In 2014, Modiano & Partners took part in the European Patent Office (EPO) Praktika Extern program for the third time. This program provides EPO examiners with the opportunity to spend a number of weeks with a host patent attorney firm. In 2011 we hosted an EPO examiner from the pure and applied chemistry cluster, in 2013 one from the electronics department, and this year we hosted two EPO examiners from the medical and consumer technology and telecommunications departments, respectively.

The Praktika Extern program allows EPO examiners and firms to interact in a setting other than that of the EPO (where the most frequent forms of contact are oral proceedings and other formal meetings), thereby allowing both parties to exchange knowledge and experiences from their respective viewpoints.

During their stay at Modiano & Partners, the EPO examiners worked closely both with the attorneys and also with our administrative staff, thus gaining exposure from start to finish to the life cycle of a patent case as seen from the patent attorney’s perspective. On each occasion, both we and the Examiners concluded that these externships are very useful for improving the mutual understanding of the different perspectives with which a patent case is approached, thus allowing the EPO examiners to locate the EPO’s role within the wider context of the inventor’s, patent owner’s or third party’s activities. In fact, through the Praktika Extern program the EPO examiners are exposed not only to patent prosecution activities before the EPO as seen from the attorney’s point of view, but also to drafting patent applications, preparing claims, replying to examiners’ communications, and preparing oral proceedings (for both examination and opposition). In addition, the EPO examiners who participated in the program at Modiano & Partners were exposed to the preparation of legal opinions, as well as to infringement, invalidation and/or litigation proceedings and licensing and other contractual activities. Where possible, the Examiners were also able to meet external clients, e.g. inventors and/or industry representatives, and play an active role in preparing a patent application based on the outcomes of these meetings, as well as taking part in phone conference calls or other types of meeting aimed at receiving instructions or exchanging views on how a certain patent case should be handled.

The EPO examiners participating in the program provided very positive feedback on the program itself, reporting that the experience allowed them to see things from the other side, and thereby understand why certain things happen and why applicants and attorneys behave in certain ways. We believe that this experience will enable the examiners who were involved in it to increase their understanding of the needs and wishes of an applicant. This will in many cases enable patent attorneys to “speak the same language” as the EPO examiner, and thus more successfully prosecute a case by improving attorney-examiner communication.

Finally, during their stay at Modiano & Partners the EPO examiners always give an internal seminar on topics suggested by our attorneys, generally ranging from the latest procedural changes introduced by the EPO to the most recent case law on particularly current aspects of substantive patent law. These seminars represent a unique opportunity for our firm’s attorneys to stay up-to-date in the most direct and effective manner possible regarding the latest changes introduced by the EPO, on both the legal and practical levels, and to discuss them with the EPO examiners in order to share experiences and exchange viewpoints about what these changes mean and how best to use them in order to defend the clients’ interests before the EPO and, after grant, before the courts of the EPC contracting states.

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