Presented by
Management Forum

Advanced Drafting Techniques for Successful EPO Patent Applications

Many patent applications and patents are lost before the EPO, either before Opposition Divisions or before Appeal due to incorrect original drafting, and added subject matter is a recurrent problem. Learn advanced drafting techniques for successful EPO patent applications. *INCLUDES: Interactive workshop sessions and details of the latest case law and its implications*

9 Nov 2021 + 2 more dates

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  • Format: Live online
  • CPD: 6 hours for your records
  • Certificate of completion

Why you should attend

Many patent applications and patents are lost before the EPO, either before Opposition Divisions or before Appeal. Incorrect original drafting and added subject matter are recurrent problems.

Amendments made during the grant procedure to incorporate new prior art amount to added subject matter, which is often fatal in opposition procedure before the EPO and in nullity proceedings before national courts.

Sufficiency of disclosure can also be a problem and if initial disclosure is insufficient, amending it can amount to adding subject matter.

The purpose of this seminar is to identify the problems of added subject matter and sufficiency of disclosure and show how they can be easily avoided by careful drafting.

Key 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

Who should attend?

  • European patent attorneys
  • Patent attorneys in private practice
  • Corporate patent attorneys and lawyers
  • People working or training in intellectual property
  • US attorneys working in Europe
  • Trainee patent attorneys
  • EQE candidates

Those already familiar with the field will find these seminars valuable for updating their knowledge on the latest case law and its implications.

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The Advanced Drafting Techniques for Successful EPO Patent Applications course will cover:

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
  • Added subject matter and clarity
  • Other not-allowable cases of adding subject matter
  • Broadening of features or intermediate generalisation
  • 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

PRACTICAL WORKSHOP: Exercises to exemplify the concepts learnt

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

PRACTICAL WORKSHOP: Exercises to exemplify the concepts learnt

Latest case law and its implications for your EPO patent applications

  • General case law on sufficiency
  • Case law on sufficiency in biotechnology

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Daniel X 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. He 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.

Although he retired from active service at the EPO on 1 January 2013, Daniel continues to be active in the field of training patent specialists. He still regularly gives lectures at different universities over Europe, including CEIPI in Strasbourg, and 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.

More details

Book Advanced Drafting Techniques for Successful EPO Patent Applications Live online training

9 Nov 2021

Live online

09:00-17:30 UK (London) (UTC+00)
10:00-18:30 Paris (UTC+01)
04:00-12:30 New York (UTC-05)
Course code 11105

  • GBP 599
  • EUR 859
  • USD 970

In your basket 

4 May 2022

Live online

09:00-17:30 UK (London) (UTC+01)
10:00-18:30 Paris (UTC+02)
04:00-12:30 New York (UTC-04)
Course code 11657

  • GBP 499 599
  • EUR 719 859
  • USD 814 970

Until 30 Mar

In your basket 

10 Nov 2022

Live online

08:30-17:30 UK (London) (UTC+00)
09:30-18:30 Paris (UTC+01)
03:30-12:30 New York (UTC-05)
Course code 11784

  • GBP 499 599
  • EUR 719 859
  • USD 814 970

Until 06 Oct

In your basket 

Reviews of IPI's Advanced Drafting Techniques for Successful EPO Patent Applications training course


It was excellent and more than I expected.

Jun 16 2021

Taemin Kang
patent attorney trainee, NLO

Jun 12 2019

Very good and practical course.

Rafi Bronstein
Patent Attorney, Daltan Consulting Ltd

Jun 12 2019

I really appreciate Mr Thomas – not only for his huge knowledge and experience about the rules and their application but also his ability to teach and explain in a very clear way.

Sara Miani
Paralegal, GLP SRL

Nov 14 2017

The speaker was perfect and the content of his presentation, as well the way of presenting it, was excellent.

Agneszka Zebrowska-Kucharzyk
European and Polish Patent Attorney, PATPOL

Denmark

  • Budde Schou
  • Budde Schou A/S
  • Guardian IP Consulting
  • Novo Nordisk
  • Novo Nordisk A/S
  • Plougmann & Vingtoft

UK

  • Baytree IP Ltd
  • HTC Europe Co. Ltd
  • Withers & Rogers LLP
  • Xaar Plc
  • Xeros Technology Ltd

Belgium

  • Ion Beam Applications sa
  • Umicore
  • VIB

Finland

  • Kolster OY AB
  • Microsoft Mobile Oy
  • Primrose Oy

Sweden

  • Alfa Laval Corporate AB
  • Bergenstråhle & Partners
  • Valea AB

Switzerland

  • AC Immune
  • F. Hoffmann-La Roche Ltd
  • JTI

Netherlands

  • IZI Patents
  • NLO

Norway

  • JOTUN A/S
  • Yara International ASA

Poland

  • EP-Patent
  • PATPOL

Canada

  • BCF

Germany

  • Thermo Fisher Scientific (Bremen) GmbH

Greece

  • Bic Violex SA

India

  • Mettler Toledo India (GBSI)

Israel

  • Daltan Consulting Ltd

Italy

  • GLP SRL

Spain

  • INGENIAS CREACIONES, SIGNOS E INVENCIONES, S.L.P.

United States of America

  • Microsoft Mobile Oy

Enrol now

Multiple colleagues?
Talk to one of our training experts to discuss how to:

Run this course conveniently and cost-effectively in-house for your staff and colleagues

Aleksandra BEER
Training expert

+44 (0)20 7749 4749

inhouse@ipi.academy