Journal Article

Points and prizes, or how to Play Your Cards Right at the European Patent Office

Richard Howson

in Journal of Intellectual Property Law & Practice

Volume 2, issue 3, pages 170-173
Published in print March 2007 | ISSN: 1747-1532
Published online February 2007 | e-ISSN: 1747-1540 | DOI: http://dx.doi.org/10.1093/jiplp/jpl237
Points and prizes, or how to Play Your Cards Right at the European Patent Office

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Legal context

The European Patent Office (EPO) is the body responsible for granting European patents. For years, the EPO has struggled to cope with the number of patent applications it receives, leading to long delays between filing an application and a patent being granted on it. This has frustrated applicants. To address this, the EPO has made several changes to the way it works and makes use of a points system to encourage its examiners to be more productive. Many applicants complain however that the effects of these measures are far from applicant-friendly.

Key points

Applicants should now expect fewer opportunities for overcoming the EPO's objections to an application. Applicants should therefore make more of the opportunities they do have by considering: performing a pre-filing review, responding to extended European search reports, making use of auxiliary requests, and being more active in the run-up to oral proceedings.

Practical significance

By adopting these practices, the applicant increases his or her chances of obtaining a favourable outcome from the EPO, and may also gain cost savings.

Keywords: It typically takes several years for a European patent application to be processed and granted by the European Patent Office (EPO). Conscious of this, the EPO has taken various steps to accelerate the processing of applications.; One measure adopted by the EPO that has escaped general attention is the operation of a ‘points system’ for evaluating the performance of examiners.; The ‘points system’ is considered in this article as a device that can be manipulated by patent applicants to their own advantage, reflecting also on disadvantages that might result, such as the reduction of chances to put an application in order and the increased risk of a hearing.

Journal Article.  2299 words. 

Subjects: Intellectual Property Law

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