IP Review Summer 2018

7 through amicable means. The EPO is proactively reminding applicants that partial/full refunds of the examination fee are available for withdrawing their application before certain milestones - a 100% refund is available for withdrawal before examination begins and a 50% refund is available for withdrawal before a response is filed to the first examination report. Examiners are also increasingly telephoning applicants to suggest ways of overcoming objections, rather than issuing a full examination report. What can applicants do to prepare? The EPO has been gradually implementing these policies over the past 12 months, but it is clear that the next 24 months will see a major acceleration for the EPO to meet its target. This means that pending applications and all new applications will be processed under the strictest implementation of the new polices. For applications already under EPO examination, applicants should be mindful of the increased risk of being summoned to attend oral proceedings as the next examination report. If a regular examination report is issued, applicants may wish to take more decisive action to overcome outstanding objections rather than face a summons, such as by taking a conservative approach to claim amendments or telephoning the Examiner to gauge their likely reaction to an intended response strategy. For pending applications awaiting EPO examination, applicants can prepare for the increasingly time-constrained examination procedure by filing more decisive responses before examination begins. All EPO applications receive an initial view on patentability before examination, which provides applicants with an opportunity to pre-emptively overcome anticipated examination objections. In the past, pre-examination responses were often used to try ambitious response strategies, safe in the knowledge that more conservative strategies could be adopted during examination if the initial strategies fail. This could now run the risk of a summons to oral proceedings being issued whilst the application is bogged down in formal objections under the new system, such as objections raised due to the notoriously strict approach of the EPO towards claim amendments, rather than progressing to more subjective issues like inventive step. For applications yet to be filed, applicants may wish to amend their patent specifications before filing to add more EPO-specific basis for possible future amendments. This would help to avoid delays encountered when claim amendments are rejected due to the strict approach of the EPO mentioned above, as can often occur for applications originating from outside Europe where the hurdles associated with claim amendments are often lower. Can applicants resist the increase in speed? At present, it is possible to slow down the pace of examination by obtaining extensions of time and only partially addressing objections raised in examination reports. Under the new system, the EPO may require justification for granting extensions of time so this option may be restricted depending on the circumstances under which extensions will be granted. Further, only partially addressing objections raised in an examination report may be less attractive as it could increase the risk of provoking a summons to attend oral proceedings. Therefore, it may be much more difficult to stretch out examination. However, the EPO is considering whether to allow applicants to formally defer examination for a period of three years, following intense lobbying from the biotechnology and pharmaceutical sectors. This proposal seems likely to come into force, with a more formal decision expected in the second half of 2018. The proposed system would not achieve an outright three-year hiatus, however, because it looks likely that interested third parties would be able to initiate examination by writing to the EPO to raise their own objections against an application (an existing mechanism known as ‘third party observations’). Further, this will not affect the 12 month target when examination does eventually start. Given the changes happening at the EPO, it seems likely that applicants will have to be more flexible in their prosecution strategy to complete examination within the 12 month target. In addition, having more proactive engagement with the Examiner can only help to resolve issues more quickly. To find out more contact Greg Stepney gstepney@withersrogers.com