IP Quick Tip: What Amendments May An Examiner Propose In A R. 71(3) EPC Communication? (Video)

The EPO communicates its "intention to grant a patent" prior to grant. In it, the examiner frequently proposes amendments to the claims or specification. In our experience, the proposed amendments often go too far and may harm the applicant's legitimate interests. So how should you respond to obtain the best possible protection for your innovations? While the EPO usually requires that the description is adapted to any changes made to the claims during prosecution, such adaptation should not unduly limit the scope of the claims. Avoid statements like "embodiment X is not subject to the invention". Instead, preferably re-label the embodiment as being useful for understanding the invention. If the examiner insists, it may be better to delete an embodiment rather than to disclaim it.