ARTICLE
23 February 2022

It's Good To Talk (With An Examiner)

MC
Marks & Clerk

Contributor

Marks & Clerk is one of the UK’s foremost firms of Patent and Trade Mark Attorneys. Our attorneys and solicitors are wired directly into the UK’s leading business and innovation economies. Alongside this we have offices in 9 international locations covering the EU, Canada and Asia, meaning we offer clients the best possible service locally, nationally and internationally.
According to a recent article from the European Union Intellectual property Office (EUIPO), in 2021 EUIPO examiners took over 9,000 phone calls from trade mark and design applicants.
European Union Intellectual Property
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According to a recent article from the European Union Intellectual property Office (EUIPO), in 2021 EUIPO examiners took over 9,000 phone calls from trade mark and design applicants.

The ability to speak directly with the person examining your application for an EU trade mark or design can be a real advantage, helping to reduce prosecution time, and therefore costs. And with a commitment to return your call within 5 hours if the examiner is unavailable, the EUIPO appears to be leading the way in terms of customer-centric operation.

We have seen similar trends in recent times at the UKIPO, with many patent examination reports now including a paragraph that encourages applicants to schedule an audio or video call with the examiner, "to clarify objections and hence result in more efficient processing of an application".

Even at the European Patent Office, the latest Guidelines agree that "There are instances where personal consultation with the applicant can be helpful in advancing the procedure", and that "A consultation request from the applicant should usually be granted unless the nature of the issue to be discussed requires formal proceedings or the examiner believes that no useful purpose would be served by such a discussion."

We welcome these developments, and hope to see more opportunities to speak directly with examiners of design, trade mark and patent applications in the future. A brief discussion by telephone or videoconference, with the ability to ask questions and make suggestions, can often help resolve objections and identify protectable subject matter quickly and efficiently, benefiting all parties in the process.

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.

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