Examination Matters 2023

Workshop 1: Panel discussion: your options for sharing your experience with the EPO
Moderator: Tania BenditSpeakers: Anne-Mieke Reedijk, Louis Guastavino, Ann De Clercq, Tiem Reijns

The quality of our products and services is our top priority. If we ever fall short of your expectations, we want to hear about your experience. For this, you can get in touch with either our Quality and Practice Harmonisation department via our website or - since May 2022 - our new Ombuds Office service, which provides an informal forum where you can discuss any concern in a strictly confidential setting. 

The panel, comprising two patent attorneys, an EPO complaint handler and an Ombuds Office representative, will explore the rationale for offering these two channels in parallel, how they work in practice and what results individuals and the patent community at large can expect. 

Workshop 2: Claim drafting and analysis
Speakers: Joris van Lith and Andrei Filip

Clear claims allow for an efficient and high-quality examination process. In this workshop a structured approach to drafting clear claims in physics and mechanics will be presented.

The concepts underlying this methodology can also be used for thoroughly checking clarity, added subject matter and patentability of your own claims, which will further contribute to an efficient examination process.

Of course these concepts can also be used for scrutinizing claims in opposition proceedings.

Workshop 3: Back from appeals, what's next?
Speaker: Roberto Menchaca

This workshop focuses on the possible scenarios that can arise after a board of appeal remits a case to the department of first instance. Using various practical examples drawn from the existing case law, we'll discuss concepts such as "ratio decidendi" and "res iudicata" and their impact on the choices parties make in subsequent proceedings.

Workshop 4: Computer-implemented inventions in industrial processes
Speakers: Pascal Neibecker, Christian Grave and Tommi Järvi

Computer-implemented inventions have evolved in recent years from a separate technical field to a vehicle of innovation in all areas of technology. Consequently, in patent applications too, computer-implemented concepts and mathematical methods have long since crossed the boundaries of specific technical fields and are nowadays omnipresent in industrial processes.

While Article 52(2) and (3) EPC prohibits patent protection for mathematical methods and computer programs as such, many inventions comprising computer-implemented aspects for use in industrial applications can in fact be protected.

In this workshop we want to provide applicants and practitioners from the mechanics and chemistry fields with guidance on how computer-implemented inventions in industrial applications are examined at the EPO. First, using practical examples and interactive quizzes, we'll explain how Article 52(2) EPC is understood in this context. We'll then provide insights into the way inventive step (Article 56 EPC) of industrial processes with computer-implemented aspects is assessed in the light of recent case law based on G 1/19.

Workshop 5: Plausibility in the context of the EPC
Speaker: Tim Lange

Plausibility is an approach to dealing with doubt in relation to aspects of patentability. Although it is not a distinct legal concept or specific patent law requirement laid down in the articles or rules of the EPC, it is used to assess what the skilled person would have derived from the application as originally filed. In this workshop, we'll take a look at how this approach is applied to different aspects of patentability, such as amendments, sufficiency of disclosure and inventive step.  We'll also review the impact the latest case law has had on the use of post-filed evidence to address plausibility doubts.

Workshop 6: Ranges in the field of batteries and fuel cells
Speakers: Heide Götz, Frank Hintermaier and Eric Wiedemann

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 parametric ranges. Where claims including such ranges lack novelty, inventive step, clarity or sufficiency of disclosure, the applicant has to decide how to amend them to overcome these objections. The amendments should not limit the scope of the claim more than necessary, while at the same time the requirements of Article 123(2) EPC have to be met, also with a view to avoiding any opposition proceedings.

In this workshop, we will first give a short overview of the requirements applicable to parametric ranges when assessing novelty and inventive step and the allowability of amendments. We will then present typical examples from our daily work and discuss possible ways for the applicant to overcome objections to claims including ranges under Articles 54, 56 and 123(2) EPC, also taking the interplay with clarity and sufficiency of disclosure into consideration. In addition, we will touch on pitfalls to be avoided when drafting the claims and the description and suitable fallback positions to be included.

Workshop 7: Article 53(c) EPC- therapy and surgery
Speaker: Anna Kajzar

A discussion of critical issues around Article 53(c) EPC: 

• The limits of therapy: when is a treatment method not therapeutic?
• Imaging, calculation and device-control methods: are they therapy ... are they surgery?
• When can a therapeutic and a non-therapeutic effect be separated?
• Solutions for a wise use of disclaimers, Article 54(5) EPC, etc.
• Numerous examples, both brand new and classic, of decisions of the boards of appeal will be given to illustrate the points made.

