EPO EXAMINERS APPLICATION OF ARTICLE 123(2)

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1 EPO EXAMINERS APPLICATION OF ARTICLE 123(2) Samson Helfgott Katten Muchin Rosenman LLP New York, NY EPO/USBar Partnership for Quality Meeting May 12, 2015 Washington, D.C.

2 BACKGROUND For a number of years, applicants were concerned by the rigid application of Article 123(2) by examiners. Standard that was used was directly and unambiguously disclosed. EPO was very responsive at a Symposium where EPO stressed case law that the standard was what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively... from the whole of the documents as filed. EPO added an additional paragraph to the Guidelines to further stress the derivable standard to be used and not to use the disclosed standard. Question: so how are examiners applying this standard _1 1

3 CASE EXPERIENCE Patent Granted. Opposition. Opponent used standard of not directly and unambiguously disclosed in every one of their objections. In every reply we argued that the standard was directly and unambiguously derivable. We even put in copy of EPO presentation from the Symposium. In Preliminary Opposition Division Opinion, they never commented on the Opponent using the wrong standard, and on the contrary at least seven times the Opposition Division themselves required that the words in the claim be directly and unambiguously disclosed. Although in reply we again objected to the use of the wrong standard, we were forced to put in very limiting arguments, multiple alternative claims, unnecessary admissions which the opponents later used against us, extra time and cost _1 2

4 At the oral hearing, the opponent continuously argued on each claim term that it was not disclosed. The Opposition Examiners never corrected them, but simply asked for our response. Although we continued to argue that the opponent was using the wrong standard. However, as the Opposition Examiners gave no correction to the Opponents wrong standard, we again had to try and argue where each term was disclosed. Because I advised Nick Morey of my concerns, the EPO very graciously sent an observer to the oral hearing and subsequently reviewed the files and followed up with a response _1 3

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7 RECOMMENDATIONS More training and clear instructions should be given to Examiners. For Quality more review of Examiners decisions should be made and feedback given to examiners when they use the wrong standard. More stringent measures should be used rather than excusing improper use of standards by the Examiners. Quality is only as good as the Examiners who do the actual work _1 6

8 Contact Information for Samson Helfgott Director of Patents Katten Muchin Rosenman LLP 575 Madison Ave. New York, N.Y., (212) Disclaimer: This presentation does not constitute any specific legal or business advice. 7

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