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Effective Defence of European (EPO) Patent Applications

The «problem-solution» approach
Dominobrikker faller
Clarity in drafting patent claims is required to distinguish the subject matter of a claim from prior art. 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 the highest 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 when deciding inventive step. It looks easy, but when applied, it should be applied correctly.

In cooperation with well-renowned Management Forum, distinguished speaker Daniel X. Thomas will take us on an exclusive deep dive into these issues.

As far as inventive step is concerned, the PSA is well established in European practice, but it has to be applied correctly! This is not difficult, but some precautions should be taken.”
Daniel X. Thomas

Central topics include:

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

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

For whom?

This seminar is suitable for European patent attorneys, patent attorneys in private practice, corporate patent attorneys and lawyers, EQE candidates, and others working regularly with intellectual property.

In cooperation with Management Forum

Tentative programme

0900 - 0905
Welcome and introduction
0905 - 1000
Understanding the implications of clarity of claims – Article 84 EPC

 Daniel X. Thomas, EPO (ret.)

  • 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
1000 - 1015
Break
1015 - 1200
Article 84 EPC cont'd
1200 - 1300
Lunch break
1300 - 1430
Inventive step and how to master the problem-solution approach – Article 56 EPC
  • 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
1430 - 1445
Break
1445 - 1545
Article 56 EPC cont'd
1545 - 1600
Latest case law and its implications for defending your EPO patent applications
  • Notable decisions on inventive step
1600 -
Closing of session

Speaker

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 Brevet 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 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 in 2013, Daniel continues to be active in the field of training patent specialists. He still regularly gives lectures at different universities across Europe and leads workshops and seminars relating to various aspects of the European granting procedure, including preparation of candidates for the European Qualification Examination, as well as "grandfathers" for new Contracting States.

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Course Team

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