For a number of years, we have participated in the EPO's Praktika extern programme, which allows Examiners to spend time with patent attorneys. We benefit by learning something of the Examiner's point of view, whilst the Examiner sees how IP decisions are taken in industry. We are currently hosting an Examiner, which is benefiting both us and our clients.

One interesting lesson we learn from this programme is how Examiners think about inventions during the patent examination process. EPO Examiners are highly knowledgeable about the technical areas in which they work and many have prior industry experience. Nevertheless, an Examiner usually relies on the paper documents making up the patent application, which do not always cover all the commercial or technical points involved.

With that in mind, here are three issues that an Examiner might not usually consider. Please note that this based on my experience built up over years and does not come from the Examiner currently working with us (although I did show this to them before posting).

  1. How much time and energy was invested in developing the invention. This is of course not a consideration in determining whether an idea can be patented. Nevertheless, any development that required large amounts of effort and/or money is quite likely to have solved tricky issues, which could indicate at least one patentable invention. 
  2. What your customers or competitors are saying about it. Commercial success or envy, for instance, can sometimes indicate factors that can help to suggest inventiveness (so-called "secondary indicators"), such as a technical prejudice or a long-felt need.
  3. Why you want a patent. The traditional reason for a patent, providing a monopoly on a technology that prevents competitors from entering the market, is often assumed. Increasingly though, patents are being used for licensing (especially across markets) or in building up a'war-chest' for protection against an aggressive new entrant, among others. Providing context to your patent application can help your communication with the Examiner in some cases. 

A good patent attorney can use this information to explain your invention better to the Examiner. A Registered Patent Attorney is required to keep their clients' commercial information confidential, but there are often ways to improve your position without the need to disclose sensitive data. Keep your patent attorney well-informed so they can assist you.