Inside the mind of an EPO examiner

Learn the search process used by the EPO examiner in the biotech area. Examiners face similar search issues such as understanding the invention, search strategy development and balancing quality and timeliness. After this session you will better understand and interpret the examiner search report.

Within the framework of the EPO's procedure called BEST (Bringing Examination and Search Together), the search examiner is also the primary examiner in the examining division. The BEST examiner prepares, already at the search stage, a written opinion about the patentability of the invention claimed.

The Guidelines for Examination provide a formal and general guide for anybody interested in the search procedure at the EPO. However, insight into the practical aspects of the search procedure as conducted by the examiner and the "soft" issues influencing his decisions would be useful to applicants to better understand and interpret the search report, the written opinion about patentability and communicate more effectively with the examiner.

This lecture will focus on the numerous constraints and challenges facing the examiner in the biotech area with a view to highlighting those issues of direct relevance to applicants.

Among the topics that will be addressed are:

This topic should give participants an increased understanding of the predictability of the examiner's actions and of the transparency of the EPO´s search and examination procedure thereby enabling them to optimize their patent drafting, interaction with professional representatives and examiners, as well as patent prosecution.

Unity of Invention

This topic will introduce the concept of Unity of Invention. In addition learn how Unity of Invention affects the search by the EPO examiner.

Unity of invention is a requirement both for the EPC as PCT. Giving more than one invention to an inventor for a single price is unfair.

When searching, lack of unity might be evident at first sight, more often it is only detected after analyzing large amounts of relevant prior art. More inventions, or subjects, complicates the search. Find out the “how” and “what” from the side of an EPO examiner.

Complex applications are those which cannot be searched completely due to clarity and disclosure problems. Is it a cheap surrender by the search examiner, or is it really not possible to do a complete search?

Searching beyond Patents

This topic will deal with searching

  1. PubMed using its powerful indexing (MESH)
  2. STN which greatly expands on the scientific literature found in PubMed and
  3. the World Wide Web for access to free technical background information.

After his session you will have an increased understanding how to efficiently use these databases.

It is by far not sufficient to search only in patent related databases when searching in the life-science/ biotechnology field. It is a must to also search non-patent databases. Using such data sources is essential if research effort is not to be wasted in repeating the work of others.

In this workshop we will concentrate on the power of:

This topic should give participants an increased understanding of efficient search techniques in non-patent databases. Through practical exercises the participant will discover and understand the power of these search tools.

Classification Codes Jewels

This topic will demonstrate how classifications are an alternative important tool in obtaining prior art results.

Biotechnology and searching are on the cutting edge and constantly changing. Popular tools and methods such as Google, sequence and keyword searching are helpful in finding biotechnology prior art.

Learn how patent examiners use classification of inventions as a powerful search tool to go beyond Google, sequence and keyword searching to get prior art in a different manner. This seminar is your chance to learn how to apply this “ancient” yet up to date system in today’s searching world.