Cost Effective Patent Prosecution at the EPO

Dick Waddington

Member of the International Liaison Committee

(Non-European)

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IN ASSOCIATION WITH

Getting Value for Money at the EPO

• Filing costs• Pre-filing review• Prosecution• Grant stages

Filing costs

• A “standard” US-originating application

– How many independent claims?– How many repeated dependent claims?

– Very detailed description– Beautiful figures

EPO Politics

• Faster prosecution• Search report with Written Opinion• More work – sooner• Resisted by Examiners

EPO Politics

• Tools to cut down cases• More focussed• Less work

Filing costs

• Put that through the mangle of the EPO rules– Claims fees

• $290 each for claims 16 to 50

• $700 each for claims 51 and onwards

– Excess pages fees– One independent claim in each claim category– Early claim election– No claims to unsearched subject matter– Divisional application deadlines

Pre-filing review - some suggestions

• Preliminary amendment– Pick one independent claim in each category

• Retain wording of other claims in the description

– EPO-friendly claims– Give the examiners what they want!

Prosecution

• Amendments

– On filing

– ONCE after the Search Report

– Then only in response to objections

Prosecution

• How to avoid added matter

– Use words from the text

– Cut & paste preferred

– Avoid intermediate generalisation

Prosecution

• Drafting tips:

– Cascading statements of invention

– Multiple options for features in the description

Grant stage

• Pay the grant and printing fees• Complete the national validations

– Translations no longer needed for UK, Germany & France– Netherlands, Sweden, Denmark – claims only

Summary

• Pre-filing review– Reduce claims set– Select the important claims early

• Amendments– Keep lots of variation in the description– Avoid added matter to keep costs down

• Grant stage– It’s getting cheaper!

For more information please contact:

Chartered Institute of Patent Attorneys

95 Chancery Lane, London WC2A 1DT

Telephone: +44 (0) 207 405 9450

Email: info@cipa.org.uk

www.cipa.org.uk

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IN ASSOCIATION WITH