Following our previous top tips for success at examining division oral proceedings, we consider actions to take when responding to the summons and attending the oral proceedings that maximise your prospects for a successful appeal should your endeavours with the examining division ultimately prove unsuccessful.
The proceedings before the Examining Division conclude with a decision following oral proceedings or final consideration of written arguments. You may decide to request a decision on the written arguments if the examining division appears entrenched in their position and unlikely to move during the oral hearing. Either way, if the decision is negative, it can be appealed. An appeal may be filed within two months of a decision of refusal.
Your appeal will be considered by a technical Board of Appeal that is independent from the examining division. The Board provides a fresh set of eyes on your application, which may be particularly advantageous when you feel strongly that the examining division’s judgement is misplaced.
The Appeal procedure considers whether the examining division erred in their decision. It is not a re-run of the examination procedure. Flexibility is limited - facts and arguments typically are constrained to those made during the examination procedure. For this reason, we recommend the following actions during the examination procedure when a summons is received:
- Treat the summons as a final exam report and respond with multiple claim requests that can form the basis of an appeal irrespective of whether you plan to attend the oral proceedings.
- If things go well, the examiner may cancel the oral proceedings and issue an allowance. If not, a further preliminary opinion on each claim request should issue.
- If you decide to forego the Examining Division oral proceedings and proceed straight to an appeal with the independent board, the preliminary opinion will likely form the basis of the decision of refusal.
If you do plan to proceed with the Examining Division oral proceedings we would suggest:
You should consider whether further claim requests should be filed between the preliminary opinion and the oral proceedings.
Then, during the oral proceedings, your experienced patent attorney should:
- Develop a good rapport with the examining division and advocate skilfully for allowance of the application.
- Continue to keep an eye on the appeal procedure and consider strategic filing of new requests.
- Maintain all requests on file; the Examining Division regularly suggest withdrawal of requests for procedural efficiency. However, withdrawing requests can significantly limit your appeal case.
Potter Clarkson has an excellent and experienced team of oral proceedings specialists with a long record of success at the European Patent Office. Our team will skilfully prepare for and advocate during the oral proceedings to maximise your chance of success and ensure the appropriate facts and arguments are available on the file to support a robust appeal case, should it be necessary.
