Effective Defence of EPO Patent Applications

Clarity in drafting patent applications has always been a serious issue. The purpose of the seminar is to teach delegates the essentials of clarity, and the most effective use of the problem/solution-approach, giving delegates an edge over other parties.

13 Jun 2019

& 7 Nov 2019

GBP 699
EUR 979
USD 1,090

Book now

Course overview

Clarity in drafting patent applications has always been a serious issue: Complete clarity is required to distinguish the subject-matter of a claim from prior art, and an unclear claim can be interpreted to the disadvantage of the applicant or proprietor.

The ‘problem/solution’ approach is not officially part of the EPC, but is a criterion which has been developed by case law. It is now is hard to find a decision of the Boards of Appeal which do not rely on the problem/solution approach in order to decide upon inventive step. It looks easy, but when applied, it should be applied correctly. This is not just a formal matter, but a substantial issue of first importance.

Book both and SAVE

This meeting runs back-to-back with Advanced Drafting Techniques for Successful EPO Patent Applications and there is a £100/€140 discount off this programme when booked with Advanced Drafting Techniques.

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

Why you should attend

Clarity in drafting patent claims has always been a serious issue: Clarity is required to distinguish the subject matter of a claim from prior art, and an unclear claim can be interpreted to the disadvantage of the applicant or proprietor. This is not just a formal matter, but a substantial issue of first importance.

The ‘problem/solution’ approach is not officially part of the EPC, but is a criterion which has been developed by case law.It is now hard to find a decision of the Boards of Appeal which does not rely on the problem/solution approach in order to decide upon inventive step. It looks easy, but when applied, it should be applied correctly. The purpose of this seminar is to teach delegates the essentials of clarity, and the most effective use of the
problem/solution approach, giving them an edge over other parties.

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

Understanding the implications of clarity of claims – Article 84

  • Definition of clarity – Art 84
  • Categories and types of claims
  • Practical definition of clarity – clear means
  • Conciseness and support by description
  • Form and content of claims
  • Clarity vs. novelty
  • Structural vs. functional features

Understanding the implications of clarity of claims – Article 84 continued

  • Comprising vs. consisting
  • The interplay between Art 83, 84 and 56
  • Relative terms
  • Inventions defined by parameters
  • Definition by result to be achieved
  • Sources of difficulties with Article 84 – illustrating case law
  • Clarity of claims in opposition procedure
  • Application of G 3/14 to amended claims
  • Adaptation of the description

Practical workshop: Exercises to exemplify the concepts learnt

Inventive step and how to master the problem-solution approach – Article 56

  • Legal definition
  • State of the art
  • Obvious
  • Problem-solution approach – identifying the nearest/closest prior art
  • Formulating the objective technical problem

Inventive step and how to master the problem-solution approach – Article 56 continued

  • Does the claimed subject matter solve the objective problem?
  • Partial problems
  • Aggregation/juxtaposition
  • Mix of technical and non-technical features
  • Deciding on inventive step and positive pointers

Practical workshop: Exercises to exemplify the concepts learnt

Latest case law and its implications for defending your EPO patent applications

  • Notable decisions on inventive step

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

13 Jun 2019
13 Jun 2019 Rembrandt Hotel, London GBP 699.00
EUR 979.00
USD 1,090.00
+ VAT @ 20.00%
Enrol now
7 Nov 2019
7 Nov 2019 Cavendish Hotel, London GBP 699.00
EUR 979.00
USD 1,090.00
+ VAT @ 20.00%
Enrol now

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Previous customers include...

  • Baytree IP Ltd
  • BCF
  • Daltan Consulting Ltd
  • DuPont Nutrition Biosciences ApS
  • EP-Patent
  • F. Hoffmann-La Roche Ltd
  • Guardian IP Consulting
  • IZI Patents
  • Kolster OY AB
  • Nederlandsch Octrooibureau (NLO)
  • Novo Nordisk A/S
  • Patpol
  • Primrose Oy
  • Research and Markets
  • Umicore Research
  • VIB
  • Xaar Plc
  • Yara International ASA

Perfect presentation, professional way to give the information even to the tired audience

Agneszka Zebrowska-Kucharzyk, European and Polish Patent Attorney, PATPOL

It was a great course

Geovana Rosales, Patent Manager, DuPont Nutrition Biosciences ApS

Very experienced - Straight forward and at times funny

Guy Knockaert, , Umicore

Lively discussion

Huaizhou SHI, , NLO