How to reply to the key rejections for European patent application
date: 2023-04-14 Na Liu, Guangyang Wang Read by:

The examination process of European patent application

 

Firstly, for a European patent application of a PCT patent application that has been filed, the applicant will receive a communication of voluntary amendments (Communication pursuant to Rules 161 and 162). For this communication, the applicant may make voluntary amendments for the application document as needed. If the applicant believes that no changes to the application document are necessary, a request to initiate the search process may be submitted immediately. Also, the applicant may waive above opportunity for amendments, so as to speed up the examination process for the European patent application.


In some cases, when to file the European patent application with entry into the regional phase before the European Patent Office (EPO), the application documents are amended by the applicant based on the negative opinions of the international search report. However, above amendments made based on the international search report could be suspended, since the EPO's examiner will make re-search for the application document, and cited relevant documents usually used will not be exactly the same as that provided in the international search report. If the applicant actively narrows or changes the scope of the application before the examiner conducts the search, it may directly affect the scope of protection of the granted patent. Therefore, the applicant is suggested to consider whether to amend the scope of protection of the claims after the examiner has conducted the search.


As mentioned above, when the period of above voluntary amendments expires, the examiner would make re-search for the application document, and issue the communication at the substantive examination stage. For the communication issued, the applicant is required to respond to the rejections of the communication in a targeted way to overcome the defects of the application document.


At the search stage, the examiner usually issues a supplementary search report, in which the examiner would raise some negative opinions such as substantial defects or formal defects in the application document. For a very few European patent application, the examiner would provide the positive opinions in above supplementary search report, i.e., the examiner does not find any defect in the application document. Regarding above positive opinions, the applicant is required to confirm whether to proceed to the substantive examination.


It should be pointed out that, no matter in the supplementary search report or the communication issued in the substantive examination stage, the evaluation criteria of the examiners are consistent. Therefore, the supplementary search report could be considered as “the first communication”, which the applicant should reply to carefully.

 

Key legal provisions and Strategy for reply to the rejections under the provisions

 

Article 84 EPC (Unclear)

 

Several common problems with unclear terms are summarized below.


i) the claims are not clearly stated, resulting in an incomprehensible scheme.

Strategy for reply: the applicant needs to combine the records in the specification and the attached drawings to clarify whether there is any wrong expression of the claims, so that the unclear problem can be overcome by adjusting the expression or amending the technical terminology to define the scope of the claims more clearly.


ii), the meaning of words of technical features is unclear, the technical features use functional nouns, only define several functional connection relationship or location relationship between the technical features in the claims, rendering that it’s not sure how to achieve technical effect according to the claims.

Strategy for reply: the applicant is required to combine the records in the specification and the attached drawings to clarify the meanings of the technical solution and technical features recorded in the claims. For the technical features with unclear words, the unclear problem can be overcome by changing into more clear words; For the technical features defined by functional nouns, the specific structure of the technical features can be further defined, and the dependent concept of the technical features can be used to explain the functionality, so as to overcome the unclear problem; Similarly, for the unclear claims caused by simply recording the connection relationship or location relationship between several functional technical features, the unclear problem can also be overcome by further increasing the limitation of the technical solution.


iii) the environmental technical features recorded in the claims may lead to the unclear problem.

The examiners may consider the claims to be unclear because of the connection or function between the environmental technical features recorded in the claims and the technical features contained in the subject matter of protection. At this point, it is not clear to the examiners whether the environmental technology feature is also included in the subject matter of protection.

Strategy for reply: The unclear problem can be overcome by amending the expression to make it clear which features are the environmental technology features, usually with the expression ‘be configured to’ to elicit the environmental technology features.


iv) the record of the claims is inconsistent with that of the specification or attached drawings, resulting in the unclear problem.

