patentability

  • Opinion looks like an examination report

  • Response is voluntary – no deadline

  • Timely response is taken into account in subsequent substantive examination

  • EESR established on cases filed after 1 July 2005, including some PCT cases

  • Responding gives a further cherry bite.

The Unwritten Rules of the EPO – Richard Howson


Responses to EESRs and Examination Reports

  • Can we give ground in some areas without disadvantaging the applicant?

    • reference numerals in claims

    • acknowledge prior art

    • place independent claims in two-part form

  • Use problem-and-solution approach to argue for non-obviousness

  • Consider filing “auxiliary requests” to give further bites of the cherry

The Unwritten Rules of the EPO – Richard Howson


Interview with Examiner

  • He has a very boring job

  • He sees little of the real world

  • He likes technology

  • Schedule for the same day as oral proceedings on another case?

The Unwritten Rules of the EPO – Richard Howson


Oral Proceedings - Procedure

  • An oral hearing in front of the examiner and two colleagues (“The Examining Division”)

  • At an EPO office (Munich, The Hague, Berlin)

  • Final written submissions up to one month before hearing

  • Hearing will conclude with application being allowed or refused (subject to appeal)

The Unwritten Rules of the EPO – Richard Howson


Oral Proceedings - Tips

  • Be very active in the run up

  • File final submissions in good time

  • Include auxiliary requests

  • Press the examiner for feedback on the submissions

  • Telephone him

  • *Email him*

  • It is possible to agree a position and avoid the hearing

The Unwritten Rules of the EPO – Richard Howson


Conclusion

  • In taking a more proactive approach to prosecution, we can:

    • reduce the number or responses

    • avoid oral proceedings

    • thus saving cost and streamlining prosecution

      and still obtain desirable protection

The Unwritten Rules of the EPO – Richard Howson


Conclusion

Perhaps things aren’t so bad after all?

The Unwritten Rules of the EPO – Richard Howson


contact: rhowson@kstrode.co.uk

Richard Howson

The Unwritten Rules of the EPO – Richard Howson


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