Effective Defense of EPO Patent Applications – Avoiding Common Pitfalls 

January: 4th - 7th, 2021

15:00 - 16:30 IST | Monday - Thursday

Effective Defense of EPO Patent Applications – Avoiding Common Pitfalls 

Faculty: Daniel X. Thomas


Cost €645/NIS 2550 + VAT

Each Segment is 1.5 hours. 

Segment 1 Understanding the implications of clarity of claims – Article 84

• Definition of clarity – Art 84

• Categories and types of claims

• Practical definition of clarity – clear means

• Conciseness and support by description

• Form and content of claims

• Clarity vs novelty

• Structural vs functional features


Segment 2 Understanding the implications of clarity of claims – Article 84 (continued) and Practical Worksho

• Comprising vs consisting

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

• Relative terms • Inventions defined by parameters

• Definition by result to be achieved

• Sources of difficulties with Art 84 – illustrating case law

• Clarity of claims in opposition procedure

• Application of G 3/14 to amended claims

• Adaptation of the description

 PRACTICAL WORKSHOP Exercises to exemplify the concepts learnt

Segment 3 Inventive step and how to master the problem solution approach – Article 56

• Legal definition

• State of the art

• Obvious

• Problem-solution approach – identifying the nearest/closest prior art

• Formulating the objective technical problem

 • Does the claimed subject matter solve the objective problem?

• Partial problems

• Aggregation/juxtaposition

• Mix of technical and non-technical features

• Deciding on inventive step and positive pointers  


Segment 4 PRACTICAL WORKSHOP Exercises to exemplify the concepts learnt and latest case law  

  • its implications for defending your EPO patent applications

  • Notable decisions on inventive step​


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 seminars valuable for updating your knowledge on the latest case law and its implications.


  • Article 84 The Implications of clarity of claims

  • Effective use of the problem solution approach

  • Article 56 Understanding inventive steps

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