Office actions and amendments

What is an office action?

In the second part of the European patent application procedure, during the substantive examination, the European Patent Office (EPO) examines your application and your invention whether they satisfy the patentability requirements laid down in the EPC. This stage usually involves communication between the examiners and your patent attorney. 

The process of communicating with the applicant in order to reach a final decision (grant or refusal) is repeated – according to the EPC – "as often as necessary".

If there are any objections, the EPO will send you an office action including an invitation to file observations, to correct any deficiencies and, if necessary, to submit amendments to the description, claims and drawings. The communication will give reasons for any objections raised, and will provide evidence and facts to support the objections. Any prior art documents forming the basis for novelty or inventive step objections must be cited in the communication in such a way that the conclusions can be checked without difficulty. The examiner may also make suggestions on how to overcome the raised objections. Furthermore, the office action has to state the period within which you (or your patent attorney) must reply.

Failure to reply in due time will cause the application to be deemed withdrawn.

In response, your patent attorney will defend your application. This can include filing arguments, preparing detailed responses and amending different parts of the application, such as the claims. When you (or your patent attorney) have replied, the examiner will then continue the examination of your application and decide whether they can issue a grant. However, if some objections persist, you might receive a further office action, or your application might be refused.

Where there is a reason to believe that an additional invitation to overcome the objection(s) could lead to a grant, the examiner will send a further written communication or contact you by telephone. The principle is that a final position (grant or refusal) should be reached in as few actions as possible.

How to reply to an office action

When replying to a communication from the EPO, you can file observations and/or submit amendments to the description, claims and drawings. However, there are certain things you have to be careful about.

I had some cases where the examiner misunderstood a feature and its function. Instead of amending the claims – and narrowing the scope – according to the examiner's suggestion, we explained the feature and the difference from the prior art. Thus, we managed to leave the claims as filed. So, remember that it is never mandatory to amend an application, in some cases it is sufficient to file arguments explaining why your application and invention fulfills the requirements of patentability (without any amendments). 

When you (or your patent attorney) decide to amend the application, the most important rule to remember is that the application must not be amended in such a way that it contains subject-matter that was not contained in the application when filed (which does not include the priority document).*

However, subsequently filed examples or statements of advantage may be considered by the examiner as evidence in support of the invention's patentability.

Another very important rule is that you cannot just file amendments and let the examiner figure out what changes you made and why. You have to identify each amendment, indicate the basis in the originally filed application and preferably also explain how the amended application overcomes the objections.**

Handwritten amendments are, in general, not acceptable.

Time limit

Generally, the time limit for response to an EPO office action should be between two and four months. The period will be determined by the examiner depending on the particulars of the application. If you do not respond to the communication, your application will be deemed to be withdrawn.***

Extension of the time limit

Upon your request, the time limit may be extended (free of charge) if you file the request before the time limit expires. Such a request, even if filed without reasons, is normally allowed if the total period set does not thereby exceed six months. (A request for a longer extension, especially if the total period set exceeds six months, is allowed only exceptionally. An example for exceptional circumstance is if a representative or client is so seriously ill that he cannot deal with the case in time.) If the request for an extension is granted, you will be informed of the new time limit.

Please note that if you requested accelerated examination by filing a PACE request (Programme for the ACcelerated prosecution of European patent applications), your application will be removed from the PACE programme if you request an extension of time limit, since you are expected by the EPO to collaborate in the fast processing of your application.

* This is defined in Art. 123(2) EPC.
"The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed."
See the full legal text here.

** This is defined in Rule 137(4) EPC.
"When filing any amendments, the applicant shall identify them and indicate the basis for them in the application as filed."
See the full legal text here.

*** This is defined in Rule 132(2) EPC.
"Unless otherwise provided, a period specified by the European Patent Office shall be neither less than two months nor more than four months; in certain circumstances it may be up to six months. In special cases, the period may be extended upon request, presented before the expiry of such period."
See the full legal text here.

Author: Zsofia Pintz
Published: August 2020
Updated: July 2023