Strategy for reply: the applicant needs to combine the records in the specification and the attached drawing to clarify whether the record of the claims is unclear. If there is no problem, it is suggested to refer to the relationship between the specification and the attached drawings and the claims to explain; if there is any problem, it is suggested to amend the content of the claims in time to overcome the unclear problem.


v) the problem with the articles ‘a/an’ and ‘the’ in the claims.

It should be noted that the article ‘a/an’ should be used for countable technical features that first appear in the claims; If the technical features do not appear in the prior claims referenced, and the article ‘the’ is used when the technical features first appear, it will cause the unclear problem due to lack of reference basis.

Strategy for reply: Adjust the article used according to the situation, so as to overcome the unclear problem.


vi) the unclear problem caused by the last sentence ‘which is incorporated herein by reference in its entirety ’ in the part of incorporation by reference.

Strategy for reply: Delete the last sentence ‘which is incorporated herein by reference in its entirety’ in the part of incorporation by reference.

 

Article 54(1) (2) EPC (Novelty)

 

In the search stage, the examiners will usually provide a cited relevant document as the closest prior art to evaluate the novelty of the application, and indicate whether the technical solution of the claims of the application is different from the closest cited relevant document, and indicate how the technical solution of the claims of the application is disclosed by the cited relevant document through the comparison of technical features.


Strategy for reply: the applicant should consider in detail whether the opinion of lack of novelty is reasonable in view of the comparison of technical features provided by the examiners. If only a relatively broad reason is provided in the supplementary search report without a detailed feature comparison, the applicant should take the initiative to re-examine the substantive differences between the technical solution of the claims of the application and the cited relevant documents according to the contents disclosed in the cited relevant documents. No matter referring to the feature comparison in the supplementary search report or the feature comparison made by the applicant, the applicant can, according to the comparison results, consider whether to adopt the way of ‘amending the claims + arguing based on the amended claims’ or adopt the way of ‘arguing based on the original claims’ to reply about the novelty.


It should be noted that when making features comparison and argue, the meaning of the examination opinion should be fully understood. For example, the feature ‘smart phone’ is usually interpreted as ‘terminal’ by the examination opinion. Although the applicant can argue that the terminal in the cited relevant document is not ‘smart’, it is usually difficult to convince the examiners if the argument is based only on this distinction point.

 

Article 56 EPC (Inventive Step)

 

At the search stage, the examiners will usually provide a cited relevant document as the closest prior art and evaluate the inventive step issues of the application in conjunction with other cited relevant documents or common general knowledge. Among them, the supplementary search report will usually point out the distinguish technical features of the claims of the application relative to the closest cited relevant document, and further provide the examination opinion on the above distinguish technical features, indicating that these distinguish technical features are disclosed by other cited relevant documents or belong to the common general knowledge of the field.


Strategy for reply: the applicant should consider in detail whether the lack of inventive step is reasonable in view of the feature comparison provided by the examiners. If only a relatively broad reason is provided in the supplementary search report without a detailed feature comparison, the applicant should take the initiative to compare the features in the cited relevant documents with the features in the claims of the application according to the disclosed content of the cited relevant documents; In the process of comparison, it is necessary to determine whether the features between the cited relevant documents have combined enlightenment. Whether referring to the feature comparison in the supplementary search report or the feature comparison made by the applicant, the applicant can consider whether to adopt the way of ‘amending the claims + arguing based on the amended claims’ or ‘arguing based on the original claims’ to provide the reply about inventive step according to the comparison result.


It should be noted that when making features comparison and argue, the meaning of the examination opinion should be fully understood. For example, the feature ‘smart phone’ is usually interpreted as ‘terminal’ by the examination opinion. Although the applicant can argue that the terminal in the cited relevant document is not ‘smart’, it is usually difficult to convince the examiners if the argument is based only on this distinction point.


