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Demystifying EPO examination reports

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confusionMuch like a nurse attempting to decipher a doctor’s scrawled prescription note for their patient, a large proportion of a European patent attorney’s working life seems to involve interpreting examination reports for their clients, and in particular explaining the various comments and objections raised by the EPO examiners. As such, we thought it might be useful to summarise various objections that Applicants might see in Communications from the EPO, and what they really mean.

  1. Novelty (otherwise known as Article 54 EPC) 

We thought we’d start with a fairly straightforward one: novelty is intended to be a binary assessment condition, and is usually assessed in the same way across all jurisdictions. Whilst the objections raised by the examiners aren’t always correct, it’s usually pretty clear what an examiner means when he/she says that “feature X is disclosed in D1”, particularly as helpful references to portions of the cited document are usually included in an examination report.

  1. Inventive step (or obviousness, otherwise known as Article 56 EPC) 

This one is a little bit more complicated, since assessment of inventive step is more subjective: it hinges on who the skilled person considering the prior art would be, and whether a particular modification would actually be obvious to that skilled person. In addition, the way in which the EPO assesses inventive step does differ from the way in which other countries (such as the USA) assess the equivalent criteria – obviousness. However, the EPO adopt a standard, rigorous approach to assessing inventive step (the ‘problem-solution’ approach) which follows a well-defined series of steps that are to be followed, and criteria that need to be met at each stage to demonstrate inventiveness. These steps are usually helpfully set out step-by-step in an examination report, with comments regarding whether the associated criteria have been met. It is therefore also usually pretty clear what an examiner’s issues with the claims are.

  1. Added subject matter (otherwise known as Article 123 EPC) 

Whilst the actual objections raised under this category aren’t usually hard to understand, sometimes the reasons for such objections can be more elusive. The EPO’s requirement for allowable claim amendments is that they should find ‘direct, unambiguous support in the specification as filed’, which in some cases is interpreted as requiring near-verbatim basis for any new claim wording to be present in the application as filed. However, even when you’ve got the exact claim wording in your description, it’s still possible to fall foul of another aspect, commonly referred to by examiners as an ‘unallowable intermediate generalisation’.

Where newly-added claim features are lifted entirely from the description, examiners will (a) review these new features to check if any of them are described in the specification in combination with other features that have not been included in the amended claim; and (b) will deem the non-inclusion of those other features as an intermediate generalisation unless it is clear from the description that the newly added feature can be isolated from the other features (i.e. if the non-included features are clearly described as optional, and are not functionally linked to the added features; or where other alternatives for the non-included features are clearly given).

In view of the above, it would therefore seem prudent to word the description such that as many non-essential features as possible are presented as optional. However, this can also cause problems with added subject matter: if too many features are presented in the specification as optional or not explicitly linked to one another, then an examiner may consider that amendments which try to combine multiple optional features from the description also add subject matter since they seek to claim an undisclosed combination of features. In rare extreme cases, some examiners have even included a comment in the examination report effectively advising the Applicant not to bother looking to the description when making amendments. This happens, for example, where the entire specification has been drafted along the lines of “In an embodiment, there may be feature X. In an embodiment, there may be feature Y…” and explicit combinations of features for particular embodiments  are not described.

  1. Clarity (otherwise known as Article 84 EPC) 

Somewhat ironically, an objection regarding an alleged ‘lack of clarity’ of the claims can sometimes itself be tricky to interpret. It is sometimes tempting to brush clarity issues aside as being ‘trivial’ and ‘straightforward to address’, and focus on the more concrete novelty/inventive step objections, but it is important to understand and address clarity objections as early in prosecution as possible. Some examiners are actually unwilling to properly raise a novelty or inventive step objection to the claims if they consider them to be sufficiently unclear. However, more importantly, a perceived lack of clarity can sometimes be due to a lack of understanding of the claimed invention on the part of the examiner – addressing clarity objections early has been found to help when arguing inventive step.

