https://www.epo.org/en/node/examination-matters-2022

Examination Matters 2022

Online
English
Free
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Examination Matters

Examination Matters has become the meeting place for patent attorneys dealing with the EPO in the patent granting procedure. Examiners and practitioners provide insight into the mind of the examiner and the day-to-day work performed. Workshops offer the opportunity to conduct detailed discussions with your peers on relevant aspects of examination, share day-to-day experiences and get immediate answers to your practical questions from EPO examiners, EPO lawyers and epi experts. 

This year's event will focus on several procedural and substantive aspects of examination proceedings, such as parameter features in claims, adaptation of the description, artificial intelligence in additive manufacturing and many other examination related topics. Moreover, sustainability and digital transformation in the patent world will be discussed.

This high-level event is once again organised in close co-operation with the epi

Who should attend

This event is intended to patent attorneys who are active in the prosecution of European patent applications before the EPO. 

Event details

Past event
OCT
10
9:00 - 15:30 h
EPO Munich, EPO Rijswijk, online

Programme

 

Monday, 10 October 2022
09.10 hrs

Welcome by the moderator

Moderator: José-Vicente Pastor Jiménez, examiner and programme area manager Patent attorneys at the European Patent Academy, EPO

09.15 hrs

Opening
Stephen Rowan, Vice-President Patent Granting Process, EPO

Francis Leyder, President, epi 

09.30 hrs

Panel discussion  

Sustainability, strategy and actions of the European Patent Office 

Yann Menière, Chief Economist, EPO

Wibke Meiser, examiner, EPO
Pierre Held, administrator, Classification, EPO

Ioana Cristescu, team manager, EPO

Johannes Schaaf, Patent Knowledge Promotion, EPO      

10.30 hrs

Break 

11.00-12.30 hrs

Workshop      

Adaptation of the description: operational view

Christian Schmelz, senior expert, EPO 

Jean-Luc Gal, lawyer, EPO      

Moderator: Hans-Hermann Giese, examiner             

Tuesday, 11 October 2022
09.00 hrs

Workshop                   

Parameters in the field of batteries and fuel cells 

Heide Götz, senior expert, EPO

Frank Hintermaier, senior expert, EPO

Eric Wiedemann, team manager, EPO 

Moderator: Hans-Hermann Giese, examiner 

10.30 hrs

Break

11.00-12.30 hrs

Workshop     

Defining materials using product-by-process features

Pascal Neibecker, examiner, EPO 

Inga Helgadóttir, examiner, EPO

Ben Brigou, European patent attorney, epi 

Moderator: Sonsoles Hernanz, examiner

Wednesday, 12 October 2022
11.00-12.30 hrs

Workshop 

Novelty revisited in the light of recent decisions of the boards of appeal

Roberto Menchaca, examiner, EPO

Moderator: Els Vadot-Van Geldre, examiner

Thursday, 13 October 2022
09.00 hrs

Workshop 

Examining AI-based inventions in additive manufacturing using an interdisciplinary approach
Nicolas Traon, examiner, EPO 

Simon Theissing, examiner, EPO 

Moderator: Sonsoles Hernanz, examiner 

10.30 hrs Break
11.00-12.30 hrs

Workshop

Art. 123(2) EPC: The "gold standard" in the case law of the (E)BoA

Rafael Villar Fernández, examiner, EPO   

Moderator: Els Vadot-Van Geldre, examiner  

Friday, 14 October 2022
09.00 hrs

Workshop

Inventions based on data processing: meeting the requirements of Articles 56 and 83 EPC
Cristina Darolti, examiner, EPO
Moderator: Evangelia Spyropoulou, Director and Chair of the Examination Matters Organising Committee 

10.30 hrs Break
11.00

Workshop 

Article 14 EPC – the unlikely hero of the examination procedure

Vít Sípal, team manager, EPO

Moderator: Cristina Darolti, examiner

12.30-12.35 hrs

Closing of Examination Matters 2022

Evangelia Spyropoulou, Director and Chair of the Examination Matters Organising Committee  

Panel discussion and workshops

 

Panel discussion 

Sustainability, strategy and actions of the European Patent Office

Innovation is crucial in finding a path towards a more sustainable planet, but turning research findings into inventions and bringing them to market remains a challenge. EPO's cutting-edge patent data have an important role to play in this respect, by offering policymakers and investors key insights into potentially game-changing technologies. This panel will discuss the way in which such insights can be generated using the knowledge of EPO experts, and how far patent information on sustainable technologies can be leveraged to guide policy and investments. 

Workshops

Workshop

 

Adaptation of the description: operational view

The workshop will focus on the operational aspects of the subject of "adaptation of the description". It aims to elaborate on the requirements laid down in Article 84 EPC (support by description), Rule 42 (1) EPC and Guidelines F-IV, 4.3 and 4.4. In addition, some examples will be given of what is necessary to satisfy the respective requirements.  

Christian Schmelz, senior expert, EPO Munich. Examiner in the field of electronics and information/communication technology, G01S (radar/lidar/ultrasonic sensors) since 1999. Member of EQE Commission (part D) 2006-2021. Degree in physics. PhD in high frequency engineering.  

