cost effective patent prosecution at the epo dick waddington member of the international liaison...
TRANSCRIPT
Cost Effective Patent Prosecution at the EPO
Dick Waddington
Member of the International Liaison Committee
(Non-European)
Supporting logos to go in this box if there aren’t any please delete the box and text
IN ASSOCIATION WITH
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
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
Supporting logos to go in this box if there aren’t any please delete the box and text
IN ASSOCIATION WITH