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.
09:00 - 17:00
- Legal sources: Article 83 EPC, Rule 42; person skilled in the art; disclosure
- How to disclose an invention
- Essential features; objections concerning essential features; the interplay between Art 83, Art 84 and Art 56
- Reference documents; incorporation by reference; proper names, trade-marks; norms/standards
- 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 in case of medical use claims - plausibility
- 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
- Sufficiency and Rule 56
- Undisclosed disclaimers (G 1/03, G 1/06); 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.
Harrie Marsman is a chemist by training and started as a trainee in the patent profession in 1989 at V.O. Patents and Trademarks. Since 1994, he is a European patent attorney and since that time his focus was on opposition proceedings, especially in the fields of plastic polymers, food technology, household and personnal care products. After having been partner in the V.O. firm for 20 years, he is now an Adviser for V.O. In addition, Harrie is training young professionals in the patent field, in particular for the Dutch national exam and the European Qualifying Examination.
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 19 10 181).
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
The 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.
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