Advanced Drafting Techniques for Successful EPO Patent Applications

September 21st - 24th, 2020

15:00 - 16:30 IDT | Monday - Thursday

Advanced Drafting Techniques for Successful EPO Patent Applications

Faculty: Daniel X. Thomas

Cost €645/NIS 2550 + VAT, Early Registration €545/NIS 2200 + VAT

Each Segment is 1.5 hours @  €162 per segment. You may register for both or Article 123(2) or Article 83.

Cost per section is: €380/NIS 1490 + VAT, Early Registration €290/NIS 1150 + VAT. 

Early Registration by August 20, 2020

 

Segment 1 How to identify and deal effectively with added subject matter at the EPO – Article 123(2)

• Documents of reference for the application of Art 123(2)

• Decisions of the Enlarged Board of Appeal

• Tools available in order to assess added subject matter

• Main criterion directly and unambiguously derivable

• Examples of amendments not allowable under Art 123(2)

• Examples of amendments allowable under Art 123(2)

• Necessity to indicate amendments and their basis 

 

Segment 2 How to identify and deal effectively with added subject matter at the EPO – Article 123(2) and Practical Workshop

 

• Added subject matter and clarity

• Other not-allowable cases of adding subject matter

• Broadening of features or intermediate generalization

• Revision of the stated technical problem • Prior art disclosed in the application/patent

• Divisional applications

• Correction of errors

• Added subject matter and extension of protection

• Disclosed and undisclosed disclaimers

 

Segment 3 The Importance of Sufficiency of Disclosure – Article 83

• Enabling disclosure

• Objections concerning essential features

• The interplay between Art 83, Art 84 and Art 56

• Sufficiency when overcoming a prejudice

• Fundamental and partial insufficiency

• Sufficiency and Rule 56

• Consequences of a lack of sufficiency at search stage

• Sufficiency vs clarity

• Plausibility, especially in the medicine sector

• Substantiation of lack of sufficiency in opposition

 • Sufficiency vs added subject matter

• Disclaimers and sufficiency

• ‘Reach-through’ claims

 

Segment 4

  • PRACTICAL WORKSHOP Exercises to exemplify the concepts learnt in Segment 3 

  • Latest case law and its implications for your EPO patent applications

    • General case law on sufficiency

    • Case law on sufficiency in biotechnology  

Presenter:​

Daniel Thomas

Daniel X Thomas is an electronics engineer by training. He started his career in the patent field as search examiner at the former Institut International des Brevets in The Hague in 1971. After incorporation of the IIB into the EPO in 1978, he was search examiner in the EPO’s DG1. Daniel joined the EPO’s DG2 in 1979 as substantive examiner in the field of computers and memories. He became a director in DG2 in 1989, and subsequently headed directorates in various fields of electronics, physics and mechanics. Daniel is very active in the field of training patent specialists and he regularly gives lectures at different universities across Europe, including CEIPI in Strasbourg. He also leads workshops/seminars relating to various aspects of the European granting procedure for the epi and the Academy of the EPO, including preparation of candidates for the European Qualification Examination, and also ‘grandfathers’ for new Contracting States.

Who Should Attend?

  • Novice Patent Attorneys

  • Private Practice Patent Attorneys

  • Corporate Patent Attorneys

  • In House Patent Managers/Counsel

  • People working or training in intellectual property

  • Patent Attorney Interns

  • IL Patent Attorney/US Patent Agents or Attorneys

  • Persons who wish to become Patent Attorneys

  • Persons presently dealing with the company patent portfolio

 

If you are already in the field, you will find these seminars valuable for updating your knowledge on the latest case law and its implications.

Topics covered:

  • Article 123 (2) Identify and deal effectively with added subject matter

  • How to avoid problems with amendments

  • Article 83 The importance of sufficiency of disclosure  

Cost per participant:
Day One: NIS 2950 + VAT
Day Two: NIS 2950 + VAT
Day One and Day Two: NIS 5650+ VAT