Prosecution Of A European Patent Application

For a PCT-derived application, the first procedural step after regional phase entry is the issuance of a Rule 161 communication. This invites the applicant to amend the claims and, if the EPO acted as International Search Authority (ISA), also to file a full response to the issues raised in the Written Opinion that accompanied the International Search Report. If the EPO did not act as ISA, then no substantive response is required at this stage. The number of excess claims fees depends on the number of claims after the response to the Rule 161 communication has been filed. If the application contains more than fifteen claims, then a reduced claim set is often filed at this stage.

Unless the EPO acted as ISA, a supplementary European search is then carried out, and the search report is issued with an accompanying Written Opinion. For the application to proceed, a full response to the Written Opinion must be filed, which may include amendments to the claims.

The next communication is issued by the Examining Division, and the time limit for response is usually four months, though a single extension of time of two months is generally available. In practice, the primary examiner of the Examining Division is usually the examiner who carried out the search and prepared the Written Opinion.

The number of office actions is at the discretion of the examiner, but our experience is that examiners are willing to prolong the dialogue with applicants, provided that each response is a genuine attempt to move the case towards allowance.

A precautionary request for a hearing (oral proceedings) is made to ensure that the examiner cannot refuse the application without notice. In practice, if a summons to oral proceedings is issued, it is often possible to resolve outstanding issues by further discussion with the examiner.

Where objections are raised by the Examining Division, it is almost always necessary to make amendments to the specification and in particular to the claims of the application. Those amendments may substantially affect the scope of the claims, or they may be purely formal in nature. In all cases, however, it is critically important that any amendment does not introduce information into the application that was not present in the specification as originally filed. This requirement is set out in Article 123(2) EPC, and is applied very rigorously by the EPO. Extensive case law has developed over the three decades in which the EPO has been in operation, and amendments that may be possible in other jurisdictions, for instance in the USA, may not be acceptable under EPO practice.

Once the Examining Division is satisfied that the application meets the requirements of the EPC, a notice of allowance (Rule 71(3) Communication) is issued. This is accompanied by a copy of the text with which it is intended to grant the European patent. If the applicant approves the text, it is necessary to pay the grant fee and to file translations of the claims into the two other official languages of the EPO, i.e. into French and German if the specification is in English. Once these formalities have been completed, the application proceeds to grant and the patent specification is published.