Fewer and fewer opportunities…
The EPO is well known for applying relatively strict criteria to amendments. Compared to, say, the USPTO, the EPO requires virtually literal support for every amendment (we’ll go into more detail about this in another article).
In the past, the narrow approach to allowability of amendments was tempered somewhat by flexibility in the examination process. For example, an applicant would have the opportunity to explore the patentability of one approach, then if that didn’t work, could adjust to a slightly different set of features (within reason).
The throttling of this flexibility started with changes in 2010 to the way divisional applications were handled. It used to be that divisional applications could be filed at any time up until grant. So even if prosecution took a long time, there was always the opportunity to file a divisional if it didn’t go as expected, or for unclaimed subject matter. Now, once the first office action issues, a two-year period starts within which any divisionals must be submitted (there are limited circumstances within which the period can be restarted). Even if the examiner doesn’t get around to looking at your response to the first office action by the time the two years expires, you still need to commit to the expense of any divisionals you may require.
Following on from this, a new set of Guidelines for Examination in the European Patent Office came into force at the EPO on 20 June 2012. Like the USPTO’s Manual of Patent Examining Procedure (MPEP), the Guidelines provide a summary of the law, case-notes and practices that EPO Examiners should apply when examining European patent applications.
The 2012 edition formalizes what many applicants had increasingly been experiencing: the ability to adjust the direction or focus of claims during examination and oral proceedings (ie, examination hearings) has been further constrained. Several years ago, examination could go for several rounds. As long as some progress was being made, the examiner and applicant could exchange multiple rounds of office action and response until an allowable set of claims was mutually agreed. Now, the EPO is encouraged to initiate oral proceedings the moment progress slows. Often, this is after only one or two office actions.
In the past, the EPO recognized that oral proceedings were the final opportunity for an applicant to get a granted patent from their application. This resulted in quite a bit of leeway in exploring different potentially patentable feature combinations leading up to, and during, the hearing. Unfortunately, the 2012 Guidelines further curtail opportunities for amendment once an applicant is summoned to oral proceedings. There is less flexibility in the number of Requests (effectively fallback positions) allowed. It is even expected that Requests converge sequentially rather than exploring different territory. And amendments made after one month before the hearing deadline will be scrutinized very heavily before being admitted.
What to do?
None of this is good news for applicants. But what can you do?
First, try to make real progress with each office action. Examiners are less likely to jump to an early summons to oral proceedings if they feel you’re being realistic and moving things forward.
If you know your claims are weak and the examiner’s said as much in the European search report or first office action, don’t just try amplifying your arguments a bit with the next response. Either come up with something new and forceful, or admit you need to amend.
If there’s any sense that the examiner isn’t “getting” your invention, have your European representative contact them for a telephone discussion. Not all examiners like being called, but many of them are pleased to help.
Finally, if you’re summoned to attend oral proceedings, start planning your possible amendments and fallback positions as soon as you can. You want to have your position very clear, and your amendments submitted, as soon as possible leading up to the deadline one month out from the hearing.