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: [email protected]
www.cipa.org.uk
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