Workshop 8: Assessing the compliance of amendments with Articles 123 (2) and 76(1) EPC; theory, practice and particular challenges.
Speaker: Adam Cohen

In this webinar we will look in detail into how added subject-matter is assessed vis-à-vis Article 123(2) and Article 76(1) EPC at the EPO. The theoretical approach of the so-called ‘gold standard' will be studied, alongside the essentiality test and recent developments such as undisclosed disclaimers. A number of examples, based on both simulated cases and real recent cases from the Boards of Appeal, will be presented to show how the approach is applied in practice. Some particular challenges, such as whether intermediate generalisations are allowable or not, and the derivation of amendments from drawings, will be discussed. We will also look at the borderline between allowable corrections under R. 139 EPC and contravention of Article 123(2) and/or Article 76(1) EPC

Workshop 9: Inventions in Quantum Computing
Speakers: Markus Volkmer and Nicolas Douarche

Quantum computing (QC) is fresh new topic at Examination Matters, and one of great interest to the EPO's users (e.g. attorneys, applicants), as shown by the high level of attention attracted by the EPO's recently published insight report (January 2023). The field is becoming increasingly active, with some "big players" ramping up their investments. First noisy intermediate-scale quantum (NISQ) computers have been developed and even made widely available for use, e.g. through offering QC services in the cloud and by providing full programming toolchains. Although the passages of the EPO Guidelines for Examination on computer-implemented inventions do not deal explicitly with QC, the information given there is nevertheless very useful for examining QC applications and so also for drafting them. EPO experts Markus Volkmer and Nicolas Douarche will provide you with an overview of QC-related inventions (QC ecosystem) and, using illustrative examples, explain how the current EPO Guidelines could apply to these inventions.

Workshop 10: When applicants wish, they were not heard: Strategies to avoid arguments that backfire.
Speaker: Vít Sípal

The right to be heard is a cornerstone of the European Patent Convention (EPC), providing representatives with the opportunity to present compelling arguments and strengthen the applicant's position. However, it is not uncommon for well-intentioned arguments to backfire and leave the applicant worse off.  In this interactive workshop, we'll analyse real-world examples of arguments that have backfired, identify common patterns and develop practical strategies to avoid these pitfalls. Participants will leave the workshop with a toolkit enabling them to formulate better arguments.

Adam Cohen, GB, administrator (50%), Directorate of Quality Audit, examiner (50%), Electronics & Physics (Light Guides), EPO The Hague. BA, MA and PhD in electrical and information sciences/photonic engineering from Cambridge University. Worked in Japan, Canada, the USA and the UK. Joined the EPO as an examiner in 2003, also working as first examiner and chair in opposition since 2012. Also involved in EPO IT projects, geographical outreach and communication quality projects. Coaches new examiners and is an expert on Japanese translation queries. Former committee member of the Asian Patent Expert Group.

Ann De Clercq is the epi Deputy Secretary General, BE epi council member and BE member and previous Chairwoman of the epi Biotech Committee. She holds a Licentiate in Biology (Zoology) and PhD in Plant Molecular Biology from the University of Ghent, Belgium. After her PhD, she worked as a substantive examiner at the European Patent Office in Munich, Germany. She afterwards headed the Patent Department of Innogenetics NV, (Belgium) a biotech company active in human healthcare. She is a qualified Belgian and European Patent Attorney and European Patent Litigator. Since 1999, she works in private practice De Clercq & Partners in Belgium.

Nicolas Douarche (team manager in "Core AI and Quantum Computing"; "Digital" technological community). Nicolas holds a PhD in physics. He joined the EPO in 2007, as a patent examiner in Artificial Intelligence/Machine Learning and Quantum Computing. For the past 8 years, he has been leading teams of 10-20 examiners in AI/ML and QC, as well as other computer-related domains. He has also contributed to various external and internal events and is an active member of the CII network/community of practice. Before joining the EPO, Nicolas performed research at the interface between statistical physics and biology.

Andrei Filip, PhD in Applied Physics from University of Groningen (2002). Started his career as patent attorney in Philips in 2005, focusing on patent drafting prosecution in the electronics and communications field. Later moved to patent licensing and litigation, focusing on consumer electronics, both SEPs and non SEPs. Involved as in-house patent attorney in patent litigation in multiple jurisdictions, including DE, FR, US and CN. Since 2019 involved in patent licensing and technology transfer in medical technology. Presently responsible for the Philips IP portfolio for Computer Tomography.

