How to prepare for oral proceedings for European patents

Patents

Written by René van Duijvenbode and Hans Hutter

Senior European patent attorneys will, with a certain nostalgia, remember the ‘good old days’ in which they could easily call an examiner of the European Patent Office (EPO) and informally discuss a pending application.

Attorneys could also simply make an appointment with an examiner for an informal meeting to discuss a case in person. During such a meeting, the other two members of the examining division would be absent.

Oral proceedings

Oral proceedings – especially before an examining division – also tended to be informal. An attorney had significant freedom to change pending claims extensively. Those good old days are gone. EPO proceedings have become increasingly formal, especially in relation to oral proceedings. Attorneys who do not correctly follow the formal rules for preparing and conducting oral proceedings can end up with empty hands. In examination, this can be repaired by filing a divisional application. However, this may be a costly and unnecessary affair. In opposition, no such repair is available.

This chapter explains the legal background, but also provides ways to avoid such pitfalls. Both the European patent attorney and the applicant/owner have a responsibility here.

Article 'How to prepare for oral proceedings for European patents'

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Published in IAM Patents in Europe

This article first appeared in Patents in Europe: Helping business compete in the global economy 2018/2019, a supplement to IAM, published by Globe Business Media Group - IP Division. To view the guide in full, please go to www.IAM-media.com.