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|Monday, 6 December 2021|
Introduction to the online session for new users
Stephen Rowan, Vice-President Patent Granting Process, EPO
Francis Leyder, President, epi
Harmonising practices in CII applications
Régis Quélavoine, Director, Operations, Mobility & Mechatronics, EPO
Bastian Best, European patent attorney, epi
Igor Dydenko, team manager, Healthcare, Biotechnology and Chemistry, EPO
Yasemin Türkeli, administrator, Procedural support Examination, EPO
Auxiliary requests from the division's perspective
Frédéric Cavallo, examiner and administrator, EPO
Alexandre Bitton, team manager, EPO
|Tuesday, 7 December 2021|
Welcome to the day
How to successfully communicate with the examining division
Harald Schmidt-Yodlee, senior expert, EPO
Stephan Tatzel, European patent attorney, epi
How to overcome clarity issues efficiently
Ricardo Oltra-García, team manager, EPO
Kris Loveniers, team manager, EPO
|Wednesday, 8 December 2021|
|08.55 hrs||Welcome to the day|
Gershom Sleightholme, senior expert, EPO
Jürgen Scheuer, examiner, EPO
Roberto Menchaca, examiner, EPO
Sébastien Debesset, examiner, EPO
|Thursday, 9 December 2021|
|08.55 hrs||Welcome to the day|
Efficient application drafting in the light of Rule 42(1)(c) EPC
Correction of errors in proceedings before the EPO
Jaime Jiménez, lawyer, Patent Law, EPO
Katarzyna Walert, lawyer, Patent Law, EPO
|Friday, 10 December 2021|
|08.55 hrs||Welcome to the day|
Hindsight and other dangers when assessing inventive step
Katja Eberle, examiner, EPO
Jean-Michel Wulveryck, senior expert, EPO
Preparing a Rule 71(3) communication – behind the scenes
Martijn Lantsheer, examiner, EPO
Franz Friedrich, team manager, EPO
Computers and computer-implemented inventions (CII), including artificial intelligence (AI), have been emerging in patent applications across all field of technology. Such inventions relate to items potentially excluded from patentability (Article 52(2), (3) EPC) and therefore yield specific challenges for patent professionals.
What is the EPO’s practice for treating CII? How are the CII-related sections of the EPO Guidelines drafted? How does the EPO ensure that CII are processed in a harmonised way across different technical fields?
Our EPO experts together with an experienced patent attorney will address the above questions and many more during a 1-hour panel discussion. You will also get the opportunity to ask your questions on this topic.
Bastian Best, European and German patent attorney. Specialised in building patent portfolios for digital innovators. He studied computer science at the Technical University Munich and works in IP since 2008. His special focus is on the foundational technologies of the Fourth Industrial Revolution, including artificial intelligence and machine learning, big data, smart devices and the Internet of Things. He is a regular speaker on patents for emerging technologies at IP conferences around the world, and shares his knowledge on LinkedIn and YouTube.
Igor Dydenko, team manager, Healthcare, Biotechnology and Chemistry, EPO Berlin. Studied mechanical engineering in Lyon, France, and holds a PhD in medical imaging. Joined the EPO in 2003 and passed the EQE in 2008. He is a manager of a team of examiners in the medical diagnostic and automobile fields. He is an expert in computer-implemented inventions including artificial intelligence. Member of a task force inside the EPO for clarifying the legal practice and guidelines relating to CIIs, and has been involved in harmonisation efforts inside the EPO. Co-organised and contributed to various in-house and external training events and seminars, in particular related to CIIs and AI. CEIPI tutor 2012-2020.
Régis Quélavoine, Director, Mobility and Mechatronics, EPO The Hague. Holds a PhD in computer science, specialised in speech processing and artificial intelligence. Member of the EPO committee surveying computer-implemented inventions and corresponding standards.
Yasemin Türkeli, administrator, Procedural support Examination, EPO The Hague. Holds an MSc in computer engineering. Joined the EPO in 2003 and worked as an examiner in the fields of bioinformatics, business methods and payment systems. She currently works as an administrator in Directorate Procedural Support, mainly tasked with designing procedures, drafting work instructions and answering procedural questions. She passed the EQE in 2011. She is a member of the CII-Guidelines working group.
In examination, opposition and limitation proceedings, parties may submit a main request followed by one or more auxiliary requests.
How do EPO examiners approach auxiliary requests? What are the differences, if any, between auxiliary requests handled in the written procedure and in oral proceedings? Do examination proceedings and opposition proceedings offer different perspectives in relation to auxiliary requests?
