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Advanced Drafting Techniques for Successful EPO 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*

4 Nov 2020

& 16 Jun 2021 , 23 Jun 2021 , 9 Nov 2021 , 11 Nov 2021

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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.

Book now

Book now

4 Nov 2020
Live webinar
4 Nov 2020
Live webinar
GBP 499.00
EUR 719.00
USD 814.00
Until 23 Sep*
Enrol now
to attend
Live webinar
16 Jun 2021
Live webinar
16 Jun 2021
Live webinar
GBP 499.00
EUR 719.00
USD 814.00
Until 5 May 21*
Enrol now
to attend
Live webinar
23 Jun 2021
Face-to-face, (venue not yet confirmed)
23 Jun 2021
Face-to-face
(venue not yet confirmed)
GBP 599.00
EUR 839.00
USD 934.00
Until 12 May 21*
Enrol now
to attend
Face-to-face
(venue not yet confirmed)
  • 1 day of classroom-based training
  • Meet presenters and fellow attendees in person
  • Lunch and refreshments provided
  • Download documentation and certification of completion
  • Fair transfer and cancellation policy
9 Nov 2021
Live webinar
9 Nov 2021
Live webinar
GBP 499.00
EUR 719.00
USD 814.00
Until 28 Sep 21*
Enrol now
to attend
Live webinar
11 Nov 2021
Face-to-face, (venue not yet confirmed)
11 Nov 2021
Face-to-face
(venue not yet confirmed)
GBP 599.00
EUR 839.00
USD 934.00
Until 30 Sep 21*
Enrol now
to attend
Face-to-face
(venue not yet confirmed)
  • 1 day of classroom-based training
  • Meet presenters and fellow attendees in person
  • Lunch and refreshments provided
  • Download documentation and certification of completion
  • Fair transfer and cancellation policy

Learn more about our face-to-face and webinar training formats.

* Note the early booking discount cannot be combined with any other offers or promotional code

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

Customised in-house training

We can customise this course to meet the requirements of your organisation and deliver it at your location and/or online.

Contact us

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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