Some of the common objections that EPO examiners raise in this category are as follows.

  • ‘Claim lacking essential features’

This objection tends to be raised when EPO examiners believe that certain features that are not present in the independent claims, but are nevertheless required to enable the ‘skilled person’ to actually be able to implement the claimed invention. The EPO generally takes the view that the claims should be read in isolation from the description, and that if features from the description are required to understand a particular claim term or functionality, then such features need to be included in the claims (unless they are explicitly recited in the specification as optional). This objection also tends to be raised in combination with, or as an alternative to, the objection that the claim is an attempt to claim ‘a result to be achieved’ – i.e. when certain functional features that are used to achieve the effect of a claim are not explicitly recited in the claim.

Take, for example, a system configured to transmit a haptic effect to a user where it is not recited in the independent system claim how this is done (although the description clarifies that this transmission is effected by a haptic device being in contact with the user’s skin, for example by being worn). An examiner is likely to object that the system claim lacks clarity as the essential feature of how to effect the transmission of haptic effect from system to user is not included in the claim.

  • ‘Claim lacking support across its breadth’

This is basically an objection from an examiner that the independent claim is overly broad and encompasses embodiments that are not described in sufficient detail in the specification, or are potentially not compatible with/not possible given the invention disclosure in the specification. It will usually be necessary to include some clarifying features to narrow the claim scope in order to overcome this objection. For example, where a general ‘method for tactile guidance’ is claimed but the entire description relates to tactile guidance in robotics, an examiner may raise an objection that the claimed method encompasses a large variety of technical fields other than that presented in the description (e.g. in the technical fields of surgery, or for the visually-impaired via a mobile device).

  • ‘Claim terms are vague and unclear and leave the reader in doubt of the meaning of the technical features to which they refer’

In general, EPO examiners do not like relative terms such as ‘greater/less than’, ‘brighter/dimmer’, ‘faster/slower’ appearing in the claims without qualification, and prefer these terms to be replaced by concrete definitions or ranges. In addition, since examiners tend to read claims in isolation from the rest of the specification, claim terms with specific meanings in the context of the invention (or even terms with well-accepted definitions in a particular technical field) are often deemed unclear by examiners. Usually, this will result in a request that the definition (hopefully provided in the description) be included in the claim. It may be possible to argue that the skilled person would be well aware of the meaning of a particular term (particularly if it is a well-accepted one in the technical field in question, and especially if evidence can be provided of its widespread use).

  • ‘Claim broader than justified by description and drawings

Drafting independent claims is always a delicate balance between claiming something that is broader and more generic than the specific embodiment(s) envisioned by the inventors, without departing too far from what has been described in detail in the specification. However, we need to be careful to provide some description in the specification for other possible examples or embodiments that could provide support for a broad claim scope. Otherwise, an examiner may well raise an objection based on this ground, would could result in having to limit the claims to a specific embodiment.

  1. Sufficiency (otherwise known as Article 83EPC) 

This objection doesn’t tend to be raised in applications relating to mechanical or computer implemented inventions, and is more common in chemical and biological inventions, where evidence usually needs to be provided to support an assertion that the invention provides certain advantages/effects. However, when such an objection is raised for mechanical/computer-implemented inventions, it can be terminal for the application. It is very difficult (if not nigh on impossible) to successfully convince EPO examiners that something is sufficiently disclosed in an application once an objection to the contrary has been raised, particularly since no further information can be added to the specification at that point. It is therefore important when drafting a patent application to ensure that at least one way of enabling a skilled person to carry out the invention is disclosed.

In summary, an examination report can be a minefield of potential issues that only become apparent when attempting to navigate a response. However, in some cases it is possible (where an examiner is willing to engage directly with a patent attorney) to simply phone up an examiner and have a discussion. This can be incredibly helpful.

Samantha Walker-Smith 29 January 2019

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