The Unwritten Rules of the European Patent Office

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

The Unwritten Rules of the European Patent Office