1. Practical tips and Strategies for US applicants before EPO
Alfred Spigarelli
Director Patent Procedures Management
June 2015

2. What is a global patenting hub?
International goods and data exchanges require global IP strategies
PCT is more and more recognized as the most effective route to global patenting
Choice of the International Searching Authority is key
Since the widening of PPH agreements, in particular IP5 PPH, choice of the ISA and outcome of the international procedure will determine the cost of getting global patenting
More than the office of first filing the ISA is the global patenting hub

3. How to choose the global patenting hub?
2 options are possible:
Buying time: reduce the cost of the PCT procedure and postpone choices an decisions
Maximising legal certainty and overall savings: quality and users support of the ISA decisive for the ISA effectiveness as spring board for future extensions
If global patent protection matters, then:
quality, reliabilty and users support will ultimatey provide true savings
even when time is not an issue, procedural efficiency is the best option

4. Opting for EPO as global patenting hub
What can EPO offer for supporting global patenting strategies?
High quality and timely International search report and opinion (or IPER)
PCT reports fully recognized when entering in the regional phase at EPO
According to users EPO ISR and WOISA are in practice extensively reused by designated or elected offices all over the world
Reliable, users friendly and supportive procedures thank to team work (positive WO reviewed by at least 1 extra examiner), quality management system (incl. efficient complaints handling), timely delivery (ECfS), …
Why is EPO a cost effective choice?
EPO works will be recognized for the Euro-PCT phase with fee refund
Users supported all along the procedure for getting a positive written opinion or exmanation report well in time for fine tuning strategy
PPH based on EPO work is a powerful match for getting swift exmanation and saving costs at latter stages

5. PCT route with EPO ISA/IPEA
1st filing at USPTO
Invitation to clarify
N.U. PCT standard
Reliable NU protest review
WOISA 1st com at EPO
Fee refund in Euro-PCT
0 m.
PCT 2nd filing RO US
12 m.
1 WO + phone call
N.U. see Chap I
IPER 1st com at EPO
Fee refund in Euro-PCT
Very high probability IPER +
Inter. Search at EPO
<17 m. no
Inter. Preliminary exam. at EPO
WOISA +
27 m.
yes
PPH request based on EPO WOISA or IPER
Free acceleration
Quicker grant with less com.
30 m.
31 m. at EPO
National/regional phase
National/regional phase

6. Filing and proscution strategy with PCT Direct
1st filing searched by EPO:
National application searched by EPO
EP 1st filing
PCT 1st filing with ISA EPO
PCT claiming prio from 1st filing searched by EPO
ISA EPO
Since 1/11/2014 EPO ISA
Soon any RO (incl. RO USPTO)
WO ISA positive (if needed demand Chap II)
Entry into national/regional phase with PPH based on EPO report
Grant at EPO 6 months after entry (ca. 37 m. after 1st filing at max)
Only one search fee and one exam fee (even with Chap II)
Less communications and faster grant (incl. at USPTO DO or EO)
Procedural fees at EPO offset by savings at EPO and beyond

7. Invitation to clarify the subject matter to be searched (Rule 62a and 63 EPC)
Under the EPC:
In case of major lack of clarity or excessive number of independent claims: Applicants invited to clarify the subject matter which he wants to get searched
Extent of search depends on applicant’s reply
No incomplete search or declaration of no search without invitation to clarify
Under the PCT:
Same principle as for EPC
However invitation to clarify encouraged but not mandatory!

8. Reply to search opinion
For EP applications (Rule 70a EPC):
When requesting examination (within 6 months after search report published) a reply to a negative search opinion is due
Amendments not mandatory but filed in most cases
For PCT applications with EPO/ISA entering in EP phase (Rule 161(1) EPC):
Reply to WOISA requested within 6 months after communication if no amendment filed at entry.
At PCT Chap II start:
When demanding IPE under Chap. II reply to WOISA is expected. If not filed IPER issued without preliminary WO.
May become world standard (PCT working group)
Resulted in a significant increase of direct grant at EPO
Efficient for applicants and EPO

9. Filing amendments in exmanation at EPO
When filing amendments:
Amendments must be typed
no clean copy required,
file only amended pages or paragraphes) R. 49(8) EPC
Amendments should be identified R. 137(4) -> include in reply
typed copies with track changes or
working copies
Indicate the basis in the originally filed application for the amendment
Best practice for self check
Steer examination of extended subject matter
Apply also to PCT

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