Jean-Luc Gal, lawyer, Patent Law and Procedures, EPO Munich. Holds degrees in law and in particular in European and intellectual property law. Started working as a barrister specialised in economic affairs in 1996. Joined the international department of the French Patent Office as a policy officer in 1997. From 2006 to 2013, headed the EU Liaison Office. Seconded to the European Commission (DG GROW, Intellectual Property Enforcement Unit) in 2013. Joined the Directorate Patent Law and Procedures in 2019. Also acts as a legal member notably in the context of Opposition Divisions. Involved in the annual drafting of the EPO Guidelines. 

 

Workshop

 

Parameters in the field of batteries and fuel cells

In the field of batteries and fuel cells, the characteristics of components, such as electrodes, membranes or materials (e.g. polymers, inorganic compounds), are often specified by parameters. Unclear or insufficiently disclosed parameters may lead to a refusal of the application or a significant limitation of the scope of the independent claims if the patent application as originally filed does not provide a suitable basis to overcome the objections raised by the examiner.

In this workshop, we will first give a short overview of the requirements of parametric definitions with respect to Articles 84 and 83 EPC and of the assessment of novelty of claims including parameters.

Then, we will present typical examples of our daily work and discuss possible ways for the applicant to overcome objections with respect to clarity, sufficiency of disclosure and novelty of claims including parameters.

We will also touch on pitfalls to be avoided when drafting the claims and the description and suitable fallback positions to be included.

Note: The interplay of parameter claims and product-by-process claims will be dealt with in the workshop "Defining materials using product-by-process features".

Heide Götz, senior expert, EPO Munich. Batteries and fuel cells. Member of the Opposition Directorate. Joined the EPO in 2003. PhD in physical chemistry, Max-Planck Institute for Polymer Research, 1999. Diploma in chemistry, University of Kaiserslautern, 1995. Degree in organic/macromolecular chemistry, Lille University of Science and Technology, 1995. EQE part D tutor 2012 to 2018. 

Frank Hintermaier, senior expert, EPO Munich. Batteries and fuel cells. Member of the Opposition Directorate. Worked for 7 years in the semiconductor industry before joining the EPO in 2011. PhD in organometallic chemistry (Munich). Coach for those entering the profession and colleagues changing their technical field. Currently member of the Guidelines Drafting Group for Inventive Step. Passed the EQE in 2006.

Eric Wiedemann, team manager, EPO Munich. Healthcare, Biotechnology and Chemistry. Studied chemistry at Tübingen and Heidelberg Universities and wrote a PhD thesis on redox flow batteries. Worked in technical support and development for customer applications at Rhodia Silicones S.A. (Germany). Joined the EPO in 2000 as an examiner in batteries and fuel cells. Worked for five years in the Quality Management Directorate.

 

Workshop

 

Defining materials using product-by-process features

Often, new materials cannot be adequately defined relying exclusively on product features. In some cases, their complex nature can only be characterised by their process of manufacture.  

This workshop aims to elaborate on the requirements for allowability of product-by-process claims under the EPC, both alone and in combination with parameter definitions, and to exemplify the issues encountered based on pertinent case law. In addition, light is shed on how examining divisions approach such claims and which arguments and evidence are necessary to satisfy these requirements.

Examples will include product-by-process claims in additive manufacturing, reflecting on the extent to which the process confers physical and identifiable properties on the resulting product. Based on these examples, common pitfalls and possible solutions will be discussed.

Note: The workshop "Parameters in the field of batteries and fuel cells" outlines useful considerations for definitions by means of parameters.

Pascal Neibecker, examiner, EPO The Hague. Additive manufacturing and metal industry. Joined the EPO in 2017. PhD in physics, TU Munich. MSc in materials science, TU Munich, University of Munich, University of Augsburg. BSc in materials science, Saarland University. BSc in mechanical engineering, Oregon State University.  

Inga Helgadóttir, examiner, EPO The Hague. Additive manufacturing and metal industry. Joined the EPO in 2013. PhD in nanotechnology, Claude Bernard Lyon 1 University. MSc in materials science, TU Munich, University of Munich, University of Augsburg. BSc in chemistry, Jacobs University Bremen. Passed the EQE in 2018. 

Ben Brigou, Dutch and European patent attorney, chemist, epi. At the patent law firm NLO, leading a multidisciplinary team combining chemistry, electrical engineering and AI experts to provide services in traditional fields as well as "smart" products. Active litigation and advisory practice. Co-author of the “SPC Handbook” (Stief, 2021).

 

Workshop 

 

Inventions based on data processing: meeting the requirements of Articles 56 and 83 EPC

Patent protection is normally delimited by a claim that generalises the scope of the inventive solution to a broader than exemplified class of products. The applicant must show that the generalisation of the solution is allowable in that it is implementable for the class of products claimed ("support"). Unlike standard inventions, a data-processing method is different by design: it can be implemented for any input data and will always produce an output. The specific computations involved can be generalised – at least linguistically – at many different levels. Sometimes these computations are viewed as black boxes, as has recently been the case for many applications involving neural networks. 