This workshop will shed light on how the first instance of the EPO handles auxiliary requests in relation to the above questions. The workshop will also offer the opportunity to discuss the perspective of applicants and their representatives regarding auxiliary requests, with possible strategic changes in view of the Rules of the Board of Appeal, in force from 1 January 2020.
In addition, based on an interactive exercise in general mechanics, we will highlight peculiar aspects of handling auxiliary requests during oral proceedings.
Frédéric Cavallo, examiner and programme area manager, EPO The Hague. Studied engineering at the Engineering School of La Rochelle and intellectual property law (LLM) at the University of Edinburgh. Worked as an embedded software engineer, control engineer and project manager, mainly in the automotive industry, for 10 years. Joined the EPO in 2009 and worked as an examiner in the field of control systems for hybrid vehicles before switching to vehicle suspension arrangements. Since 2021, he is also responsible of trainings for patent attorneys at the European Patent Academy.
Alexandre Bitton, team manager/examiner, Mobility and Mechatronics, EPO The Hague. Studied material science at Ecole Européenne d'ingénieurs en Génie des Matériaux Nancy and at Luleå Tekniska Universitet. Worked at Saab Automobile AB (Trollhättan, Sweden) as a test engineer. Joined the EPO in 2001 as an examiner in the field of locks and keys. Currently working in the field of furniture and show stands. Has been involved in coaching newcomers. Member of the Opposition directorate. Passed the EQE in 2008 and obtained the Diploma on Patent litigation in Europe from CEIPI in 2018. Completed an LLM in Industrial Property (CEIPI) in 2020.
Usually the interaction between applicant and examining division is in writing. In the framework of Early Certainty, examiners are increasingly contacting applicants by telephone to discuss the file before issuing a further written communication or a summons to oral proceedings.
This workshop provides an overview of the ways to communicate with the examining division, focusing on telephone consultations, e-mails, video conferences and replies to summonses to oral proceedings. Often examiners try to make positive suggestions based on the inventive contribution identified from the disclosure of the application and considering the relevant prior art.
In some complex cases it is difficult for the examiner to make positive suggestions because the inventive contribution may be hidden and the examiner cannot know the scope of protection the applicant is interested in. In such cases telephone consultations at examiners’ initiative are very helpful. Furthermore, oral proceedings are often avoided when the examiner is consulted before any take place.
Harald Schmidt-Yodlee, senior expert, Team Peptides and Genes, EPO The Hague. Studied food chemistry and biochemistry at the Technical University Berlin and the University of Magdeburg. Passed the EQE in 2006. Member of an EQE examination committee. Joined the EPO in 2001. Works in search, examination and opposition. Participated in the examiner exchange programme with the Japan Patent Office.
Stephan Tatzel (epi), European patent attorney, Munich. Studied chemistry at the University of Stuttgart. PhD in the field of biotechnology in 2007. Working in the field of intellectual property since 2008. German patent attorney since 2012, passed the EQE in 2013. Experience in examination and opposition (appeal) proceedings in the fields of chemistry, pharma and biotechnology. Works as an epi tutor and coach on the joint EPO/epi Candidate Support Project.
When trying to get a European patent sometimes clarity objections seem to be the main reason for substantial restrictions of the scope of protection. In particular, frustration can arise when those restrictions enable a competitor to easily bypass the patent, e.g. by slightly changing the amended feature, calculation or parameter.
In order to deal efficiently with clarity issues it is important to understand how EPO examiners see clarity and where the main focus of their clarity analysis lies.
This workshop offers the examiner's perspective on clarity issues, to help you to solve them and support an efficient examination procedure:
Using practical examples, several possible scenarios will be discussed interactively to give an insight into how and why an examiner raises clarity objections. We will address how applicants might respond to overcome clarity objections with minimal effort and minimal restriction of the scope of protection.
Kris Loveniers, team manager, Team Medical Diagnosis, EPO The Hague. Studied electromechanical engineering at the University of Leuven. Postgraduate degree in biomedical engineering. Worked as a research engineer at KUL and Materialise NV. Joined the EPO in 2003. Deals with patents for medical devices. Involved in developing the new classification system (CPC) for therapeutic devices. Member of the EPO Guidelines working group on computer-implemented inventions. Gives inhouse training courses and teaches at the European Patent Academy. Master's degree in political science from the University of Leiden.
