Our Knowledge of the European Patent Office
The European Patent Office (EPO) is the best route for obtaining patent protection in Europe. We have many years of experience in handling European applications and in defending and attacking European patents in the opposition procedure. This means that we are familiar with each of the procedures at the European Patent Office and know how to best use them to serve our clients’ interests. We recognise that European patent practice is constantly changing and so we keep up to date with EPO rule changes and closely follow the case law of the EPO Boards of Appeal.
Examination of Patent Applications at the European Patent Office
Whether or not the Patent Office decides to grant a patent and the extent of protection that is given is determined by the outcome of examination. European Patent Office Examiners will usually raise objections to the breadth of protection that is being sought based on documents identified in the search. We can advise on how best to respond using all available options. The optimal approach is usually a combination of amendments to the extent of protection that is sought and arguments in support of the contribution which the invention makes. Sometimes filing experimental data or other evidence is also helpful. European Patent Office practice is highly developed and consistent in the way examination is carried out, and our expertise in this area allows us choose the arguments most likely to persuade Examiners to allow broad patent protection.
The opposition procedure at the European Patent Office allows third parties to attack granted patents. In this procedure the patent usually comes under much more scrutiny than in examination and third parties often rely on many more published documents that were identified in the European Patent Office search. In addition the patent may come under attack from more than one third party. We therefore recognise that defending a patent in opposition requires a much more cautious and strategic approach. Whilst amendment of the patent to limit the scope of protection can be helpful, there is also a need to predict new attacks that third parties may use against the amended patent. The opposition procedure therefore requires a Patent Attorney to be able to predict the response to any action that is taken and to adapt quickly to the strategies being used by other parties.
It is possible to appeal from examination and from opposition to the Boards of Appeal of the European Patent Office. We have years of expertise with both of these types of appeal, and of the best strategies to use in appeal. The Boards of Appeal are prepared to review all of the relevant issues from examination or opposition, and are often prepared to correct decisions of the Examining or Opposition Division. It is therefore important to use the appeal procedure properly to serve the client’s best interests. This may involve rethinking of the strategy that was used in examination or opposition.
European Patent Office Case Law
The Boards of Appeal of the European Patent Office decide a large number of cases every year. Many of these will impact on day to day practice before the European Patent Office, and particularly on the manner in which examination is conducted. It is therefore vital for Patent Attorneys to be familiar with new case law and know how it impacts on the patent applications they are handling.