EPO Oral Proceedings in the Examining Divison
“Oral Proceedings” is a term used by the European Patent Office (EPO) to refer to a hearing where a party can present their case orally. In the Examining Division, such proceedings are generally scheduled towards the end of the prosecution of a patent application in circumstances where the EPO cannot see a patentable invention and is likely to refuse the application.
For those facing Oral Proceedings in the Examining Division, or simply looking to find out more about the processes and opportunities surrounding Oral Proceedings, this brief guide may be of use.
Why Oral Proceedings?
When the EPO’s Examining Division is expecting to refuse an application, before starting the costly and time-consuming appeals process, the applicant can request Oral Proceedings – which gives the applicant an opportunity to discuss their application face-to-face with the Examining Division. It is good practice to make a precautionary request for Oral Proceedings along with any correspondence to the EPO, in the event the Examining Division is minded to refuse the application in response to the correspondence.
In most circumstances, an Examining Division will have issued at least one examination report (in addition to any search opinion) before they will consider issuing a Summons to Oral Proceedings. It is often possible to explain an invention more clearly in a face-to-face meeting with the Examiner, which is why Oral Proceedings can be particularly useful for cases that are difficult to explain on paper.
The Summons to Oral Proceedings will include the Examining Division’s reasoning for refusing the application.
Prior to the Covid pandemic these hearings were usually held in one of the EPO offices, but now they are usually hosted as a video conference. The panel at a hearing will include the primary examiner accompanied by two other examiners.
Preparing for Oral Proceedings
Written submissions
At the same time as issuing the Summons, the EPO will set a deadline of about 1 – 2 months before the Oral Proceedings for the applicant to file written submissions. It is worth noting that this deadline is only extendable in very exceptional circumstances – so the date that is set is likely to be immovable.
The written submissions are the final as-of-right opportunity prior to the Oral Proceedings for the applicant to set out their arguments in writing and, because of this, it is common for these submissions to include a number of different “requests” that may relate to, for example, different proposed claim sets.
Requests
When putting your requests in writing, best practice is to number your requests in order of preference, typically “main request”, “1st auxiliary request”, “2nd auxiliary request” and so on. Usually, each subsequent request is narrower in scope than the previous request, but occasionally they can cover alternative limitations in order of preference. It is not unusual for further amendments to one of these claim requests to be made during the Oral Proceedings as discussions take place.
Once submitted, the Examining Division will consider each request in turn and grant the application on the basis of the first request that is acceptable. If the Examining Division is persuaded by one of the requests submitted in the Written Submissions, the Oral Proceedings are usually cancelled and the procedure continues in writing. It is good practice, if relevant, to telephone the Primary Examiner about ten days before the Oral Proceedings to try to resolve the issues, prior to the hearing.
Late filed submissions
If progress is made during this stage (for example in a telephone call) then it may be appropriate to file further written submissions; perhaps through amendments or rewritten Main or Auxiliary requests.
Any claim amendments or patentability arguments submitted after the written submissions deadline are considered “late-filed” and only admitted at the discretion of the Examiner. If it is immediately evident that the late-filed amendments change the decision on the application, then they may be admitted.
What to expect from Oral Proceedings
The Oral Proceedings will start with introductions and providing identification, before one of the Examiners summarises the objections maintained by the Examining Division. It is then the turn of the applicant (or the applicant’s representative) to present the case and begin dialogue.
If you deem it to be necessary for an inventor to take part in the proceedings, this can and should be arranged with the EPO in advance.
During the dialogue, each request will be discussed in turn, using the “Share Screen” function where necessary to refer to documents or points. During the dialogue, it is typical for there to be one or more adjournments, which give each party the opportunity to discuss privately with colleagues.
At the end of the proceedings, the Examiners announce their decision. If an acceptable claim set is agreed during the proceedings, the Examining Division will likely ask the representative to amend the application to include the allowed claims before the proceedings conclude. During proceedings held by video conference, any amended claims can be sent via email to the Examiners. If amendment of the description is required (for example, for conformity with the allowed claims), the EPO will normally set a deadline of a few weeks to allow the applicant time to do this.
After the Proceedings conclude
In the period after the Oral Proceedings (ranging from a few days after to a few weeks after) the Examining Division will issue formal minutes of the hearing and a formal, reasoned decision. If the main request is found to be acceptable, then the grant will proceed on the basis of this request.
If an auxiliary request is allowed at the Oral Proceedings, it is good practice to maintain the rejected requests at the end of the Oral Proceedings, to give the applicant an opportunity to appeal the negative decision regarding the lower requests.
If none of the requests are granted, or if you would like to try arguing again for one of the broader refused requests, then it is possible to file an appeal.
If you would like to know more about Oral Proceedings or are facing upcoming proceedings you would like to discuss further, get in touch with us at mail@mathisen.co.uk.