The Unwritten Rules of the European Patent Office

1
The Unwritten Rules of the European Patent Office

• Richard Howson
• Kilburn Strode, UK

2
Background

• Is the EPO becoming less applicant-friendly?
• What, if anything, can we do about it?

3
Mastering the Workload

• EPO drive to shorten the pendancy of applications
• Bringing Examination and Search Together BEST
• Extended European search reports
• Streamlining EPOs role in intnl. phase
• Reducing period for final stages in grant
  procedure

4
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

5
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

6
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 applicants
  best interests)

7
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
  doesnt compromise applicants interests?

8
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)

9
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?

10
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.

11
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

12
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?

13
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)

14
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

15
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

16
Conclusion

• Perhaps things arent so bad after all?

17
contact rhowson_at_kstrode.co.uk

• Richard Howson