There are two scenarios where I am unsure what the practical limit on the number of "Communications"/objections from an EPO examiner would be. However, I do realize that the annuity fee requirement of pending EPO applications may be a way to make the applicant pay for/compensate prolonged examination.

1) Performing subsequent rounds of narrowing(/broadening?) amendments on the originally filed claims, that (a) are supported by the specification (e.g. long list of "prose form" claim alternatives included, or long list of claims originally filed then cancelled upon fee request), and (b) still satisfy unity of invention (e.g. assume no "a posteriori" lack of unity of invention issues arise).

In the US it is not uncommon for some applications to go through multiple rounds of back and forth with the examiner (e.g. 3+ RCEs), where the argument is over applicability of the cited prior art, and/or a sequence of minor claim adjustments are made. What is the analogous scenario for EPO prosecution? E.g. does the examiner and applicant go back and forth on multiple rounds of communication (e.g. up to 10 times in some cases), does lack of substantive arguments against the examiner constitute an essential abandonment of the application, and/or do the amendments generally require new searches to be paid for/performed?

2) Replacing all claims with a new invention (supported in a "compound" application), and paying the supplementary search fee.

The purpose of (2) is to avoid repaying the examination fee and a second set of annuities in a divisional application, in the case that the applicant has decided to "abandon" the original claim set. However, this would essentially double the number of Communications from the examiner. Is this allowed?


As to your second point:


If amended claims are directed to subject-matter which has not been searched because it only appeared in the description (and the search division did not find it appropriate to extend the search to this subject-matter, see B‑III, 3.5) and which does not combine with the originally claimed and searched invention or group of inventions to form a single general inventive concept, such amendments are not admissible.

As to the first one, if the examiner thinks you are not making progress and rejects your amended claims on basis of the same prior art as before, they will reject your application (or have oral proceedings if you requested them auxiliaryly which you should therefore always do; and then either alllow or reject it or continue examination with amended claims).

There's no real maximum, but it's at the examiners discretion to stop communications and reject/go into oral proceedings.

  • What would you say is a typical or maximum number of OAs in EPO cases, or do you know a statistical cite for this? E.g. I would say 2-4 OAs typically in the US, but maybe up to 8, which seems to match with: patentlyo.com/patent/2018/04/actions-examiner-activity.html – user132162 Jun 3 '18 at 20:13
  • Also, although redundant with your answer, just providing another link (schleeip.com/patents-2/search-and-examination-uspto-epo): "There is no limit on the number of Office Actions by the European Patent Office and accordingly no limit on the number of replies. As long as the Examining Division is under the impression that progress is made, it is typically willing to keep the examination procedure open. Although the EPO is no longer as open to informal Examiner interviews as it used to be, it keeps up the open policy to request formal Oral Proceedings under Article 116 EPC ..." – user132162 Jun 3 '18 at 20:14
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    @user132162 I haven't seen any statistics. 2-4 is probably a good guess because after that “progress“ is hard to make and many rejections should either be overcome or not (without significant progress). But I don't know. – DonQuiKong Jun 4 '18 at 3:35

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