Important Points in EP Patent Application Drafting and Prosecution

--- Based on Recent Rule Changes and Board/Court Decisions ----      

In the present lecture, the following topics will be discussed with reference to those of the US patent system
1. Preparation of EP Patent Applications
The priority claim based on EPC Article 87 sounds quite so basic, but it is necessary to ensure the priority claim valid based on the recent court decision . The amendment based on EPC Article 123 is quite strict such that important points at the time of preparation of filing EP patent application will be discussed. In particular, recently amended rules will be discussed in order to draft the claims in the preparation.

2. Prosecution of European Patent Applications
How to respond to the opinion recently accompanied by the EP search report will be discussed based on Rule 70a . The period of time for the divisional application has been recently limited. The divisional application will be discussed basedon guidelines and board decisions with respect to double patenting.

3. EP Patent Application vs National Patent Application
It is possible to obtain patent protection in many contracting states and extended states by the EP patent application, but the costs will be increased as the number of states is increased. On the other hand, some think it is enough to obtain patent protection in major states such as United Kingdom, Germany, and France. It is considered that the scope of the patent right may be a little different in each state. The lecturer will present his opinion about the filing strategy in the Europan countries. Discussion may be extended to the recently amended procesures and fee schedules .


Tentative problems are provided. I hope all of us could discuss them in the seminar.

Lecturer: Dr. Philip I Bates, Esq.
Lecturer: Mr. Nick Reeve, Esq.
Firm: Reddie & Grose LLP

DATE: October 13, 2011 (Thursday) from 1:30pm to 4:30pm
Venue: JPAA Kinki Branch Meiji Yasuda Life Osaka Umeda Building 25F

Please contact Mr. Aikawa for questions.


JPO




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