Thursday, 19 November 2015

A Cautionary Tale

When prosecuting a patent application before the EPO, a summons to oral proceedings is usually the end of the line (or at least the beginning of the end) if you haven't managed to persuade the examiner that your client's invention is patentable. You will typically have dealt with at least two substantive examination reports by that stage, and the examiner will be of the opinion that things are not progressing and that the matter should be brought to a close one way or another.

Oral proceedings are not, however, an automatic part of the process. According to Article 116(1) EPC, oral proceedings shall take place at the instance of the EPO if it considers this to be expedient or at the request of any party to the proceedings. If the EPO (i.e. the examiner) does not consider it to be expedient, and there is no request on file, then the only available option is to issue a decision to refuse the application under Article 97(2) EPC.

As a result, in order to avoid a nasty surprise in the form of a refusal of the application, it is normal for a patent attorney to have a standing request for oral proceedings on file for any application. The wording could be as simple as "we request oral proceedings before any decision adverse to the applicant is made". This is easily added to any response that gets filed, and soon becomes second nature when preparing a response. The result is that you get the chance to put the arguments and amendments forward that the client really wants, without the fear that the application will be immediately refused if they don't work. If a summons does arrive, then the task changes to one of trying to figure out whether anything will work and if the applicant is happy to go for it. If there really is nothing left, or at least nothing worth fighting for, then the well-advised applicant (i.e. one where money is in shorter supply than sense) will typically drop the application at that stage and go do something better instead.

The standing request for oral proceedings is such a common feature that, at least in some eyes, it could be viewed as negligent not to have one on file in all cases, since the consequences of getting a refusal are that the applicant will be forced to appeal or to file a divisional to start again, adding further costs and delay to the whole process. A patent attorney that does not have a standing request on file is therefore taking an entirely unnecessary risk of getting their client annoyed and potentially opening themselves up to being stung for costs that would be difficult to justify passing on.

All this brings me to the case of a European application I have been keeping an eye on for a little while. This application (which shall, for obvious reasons, remain unidentified here) has been pending at the EPO since 2007 when the application was filed as a divisional, after which the parent application was refused. The application was then searched and a search opinion with various objections issued, which the applicant's representative filed a response to. An examination report then issued with further objections, and the representative filed a response. Their response, however, contained only amended independent claims and made the following statement:
"As soon as the Examining Division indicates allowability of the presently filed new independent claims or other independent claims with or to be filed by the applicant, new dependent claims adapted to such new independent claims will be filed and the specification will be revised accordingly, in particular by adapting it to such new claims and incorporating an acknowledgement and a discussion of the prior art cited". 
Unfortunately, the examiner was having none of this, and issued a further examination report stating:
"It thus appears that the request on which examination is to be carried out is presently not complete. The applicant is reminded that, in accordance with Article 113(2) EPC the European Patent Office shall examine, and decide upon the European patent application only in the text submitted to it, or agreed by the applicant. In order to avoid an adverse decision (Article 97(2) EPC) based on the lack of a clear request, the applicant is invited to clarify the actual application documents making up his request".
Instead of responding to this by preparing a full set of claims and doing the necessary adjustments to the text to comply with EPO requirements (all of which would be fairly easy to do), the representative then wrote back with a little rant at the examiner about the limited response being done on the "grounds of procedural economy", and included the following statement:
"Nearly 25 years the undersigned representative is working as European patent attorney and has used for the grounds of procedural economy statements [...] in thousands of submissions so far. And the undersigned representative has never experienced such a communication like the present one but the statement in question in the said more than thousands of submissions filed so far has not been objected to.
So, the Primary Examiner is requested to continue with the examination procedure in response to the aforementioned submission [...] as all this colleagues would do.
Finally, the representative reserves his right to bring this case to the attention of responsible superior instances".
Nothing in the response, nor in the previous responses, contained anything about a request for oral proceedings. Rather than issuing another examination report, or go to the trouble of issuing a summons, the examiner then simply issued a decision to refuse the application. The applicant now has to decide whether to go to the trouble and expense of appealing the decision (which would be very unlikely to succeed, in light of the current practice on admissibility of amendments by the Boards of Appeal) or to file a further divisional (with 15 years of renewal fees to pay). Their other option is, of course, to abandon the whole thing, but in my view they might also want to think about getting another patent attorney.