Traditionally, a very large proportion of patent prosecution work is done in writing between client and attorney, and between attorney and the examiner at the patent office. In writing there is the chance for things to be misunderstood, or even omitted entirely because as it may not be desirable put in an e-mail for example.  

One of our values is ‘collaboration’, both internally, and externally with our clients. We want to collaborate with you to build a strong working relationship, and to help you navigate the patent application process. One way we think this can be best achieved is by talking with us. That sounds trivial, but in our experience, it makes a big difference: we understand you, your business and your invention better. In turn, that drives better outcomes for your patent applications. 

In this short series of articles, we’ll explore some of the ways we like to talk with you, and with examiners, and the ways it can help during patent prosecution. 

Frustrated by European Patent Prosecution? 

The European Patent Office (EPO) approaches some aspects of patent examination differently to other patent offices. For example, the EPO famously sets a particularly high bar for the requirement that all claims define subject matter that is clearly and unambiguously disclosed in the application as filed. Another issue can be unexpected novelty objections arising from the approach EPO examiners adopt for claim term interpretation. 

These issues, and others, can result in the unwary European patent applicant being caught out. 

How We Can Help 

We like to help our clients avoid being tripped up by the process, and to navigate the most effective prosecution path to best meet the applicant’s commercial goals.  

Future articles in this series will provide more detail, but the following is a summary of some of the ways in which we can add value by talking during the application process. 

Talking Before Filing 

• We are always happy to discuss specifications prior to a PCT or European application being filed within the 12-month priority window.  
• Early preparation by ensuring the specification is optimised for European prosecution before filing can be a cost-effective way of avoiding issues during prosecution. For example, we can ensure that the application is well set up to avoid added matter or priority issues. 

Talking During Prosecution 

• Addressing the objections (whether already raised or merely anticipated) at an early stage is key to minimising overall prosecution costs. We can often spot issues that an EPO examiner is likely to object to and propose a slightly modified approach to achieve your aims while satisfying the examiner.  
• We often engage informally with examiners to ensure we can give our clients the best advice about how to address a particular issue. This examiner engagement also plays a crucial role in the build-up to an oral hearing, where we can in many cases negotiate a route to grant that leads to the hearing being cancelled. 
• By understanding the applicant’s commercial aims we can advise on prosecution strategy. For example, we can make creative use of the EPO processes to either speed up or slow down prosecution. We can also advise on what claim language may avoid or overcome an objection while still meeting those aims. 
• We are also acutely aware that what we put on the record during European prosecution proceedings can have an impact on proceedings elsewhere, and understanding the applicant’s goals helps us to ensure that our actions do not hinder such proceedings. 

As mentioned, one of our core values is a commitment to collaboration, and we have a strong emphasis on collaborating with you to ensure that we add value to the process. We are always happy to talk about how best to meet your requirements, commercial aims, or other needs, usually preferring to do so by ‘phone or videocall to to enable open and candid discussions of the issues. 

We also collaborate internally, so that we benefit from the broad base of experience that our attorneys can draw from. Many of our attorneys have worked as in-house counsel, as patent examiners, and in technical roles in industry. We also have a wealth of experience of contentious matters such as post-grant oppositions, appeals, litigation in UK and overseas courts, and advice on freedom-to-operate, all of which significantly inform our patent prosecution practises. 

Keep an eye out for our future articles in this series, which will delve into a bit more detail about how talking to us can help!