EPO prosecution
EPO Office Action Response for US Applicants
An Article 94(3) communication is where most US-drafted applications lose scope in Europe. I draft and file the response as your European representative — arguments in the EPO's own framework, amendments that survive the added-matter test, and a fixed fee agreed before work starts.
Deadlines
Which EPO communication are you holding?
| Communication | Deadline | What it decides |
|---|---|---|
| Extended European Search Report (Rule 70a) | 6 months from publication of the search report | Optional but usually answered together with the examination request |
| First examination report (Art. 94(3)) | 4 months, extendable to 6 on request | The main substantive round |
| Rule 161/162 communication (PCT regional phase) | 6 months, non-extendable | Amendment window on entering the European phase |
| Summons to oral proceedings | Usually 2 months before the hearing | Final written submissions and auxiliary requests |
| Rule 71(3) intention to grant | 4 months, non-extendable | Claim translations and grant fee |
Why US arguments need translating
What the EPO actually wants to read
Problem-solution, not KSR
Inventive step is decided from the closest prior art and an objective technical problem. Commercial success and long-felt need carry almost no weight.
Added matter is unforgiving
Article 123(2) requires direct and unambiguous support in the application as filed. Intermediate generalisations that pass at the USPTO are refused here.
Technical effect wins CII cases
For software claims, the argument must identify a technical effect — latency, memory, signal quality, control of a process — not a business advantage.
How the engagement runs
- 01You send the communication, the application as filed and any parallel USPTO prosecution history.
- 02Within two business days you get a written view of the objections, the realistic claim scope and a fixed fee.
- 03I draft the response with a main request and auxiliary requests, and send it for your approval.
- 04I file at the EPO, confirm the receipt to your docket and diarise the next deadline.
FAQ
EPO office action — common questions
- What is an EPO office action?
- A communication from the examining division under Article 94(3) EPC setting out objections to novelty, inventive step, clarity or added matter, with a deadline — normally four months, extendable to six — to file arguments and any amendments.
- How long do I have to respond to an EPO examination report?
- Four months from notification, extendable to six months on a simple request. The Rule 161/162 and Rule 71(3) deadlines are shorter and cannot be extended.
- What does an EPO office action response cost?
- Typically €1,500 to €3,500 for a standard substantive response, depending on the number of objections and whether new claim requests are needed. Fixed-fee quotes are given before work starts.
- Can my US attorney's arguments be filed at the EPO?
- Only through a European representative, and usually not unchanged. Unexpected-results declarations and secondary considerations carry little weight; the EPO decides inventive step under the problem-solution approach and refuses amendments without literal support in the application as filed.
- What happens if I miss the deadline?
- The application is deemed withdrawn. Further processing under Rule 135 EPC is available within two months of the loss-of-rights notice, on payment of a fee and completion of the omitted act.
Related: EPO vs USPTO practice for US filers · Foreign associate services for US firms