Sometimes you want to speed things up, sometimes you want to slow things down. Sometimes you want to reduce the official paper trail while putting yourself in a better position to obtain the scope that you want. Here we look at ways of simplifying patent prosecution at the EPO to reduce the back and forth with Examiners and get patent applications through the system.
These can save money from reduced renewal fees on pending applications as well as through the minimising the number of office action responses to get your application to grant.
1. Pick up the phone
One of the best, and possibly most underused, ways to get on the same page as the Examiner is to call. This can be a faster way than in writing to explain the special sauce of your invention. It also has the added benefit that you can be more candid about the prior art than you may wish to be in writing.
Generally, the Examiner would then follow up with a short note of the call that for the public record. This is similar to Examiner Interviews in the US, and is now being favoured by EPO Examiners too as they are increasingly under pressure to move applications along.
However, it's worth noting that if the response to the search report hasn't been filed yet, Examiners are barred from taking calls from applicants.
2. Lay your cards on the table
Another way to cut down the number of office actions is to file fallback sets of amendments in case the main request runs into problems. This is commonly done ahead of oral proceedings, but can be also done in response to most office actions.
Fallback positions might have progressively narrower scopes that are still acceptable to you. This doesn’t undermine confidence in the main request as the Examiner will consider the merits of each request in turn.
Although it may cost a little more than a standard response with only one request, there are potential savings if the Examiner finds a fallback position allowable. This has the knock on effect of reducing the number of office actions that are issued by the EPO.
This can also be combined with calling the Examiner to discuss the requests to iron out any remaining issues before the Examiner give a formal opinion in writing.
3. Dot the i's and cross the t's
European applications have to meet specific formal requirements. For example, reference numbers from the figures should be added to the claims and the description should correspond to the claims. But if the claims are in flux, it can be difficult to make any amendments to the description and so any changes to the description are sometimes deferred until the claims are settled.
However, attending to all the formal requirements, even if the Examiner hasn’t specifically raised them, means that an office action won’t be raised just to deal with the formalities. This can reduce the number of office action and speed up the grant of an application.
In cases where applicants don’t amend the description to accord with the claims, Examiners are increasingly proposing their own changes. So a benefit of making changes to the description yourself is that it can avoid the Examiner from proposing description amendments using wording that you may not find desirable.
4. Arrange a friendly away match
Formal oral proceedings are not the only time applicants can discuss their cases at the EPO's offices in Munich, the Hague or Berlin. Another way is to gather a batch of related cases together and ask for a meeting to discuss them with the Examiners at their offices.
This provides an efficient way to process a batch of closely-related applications, making use of the way the EPO divides applicants by technology classification.
5. Invite the Examiners over
Every year, the EPO select applicants they would like to visit at their labs, factories or offices. Site visits gives Examiners a better understanding of the bigger picture of applicants’ products and what they’re trying to achieve. This means that when an Examiner can see a patentable way forward, he or she is in a better place to propose an amendment that the applicant would find commercially desirable.
It can also be a good opportunity to discuss general recurring themes that come up in office actions, such as unity of invention and added matter, so that applicants can learn to avoid triggering such objections. And it gives the EPO a human side - building good rapport with an Examiner that might be looking at your cases can only be a good thing.
Whilst EPO Examiners generally choose which applicants they would like to visit, it is also possible to invite Examiners to come to you. For example, if you often see the same Examiners crop up on your applications, you may wish to welcome them over and gain the benefits of their presence. Whether you’re in Salzberg, San Francisco or Seoul, the EPO often has the budget for Examiners to make trips.
The EPO even have a dedicated attaché to the United States, Albert Keyack, who acts as a liaison for US attorneys and the EPO. We have already worked with him to help arrange EPO Examiners to travel to the US and meet in-house counsel. Albert can also organise visits for US applicants to meet Examiners at EPO offices. The EPO attaché to the US is a relatively new position that has been well-received by US applicants, and so attachés to other countries are also being considered by the EPO. Watch this space.
For more information on reducing the back and forth with the EPO, please contact your usual Kilburn & Strode advisor.