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Advanced Drafting Techniques for Successful EPO (European Patent Office) Patent Applications Training Course
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*
Details
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
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.
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 (More...)
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.
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4 May 2022 Live webinar |
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4 May 2022 Live webinar |
GBP 599 499 EUR 859 719 USD 970 814 Until 30 Mar 22* |
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to attend Live webinar |
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10 Nov 2022 Live webinar |
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10 Nov 2022 Live webinar |
GBP 599 499 EUR 859 719 USD 970 814 Until 6 Oct 22* |
Enrol now
to attend Live webinar |
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* Note the early booking discount cannot be combined with any other offers or promotional code