Added Subject-Matter in EPO Applications and Patents (Art. 123(2) EPO)
How to Avoid Pitfalls!
- How to avoid pitfalls in examination and opposition proceedings with regard to Art. 123(2) EPC
- Taking the necessary precautions when drafting the original application
- Case law of the Boards of Appeal on Art. 123(2) EPC
- WORKSHOP: exercises on added subject-matter and intermediate generalisation
Aims and objectivesThe concept of added subject-matter for an application or a patent under Art. 123(2) EPC is a very important concept in European patent law. An application to which matter has been added with respect to the originally filed documents is generally refused. Similarly, a patent containing added subject-matter is generally revoked in opposition or nullity proceedings. Thus, it is important to be well informed on the topic and to avoid pitfalls which can be easily circumvented, either when drafting an application or when amending it during grant, opposition or nullity proceedings. It is also important to be aware of the significant body of well-established case law of the Boards of Appeal of the EPO, which over time has become increasingly stringent. The aim of the seminar is to show all aspects which have to be taken in account in order to avoid the pitfall of an objection under Art. 123(2) EPC at any time during prosecution of the application or the life of a patent.
Who should attend?
- Corporate patent attorneys
- IP/patent managers/professionals
- Patent attorneys in private practice
- Trainee patent attorneys
Detailed programme09:00 - 17:00
- What is to be understood under 'direct and unambiguously derivable' from the originally filed application documents?
- Examples of amendments non-allowable under Art. 123(2) EPC,
- Reference documents for the application of Art. 123(2) EPC
- Necessity to indicate amendments and their basis
- Features from a cross-referenced document
- Added subject-matter and clarity
- Other not allowable cases of adding subject-matter: prior art described in the application
- Not allowable intermediate generalisation; alllowable intermediate generalisation
- Intermediate generalisation and priority; conclusions to be taken
- Correction of errors in applications
- Correction of errors in decisions
- Disclosed disclaimers (Type I)
- Undisclosed disclaimers (Type II, according to G 1/03)
- Allowable undisclosed disclaimersNot allowable undisclosed disclaimersDrafting of disclaimers
- Disclaimer and priority
- Disclaimers excluding embodiments of the invention (Type III, according to G 2/10)
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, a European and Dutch Patent Attorney and patent litigator, is a partner of Brinkhof. Koen's primary focus is on patent litigation in the pharmaceuticals, organic chemicals, agrochemicals and medical technology sectors. Before joining Brinkhof, Koen headed V.O.'s Chemistry & Life Sciences section. 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 2016. 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. 83 EPC course at the same location the day after (webcode 15 11 178).
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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