EPO – Towards a new normal

On Friday 16 April 2021, CIPA Patents Committee submitted its response to the EPO’s consultation on the first draft of its ‘Towards a new normal’ orientation document.

The European Patent Office’s (EPO) orientation document is designed to complement the Strategic Plan 2023 and represents a current assessment of how the EPO could develop based on the lessons learnt. The document set out how the EPO’s plans are likely to evolve further, as the EPO responds to developments.

Together with input from EPO staff, contributions will be assessed for inclusion in the final draft of the orientation document, which the EPO intends to present to the Administrative Council of the European Patent Organisation in June 2021, with a view to gradually implementing any new policies after that.

CIPA’s comments

CIPA welcomes the present consultation, and supports the EPO’s wish to facilitate teleworking where appropriate.

However, our members greatly value the ability to have informal discussions with examiners and formalities officers, in order to seek clarifications of official objections, or to help resolve any difficulties or problems which may arise. This can significantly aid the efficiency of the examination process. Such informal contacts have historically been by telephone, or sometimes by email. They are now encouraged by videoconference (Guidelines for Examination, C-VII, 2.1)

In the past, representatives have reported difficulties when trying to contact an examiner to arrange such a call. Often examiners are not at their desk, and some examiners are more amenable to such informal discussions than others.

When both the examiner and the representative may be working remotely, it will be even more important to ensure that such contact is still possible, and encouraged. Videoconferences are very welcome, but they are not the whole answer, as they need to be arranged by telephone or email. The ability to directly contact an examiner who may be working from home is significant.

We therefore request that the Guidelines’ encouragement of such informal contacts should be reflected and amplified in the EPO’s ‘New Normal’ document.

Date published: 16 April 2021