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Intellectual Property

Advanced Drafting Techniques for Successful EPO Patent Applications

14 Nov 2017

GBP EUR USD
Standard 699 979 1090
Excluding VAT @ 20.00%

Venue: Cavendish Hotel, London

Enrol now

Select currency when checking out

13 Jun 2018

GBP EUR USD
Standard 699 979 1090
Excluding VAT @ 20.00%

Venue: Rembrandt Hotel, London

Enrol now

Select currency when checking out

Bespoke training

We can customise this course to meet the requirements of your organisation.

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Course overview

Many patent applications and patents are lost before the EPO Boards of Appeal due to incorrect original drafting. Added subject matter is a recurrent problem: Amendments made during grant procedure, to take account or new prior art, amount to added subject-matter, often fatal in opposition procedure before the EPO, and national courts.

Sufficiency of disclosure can also be a problem, as if initial disclosure is insufficient, amending it can amount to adding subject-matter.

The purpose of the 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.

Please note we are also running:

Book both

This meeting runs back-to-back with Effective Defence of EPO Patent Applications on 15 November 2017 and there is a £100/€140 discount off Effective Defence of EPO Patents when booked together with this programme.

To register on both events events click HERE

To find out more call Customer Services on +44 (0)20 7749 4730 or e-mail info@management-forum.co.uk

Key topic covered

  • Article 123(2) – added subject matter
  • Avoiding problems with amendments
  • Article 83 – sufficiency of disclosure

Who should attend

  • Qualified 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 the seminars valuable

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

How to identify and deal effectively with added subject matter at the EPO – Article 123(2) continued

  • 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
  • Substantiation of lack of sufficiency in opposition

The importance of sufficiency of disclosure – Article 83 continued

  • 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 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.

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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

Previous customers include...

  • Baytree IP Ltd
  • BCF
  • Daltan Consulting Ltd
  • EP-Patent
  • F. Hoffmann-La Roche Ltd
  • HTC
  • Ion Beam Applications sa
  • John Cage
  • Kolster OY AB
  • Microsoft Mobile Oy
  • Plougmann & Vingtoft
  • Primrose Oy
  • Umicore Research
  • VIB
  • Xaar Plc