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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*

Customised in-house training course

The content, presenters and format of this course are customised to your requirements.

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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.

Customise

Customise & book

This course can be customised to meet your requirements, and delivered to your colleagues at your location or online. For more information, call us on +44 (0)20 7749 4730, email us at inhouse@management-forum.co.uk or contact us below:

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Training options

Public course dates

We can deliver and customise this course for any number of attendees, at your location or online. But if you have fewer colleagues, this course is running publically on:

  • 4 Nov 2020
  • 16 Jun 2021
  • 23 Jun 2021
  • 9 Nov 2021
  • 11 Nov 2021

Book now

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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