European Search Opinion
Analysis of the Extended European Search Report and search opinion, including prior-art citations, patentability objections and the amendments or comments required to move the application toward examination.
European Patent Attorney · EPO Prosecution
European Patent Prosecution Before the EPO
Strategic representation for pending European patent applications — from the European search opinion and substantive examination to claim amendments, oral proceedings and grant.
- EPO examination reports
- Article 94(3) EPC responses
- Claim amendments
- Inventive-step arguments
- Oral proceedings
- PACE accelerated examination
Direct EPO representation
For European patent applications and Euro-PCT cases.
Foreign applicants
Representation for international companies and non-European applicants.
Foreign patent counsel
European associate support with structured reporting and prosecution strategy.
Technical + legal analysis
Claim scope, prior art, amendments and EPO-specific patentability issues.
EPO prosecution services
Representation throughout European patent examination
European patent prosecution is more than answering objections. Each response can affect claim scope, fallback positions, grant timing, divisional strategy and the future value of the patent.
Article 94(3) EPC Responses
Preparation of substantive responses to examining-division communications, combining legal argument, technical analysis and claim amendments designed around the commercial objective of the application.
Claim Amendments
Development of main and fallback claim positions while addressing added subject matter, clarity, support, novelty, inventive step and other EPC requirements.
Examiner Consultations
Where useful and procedurally appropriate, direct communication with the EPO examiner can help clarify outstanding issues and test possible routes toward an allowable claim set.
Oral Proceedings
Preparation for and representation at oral proceedings before the examining division, including written submissions, claim requests and argument strategy.
Grant & Pre-Grant Review
Review of the Rule 71(3) EPC text proposed for grant, claim scope, formal requirements and remaining strategic options before the patent proceeds to grant.
Strategic prosecution
What matters in an EPO response?
A successful response should solve the immediate objection without unnecessarily surrendering valuable claim scope. The starting point is therefore not simply “how to obtain a patent”, but what protection the applicant needs for its product, technology, licensing position or enforcement strategy.
- identify which objections are genuinely decisive;
- analyse cited prior art and the examiner’s reasoning;
- protect commercially important claim features;
- select amendments with clear basis in the application as filed;
- preserve useful fallback positions and, where appropriate, divisional options;
- keep prosecution cost and timing proportionate to the commercial value of the case.
Article 54 EPC
Novelty over cited prior art.
Article 56 EPC
Inventive step and the EPO problem-solution approach.
Article 84 EPC
Clarity, support and definition of the claimed subject matter.
Article 123(2) EPC
Added-subject-matter risk and basis for amendments.
Article 83 EPC
Sufficiency of disclosure where raised during examination.
Articles 52–57 EPC
Patentability requirements, including technical character where relevant.
Typical EPO workflow
From search to grant
The exact sequence depends on the filing route and the procedural history of the application. A prosecution strategy should therefore be adapted to the case rather than treated as a standard form response.
1
Search report and search opinion
Review the cited documents, objections and the initial EPO assessment. Where a response is required under Rule 70a EPC or an equivalent procedural route, prepare amendments and/or observations within the applicable period.
2
Substantive examination
The examining division assesses whether the application and claimed invention meet the requirements of the EPC and may issue a communication under Article 94(3) EPC.
3
Arguments and amendments
Respond to outstanding objections, explain the technical contribution, distinguish the prior art and amend the claims where this advances the case without sacrificing unnecessary scope.
4
Further examination or oral proceedings
If objections remain, further written exchanges, consultations or oral proceedings may follow before the examining division reaches a final position.
5
Rule 71(3) and grant strategy
Before grant, review the text intended for grant, formal requirements and any final portfolio decisions, including whether a divisional application should be considered while the parent remains pending.
International clients
European patent counsel for foreign applicants and patent firms
Bauer IP acts for international applicants seeking direct representation before the European Patent Office and for foreign patent attorneys coordinating European members of global patent families.
For companies and patent owners
- direct communication in English;
- review of the commercial objective before material claim amendments;
- clear explanation of EPO objections and available response options;
- prosecution strategy adapted to European practice;
- coordination of grant, divisional and post-grant decisions.
Applicants with neither a residence nor a principal place of business in an EPC contracting state generally require an entitled representative for proceedings before the EPO beyond limited procedural exceptions.
For foreign patent counsel
- European associate handling for EP and Euro-PCT applications;
- reporting of EPO communications and recommended responses;
- adaptation of US, Asian or other national-origin claim strategies to EPO practice;
- coordination of instructions, deadlines and prosecution across patent families;
- support on EPO-specific issues including added subject matter and inventive step.
Accelerated examination
PACE: accelerating EPO examination
Where faster examination is commercially important, a request under the EPO’s PACE programme may be considered. Under the revised programme effective from 1 February 2026, PACE is focused on acceleration in the examination phase. We can assess whether accelerated examination is appropriate for the application and coordinate the request with the broader prosecution strategy.
Technology-focused prosecution
Patent prosecution where technical detail matters
EPO prosecution often turns on how the technical contribution is expressed in the claims and how that contribution is distinguished from the prior art. This is particularly important where technical and non-technical features interact.
Bauer IP handles patent matters involving technical fields including physics, electronics, computer-implemented inventions, software-related technology, artificial intelligence and industrial systems.
Computer-implemented inventions
For claims combining technical and non-technical features, EPO inventive-step analysis focuses on features that contribute to the technical character of the invention. Prosecution therefore requires careful identification of the technical effect, the objective technical problem and the features supporting that effect.
See the EPO Guidelines on mixed-type inventions →Related European patent services
Choose the service that matches the stage of your application
Frequently asked questions
European patent prosecution: practical questions
Can Bauer IP take over an existing European patent application?
Yes. Subject to a conflict check and the required representation formalities, Bauer IP can take over prosecution of a pending European patent application and handle future communications with the European Patent Office.
What should I send for an initial review of an EPO communication?
For an initial timing and conflict check, the EP or PCT application/publication number, the type and date of the EPO communication and the response deadline are normally sufficient. Further documents and instructions can be requested after the initial review.
Can you respond to an Article 94(3) EPC communication?
Yes. The work can include analysing the examiner’s objections and cited prior art, preparing legal and technical arguments, proposing claim amendments and developing fallback requests where appropriate.
Can European patent examination be accelerated?
The EPO PACE programme can be used to request accelerated examination where its conditions are met. Since 1 February 2026, PACE is focused on acceleration during the examination phase. Whether acceleration is strategically useful should be assessed in the context of the individual application.
Do non-European applicants need a European patent attorney?
Applicants with neither a residence nor a principal place of business in an EPC contracting state generally must be represented in EPO proceedings by an entitled professional representative, apart from limited procedural exceptions such as filing the application.
Can a divisional application still be filed during prosecution?
A European divisional application may be filed while the relevant parent European patent application is pending, subject to the EPC requirements. Divisional strategy should therefore be considered before grant or other events that end pendency.
Need representation in an ongoing EPO case?
Send the application number, the latest EPO communication and the response deadline. We can then assess the procedural position, conflicts and the next prosecution step.
Procedural references:
this page was prepared with reference to the EPO Guidelines for Examination, April 2026 edition, including guidance on
responses to search opinions,
Article 94(3) communications,
oral proceedings,
Rule 71(3) and
representation before the EPO.
The content is general information and does not constitute legal advice for any particular case.