Working with European Patent Attorneys

When filing applications in Europe, either a European Patent Application, or national applications, there are some peculiarities of patent practice in place in Europe which are not found in many other international jurisdictions. We find that these can sometimes be overlooked in the instructions we receive, particularly from those who are less familiar with European patent practice. Taking account of these points will reduce the time taken to submit the response, making the process more efficient and reducing the need for instructions to be potentially queried, or for follow-up instructions to be sought.

First, a brief note on geographic terminology. We use the term Europe to refer to any countries within the continent of Europe, as well as countries outside the continent of Europe but associated with Europe by being contracting states of the European Patent Convention. Importantly, the term includes more countries that just the member states of the European Union, which is a smaller number. With that in mind, let’s consider the issues further.

1. Added Subject-Matter – European-style

We often receive instructions to make amendments to patent applications in Europe where we need to advise the client to consider alternative amendments in view of added subject-matter concerns. This is particularly true where instructions originate from those more familiar with US patent practice where a far more liberal approach is accepted.

You may have heard that the European Patent Office (and to a certain extent other national patent offices in Europe) take a particularly strict approach to added subject-matter. This needs to be considered when deciding on amendments to make for patent applications in Europe.

In Europe, for an amendment to a claim to be permitted (or for a priority claim to be valid), the subject matter must have been disclosed directly and unambiguously in the application as filed (or the earlier application, as relevant).

The concept of “unambiguous disclosure” is at the core of European practice regarding added subject-matter. The example below is intended to help explain this concept. 

Suppose there is a patent application that includes a single paragraph describing a red car, having a steering wheel including a sunroof control button and a new type of sunroof, as well as a single claim to a car with the new type of sunroof.

The claim cannot necessarily be amended to also specify that the car includes a sunroof control button, because the paragraph does not unambiguously disclose that the new type of sunroof can be controlled by a button located away from the steering wheel (which would be within the scope of such an amended claim). Even if the amended claim further specified that the car included a steering wheel and that the sunroof control button was on the steering wheel, the paragraph also specifies that the car was red. We may well need to submit arguments that the fact that the car is red is unimportant to the invention and would be recognised as such in order to pursue this further amended claim.

It may be that the unambiguous disclosure could originate from elsewhere in the specification, such as a set of statements giving preferable features of the invention, and/or one or more explicit statements making clear that the location of the sunroof control button and the colour of the car are not important.

Practice point: Added subject-matter is applied relatively strictly in Europe; if the amendment is not being taken wholly from the dependent claims, you may want to seek guidance from your European Patent Attorney on how best to achieve your desired claim scope.

2. Basis for amendments

Even with an allowable amendment, European patent practice requires that an explanation of the direct and unambiguous basis for the amendments being made is provided. If this is not provided, an objection can be expected shortly after submission, leading to increased time and costs addressing the objection, even where the amendment is allowable.

The basis needs to be provided for all of the places the Examiner would need to look in order to convince themselves that the subject-matter of the amended claim was directly and unambiguously disclosed in the application as filed. Often, it can be helpful to supplement the provision of locations in the specification as filed with brief arguments as to why the basis is sufficient.

When providing instructions to European Patent Attorneys, it is helpful to provide the explicit basis for any amendments. This can helpfully take the form of a table, with each claim or claim feature having its own line. Particular care is needed where the amendments relate to deletion of a feature from a claim, or where only some features from a detailed embodiment are incorporated into a claim.

This is one of the areas where there is scope to significantly reduce the time taken by the European Patent Attorney to prepare the response, if the basis for any amendments is already provided.

Practice point: To ensure cost-efficient prosecution, you should provide an indication of the parts of the specification which provide the direct and unambiguous basis for the amendments being made.

3. Inventive Step/Non-obviousness

Patent practice in Europe (certainly at the European Patent Office and the UK Intellectual Property Office) requires inventions to involve an inventive step over the prior art, to be granted patent protection. We understand that in some jurisdictions outside Europe, the technical significance of the distinctions over the prior art are of less importance.

It is helpful to receive any comments on the technical (or commercial) significance of the claimed distinction over the cited prior art. It may also be relevant to provide arguments why a skilled person operating in the same technical field as the invention would not combine the prior art cited by the patent examiner.

The inventive step approach used at the European Patent Office is referred to as the “Problem and Solution” approach, and arguments following this approach are expected by the European Patent Office. Although the approach taken elsewhere in Europe may differ slightly, most patent offices around Europe will require the applicant to submit arguments explaining the technical benefits of the claimed invention over the prior art.

We often receive instructions which explain the novelty of the amended subject-matter over the cited prior art, or even explain that the combination of cited prior art doesn’t disclose one or more technical features of the claim, but without any comment on the inventive significance of this distinction. If such comments are omitted from the response, this often leads to further rounds of communication with the patent examiner, increasing costs and duration to grant.

Although we are happy to devise inventive step arguments, it can keep costs down if you provide at least an indication of the inventive significance of the subject-matter for a claim relative to the cited prior art, wherever possible.

However, unlike in some other jurisdictions, such as the US, the examiners in Europe are not usually permitted to combine more than two documents when raising an objection against the presence of an inventive step in claimed subject-matter.

