How to Avoid Pitfalls in EPO Applications and Patents!
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.
Topics
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 objectives
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. 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
You work in an IP, patent or R&D department or as a patent attorney in private practice and want to avoid pitfalls when it comes to added subject-matter? Then this course is intended for you. Knowledge of patent law is required.
Speaker
Daniel Xavier Thomas
Former Director, Directorate-General 1 - Operations, European Patent Office, Munich (Germany)
Harrie Marsman
MSc, European and Dutch Patent Attorney, Of Counsel, V.O. Patents and Trademarks, The Hague (NL)
Detailed programme
23 October 2019 in Amsterdam 09:00 - 17:00
Programme
Added Subject-Matter in EPO Applications and Patents
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
Three Points Test (Former 'Essentiality Test')
Not allowable intermediate generalisation; alllowable intermediate generalisation
Intermediate generalisation and priority; conclusions to be taken
Revision of the Stated Technical Problem
Broadening of Features
Modified Novelty Test
Correction of Errors in Applications and Decisions
Correction of errors in applications
Correction of errors in decisions
Missing parts of description/drawings at filing
Added Subject-Matter and extension of protection
Disclaimer
Disclosed disclaimers (Type I)
Undisclosed disclaimers (Type II, according to G 1/03)
Allowable undisclosed disclaimersNot allowable undisclosed disclaimers - G 1/16
Drafting of disclaimers
Disclaimer and priority
Disclaimers excluding embodiments of the invention (Type III, according to G 2/10)
Daniel Xavier Thomashttps://www.forum-institut.com/seminar/1910181-added-subject-matter-art-123-2-epc/referenten/19/19_10/1910181-course--art-1232-epc,-added-subject-matter_thomas-daniel-xavier.jpg
Daniel Xavier Thomas
Former Director, Directorate-General 1 - Operations, European Patent Office, Munich (Germany)
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
MSc, European and Dutch Patent Attorney, Of Counsel, V.O. Patents and Trademarks, The Hague (NL)
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.
1.120,- € plus tax
The fee includes course documentation (including free download) as well as refreshments, lunch and a certificate. You will receive an invoice as well as confirmation.
The fee includes course documentation (incl. free download) as well as mid-session refreshments, lunch and certificate. Invoice and confirmation will be forwarded to you.
Learn more on sufficiency of disclosure in EPO applications in our Art. 83 EPC course at the same location the day after (webcode 19 10 180).
CPD
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
Sufficiency of Disclosure in EPO Applications (Art. 83 EPC)
Don't Say Too Much or Too Little!
Our speakers will help you to gain an in-depth understanding of Art 83 EPC. After the course, you will be able to better balance the needs for disclosing the necessary information for the European patent application and keeping important features of the invention secret for other jurisdictions.
How to protect a design in the EU and worldwide
This course is intended for paralegals and IP administrators and will help participants adequately prepare an application for filing with EUIPO/WIPO and provide guidance on administrative aspects such as the required filing documentation, procedural steps, monitoring time limits and fees.
Design and protection
of digital business
models with digital patents
IP and the Fourth Industrial Revolution
This practical course deals with the impact of the Fourth Industrial Revolution on intellectual property practice. Attendees will be provided with valuable knowledge as well as practical methods and tools using digital patents in digital business models.
Our speakers will not only give an systematic overview of the most relevant case-law but will also show recent trends with regards to re-establishment of rights proceedings at the EPO.
This course helps you to recognize common pitfalls in complex patent license agreements and our speakers will provide you with receive numerous tips and tricks for the practice.
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