In addition, for the amendment of the claims, the usual ways of amending include: first, adding all or part of the technical features of the dependent claims which are not evaluated in detail by the examiners; second, adding the technical features described in the specification. After the amendment of the claims, it is also necessary to indicate the technical problem that the amended claims are intended to solve, the technical effect achieved, and the difference between the amended claims and the cited relevant document. If necessary, the reference drawings may be provided for the intuitive feature comparison.

 

Article 123 (2) EPC (Extends beyond the content of the application as filed)

 

In order to avoid unclear problems or overcome defects of novelty and inventive step, the applicant will usually amend the application documents, including but not limited to amendments to the claims, the attached drawings, and the contents of the specification. However, no matter what kind of amendment, it is necessary to avoid the problem that the amendment goes beyond the scope of the disclosure of the application. Here are two cases to illustrate.


Case 1: in order to avoid the unclear problem, the applicant will split the ‘and/or’ schemes of the claims. But the applicant should be reminded that, in the splitting of the technical solution, in addition to avoiding the omission of the technical solution, it should be also considered whether the dependent claims citing the claim and the technical solution constituted by it are recorded in the original application document. It is suggested that if the existence of ‘and/or’ does not disturb the understanding of the technical solution, there is no need to amend the application document when it enters the national stage. It can be replied and amended only when the examiners point out the unclear problem in the supplementary search report.


Strategy for reply: Usually, the applicant can overcome the out of scope problem caused by amendment by giving up the amendment and returning the records of the original application document. However, it is also necessary to consider whether there are still other defects after returning the records of the original application document, and try to provide comprehensive consideration.


Case 2: for the European patent application by PCT way, the applicant usually makes the number of the claims to be limited to 15 for the sake of cost. When there are more than 15 claims in the PCT text, there may be the out of scope problem caused by amendment if the applicant consolidates some of the claims with reference in the same claim and qualifies them further with ‘preferably’.


Strategy for reply: The problem can be overcome by deleting ‘preferably’ or re-splitting the combined claims based on the original application document before the amendment. It should be noted that while deleting ‘preferably’ can overcome the unclear problem or the out of scope problem caused by amendment, the scope of protection of the claim is less than it would have been before the consolidation; If the combined claims are split again and the number of claims is greater than 15, the extra fees shall be paid.


In addition, it should be noted that, for the active amendment of the European application document, the initiative to add new drawings, add new explanation in the specification, etc., high probability will be not accepted, and the applicant should be careful in the amendment. In the amendment, the applicant also need to clearly provide the relevant basis for the amendment, stating that the amendment is made according to the record in paragraph X on page X of the specification, or according to the attached drawing X, rather than only provide a general description of the amendment (such as referring to the original claims and the specification, etc.). Of course, in order to advance the examination process, the examiners will usually point out that the application document has the out of scope problem caused by amendment, at the same time, continue to examine the application document.

 

Rule 42(1) (b) EPC

 

The rule requires the applicant to disclose some contents of the cited relevant documents in the background of the application document.


Strategy for reply: according to the requirements of the examiners, the corresponding cited relevant documents should be added to the background of the application document.

 

Rule 42 (1) (c) EPC

 

The rule requires the applicant to indicate in the part of Summary that its scope is consistent with the scope of the amended claims.

Strategy for reply: the amendment should be made according to the opinion of examiners, with optional expressions including ‘The invention is set out in the appended set of claims’ and ‘The invention is as defined in claim X’.

 

Rule 43(1) EPC

 

The rule requires the applicant to write the independent claim in two paragraphs according to the closest cited relevant document, making a clear distinction between the preamble part and the characterizing part by the use of ‘characterized in that’.


Strategy for reply: the applicant may consider holding off on making a two-paragraph distinction between the contents of the independent claim during the response to the supplementary search report stage. This is mainly because the applicant is not sure whether the reasons for the reply are sufficient or acceptable to the examiners, and therefore want to wait until the notice of substantive examination is issued before making targeted amendments. Of course, if the applicant thinks that the reply is sufficient and the application document has a positive prospect of making the application granted, in order to avoid delaying the granted date, the applicant can directly write the independent claim in two paragraphs in the reply, or argue that the original independent claim has met the requirements of the two-paragraph writing.

