Sufficiency of Disclosure in EPO Applications (Art. 83 EPC)
Don't Say Too Much or Too Little!
- Key Issues of Sufficiency of Disclosure
- Enabling Disclosure
- Insufficiency of Disclosure
- Art. 83 EPC applied to biotech: nucleotides and amino sequences; biological material
- Sufficiency vs. clarity and added subject-matter
- Disclaimers and sufficiency
Aims and objectivesArt. 83 EPC is like the less well-known stepsister of novelty and inventive step: applicants often pay less attention to the sufficiency of disclosure. However, it is as important as the other patentability criteria. The apparently simple wording of Art. 83 EPC might cause some problems in practice: if the invention is not sufficiently disclosed, then you risk a refusal in examination, give ground for opposition and may not use it as prior art. Our speakers will help you to gain an indepth understanding of Art. 83 EPC. You will know what enabling disclosure really implies. By the means of practical examples, our speakers will help you to avoid insufficient disclosure. You will know how to master the challenges of Art. 83 EPC in the interplay with other relevant EPC articles and rules. After the course, you will be able to better balance the needs for disclosing the necessary information insuring sufficiency of disclosure of your invention.
Who should attend?
- Heads and member of patent/ IP departments
- Patent Attorneys in private practice
Detailed programme09:00 - 17:00
- Legal sources: Article 83 EPC, Rule 42; person skilled in the art; disclosure
- How to disclose an invention
- Objections concerning essential features: under Article 83 EPC (Functional features and sufficiency); under Article 84 EPC; combined objections
- Reference documents; incorporation by reference; proper names, trade-marks; norms/standards
- Sufficiency in case of medical use claims
- Fundamental insufficiency: performance of the invention depends on chance, invention contrary to well established laws of physics; invention defined by parameters
- Partial insufficiency; in cases of doubt about insufficiency
- Reproducibility / occasional failures
- Sufficiency and Rule 56
- Broad claims/enablement over the whole scope of the claims/ contribution to the art
- Consequences of a lack of sufficiency at search and examination stage
- Insufficiency in opposition proceedings: burden of proof; interplay with Art. 84 and 56
- Sufficiency vs. clarity: substantiation of lack of sufficiency in opposition (hidden clarity objection)
- Sufficiency vs. added subject-matter
- Undisclosed disclaimers (G 1/03); disclaiming an embodiment (G 2/10)
- Nucleotides and amino sequences
- Biological material as such: public availability; deposit of biological material; priority claim; Euro-PCT applications
Daniel X. Thomas is an electronics engineer by training. He started his career in the patent field in 1971 and has at last been heading directorates in various fields of electronics, physics and mechanics. Although he retired from active service at the EPO in 2013., D.X. Thomas continues to be active in the field of IP. To that effect he is leading workshops/seminars relating to various aspects of the European granting procedure. Daniel X. Thomas is also working as consultant in IP matters for various firms around Europe: legal practitioner firms, patent representatives or technical companies.
Koen Bijvank heads V.O.'s Chemistry & Life Sciences section and his practice involves drafting, prosecuting and, primarily, litigating patents. He has gained vast experience in numerous aspects of creating and successfully defending patent portfolios, including the shaping of patent strategies for both small and large sized companies. His main expertise is in the fields of bio-organic chemistry, agrochemistry, medical technology and pharmaceuticals. Koen was recognized as IP Star by Managing Intellectual Property in 2014. He is President of the Dutch Group of AIPPI and of the European Patent Litigators Association EPLIT.
DoubleTree by Hilton Amsterdam Centraal StationOosterdokstraat 4
NL 1011 Amsterdam
Phone: +31 20 5300800
Fax: +31 20 5300801
Learn more on added subject-matter in EPO applications and patents in our Art. 123 (2) EPC course at the same location the day after (webcode 16 10 183).
This course merits 6.5 hours of CPD and 6.5 credit points unter the rules on professional competence of the Netherlands Bar Association. It is also a potentially relevant CPD for Fellows of the CIPA
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