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

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) Supporting logos to go in this box if there aren’t any please delete the box and text IN ASSOCIATION WITH