Added Subject-Matter (Art. 123(2) EPC)
How to Avoid Pitfalls in EPO Applications and Patents!
- 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.
09:00 - 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 disclaimers - G 1/16
- Drafting 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.
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 sufficiency of disclosure in EPO applications in our Art. 83 EPC course at the same location the day after (webcode 19 10 180).
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