1.
Look for a good amendment if that is
possible. Amendments which retain an
acceptable claim scope are a very powerful way of making progress on a
case. Ideally an amendment should be
identified which corresponds to the strongest arguments available.
2.
Sometimes the cited prior art gives a very
inaccurate or misleading picture of the state of the art at the priority
date. A declaration by an inventor or
independent expert can be used to show the Examiner the real life situation
that faced the skilled person at that time.
3.
European Examiners are very open to looking at
data and other evidence filed during examination. Data in support of inventive
step or sufficiency can be very helpful.
4.
On biotech cases it is often possible to argue
inventive step based on both why the skilled person would not have got to the
invention and the special advantages which the invention provides. One should aim to do so whenever possible.
5.
Be awake to situations where the Examiner is
making judgments based on hindsight. In
particular look out for situations where the documents cited in the search
could only have been identified by knowledge of the invention, and therefore do
not represent what the skilled person would realistically have looked at when
faced with the problem.
6.
Often it is necessary to point out what is
reasonable under European practice, for example extrapolation being allowed from
animal or in vitro studies. The Guidelines and case law do not always
address every issue, but EPO Examiners will be responsive to an argument based
on what is normally accepted under European practice.
7.
Be selective in choosing how much to argue and
where to comply as best as possible. There
may be no point in arguing a clarity objection if it can be easily fixed by
amendment.
8.
Try to make progress at each examination report,
accepting the reality of what the Examiner will be prepared to allow. Some complex cases do require several
examination reports as amendments raise new issues.
9.
Be realistic as to what is not going to be
possible. Certain objections, once
raised, can be close to impossible to overcome, such as objections against a
reference to a functionally defined compound.
10.
Sometimes it is worthwhile thinking of
examination as a negotiation, rather than the simple applying of several tests
for patentability. Essentially the
Examiner will be assessing the quality of the contribution made and whether it
is deserving of a patent. Thus is may be
worthwhile separately stressing the contribution as well as demonstrating patentability
according to required criteria.
You may also wish to see related articles Top 10 Uncertainties In Patents and Top 10 difficult claims to get at the European Patent Office
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