ficpi abc 30/5/07the unwritten rules of the epo – richard howson the unwritten rules of the...

FICPI ABC 30/5/07 The Unwritten Rules of the EPO – Richard Howson

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

• “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 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 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


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)


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?


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)


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?


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.


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


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?


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)


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


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


Conclusion

Perhaps things aren’t so bad after all?


contact: [email protected]

Richard Howson

ficpi abc 30/5/07the unwritten rules of the epo – richard howson the unwritten rules of the...

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