Ever wondered how many Official Communications you can risk before the EPO Primary Examiner had “enough”? A common answer you will get is “two to four”, unless you get the equally common answer “it depends” from your EP Agent. We can all agree that neither answer is particularly helpful.
Before we dig into the data, let’s make clear why it is important to understand this part of the EPO patent examination process. It is quite normal that the patent attorney – and rightly so – will save certain amendments and/or arguments for a later stage of the patent examination process. There is only one problem; if the Examiner has the tendency to accept only a few Official Communications, the attorney might be caught by surprise. The case might get rejected, without having had the chance to presenting the desired arguments or claim amendments.
This is particularly problematic if the attorney proceeds with filing an appeal. Why? Well, the attorney missed presenting the entire case at first instance proceedings, i.e. before the Primary Examiner. For this reason, the attorney may not rely on such planned amendments and arguments before the Appeal Board. This will be even stricter applied with the new RPBA (Rules of Procedure of the Boards of Appeal) coming in to force in Jan 2020.
In short, the EP attorney must avoid being caught by surprise before the Examining Division. But is there a really big difference between Examiners you might wonder? Below are just two of many examples that illustrate the different behavior that an agent might encounter.
The below chart compares two Examiners behavior with respect to how many Official Communications per application they have issued across their workload. Obviously, each EP application will include zero or more Official Communications (0+). Hence, 100% of each Examiner’s workload are captured by the first stage.
At the stage of 1 or more (1+) Official Communications per EP Application, we start to see the first difference. While the Blue Examiner Primary Examiner has 86% of the workload reaching this stage – the other 14% either went to grant or abandoned – the Yellow Examiner has 94% of the corresponding workload reaching this stage.
It starts to get really interesting at the next stage. The Yellow Examiner only has 8% (!) of the examined EP Applications including 2 or more Official Communications. In other words, for majority of his cases the Examination procedure was over after issuing only 1 Official Communication! To the contrary, The Blue Primary Examiner still had 47% of its EP Applications reaching the stage of at least two Official Communications per Application.
Now, if your EP Agent proposes to wait with certain claim amendments and see how to Examiner reacts to the initial Agent reply later, it might be too late already if you encounter an Examiner similar to the Yellow Examiner. This Examiner issued a 2nd Official Communication only for 8% of his cases!
It is because of situations like these that the EP agent is more than well advised to implement data-driven prosecution strategies and not just assume that “2 to 4 Official Communications” is what we can expect to encounter…