Effective Defence of EPO (European Patent Office) Patent Applications Training Course

Clarity in drafting patent applications has always been a serious issue. The purpose of the seminar is to teach delegates the essentials of clarity, and the most effective use of the problem-solution approach, giving delegates an edge over other parties. *INCLUDES: Interactive workshop sessions and details of the latest case law and its implications*

★★★★★ "The speaker was perfect."

18 March 2024
+ 23 September 2024 »
from £499

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

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Why you should attend

Clarity in drafting patent claims has always been a serious issue: clarity is required to distinguish the subject matter of a claim from prior art, and an unclear claim can be interpreted to the disadvantage of the applicant or proprietor. This is not just a formal matter, but a substantial issue of first importance.

The ‘problem-solution’ approach is not officially part of the EPC, but is a criterion which has been developed by case law. It is now hard to find a decision of the Boards of Appeal which does not rely on the problem-solution approach in order to decide upon inventive step. It looks easy, but when applied, it should be applied correctly.

The purpose of this seminar is to teach delegates the essentials of clarity and the most effective use of the problem-solution approach, giving them an edge over other parties.

Key topics covered:

Article 84 – the implications of clarity of claims
Effective use of the problem-solution approach
Article 56 – understanding inventive step

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.

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The Effective Defence of EPO Patent Applications course will cover:

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
Comprising vs consisting
The interplay between Art 83, 84 and 56
Relative terms
Inventions defined by parameters
Definition by result to be achieved
Sources of difficulties with Article 84 – illustrating case law
Clarity of claims in opposition procedure
Application of G 3/14 to amended claims
Adaptation of the description

PRACTICAL WORKSHOP 1

Exercises to exemplify the concepts learnt from 'Understanding the implications of clarity of claims – Article 84'

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

PRACTICAL WORKSHOP 2

Exercises to exemplify the concepts learnt from 'Inventive step and how to master the problem-solution approach – Article 56'

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

Notable decisions on inventive step

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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

18 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 13666

GBP 499 599
EUR 719 859
USD 823 979

Until 12 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

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Not ready to book yet?

for 7 days, no obligation

23 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 14034

GBP 499 599
EUR 719 859
USD 823 979

Until 19 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.