Case 6: Persistence proves profitable.

The Challenge

A European Patent Office (EPO) Examiner raised objections concerning an application we had lodged for our client. The EPO Examiner’s assertion was that some of the patent claims lacked clarity, and there were also questions raised over novelty and inventive step. Though we didn’t share the Examiner’s view, we revised the application and replied accordingly.

It seemed to us that the Examiner, whose first language wasn’t English, had misunderstood the claims, so we explained in some considerable detail the differences between the original and revised applications. We concluded our response with a request for oral proceedings in the event of a further challenge to our application. This precautionary step would give us the chance to present our arguments at a hearing and not be limited to filing an Appeal or letting the Application lapse.

To our surprise, the Examiner summoned us to oral proceedings.


Our Response?

We were faced with two courses of action. The first was to attend the hearing, which would be held in Munich, Germany. The second was not to attend but have our case reviewed in our absence by the EPO’s Examining Division. We chose the latter. We had a faith in the strength of our case, and if we didn’t present in Munich that would also save our client money. In due course a decision to reject the Application was issued; the sole basis of the decision was that the claims were unclear. Adamant that our case was sound we filed arguments as to why the reasoning in the Decision was faulty.


The Outcome

It took exactly a year to decide the Appeal. The decision went our way and the Application was returned to the Examiner. This was a very satisfying outcome. The Board of Appeal had come to its decision without the need for the substantial cost involved in going to Munich to defend the Application in person. Our belief in the strength of our arguments, and our persistence in pursuing them, paid off. The patent was granted in full.

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