Third-party observations during prosecution before the EPO (2)

With the procedural groundwork in place, we will now move onto the second part of this article to explore practical considerations of TPOs during EPO prosecution. 

TPOs - Practical considerations  

Firstly, it may be helpful to keep TPOs relatively brief (if possible) and structured, making it easy for the examiner to review and quickly identify the key points.  TPOs that are clearly presented and supported by accessible evidence tend to be most effective, particularly where the issues are readily apparent from the application and/or the cited prior art is clearly strong.  The use of problem-solution approach in lack of inventive step argumentation is more likely than not to be appreciated by an EPO examiner. 

TPOs at the EPO can serve purposes beyond merely seeking refusal or claim scope limitation.  If the TPOs are considered relevant, then the applicant might be invited to comment on arguments and/or prior art submitted in the observations.  The applicant’s comments will then end up on the public file wrapper.  Thus, TPOs might be used to force an applicant to present their position in respect of a piece of evidence, and this could then potentially be relied upon during prosecution and/or post-grant proceedings in other jurisdictions. 

Similarly, publication of TPOs and the cited documents might trigger duty of disclosure requirements for an applicant for similar applications in other territories. 

Otherwise, TPOs at the EPO may be a useful way of challenging claims containing parameters - a situation common in the chemical field.  The EPO adopts a relatively strict approach to assessing clarity of claims containing parameters (especially those containing ‘unusual’ parameters), and patent applications can very much be refused on the ground that the independent claims contain an unclear essential parameter (more on this in an upcoming blog post). 

Why is this relevant?  Under EPO practice, it is generally not possible to raise clarity objections during opposition proceedings.  One option is to attack an independent claim along the lines discussed above under the umbrella of sufficiency of disclosure.  That said, the proprietor is more likely than not to argue that the invention defined in the claim is sufficiently disclosed, while the insufficiency objection is merely a minor clarity issue which must be dismissed.  Thus, filing TPOs during prosecution can offer lines of attack that may not be available after a patent has granted. 

One might consider filing TPOs to challenge a somewhat ‘awkward’ amendment made by an applicant in their latest reply to an examination report.  Perhaps the amendment can be argued to introduce subject matter that extends beyond the content of the application as filed. Such an attack via TPOs is possible and may be helpful, but, equally, raising the same objection during opposition proceedings may, if successful, result in a very problematic situation for the proprietor, who might be forced to amend the claim to remove unallowable subject matter, but in a way that does not extend the scope of the patent.  Such a trap can be quite a headache for the patentee, particularly if an independent claim contains an undisclosed disclaimer (i.e. wording that explicitly excludes technical features nominally covered by the independent claim, which wording was not directly disclosed in the application as filed).  

While every TPO submission is considered on its merits, it may be the case that more detailed or nuanced points may not always receive the same level of attention during examination and might be more appropriately raised during post-grant proceedings. 

Overall, a decision as to whether or not to file TPOs must be done on a case-by-case basis.  

What if we are in the shoes of an applicant who has received TPOs on one of their cases?  One option is to be proactive, e.g. file a supplementary, voluntary submission addressing certain points raised in the TPOs.  In particular, if TPOs have been filed when there is an outstanding examination report to reply to, then the applicant could comment on the TPOs in their response to the examination report. Another option is to do nothing, for instance, to avoid placing potentially unnecessary or undesirable arguments on file and instead await the examiner’s reaction. Both strategies can be helpful, depending on the context.  

The final point is that TPOs can flag interest in the application.  Thus, applicants on the receiving end of TPOs may wish to consider filing a divisional application in case the TPOs are merely a prelude to a post-grant opposition.  Similarly, it may be useful to ensure that the claims are in good order for a potential battle after grant.  Parties considering filing TPOs should, of course, bear those aspects in mind. 

Conclusion  

TPOs can be a valuable tool in the European patent landscape, particularly in crowded or commercially sensitive technical fields. Indeed, filing TPOs might be a flexible, cost-effective way to influence prosecution of a competitor’s patent application.  As always, context is key. Whether you are considering filing observations or responding to them, it’s worth thinking carefully about timing, arguments to be deployed, and longer-term goals.  

If you are exploring how best to approach third-party observations or would like to discuss European prosecution strategy more generally, feel free to get in touch.

This article is for general information only and is not intended to constitute legal advice. If you would like tailored advice on a specific matter, please do not hesitate to contact me.