Many patent applications and patents are lost before the European Patent Office (EPO), either during opposition proceedings or appeals. This course will help you avoid common pitfalls such as incorrect initial drafting and issues with added subject matter, which are frequent challenges in this area.
Amendments made during the grant procedure to incorporate new prior art amount to added subject matter, which is often fatal in opposition procedures 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.
The expert trainer will take you through how to deal effectively with these challenges and ensure you understand how to avoid potential problems with amendments so your patent applications are successful.
The key topics covered include:
- 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
Benefits of attending
By attending this course you will:
- Understand how to identify and deal effectively with added subject matter
- Learn about the latest decisions of the Enlarged Board of Appeal
- Get to grips with amendments that are allowable and not allowable under Art 123(2)
- Consider how to deal with disclosed and undisclosed disclaimers
- Clarify the interplay between Art 83, Art 84 and Art 56
- Expand your knowledge of how to avoid problems with amendments
- Examine Article 83 - the importance of sufficiency of disclosure
- Discuss sufficiency vs added subject matter
Certifications:
- CPD: 6 hours for your records
- Certificate of completion
Course Content
Course Provider
Mr Daniel X Thomas,
Training Patent Specialist ,
EPODaniel 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.
Who Should Attend
This course has been specifically designed for:
- 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 this course valuable for updating their knowledge on the latest case law and its implications.
