7 Aug 2020

Summertime reading: The mind of an EPO Examiner, by one

This article provides an insight into the thinking of EPO examiners during the search process and how examiners balance high quality with service and efficiency.

In this respect, the examiners' job is very comparable to that of many knowledge workers in service organisations. Broken down to the level of an individual search, an experienced examiner working in a technologically complex field can be expected to complete a full search in about 1,5 days.

This immediately prompts the examiner to consider the question: “Which specific combination(s) of keywords and/or classes offers the best chances to find the most pertinent prior art quickly and perform a complete search?”

The answer to this question might depend on several considerations:•

  • Would I rather expect to find relevant scientific publications (a clear hint towards emphasising non-patent databases) or mainly patent applications?•

  • Is the technological activity in this field concentrated geographically (for instance, Asia)?•

  • Who are the main players in this field? Are there just a limited number of very active applicants or, on the contrary, is the market dispersed?•

  • What is the drafting and filing strategy of my applicant?•

  • Given the nature of the subject matter, what are the most relevant databases and search tools? Is it more appropriate to perform a full text based search or rather figure based? Etc …

Taking all of these considerations into account might inspire the examiner to adopt a highly targeted and focussed search strategy (e.g. an initial query limited to a limited number of documents of country codes, applicants, classes and/or keywords) in an attempt to find the “magical bullet” (e.g. novelty destroying documents for the independent claims) quickly. This scenario might apply for an application in a high tech, innovative field with one or two key players, the invention being well-drafted using field-specific jargon and concepts, and one or two relevant technical classes to be allocated.

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