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

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

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

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

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

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

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!

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

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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