SEEKING THE GOLD (STANDARD) Amendments before EPO. Marco Lissandrini European Patent Attorney

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1 SEEKING THE GOLD (STANDARD) Amendments before EPO Marco Lissandrini European Patent Attorney

2 TOPICS LEGAL FRAMEWORK: the basic principles REAL-LIFE EXAMPLES: take-away tips CONCLUSIONS: suggestions for drafting

BASIC PRINCIPLES Article 123 EPC The European patent application or European patent: may be amended in proceedings before the EPO (time) may not be amended so that it contains subject-matter which

3 BASIC PRINCIPLES Article 123 EPC The European patent application or European patent: may be amended in proceedings before the EPO (time) may not be amended so that it contains subject-matter which extends beyond the content of the application as filed (impact) may not be amended so that it extends the scope of protection (impact) The applicant must have at least one opportunity to amend the application of his own volition (safeguard) 3

4 WHEN? DURING PENDING EPO PROCEEDINGS (including Opposition and Appeal) BUT AT VERY SPECIFIC STEPS: after the European Search Report (mandatory response) For EURO-PCT: on entry the European phase in response to the OAs (even at granting stage) In any other moment: consent is needed from the Examiner

«THE GOLD-STANDARD» («disclosure-test») Extension of subject-matter An amendment must be directly and unambiguously derivable from the whole content of the application as filed.

5 «THE GOLD-STANDARD» («disclosure-test») Extension of subject-matter An amendment must be directly and unambiguously derivable from the whole content of the application as filed. BASIC IDEAS: 1 - Provide legal certainty to third Parties (no file estoppel) 2 - Rewarding the inventor with an exclusive right for what he actually invented at the time of filing and not afterwards. EFFECT: The EPO has a very strict approach towards amendments

6 T 1148/12 «PARALLEL ELECTRODES» Decision of the Tech. Board of Appeal Nov. 24, 2016 European Patent Application EP Technical field: a garment provided with electrodes for measuring biological information (e.g. ECG) Object: to provide a garment capable of high accuracy even with different body constitutions, having a simple structure and low burden for the examinee.

7 T 1148/12 «PARALLEL ELECTRODES» AMENDMENT: A garment (300) for measuring biological information [...] wherein the chest lead electrodes are arranged in substantially parallel from each other and arranged in a row from vicinity of the front center of the garment [ ]

8 T 1148/12 «PARALLEL ELECTRODES» Are the following drawings enough for the amendments «in parallel» and «in a row»?

9 T 1148/12 «PARALLEL ELECTRODES» NO! Reasons: 1. The application «as filed» is silent regarding the arrangement of the electrodes 2. The drawings are not reliable: their schematic nature does not allow the skilled person to derive that the arrangement of the electrodes is necessarily parallel 3. The functioning is not clear, the parallel arrangement being invariably lost when the garment is worn by a user 4. For the skilled person, no purpose for a parallel arrangement

10 CONCEPT «Directly and unambigously derivable» The outcome of an amendment (i.e. a group of features) must be technically meaningful and straightforward for the skilled man.

IN PRACTICE Take-away tips A group of features is technically meaningful and straightforward if: (boolean operator «and») Structure/function of features is readily clear and realiable (in T1148/12

11 IN PRACTICE Take-away tips A group of features is technically meaningful and straightforward if: (boolean operator «and») Structure/function of features is readily clear and realiable (in T1148/12 they were not, because «schematic»); Features do properly work (in T1148/12 they were not, because the «parallel arrangement lost»); Features are purposive for the skilled man at the time of filing (in T1148/12 they were not, because no purpose for «parallel»)

12 «PARALLEL ELECTRODES» A further issue «Intermediate generalization» (or «partial» restriction) «in substantially parallel from each other and arranged in a row» Even if supported by the drawings, the amendment would not be allowed as it does not introduce other features related to the electrodes of the same embodiment: «same shape» and «spaced by an equal distance»

13 «PARALLEL ELECTRODES» What if in US? United States Patent US 9,026,200 (issued on May 5, 2015) A garment to measure biological information, [ ] the garment comprising chest electrodes, formed of a conductive material, [ ], the chest electrodes being arranged along a body axis of the examinee in parallel lines [ ]in at least six positions located from a near presternal region [ ]

