Advice to European Patent Attorneys on How to Report Examination Reports (Office Actions) to Clients

1.       It often takes many years to learn to fine art of writing a good reporting letter. Trainees often write too little or too much, without focussing on what the client really needs to know.

2.       There are two types of clients: agency (foreign attorneys) and direct clients.  They are very different in what they need to know and how much they want you to make the decisions for them.

3.       The next instruction on the case might be to abandon it, and that could make it difficult to charge for all the time spent in producing a reporting letter.  However for agency clients the reporting letter is often the only opportunity to input and impress them, and so it should be done very thoughtfully (and helpfully).

4.       Agency clients will need advice on points of European practice and perhaps also added matter which is stricter at the EPO than anywhere else.  Some view of whether the Examiner is correct or not under European practice is often helpful, as well as identifying situations which are genuinely uncertain or arguable.

5.       Many biotech attorneys do not give any comments on prior art based objections for agency clients when reporting, given that the instructing attorneys probably know the prior art situation better.

6.       Direct clients will often simply wish to be in the position of approving what the patent attorney suggests. Clearly in this situation the patent attorney needs to find the solutions to all the matters raised in the examination report, bearing in mind strategies that may have been used in other territories or on other cases.

You may also wish to see related articles How to Write a Report of a Patent Decision and Top 10 Observations on the EPO Problem Solution Test.