 

Notice of substantial examination opinions in the common law and reply

 

Article 123 (2) EPC

 

According to the reply opinion of the supplementary search report, if the applicant has made an amendment beyond the disclosure of the application when amending the application document, the examiners will issue an examination opinion for the amendment beyond the disclosure of the application.


Strategy for reply: the applicant also needs to explain and discuss in detail according to the contents shown in the specification and attached drawings, and explain the reasons why the amendment is not beyond the disclosure of the application. At the same time, the applicant also needs to consider whether there was a problem in the last amendment that the amendment was beyond the disclosure of the application. In particular, when replying the supplementary search report, the applicant only adds a part of the technical features of a dependent claim to claim 1 in order to obtain a greater scope of protection, or skip the aforementioned referenced claims and directly add a part of the technical features to Claim 1 based on the specification. It may lead the examiners to conclude that such amendment is beyond the disclosure of the application. In this regard, the applicant may want to carefully consider whether the amendment is indeed the out of scope problem caused by amendment and overcome the problem by further qualification.


 

Article 84 EPC

 

By the last reply to the supplementary search report, the unclear problem in the application documents has usually been solved. At this point, if the examiners still point out one or more unclear problems, the applicant should consider providing the examiners with a detailed explanation by changing the interpretation method or by referring to the description and drawings. Of course, the applicant should think more about what kind of amendment should be adopted to overcome the above unclear problems, and try to use the thinking and language of the examiners to think about how to answer the examiner's questions. At this stage, the examiners may put forward the statement that ‘the last paragraph of the specification states that deformation ways similar to the application is also covered by the scope of protection of the application’, resulting in the scope of protection of the application cannot be clearly defined.

Strategy for reply: the last paragraph of the specification be deleted. It should be pointed out that, in general, when continuing to reply unclear problems in the substantive examination opinion, the applicant needs to consider whether the expression of the technical solution in the application document is complete, whether it needs to rely on the dependent features in the specification or dependent claims to explain the supreme concept, so that the technical solution can be explained clearly. At this point, the applicant needs to further qualify the technical solution in order to make the examiners easily accept above views.

 

Article 54 (1) (2) EPC, Article 56 EPC

 

After replying to the supplementary search report, in the process of substantive examination, the examiners may replace the closest cited relevant document. In this regard, the examiners will still make a comparative analysis based on the new cited relevant document and the technical solution of claim 1 amended in the application.

Strategy for reply: For the creativity of the dependent claims, the applicant should consider whether it is necessary to further narrow the scope of protection of the claims based on the analysis of the notice of examination opinion, and make reasonable use of every opportunity to reply. The reply standard is similar to the standard for replying to the notice of examination opinion in China. Similarly, when replying to the notice of substantive examination, it is suggested to add reference drawings in the statement of opinions, and compare with the drawings attached to the cited relevant document to show, so as to fully analyze and explain the differences in technical features or the points of contention and contradictions between the two sides, so as to facilitate the understanding of the examiners, so as to promote the examination procedure.

 

Other issues

 

A qualified application document is the key to make the application granted. To this end, the applicant needs to be familiar with the laws and procedures commonly used in European patent application examination, accumulates certain application experience for making proper amendments or arguments for the application document, predicts some possible problems in advance and takes remedial measures in time. When the application document is filed with entry into the regional phase before the European Patent Office (EPO), several suggestions for amendment are provided:


i) the words like ‘preferably’ should be avoided using in the claims;


ii) the reference numbers of technical features should be added to the claims;


iii) the attached drawings are clear, the guide lines use solid lines rather than dotted lines, the attached drawings are not repeated, the reference numbers in the attached drawings have been indicated in the specification, and the reference numbers in the specification are shown in the drawings.


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