14 «PARALLEL ELECTRODES» What if allowed? Art. 123(3) EPC «Trap» A garment (300) for measuring biological information [...] wherein the chest lead electrodes are arranged in substantially parallel from each other and arranged in a row from vicinity of the front center of the garment to vicinity of the left side of the garment [ ] «in parallel» and «in a row» Without amendments

15 T2232/12 «CROSSING THE LINE» Decision of the Tech. Board of Appeal May 6, 2015 European Patent Application EP Technical field: method for operating a touch screen Object: to prevent the user from miss-touching the touch screen; the touch screen is unlocked by touching and sliding.

16 T2232/12 «CROSSING THE LINE» ORIGINAL FORM: A method [ ] unlocking the screen-locked state of the touch screen when determining that the touch operation is started from the first touch area and ended in the second touch area. AMENDMENT: A method for unlocking a screen-locked state of a touch screen [ ] unlocking the screen-locked state of the touch screen when determining that the touch operation crosses a line separating a first portion of the unlocking area from a second portion of the unloking area.

17 T2232/12 «CROSSING THE LINE» The outcome of the amendment: Unlocking happens when the touch operation crosses a line separating the first from the second portion.

18 T2232/12 «CROSSING THE LINE» NO! Crossing the separate line, taken alone, (independently from the starting/ending point of the touch operation) does not necessarily mean that the touch operation starts in the first area and ends in the second area, in the event of more than two touch areas 1 2 3

19 T2232/12 «CROSSING THE LINE» Reasons: («directly and unambigously») All the «examples» share the same technical features (i.e. starting/ending points of the touch operation are, respectively, in the first and second area) The features are depicted as essential («if the touch operation is not started from the first or not ended in the second the screen-locked state of the touch screen is not to be unlocked» One of the possible general statements is, anyway, «according to the «examples» which share the features depicted as essential

20 CONCLUSIONS

21 WHAT CAN I DO IN ADVANCE? Drafting suggestions for EP applications (1/2) A good set of dependent claims: grouping together the claims is easy and prevent objections (at least cut-and-paste in the Spec.) Disclose all the main features stand-alone for avoiding intermediate generalization (in the summary ) aspect of the invention vs. embodiment the latter might imply a mutual relation between features previously introduced for the same embodiment Describe the main features of the drawings in words

22 WHAT CAN I DO IN ADVANCE? Drafting suggestions for EP applications (2/2) The figures do illustrate embodiments, hence: the drawings illustrate non-limiting embodiments of the disclosure and, together with the description, serve to explain the principles of the disclosure Avoiding statements that might depict a feature as essential you may want to delete the feature Whenever possible, describe the technical effect of the features it smooths the problem-solution approach and might prevent the intermediate generalization

23 Computer Implemented Invention at the EPO A quick update

24 More at PLI Handbook 2017 «Amendments before EPO» by Marco Lissandrini Contacts: Marco Lissandrini European Patent Attorney

Marco Lissandrini BIO Graduated in Aerospace Engineering at the Polytechnic University of Milan European and Italian patent, trademark and design attorney Managing Partner of Verona office

AREAS OF PRACTICE Patent search, drafting, prosecution and dispute in opposition proceedings at EPO and in judicial proceedings before the Italian courts, as technical expert Advisory on

25 Marco Lissandrini BIO Graduated in Aerospace Engineering at the Polytechnic University of Milan European and Italian patent, trademark and design attorney Managing Partner of Verona office and Member of the Board of Directors of Bugnion. AREAS OF PRACTICE Patent search, drafting, prosecution and dispute in opposition proceedings at EPO and in judicial proceedings before the Italian courts, as technical expert Advisory on eligibility and infringement issues EXPERTISE Background in aerospace, mechanical engineering and software Food processing machinery, packaging and bottling systems, fluid-operated devices, such as pumps, cooling and heating systems and valve control systems, laser sintering apparatus, medical devices, locking systems and computer software.

11th Annual Patent Law Institute

INTELLECTUAL PROPERTY Course Handbook Series Number G-1316 11th Annual Patent Law Institute Co-Chairs Scott M. Alter Douglas R. Nemec John M. White To order this book, call (800) 260-4PLI or fax us at