Practice point: To increase the likelihood of grant when making amendments to overcome prior art, it helps to provide any comments you have about the technical benefits of the distinctions between the claimed subject-matter and the cited prior art.

4. Multiple Claim Dependencies

Patent prosecution in the UK and the European Patent Office (at least) allows for any disclosed claim dependency. Dependent claims are permitted to depend on multiple other claims, including other dependent claims also depending on multiple claims. 

It is even possible for dependent claims to depend on both a method claim and an apparatus claim (providing this doesn’t otherwise lead to a lack of clarity in the claim set, which may sometimes happen).

This is important because it means that many applicants should have no need whatsoever to pay excess claims fees on filing patent applications in the UK and the European Patent Office (at least), for all but the most complex of applications.

Specifically, if you find yourself paying excess claims fees before substantive examination of a European patent application, you should make sure that your attorney has provided a very good reason for this, especially given the high costs which can be involved for more than one or two additional claims.

Practice point: Make sure you amend your claims to make the most of claim dependency flexibility in Europe and so that you avoid paying excess claims fees on filing unless absolutely essential (and even then, minimise them).

5. Auxiliary Requests

Examiners in Europe are generally open to considering more than one possible option in the same response. Each option should be presented as a separate request, taking the form of a main request and one or more auxiliary requests providing sequential fallback positions if a higher-ranked request is not acceptable.

There is sometimes a view that presenting an alternative option makes it less likely that an examiner would accept an initial request based solely on arguing that the examiner’s application of the law is incorrect. We have seen examples from prosecution where an examiner has accepted an unamended independent claim even where an auxiliary request was included where a limiting amendment was made.

It is also possible to follow this approach informally by including arguments in support of one or more dependent claims. The European Patent Office should then provide an opinion on patentability in relation to all claims, especially claims for which detailed arguments have been submitted.

Practice point: Consider whether you can reduce prosecution costs by submitting multiple commercially acceptable requests in the same response. Typically, two to three requests will be considered without any problem, though a large number of requests (more than five) might not be as helpful.

6. Informal contact with the Examiner

Often, examiners are happy to work collaboratively with attorneys and applicants to secure an allowable claim. We find it particularly helpful to discuss a case with the examiner informally on the phone if there seems to be a misunderstanding of part of the argument or claim wording previously submitted, or where the examiner’s arguments are ambiguous or otherwise unclear.

Additional insight of this type can often illuminate an efficient route to a granted patent.

Practice point: Where there is any doubt about the nature of an objection, or how a proposed amendment might be received, a short discussion can avoid the need for another round of communication, reducing overall costs.

7. Risk of Oral Proceedings if no progress is made

Where the European Patent Office wants to refuse an application because it does not conform with the requirements of the European Patent Convention, the applicant will usually be given a final opportunity to present their arguments orally in advance of a decision of refusal being issued.

The European Patent Office are more likely to issue a “Summons to Oral Proceedings” when prosecution has ground to a halt with no new arguments being presented that change the Examiner’s view of the patentability of the invention.

Whilst preparation for and attendance at Oral Proceedings can be expensive, requiring many hours of work to fully prepare for the occasion (because the Examining Division can raise issues based on any of the prosecution history, and any part of the cited prior art), there are still opportunities to avoid the Oral Proceedings. In particular, the Oral Proceedings will be cancelled if the applicant makes arguments and/or amendments in advance which are acceptable to the Examining Division.

In general, we suggest early engagement with the Examiner if a Summons to Oral Proceedings is issued, rather than waiting to attend the Oral Proceedings.

Since the COVID-19 pandemic, Oral Proceedings have been held by video conference, which reduces the need for physical travel to the European Patent Office, helping to reduce some of the costs involved.

The decision of refusal can be appealed, but there is limited scope to raise new counter-arguments, and the costs of appeal can be high.

Practice point: Don’t panic if a Summons to Oral Proceedings is issued on one of your cases, but engage early in the process to avoid the expense of preparation for and attendance at the Oral Proceedings.

8. Geographic Scope

This was mentioned brief at the start of the article, but some further information is provided here.

The European Patent Convention currently covers 39 contracting states, mostly (but not exclusively) in Europe, and including a number of countries not in the European Union (such as UK, Switzerland, Norway and Iceland).

Therefore, for many clients, the best route to obtaining protection in a number of countries in Europe, even those not part of the European Union, is to file a European patent application. Having said that, some applicants may still choose to pursue protection before the national offices instead, particularly if only a relatively small number of countries are of interest in this region.

Practice point: Consider the value of the patent protection in Europe, and decide which of a European patent application and one or more direct national filings is more cost-effective.

9. Ask

If you are in any doubt about the best way to secure patent protection for a particular invention in Europe, then do please ask. We enjoy working with you to achieve your goals, or those of your clients.

Indeed, a number of instructing attorneys or in-house counsel without direct experience of European patent prosecution will send us their applications in advance of the filing deadline, to provide sufficient time for us to review the claims and any amendments, and make any suggested changes to smooth the expected path for European prosecution.

Practice point: If in any doubt about your options, ask.

Author: Chris Cottingham. If you have any questions about this article or other aspect of European patent practice please do not hesitate to contact us.