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2022 The Patent Office Comes to California: Tips and Tricks for Successfully Prosecuting Before the EPO – An Inside Perspective
This talk will focus on some of the differences in practice between the US and European systems so that participants will be more aware of issues which can arise and therefore be better able to bring their applications to a successful conclusion. The three major points to be covered are:
Making amendments
Methods for treatment
Adapting the description
The European Patent Office (EPO) has a strict approach to allowing amendments. Amendments are only allowed if they can be shown to be directly and unambiguously derivable from the original application. Some examples from different technical fields will be given to illustrate this. Some suggestions for communicating with the examining division will be given.
In the European system, methods for treatment of the human or animal body cannot be patented. The purpose of these exclusions is to prevent medical and veterinary activities from being restrained by patent rights. An overview of the criteria applied to decide whether a claimed method must be excluded will be presented as well as illustrative examples.
Concerning adapting the description, the Guidelines for Examination at the EPO have recently been amended. Although the legal basis for adapting the description remains the requirement for support of the claims by the description, the changes seek to harmonize the practice of adapting the description throughout the EPO prior to grant, especially where the claims have been amended. More background to this will be given and examples provided.
1 Participatory MCLE Credits
All
Standard
Non-Member
$65.00
CLA Member
$45.00
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