Ricardo Oltra-García, team manager, Team Agricultural Machinery, EPO The Hague. Studied mechanical engineering at the Polytechnic University of Madrid and physics at the UNED (National Distance Education University), also in Madrid. Worked as an engineer for Robert Bosch and John Deere in Spain. Joined the EPO in 2002. Deals with patents for agricultural machinery. Involved in coaching and assessing new patent examiners since 2005. First member in opposition cases since 2007, having been chairperson in opposition since 2011. Regular lecturer for the EPO and DG1 expert for DG5. At present he is the team manager of a group of 21 examiners, working in diverse areas of agricultural technologies, including smart agriculture, where he continues to work in patent applications. He also works in international co-operation with India and Latin America, and in the development of new tools for examiners.
Double patenting – one applicant having two patents for the same invention – is not mentioned anywhere in the EPC, but applications can be refused because of it. This makes the issue intriguing.
This workshop aims to help applicants understand current EPO examination practice, especially in the light of the recent decision G4/19. The issue of double patenting normally arises in the case of divisional applications but this is not the only scheme. The different schemes will be explained. The Enlarged Board of Appeal’s decision clarifies that the prohibition of double patenting applies regardless of which scheme was used. Certain decisions of the boards of appeal amongst the increasing body of case law on double patenting, including conflicting ones, will be examined in an attempt to show that the case law has generally been converging towards G4/19.
For comparison’s sake, German practice on double patenting (as distinct from double protection) will be considered, and the procedural law with respect to the principle of legitimate interest will be discussed. The current Guidelines for Examination concerning double patenting will be explained, focusing on the meaning of “identical subject-matter”. Various examples will be given to show when subject-matter is identical, and when it is not.
Jürgen Scheuer, examiner, Team Mechanical Automotive Parts, EPO Berlin. Obtained a degree in mechanical engineering at RWTH Aachen. Worked as a project manager for Faurecia SA from 1995 to 2000 in Audincourt and Ingolstadt. Joined the EPO in 2000, where he is involved in and chairs numerous opposition and examination proceedings in various technical fields.
Gershom Sleightholme, senior expert, Team Diagnosis and Electrical Automotive Parts, EPO Berlin. Holds a degree in mechanical engineering from the University of Melbourne and a doctorate from the University of Cambridge. Worked for several years in the steel and automotive industries and in the British civil service prior to joining the EPO in 1996.
Parties' timeliness when filing submissions may play a significant role in how opposition proceedings develop, and dramatically affect their outcome. The consequences of late filing are far-reaching as subsequent appeal proceedings may also be impacted.
This workshop illustrates the different types of submissions and the admissibility requirements that apply to them. With the aid of practical examples, how the opposition division exercises its discretion to admit late-filed submissions is analysed. Relevant case law is also discussed.
Roberto Menchaca, examiner, Team Chemistry 2 and C07C/F Compounds, EPO The Hague. Studied chemistry at Universidad Complutense de 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.Passed the EQE in 2010. CEIPI tutor for the EQE since 2011. Experience as a chairman in opposition proceedings.
Sébastien Debesset, examiner, Mobility and Mechatronics, EPO The Hague. Graduated in mechanical and industrial engineering from the École Nationale Supérieure d’Arts et Métiers. Joined the EPO in 2003. Passed the EQE in 2008. Involved in coaching new patent examiners and assessing the quality of granted patents for more than five years. Chairman in opposition procedures for five years.
Rule 42(1)(c) EPC represents not only a legal requirement for the content and the configuration of the description, but also the provision of the EPC which is closest to an operative definition of the concept of “invention”. In examination practice before the EPO, it has been noticed that applicants tend to focus on the requirements of novelty and inventive step while often neglecting the provision of Rule 42(1)(c) EPC. This approach leaves the applicants without the necessary support for their fallback positions and bring many applications to an unexpected refusal.
This workshop aims at presenting to the applicants a strategic manner for writing patent applications, specifically in view of the subsequent substantive examination under the law and practice of EPO.
By providing in the description a solid chain of logical step based on the features, their technical effects and the corresponding purposes in the setting of the invention, the applicant will, not only comply with the requirements or Rule 42(1)(c) EPC, but also prepare a framework in which the skilled person (and hence the substantive examiner) will operate to judge matters such as technical contribution and inventive step of the disclosure.
The workshop will present examples taken from different technological fields.