These particularities raise questions of sufficient disclosure and achieved technical effects. Indeed, what restricts the subject-matter that can be claimed is rather the question of whether and when a technical effect is still present for the scope of generalisation claimed.

The aim of this presentation is to explore, on the basis of general technical principles and specific technical examples, the boundaries of subject-matter for which the requirements of Articles 83/84 EPC and Article 56 EPC are considered met. 

Cristina Darolti, examiner, EPO The Hague. Pattern recognition. Joined the EPO in 2010. Coach for new colleagues, member of the Examination Matters organising committee. Former member of the Guidelines Drafting Group for CII. Holds a PhD in computer science from the University of Lübeck and was a Postdoc at McGill University, Montreal. Passed EQE Papers B, C, D. 

 

Workshop 

 

Novelty revisited in the light of recent decisions of the boards of appeal

Novelty is one of the primary requirements for patentability and is assessed under the EPC on the basis of Article 54 EPC. Even though for the novelty assessment an absolute criterion is applied, reality proves trickier in some cases.

With the aid of several practical examples, specific situations are discussed to illustrate recent developments in the case law developed by the boards of appeal of the EPO with respect to method claims and second non-medical use claims, among others.  

Roberto Menchaca, examiner, EPO The Hague. Team Chemistry 2 and C07C/F Compounds. Studied chemistry at Complutense University of Madrid. PhD in organic chemistry from the same university. Worked for five years in R&D for two pharmaceutical companies. Joined the EPO in 2005. CEIPI tutor for the EQE since 2011. Experience as a chairman in opposition proceedings. Passed the EQE in 2010.  

 

Workshop 

 

Examining AI-based inventions in additive manufacturing using an interdisciplinary approach

The number of patent applications filed at the EPO in the field of additive manufacturing (AM) in which the invention is based on artificial intelligence (AI), has steadily increased over recent years.

In many of these patent applications, AI is at the core of the invention for accomplishing very diverse tasks, such as optimising the design of the workpiece, supervising its manufacturing, or validating the quality of the manufactured workpiece.

In this workshop we would like to give you an insight into how such AI-intense AM patent applications are examined at the EPO in an interdisciplinary, collaborative manner involving experts from both AM and AI. Throughout the workshop we will make use of model examples to explain our approach. 

Nicolas Traon, examiner, EPO The Hague. Powder metallurgy (B22F) with focus on additive manufacturing of metal parts. Joined the EPO in 2016. Gérant in B22F since 2022. PhD in refractory ceramic materials from RWTH Aachen University.

Simon Theissing, examiner, EPO The Hague. Core AI and quantum computing (G06N). Joined the EPO in 2016. Coach and tutor for examiners and trainees. PhD in computer science received from the University of Paris-Saclay (prepared at ENS Paris-Saclay). 

 

Workshop 

 

Art. 123(2) EPC: The "gold standard" in the case law of the (E)BoA

With the aim of gaining a deeper understanding of the Guidelines, we will look at several popular decisions of the boards of appeals (BoA), as well as the Enlarged Board of Appeal (EBoA), which will give us a 360° view of the "gold standard" principle for assessing amendments under Article 123(2) EPC. Starting from the definition of the "gold standard" given in G2/10, the presentation will zoom out to provide an overall perspective of how this "gold standard" fits within the jurisprudence of the EBoA. We will also cover the definition given in T 0823/96 of "implicit disclosures", which is key for applying the "gold standard" principle. Finally, the workshop will address how the BoA applies the "gold standard" in two recurrent types of amendments, namely intermediate generalisations and removal of a feature. 

Rafael Villar Fernández, examiner, EPO The Hague. Team "Collecting and Generating Heat" since 2013. Holds a Master's degree in industrial engineering from the University of Seville and a second Master's degree in thermal energy systems. Involved in Praktika Extern (2019), instructor for national patent offices (2019), member of the Case Law Monitoring Group (2021-onwards), and tutor in the Pan-European Seal Programme (2022). Passed the EQE in 2021. 

 

 

Workshop 

 

Article 14 EPC – the unlikely hero of the examination procedure 

The proportion of PCT applications entering the European phase with a translation under Article 153(4) EPC is steadily increasing. Despite all due care, mistranslations can occur. Such an incorrect translation of a feature can often be the main source of a disagreement between the division and the applicant who might not even understand the objection simply because in their mother tongue, the issue is not present.

In this workshop we will look at some practical cases and boards of appeal decisions where the application was heading towards a refusal, but a straightforward grant was possible thanks to detection of a mistranslation and filing of a new translation under Article 14(2) EPC.

From these example cases, we will try to generalise and identify certain generic pointers which can be useful for attorneys and examiners in identifying that an issue with an incorrect translation might be present..

Vít Sípal, team manager, EPO The Hague. Antennas and microwave devices. Joined the EPO in 2014. Member of the EQE committee for paper C since 2021. Before joining the EPO, studied electrical engineering with a focus on antennas and microwaves in Prague (BSc), Aachen (Dipl.-Ing.) and Oxford (DPhil) and worked as an IRC Research Fellow at the Antenna and High Frequency Research Centre in Dublin. Passed the EQE in 2019