Following attempts to convince an examiner to grant your patent application, the arrival of a summons to oral proceedings can sometimes feel like a strong indicator to concede defeat and give up. After all, the European examiner has concluded that progress towards grant has stalled and wishes to bring the procedure to a close at an oral hearing.
However, you can make the summons a turning point.
With the correct strategy, the oral proceedings process provides a great opportunity to engage with the examiner and other members of the examining division to get them to understand your invention and the protection you seek. This can put you in a position from which an understanding can be reached and compromises can be made that result in your patent being granted.
Understanding the oral proceedings process and, if required, the impact on the appeal procedure beyond, is essential both in terms of getting the result you want now and ensuring you avoid some of the common mistakes that can close down future opportunities.
TOP TIPS FOR ORAL PROCEEDINGS BEFORE THE EPO'S EXAMINING DIVISION AND BOARDS OF APPEAL
Potter Clarkson has an excellent and experienced team of oral proceedings specialists with a long record of success at the European Patent Office. We’d like to share our experience with you in a series of best practice ‘top tips’.
In this instalment, we’ll look at our top tips for ex-parte oral proceedings before the EPO’s Examining Division and Boards of Appeal:
- Start by developing the best possible understanding of why the summons to oral proceedings was issued. Appreciating why the examiner has the mindset they do is key to understanding how best to persuade them to reverse their position.
- Before the oral hearing, you are invited to file written submissions; this is the best opportunity to informally engage with the examiner and find common ground. Not capitalising on this stage of the procedure can be costly.
- The oral hearing is the opportunity to present your best arguments to the panel of examiners. Reading the room, maintaining a collaborative atmosphere, and understanding the impact of procedural decisions are key to making the most of the hearing. Forward thinking is also required to ensure that the necessary claims and arguments are available for any subsequent appeal.
- Achieving grant at the oral proceedings is a priority. However, if the hearing did not go well, having the experience to evaluate why things did not go to plan and understand whether the appeal procedure - with the opportunities and limitations it brings - is the best next step is important. There is an alternative strategy, such as a divisional filing that should be considered.
- The appeal procedure is complex. This means it’s paramount to ensure that arguments and submissions are revised to ensure the boards of appeal have the appropriate claims and arguments to work with. The submissions made before and during the first oral proceedings impact what can be done at appeal, and therefore forward thinking is essential from the moment the original summons is received.
We will be updating this series on a monthly basis, which will culminate with an online oral proceedings, oppositions, and appeals ‘masterclass’ in December. If you would like to sign up, please email us today, and we will register you and send you joining details as soon as they are available.
However, if you have any questions relating to oral proceedings before the examining division, opposition, and/or appeal strategy, please email us today, and one of our dedicated team members will be in touch.
