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Advanced Drafting Techniques for Successful EPO Patent Applications
Many patent applications and patents are lost before the EPO, either before Opposition Divisions or before Appeal due to incorrect original drafting, and added subject matter is a recurrent problem. Learn advanced drafting techniques for successful EPO patent applications.
INCLUDES: Interactive workshop sessions and details of the latest case law and its implications
Why you should attend
Many patent applications and patents are lost before the EPO, either before Opposition Divisions or before Appeal. Incorrect original drafting and added subject matter are recurrent problems.
Amendments made during the grant procedure to incorporate new prior art amount to added subject matter, which is often fatal in opposition procedure before the EPO and in nullity proceedings before national courts.
Sufficiency of disclosure can also be a problem and if initial disclosure is insufficient, amending it can amount to adding subject matter.
The purpose of this seminar is to identify the problems of added subject matter and sufficiency of disclosure and show how they can be easily avoided by careful drafting.
Key topics covered:
- Article 123(2) – identify and deal effectively with added subject matter
- How to avoid problems with amendments
- Article 83 – the importance of sufficiency of disclosure
Book both and SAVE
This meeting runs back-to-back with Effective Defence of EPO Patent Applications and there is a further £100/€140 discount off Effective Defence of EPO Patents when booked together with this programme.
To register on both events click HERE
To find out more call customer services on +44 (0)20 7749 4730 or e-mail info@management-forum.co.uk
Who should attend?
- European patent attorneys
- Patent attorneys in private practice
- Corporate patent attorneys and lawyers
- People working or training in intellectual property
- US attorneys working in Europe
- Trainee patent attorneys
- EQE candidates
Those already familiar with the field will find these seminars valuable for updating their knowledge on the latest case law and its implications.
Course programme
How to identify and deal effectively with added subject matter at the EPO – Article 123(2)
- Documents of reference for the application of Art 123(2)
- Decisions of the Enlarged Board of Appeal
- Tools available in order to assess added subject matter
- Main criterion directly and unambiguously derivable
- Examples of amendments not allowable under Art 123(2)
- Examples of amendments allowable under Art 123(2)
- Necessity to indicate amendments and their basis
- Added subject matter and clarity
- Other not-allowable cases of adding subject matter
- Broadening of features or intermediate generalisation
- Revision of the stated technical problem
- Prior art disclosed in the application/patent
- Divisional applications
- Correction of errors
- Added subject matter and extension of protection
- Disclosed and undisclosed disclaimers
PRACTICAL WORKSHOP: Exercises to exemplify the concepts learnt
The importance of sufficiency of disclosure – Article 83
- Enabling disclosure
- Objections concerning essential features
- The interplay between Art 83, Art 84 and Art 56
- Sufficiency when overcoming a prejudice
- Fundamental and partial insufficiency
- Sufficiency and Rule 56
- Consequences of a lack of sufficiency at search stage
- Sufficiency vs clarity
- Plausibility, especially in the medicine sector
- Substantiation of lack of sufficiency in opposition
- Sufficiency vs added subject matter
- Disclaimers and sufficiency
- ‘Reach-through’ claims
PRACTICAL WORKSHOP: Exercises to exemplify the concepts learnt
Latest case law and its implications for your EPO patent applications
- General case law on sufficiency
- Case law on sufficiency in biotechnology
Presenter
Daniel X Thomas
Daniel X. Thomas is an electronics engineer by training. He started his career in the patent field as search examiner at the former Institut International des Brevets in The Hague in 1971. After incorporation of the IIB into the EPO in 1978, he was search examiner in the EPO’s DG1. He joined the EPO’s DG2 in 1979 as substantive examiner in the field of computers and memories. He became a Director in DG2 in 1989, and subsequently headed directorates in various fields of electronics, physics and mechanics.
Although he retired from active service at the EPO on 1 January 2013, Daniel continues to be active in the field of training patent specialists. He still regularly gives lectures at different universities over Europe, including CEIPI in Strasbourg, and also leads workshops/seminars relating to various aspects of the European granting procedure for the epi and the Academy of the EPO, including preparation of candidates for the European Qualification Examination, and also ‘grandfathers’ for new Contracting States.
Continuing professional development
This course qualifies for the following CPD programmes:
- CPD certificate of attendance: 5.50 hours
- General Council of the Bar: 5.50 hours
Book now
| 4 Nov 2020 | |||
| 4 Nov 2020 | Rembrandt Hotel, London | GBP 699.00 EUR 979.00 USD 1,090.00 + VAT @ 20.00% |
Enrol now |
| 16 Jun 2021 | |||
| 16 Jun 2021 | Venue not yet confirmed | GBP 699.00 EUR 979.00 USD 1,090.00 + VAT @ 20.00% |
Enrol now |
| 9 Nov 2021 | |||
| 9 Nov 2021 | Venue not yet confirmed | GBP 699.00 EUR 979.00 USD 1,090.00 + VAT @ 20.00% |
Enrol now |
You may also be interested in
- US Patent Practice
- Biotechnology for the Non-Biotechnologist
- Advanced PCT Formalities
- Patent Protection for Software-Related Inventions in Europe and the USA
- EPO Oppositions and Appeals - the Case Law and Workshop
- Avoiding Pitfalls in Patent/Know-How Licences and R&D Collaborations
- Strategic IP Planning
- The Art of European Claim Drafting
- Advanced Drafting Techniques for Successful EPO Patent Applications
- Effective Defence of EPO Patent Applications
- Annual Update for Senior Trade Mark & Design Administrators
- Formal Requirements of the European Patent System
Previous customers include...
- AC Immune
- Alfa Laval Corporate AB
- Baytree IP Ltd
- BCF
- Bic Violex SA
- Budde Schou
- Daltan Consulting Ltd
- EP-Patent
- F. Hoffmann-La Roche Ltd
- GLP SRL
- Guardian IP Consulting
- HTC Europe Co. Ltd
- INGENIAS CREACIONES, SIGNOS E INVENCIONES, S.L.P.
- Ion Beam Applications sa
- IZI Patents
- JOTUN A/S
- JTI
- Kolster OY AB
- Mettler Toledo India (GBSI)
- Microsoft Mobile Oy
- Novo Nordisk A/S
- Patpol
- Plougmann & Vingtoft
- Primrose Oy
- Research and Markets
- Umicore Research
- VIB
- Xaar Plc
- Yara International ASA
“I really appreciate Mr Thomas – not only for his huge knowledge and experience about the rules and their application but also his ability to teach and explain in a very clear way.”
Sara Miani, Paralegal, GLP SRL, Jun 19
“Very good and practical course.”
Rafi Bronstein, Patent Attorney, Daltan Consulting Ltd, Jun 19
“The speaker was perfect and the content of his presentation, as well the way of presenting it, was excellent.”
Agneszka Zebrowska-Kucharzyk, European and Polish Patent Attorney, PATPOL, Nov 17