Tips for European Patent Office (EPO) Oral Proceedings

  1. Many attorneys speak to fast. If you think this may be the case for you, consciously slow down, especially at the beginning when you may be nervous.
  2. Make sure the Division or Board is keeping up with you.  They will need time to absorb complex arguments or to read any document that you refer to, and they will not necessarily indicate when they need more time.  Try and say the same thing in different ways if you are making a complex point.
  3. Be ready for anything to happen. Oral proceedings are often full of surprises and a case can easily deviate to, and be decided on, a point that was a side-issue in the written procedure.
  4. Have plenty of ideas for auxiliary requests, even if you don’t actually prepare auxiliary requests based on the ideas.  That will help you to be creative on the day and respond better to whatever happens.
  5. In inter partes proceedings opposition be ready to deal with arguments that are introduced for the first time at Oral Proceedings.  If they are persuasive they could work.
  6. Be on the ball about your last chance to file amendments, and make it clear that when you continue to believe that you will have further opportunities to file auxiliary requests as required.
  7. If your client is not there, make sure you know which amendments would be acceptable or not acceptable to them.
  8. Try and respond to every point the EPO or other side raises, as you might not necessarily know how the EPO is thinking about each issue.
  9. Don’t give up and don’t get tired.  Keep arguing all the way down the requests.
  10. Don’t get too upset. If injustice happens, accept it and move on. Don’t be distracted by it.
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