FICPI ABC 30/5/07The Unwritten Rules of the EPO – Richard Howson The Unwritten Rules of the European Patent Office Richard Howson Kilburn & Strode, UK

FICPI ABC 30/5/07The Unwritten Rules of the EPO – Richard Howson Background Is the EPO becoming less applicant- friendly? What, if anything, can we do about it?

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

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

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

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

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

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

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

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

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

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

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

FICPI ABC 30/5/07The Unwritten Rules of the EPO – Richard Howson 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 * him* It is possible to agree a position and avoid the hearing

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

FICPI ABC 30/5/07The Unwritten Rules of the EPO – Richard Howson Conclusion Perhaps things aren’t so bad after all?

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