Heide Götz: Universität Kaiserslautern (DE), Université de Lille (FR), Max Planck Institut für Polymerforschung (DE), Stanford University (US), IBM Almaden Research Center (US)  and DSM (NL). Joined the EPO in 2003: Senior expert, Team 3 Electrochemistry, Focus on batteries and fuel cells.

Christian Grave, examiner, EPO The Hague. Additive manufacturing and metal industry. Joined the EPO in 2014. PhD in Chemistry, FU Berlin. Diploma in Chemistry, University Konstanz. BSc (Hons) in Applied Chemistry, University of Strathclyde, Glasgow.

Louis Guastavino, Director in Quality and Practice Harmonisation, EPO The Hague. Louis is especially dedicated to the Complaints Department. 15 years of experience as Director. In Operations and in Quality, 20 years as an examiner in mechanical fields. Aerospace Engineer.

Frank Hintermaier: Universität München (DE), Siemens AG (DE), ATMI (US) and Infineon AG (DE). Joined the EPO in 2001, senior expert, team 2 electrochemistry, focus on batteries and fuel cells.

Tommi Järvi, examiner, EPO The Hague. Additive manufacturing and metal industry, previously batteries and fuel cells. Joined the EPO in 2013. Postdoc at Fraunhofer IWM in modelling battery materials. PhD in physics in atomistic simulation of nanoparticle systems, MSc in theoretical physics, Univ. of Helsinki. Passed the EQE in 2019.

Anna Kajzar, PL, examiner, Healthcare, Biotechnology and Chemistry, EPO Munich. PhD in biophysics and worked as a scientist at a research institute (Forschungszentrum Jülich, Germany) before joining the EPO as a patent examiner. Works in the fields of particle and light therapy and surgery and is also active in opposition proceedings.

Tim Lange, DE, examiner, EPO The Hague, Team Steroids and Organometallics, C07F/C07B/C07G.  PhD in organic chemistry from ETH Zürich (Switzerland). Worked for ten years in industry (Aventis CS, Bayer CS, AstraZeneca) before joining the EPO in 2007. Passed EQE in 2013. Part of opposition directorate OPCF.

Roberto Menchaca, ES, examiner, EPO The Hague. Team Chemistry 2 and C07C/F. PhD in organic chemistry from Universidad Complutense (Madrid, Spain). Worked for five years in R&D for two pharmaceutical companies before joining the EPO in 2005. CEIPI tutor since 2011. Many years’ experience in opposition proceedings. Passed the EQE in 2010.

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. Passed the EQE in 2022.

Anne-Mieke Reedijk graduated as a Chemical Engineer and joined the EPO in 1989 to work as Examiner in several technical areas. Director in operations from 2011-2020 and acted as Principal Director Operations till 2022. Anne-Mieke joined to team of the Ombuds Office to support the service for External Clients in 2022. Passion for people, innovation and IP are her professional cornerstones.

Tiem Reijns is Head of Patents for Unilever’s Home Care Business, specialised in Chemistry and Biotech, and current President of the Netherlands Patent Institute, and vice president of the European Patent Institute (epi). Tiem holds a degree in Chemical Engineering and Bioprocess technology from Delft University of Technology, and had worked in pharmaceutical R&D before entering the patent profession in 2004. Tiem has contributed to high standard patent qualification exams both in The Netherlands and for the EQE in various capacities and for various papers since 2008. Tiem is currently chairman of Examination Committee III, entrusted with Paper D of the EQE and member of the Examination Board, and member of the joint EPO and epi e:EQE Working Group.

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.

Joris van Lith, NL, Administrator Directorate Quality Audit, EPO The Hague. Obtained a PhD degree in integrated optics from Twente University. Joined the EPO in 2007 as an examiner. Current working as a quality auditor, performing internal quality audits of search reports and grants.

Markus Volkmer is an examiner at the EPO, The Hague, in Team 1203 - Core AI & Quantum Computing 2. He is also a member of the Working group on the Guidelines for Computer-Implemented-Inventions. Since joining the EPO in 2007, he works in the fields of Artificial Intelligence, Machine Learning and Quantum Computing. Markus has a computer science/engineering background (Dipl.-Inform. Universität Bielefeld/Dr.-Ing. Technische Universität Hamburg).

Eric Wiedemann: Universität Tübingen (DE), Universität Heidelberg (DE) and Rhodia SA (Lyon, FR). Joined the EPO in 2000, team manager, team 3 electrochemistry, focus on batteries and fuel cells.