The EPO communicates its "intention to grant a patent" prior to grant. In it, the examiner frequently proposes amendments to the claims or specification. In our experience, the proposed amendments often go too far and may harm the applicant's legitimate interests. So how should you respond to obtain the best possible protection for your innovations? While the EPO usually requires that the description is adapted to any changes made to the claims during prosecution, such adaptation should not unduly limit the scope of the claims. Avoid statements like "embodiment X is not subject to the invention". Instead, preferably re-label the embodiment as being useful for understanding the invention. If the examiner insists, it may be better to delete an embodiment rather than to disclaim it.
The examiner may also propose claim amendments. According to the EPO's Guidelines, an examiner may propose amendments to correct minor errors or to address certain formalities. The Guidelines also allow examiners to propose amendments that change the scope of a claim – but only in exceptional cases where it can be assumed that the applicant would not object. So how should you respond? Study all proposed amendments carefully and ensure that they are warranted.
Perhaps most importantly, make sure there is basis for the amendments. If there is not, you risk losing the entire patent even if the examiner proposed the amendment.
Finally, bear in mind that you as applicant are always in the driving seat. The EPO can only grant patents based on what the applicant has approved. Therefore, if you disagree with any amendments, you should not approve them and enter into a dialogue with the examiner. If you have any questions, please get in touch. We can help you obtain strong and enforceable protection for your innovations.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
