Tuesday 5 August 2014

Will a division please bid for my EPO files

I was a bit shocked to receive an examination report from the EPO reprimanding me for addressing a response to the Examiner and not to the Division
Now we all need to encourage the EPO in their mission to work more efficiently and provide better service. There were no personal remarks in the letter. While it is tempting on occasion to criticise the examiner's understanding. It is never helpful so I don't do it.

Back when I first began responses to office actions were wrapped in ribbon and couched in very formal terminology. None of that was at all helpful in developing a forceful and effective argument.

The exam report comes with the name of the examiner on it. This I had thought was to facilitate communication. Sometimes I try to call examiners to clarify a point. This is a lot easier in the UK IPO than at the EPO. It seems to me this is helpful to the efficiency we need.

If you consult the guide intended presumably for unrepresented applicants, it does not make demands for Dear Sirs responses.

Is there a role for a less formal layer of communication with agents? It would need to be voluntary. In this case the objections were all formal or might be thought so. A call or an email with a proposal might get the whole matter sorted more quickly. Now I am left wondering whether I will be hit with an added subject matter objection if I delete the "about" the Examiner says is unclear. I am not a division. I am a Solo so no pair of supporting acts to ask about that. On balance I think not but its going to take me a formal response and another two years for feedback from the EPO examining division. Naturally the idea of initiating an informal communication after that reprimand is out of the window.

The renewal fees on this case are paid through an agency so in these two years of fallow between activity, it generates no income so my financial controller quite rightly asks why I am doing it, if its not for love of the inventive concept and a desire to see it commercialised for the benefit of Europe and the applicant.


  1. When a lady became the Comptroller of the UK Patent Office we had an interesting discussion in my firm of whether to now write 'Dear Madam' instead of 'Dear Sir' because one writes to the Comptroller and not an Examiner. However we were not sure how Examiners would react and we decided 'Dear Sirs' was now more appropriate (though we'd never worried about writing 'Dear Sir' to female Examiners). At least one of the female attorneys in our firm was not in total agreement on this, but it's a man's world.

  2. I write to examiners at the UK IPO because they write to me. They may use Dear Sirs but they say I and end with a real name -presumably their own

  3. Dear Sirs, covers male/femal.

    Write to and refer to the examiner (some may prefer Examiner). Not to Dear Fred.

  4. Oh we were Dear Herr S, no Dear Fred, we have to allow for a certain respect.
    This was not a question of doubt over sex - he was a Herr not a Ma'am but I am being told to address the division and if the division contained women I dont see how Dear Sirs would help