Changes to EPO Examination - No Third Chances?

Charlotte Tilbury | February 2018

The European Patent Office (EPO) has recently been given the power to issue a summons to oral proceedings in place of a first examination report – and we are already seeing examiners using it. This article summarises some of the likely dangers of this change and what applicants can do differently in order to avoid being caught out.

According to the recently updated Guidelines, the new power will only be used “in exceptional situations” where, despite the applicant’s reply to the European search opinion, “no possibility of a grant can be envisaged”.  In particular, the examining division may issue a summons only if:

  • the content of the claims on file is not substantially different to that of the claims which served as a basis for the European search, and
  • one or more of the objections raised in the European search opinion which are crucial to the outcome of the examination procedure still apply.

However, in the age of “increased efficiency” at the EPO, it has never been more attractive for an examiner to try to conclude proceedings in as little time as possible.  We therefore expect uptake of the new procedure to be high, especially since it allows an examiner to wrap-up search and examination proceedings in only two substantive communications (whereas previously, at least three were required).  

So how can applicants avoid the pitfalls of this new procedure?  Our top tips are set out below.

A) How to avoid a “first action summons”

For an applicant minded to get the broadest protection available, or for an applicant who has not yet decided which features of an invention are the most important, it is highly desirable to avoid (or at least delay) a summons to oral proceedings if it is possible to do so.  This is because a summons to oral proceedings forces the applicant to make quick decisions on prosecution strategy, and often leads to an applicant conceding on points they might otherwise have argued, in order to avoid rejection. There is also the expense of preparing for and attending the oral proceedings to consider. 

In order to avoid a “first action summons”, applicants should follow these two rules:  

  1. Do not file an overly ambitious response to the European search opinion

While it is still possible (and sometimes even advisable) to argue against specific objections raised in the European search opinion, applicants need to be aware that, in the event of any outstanding objections, the examining division may now issue a summons to oral proceedings in reply.  Thus, in order to avoid oral proceedings at such an early stage of examination, we recommend filing a full and detailed response to the search report, with claim amendments (if appropriate).  It is risky to try to argue against an objection where there is no real prospect of success.

  1. Do not ignore the “Communication pursuant to Rules 161(1) and 162 EPC”

For Euro-PCT applications for which the EPO was the International Searching Authority (ISA), responding to the “Communication pursuant to Rules 161(1) and 162 EPC” is an applicant’s last chance to reply to the European search opinion.  In view of this, it is important that all applicants use the “Rule 161(1)/162 EPC” period to ensure that they have filed an adequate response to the International Search Report (ISR), even if a further response is indicated to be “voluntary”. 

We advise that, upon receiving the “Communication pursuant to Rules 161(1) and 162 EPC”, all applicants take the time to review any response and/or claim amendments filed in response to the ISR in the International phase (if any) and decide how to respond to any objections that may remain outstanding.  

We recommend that you get in touch as soon as you receive a European search report or a “Communication pursuant to Rules 161(1) and 162 EPC”, so that we can work with you to avoid an early summons and obtain the broadest protection possible.

B) How to guarantee more rounds of argument with the EPO

For PCT applicants wanting to argue their case before the EPO more than twice, there is the option of filing a demand for International Preliminary Examination during the International phase. This procedure gives applicants the opportunity to respond to the ISR, safe in the knowledge that, in the event of any outstanding objections, the examiner is obliged to issue an International Preliminary Examination Report (IPER) and give the applicant at least one opportunity to respond.  Thus, the applicant has a chance to argue against all objections raised in the ISR, without the risk of triggering the issue of a summons.  However, failure to make any persuasive arguments or concessions at this stage does run the risk that the IPER will simply issue with the same objections as the ISR.  

To get the most out of International Preliminary Examination, we recommend that you speak to us before filing a demand.  This way, we can help to ensure that the proceedings move the case forward. 

C) How to delay having to respond to a European search opinion

For PCT applicants wanting to delay making any decisions about European prosecution, there is the option of not choosing the EPO as the ISA.  This way, the earliest a European search  can be carried out is at least six months after entering the European phase.  Thus, the applicant can delay any substantive work in Europe until nearly 4 years after filing. 

If you would like advice on alternative International Searching Authorities, or if you have any other questions, please do not hesitate to contact us.

D) How to use a “first action summons” to your advantage

Despite what is set out above, oral proceedings are not always something to be avoided.  For instance, they may be beneficial to an applicant who is minded to get some form of protection granted as soon as possible.  By triggering the issue of a summons, a firm date is set on which the examining division will consider all requests of the applicant.  The conclusion of examination via oral proceedings (especially if in place of a first examination report) could therefore be faster than any grant accelerated under the EPO’s PACE programme.  

In addition, arguments and/or amendments submitted in response to the summons, can be used to address any peripheral issues of clarity or added matter, and thereby quickly focus the examiner’s attention to the key aspects of the case.   

If you think you would be interested in taking advantage of the new procedure, we recommend that you get in touch, so that we can plan your strategy together.