Examination Matters 2017 Webinars

Transcription

1 Examination Matters 2017 Webinars Amendments and unsearched subject-matter Ekkehard Weinberg Yann Robin Examiner, EPO European Patent Attorney, epi 5 December 2017 EPO Munich

2 Amendments and unsearched subject-matter The presenters Ekkehard Weinberg Examiner, Handling & Processing, EPO Munich Yann Robin UK/FR, UK and European Patent Attorney, Marks & Clerk, Glasgow European Patent Office 2

3 Amendments and unsearched subject-matter Agenda Objectives Scenario "rubber saucer" Toolbox on Rule 137(5) EPC Scenario "anti-skid saucer" Prevention and remedies Conclusions Questions European Patent Office 3

4 Amendments and unsearched subject-matter Objectives Exploring the legal framework surrounding Rule 137(5) EPC Rule 137(5) EPC Gaining awareness of practical implications Identify strategies to handle and prevent objections European Patent Office 4

5 Amendments and unsearched subject-matter Agenda ü Objectives Scenario "rubber saucer" Toolbox on Rule 137(5) EPC Scenario "anti-skid saucer" Prevention and remedies Conclusions Questions European Patent Office 5

6 Scenario "rubber saucer" solution: Scenario } Problem: Provide saucer that can be used with cups of different sizes European Patent Office 6

7 Scenario "rubber saucer" Claim 1 Claim 2 Scenario Saucer having a plurality of concentric recesses... with the recesses in a stepped configuration } Problem: Provide saucer that can be used with cups of different sizes Description Made of rubber no slipping of cups... European Patent Office 7

8 Scenario "rubber saucer" Claim 1 Claim 2 Scenario A A + B } Do you think that this objection is justified? þ yes ý no Description C to improve A EPO (search) A not new Amended claim 1 Amended claim 2 EPO (exam.) A + C A + C + B Not admitted (R137(5)). European Patent Office 8

9 Amendments and unsearched subject-matter Agenda ü Objectives ü Scenario "rubber saucer" Toolbox on Rule 137(5) EPC Scenario "anti-skid saucer" Prevention and remedies Conclusions Questions European Patent Office 9

10 Toolbox analysis Amendment of the European patent application Amended claims may not relate to unsearched subject-matter Rule 137(5) EPC which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. Nor may they relate to subject-matter not searched in accordance with Rule 62a or Rule 63. European Patent Office 10

11 Toolbox "unsearched subject-matter" Drawing up of the European search report "(...) a European search report (...) on the basis of the claims, with due regard to the description and any drawings." Article 92 EPC European Patent Office 11

12 Toolbox "unsearched subject-matter" Searched subject-matter includes subject-matter of the claims... essential features Article 92 EPC GL B-III, 3.5 GL H-II, 6.2 (GL = Guidelines)... feature making contribution to the effect of the features of originally claimed invention European Patent Office 12

13 Toolbox "unsearched subject-matter" Unsearched subject-matter results from technical features from description with effects unrelated to the effects of the features of originally claimed inventions GL H-II, 6.2 European Patent Office 13

14 Toolbox "single general inventive concept" Assessment Compare subject-matter of original claims and amended claims, GL H-II, 6.2 and check if there is lack of unity between the amended claim and the original claims. European Patent Office 14

15 Toolbox "single general inventive concept" Further indicators: does added feature change the nature of the invention? T 2334/11 T 0345/13; T 274/03... fall under original general inventive concept? European Patent Office 15

16 Toolbox special cases Rule 62a and/or Rule 63 EPC cases Amended claims may not relate to subject-matter not searched under Rule 62a or Rule 63. The presence of this subject-matter in the description cannot be used for its reintroduction into claims. Rule 137(5) EPC GL, H-II, 6.1 European Patent Office 16

17 Toolbox summary Rule 137(5) EPC Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. Nor may they relate to subject-matter not searched in accordance with Rule 62a or Rule 63. European Patent Office 17

18 Content Agenda ü Introduction Scenario "rubber saucer" ü Toolbox on Rule 137(5) EPC Scenario "anti-skid saucer" Prevention and remedies Conclusions Questions European Patent Office 18

19 Scenario "rubber saucer" Scenario Claim 1 A Claim 2 A + B Description C to improve A EPO (search) A not new Amended claim 1 A + C } Is objection justified? þ yes ý no } Not justified. The feature "C" is deemed to be part of the searched subject-matter since this feature is disclosed as a particular advantageous improvement of the technical effect of the feature "A" present in claim 1. Amended claim 2 EPO (exam.) A + C + B Not admitted (R137(5)). European Patent Office 19

20 Amendments and unsearched subject-matter Agenda ü Introduction ü Scenario "rubber saucer" ü Toolbox on Rule 137(5) EPC Scenario "anti-skid saucer" Prevention and remedies Conclusions Questions European Patent Office 20

21 Scenario "anti-skid saucer" Solution: Scenario } Problem: Provide saucer that can be used with cups of different sizes European Patent Office 21

22 Scenario "anti-skid saucer" Claim 1 Scenario Saucer having a plurality of concentric recesses } Problem: Provide saucer that can be used with cups of different sizes Description Rubber coating on lower surface no slipping on table European Patent Office 22

23 Scenario "anti-skid saucer" Scenario Claim 1 A + B Description A + C (with C different effect from A or B) EPO (search) A + B not inventive } Is objection justified? þ yes ý no } Justified. The feature "C" is unrelated to the effects of the features of the originally claimed invention. Amended claim 1 EPO (exam.) A + C Not admitted (R137(5)). European Patent Office 23

24 Amendments and unsearched subject-matter Agenda ü Introduction ü Scenario "rubber saucer" ü Toolbox on Rule 137(5) EPC ü Scenario "anti-skid saucer" Prevention and remedies Conclusions Questions European Patent Office 24

25 Amendments and unsearched subject-matter Prevention and remedies When drafting the application important features to be in the claims, preferably in "first branch". indicate how feature contributes to technical effect of invention. When filing amendment argue why the amended feature further defines a feature already present in the original claims and contributes to their effect. European Patent Office 25

26 Amendments and unsearched subject-matter Agenda ü Introduction ü Scenario "rubber saucer" ü Toolbox on Rule 137(5) EPC ü Scenario "anti-skid saucer" ü Prevention and remedies Conclusions Questions European Patent Office 26

27 Amendments and unsearched subject-matter Conclusions A valid objection under Rule 137(5) EPC, first sentence, requires both conditions to be met: "unsearched" AND "not single inventive concept" Rule 137(5) EPC Unsearched feature (in claim/description) does not necessarily mean unsearched subject-matter in the sense of Rule 137(5) EPC European Patent Office 27

28 Amendments and unsearched subject-matter Conclusions To avoid objection: explain in the description the technical relationship of sub-features with regard to the inventive concept order claims to present most important embodiments first. European Patent Office 28

29 Amendments and unsearched subject-matter Agenda ü Introduction ü Scenario "rubber saucer" ü Toolbox on Rule 137(5) EPC ü Scenario "anti-skid saucer" ü Prevention and remedies ü Conclusions Questions European Patent Office 29

30 Questions Questions now via chat to All participants later via mail è European Patent Office 30