Nudging the EPO Examiner

It often takes several years for the EPO to get around to examining European patent applications once the exam fee has been paid.  This is basically down to staffing, workloads and backlogs at the EPO.

The EPO Examiners work in teams assigned to different subject matters, with a “primary examiner” working on each case, who is part of a three-person “Examining Division” assigned to the particular file: the idea being to have the most knowledgeable team of examiners working on each case.  The problem arises when there is a surge in patent applications in a particular, or narrow, technology area because it is not possible to simply transfer an Examiner from, say, the “wastewater treatment” team to the “signal processing” team.  On the other hand, a newly-recruited Examiner can take years to be trained up to a level where they can be let loose on the public.  This inevitably leads to backlogs in certain departments of the EPO.

There are various ways that an Applicant can speed up the EPO Examination procedure, for example, by making preemptive amendments, being proactive, using the PACE scheme, using the Patent Prosecution Highway (PPH), etc.  However, one technique I tend to find works particularly well is e-filing “An enquiry as to the processing of the file“.

The actual purpose of this somewhat underused procedure is to ask the Examiner for an ETA on the next Examination Report.  However, in practice, it requires the Examiner to dig the file out, review it briefly, and then assess when he or she will be able to get around to looking at it.  The thing is, by the time they’ve done this, they’re already getting up-to-speed again on the case, so they often just issue the Exam Report straight away.

Even if the next Exam Report is not immediately forthcoming, in my experience, the case has now been moved to the top of the Examiner’s pile, and the Examiner knows that the applicant is keen to press on.  If the Examiner can clear some of his/her backlog by dealing with “low-hanging fruit”, such as a keen Applicant, then so much the better!

Basically, by making a simple enquiry as to the processing of the file you can usually speed things up considerably – and often considerably more so than the other available “acceleration” procedures.

There are, of course, other things to consider and possible unintended consequences:

  1. On the one hand, if the applicant does nothing, then the application will proceed through the Examination queue in the usual way.  There is no way to predict when the application will eventually be examined, but it could take several years.  The main advantage of doing nothing is that it defers the point at which further costs are incurred.  It may also defer Examination until after a corresponding patent has been examined or granted elsewhere, and that may inform the ongoing prosecution of the European case.  Some clients find this useful.  However, the Applicant does have to pay quite hefty annual maintenance fees to the EPO to keep the application in an effective state – whether or not it has yet been examined.
  2. On the other hand, by filing an enquiry as to the processing of the file, we potentially nudge to the Examiner into action and this would bring forward the prosecution costs.  However, it may also bring forward the grant date of a European patent.

So, there you have it, a cheap, practical, simple and low-cost way to speed-up the EPO Examination procedure.

If you have any questions, or want to discuss a particular case, please contact us.