Christoph Weiss-Schaber, examiner, Team Body Liquids, EPO The Hague. Studied physics in Munich, Nijmegen and Grenoble. Obtained a PhD in biophysics and life sciences in Grenoble and an LLM in IP law and management in Strasbourg. Joined the EPO in 2013 and is currently working in the medical field. Passed the EQE in 2019. Internal instructor at the EPO. Involved in developing the new examiner tools for Search and Examination.
Luca Signorini, examiner, Team Chassis and Steering, EPO The Hague. Studied physics at Bologna University. Obtained a PhD in solid-state physics, with specialisation in nanomaterials, from the same university. Marie-Curie Fellowship in 2004 at University Paris VI. Worked as a European patent, trademark and design attorney for eight years at an Italian IP firm. Joined the EPO in 2013 and is currently working in the fields of steering, automatic parking and autonomous vehicles. Instructor at the European Patent Academy (courses on introduction to IP rights), chairman and first member in opposition and member of the European Inventor Award taskforce.
Errors may occur in proceedings before the EPO, e.g. in the documents submitted by the applicant or in EPO decisions. How can these errors be corrected? Who has what competences and responsibilities? What are the legal requirements in each case? What kind of evidence may help parties to meet the requirements?
The workshop will address these questions by presenting EPO practice regarding Rule 139 and 140 EPC and, in particular, the correction of publication/formatting/ editing errors. Special attention will be paid to the latest developments in the case law of the EPO boards of appeal and the Enlarged Board of Appeal (G 1/10).
Katarzyna Walert, lawyer, Patent Law, EPO Munich. Studied law at the University of Poznan and University of Bamberg. Completed the postgraduate LLM IP studies in the Munich Intellectual Property Law Center. Doctor of laws, University of Augsburg. Worked for several years as a qualified lawyer in international and local law firms in Warsaw. Joined the EPO in 2013.
Jaime Jiménez, lawyer, Patent Law, EPO Munich. Studied law at UNED, Madrid. Doctoral studies in public law. Legal and policy advisor at the Spanish Patent and Trademark Office from 2005 to 2011. Member of the EPO Committee on Patent Law in 2010 and 2011. Joined the EPO in 2011.
It is a fact that a patent can only be evaluated with forehand knowledge of the invention. It is another fact that any individual knowing what happened after an event cannot forget this knowledge when making a judgment. This is known as hindsight bias.
Does hindsight consequently make it impossible to judge whether an invention would have been obvious to somebody who has not been told how it works?
Tremendous efforts have been developed in the patent world in order to prevent the denial of an inventive step based on an ex-post facto analysis. At the EPO, this is assured by applying the problem-solution approach.
This workshop will first confront the participants with an example taken from outside the patent world. It will then explain how examiners are told to minimise the risk that their decision is influenced by hindsight. It will also cover what may put in danger a line of argument, e.g. the selection of the closest prior art.
Participants will learn through live interactions how to improve their “story telling” to convincingly argue on inventive step, and, how better to challenge arguments from examining divisions and opponents alike that appear to rely on hindsight. Participants will also have the chance to step into the shoes of an examiner.
Katja Eberle, examiner, Mobility and Mechatronics, EPO The Hague. Studied physics at the University of Karlsruhe, Joined the EPO in 2005. Chairman in examination and opposition. Expert Procedural Support.
Jean-Michel Wulveryck, senior expert, Mobility and Mechatronics, EPO The Hague. Studied physics at the University of Reims and Technical University of Eindhoven. Joined the EPO in 2003. Chairman in examination and opposition. Instructor for EPO colleagues.
The Rule 71(3) communication (intention to grant) might appear simple enough, but preparing it involves all members of an examining division, each entrusted with a specific task.
This workshop will guide you through all the various steps, from when the first examiner considers the application ready for grant to when the intention to grant is approved by all members of the division and is ready to be sent to the applicant.
Along the way, you will be shown some hands-on examples to give an insight into the entire process.
Martijn Lantsheer, examiner, Mobility and Mechatronics, EPO The Hague. Studied aerospace engineering at Delft University of Technology and is a qualified European patent attorney. Joined the EPO in 2012 as an examiner and is involved in search, examination and opposition.
Franz Friedrich, team manager, Medical Diagnosis, EPO The Hague. Holds a master’s degree in mechanical engineering from the Technical University Munich and graduated as an “ingénieur généraliste” from the École Centrale de Lyon. Worked in the development of surgical instruments in Switzerland prior to joining the EPO in 2012. Involved in search, examination and opposition. Passed the EQE in 2017 and obtained an LLM in industrial property rights from the Université de Strasbourg in 2020.