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Management Forum

Advanced Drafting Techniques for Successful EPO (European Patent Office) Patent Applications Training Course

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*

★★★★★ "It was excellent and more than I expected."

19 March 2024
+ 24 September 2024 »
from £499

Need help? Enrol or reserve

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

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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

This course is part of our collection of IP & Patents Training Courses.

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.

Enrol or reserve

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
formerly EPO

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

NEW higher discounts for multiple bookings - bring your colleagues to make your training budget go further:

30% off the 2nd delegate*
40% off the 3rd delegate*
50% off the 4th delegate*

Please contact us for pricing if you are interested in booking 5 or more delegates

19 March 2024

Live online

09:00-17:30 UK (London) (UTC+00)
10:00-18:30 Paris (UTC+01)
05:00-13:30 New York (UTC-04)
Course code 13665

GBP 499 599
EUR 719 859
USD 823 979

Until 13 Feb

1 day live online training
Browser-based, no download usually required
See presenters and interact with fellow attendees
Download documentation and certification of completion
Fair transfer and cancellation policy

View basket

Not ready to book yet?

for 7 days, no obligation

24 September 2024

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 14033

GBP 499 599
EUR 719 859
USD 823 979

Until 20 Aug

1 day live online training
Browser-based, no download usually required
See presenters and interact with fellow attendees
Download documentation and certification of completion
Fair transfer and cancellation policy

View basket

Not ready to book yet?

for 7 days, no obligation

* Early booking discounts may not be combined with other discounts or offers. As such, the discounts for 2nd/3rd/4th delegates are based on the full price.

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 Netherlands
patent attorney trainee, NLO

Nov 9 2021

Really good, learnt a lot!!

Diptanil Debbarma Netherlands
Trainee Patent Attorney, NLO

Jun 12 2019

Very good and practical course.

Rafi Bronstein Israel
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 Italy
Paralegal, GLP SRL