Track E

E4 Telling the Whole Story: Intermediate Generalization at the European Patent Office *CLE Eligible

Track: IP Trends and Successful Practices

Target Audience: Advanced

Sebastian Tegethoff, 24IP Law Group

Catherine Eckenswiller, VBI Vaccines Inc.
Albert Keyack, European Patent Office (EPO)

European case law developed a more or less pedantic application of Article 123 EPC regarding amendment of claims and its supporting disclosure. The question to be answered is whether deleting a single feature from a combination of features results in a combination that has been clearly and unambiguously disclosed. The same question applies for adding a feature to a combination in claims. For that reason, examiners hold amended claims quite often to be invalid due to intermediate generalizations. The European practice is very different from U.S. practice, giving the applicant a high degree of freedom regarding claim amendments. The workshop aims at explaining how to prepare a disclosure leaving a maximum degree for later amendments of claims. Case studies based on decisions of the European Patent Office will be provided to show how the mousetrap of intermediate generalizations can be avoided. Join this session to learn how to tell the whole story in European patent applications!

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