What Does My Claim Cover?: UNION-IP Roundtable, Munich, 24 February 2023

It is almost inevitable that at some point during prosecution of a patent application, amendments will need to be made. If amendments to the claims are made, this will undoubtedly affect the scope of protection of the resulting patent. Indeed, this is the primary aim of making amendments to the claims. However, it is not clear whether amendments made to the description are either necessary or would actually result in the scope of protection being affected post-grant. 

The European Patent Office would like everyone to agree with them that it is important to amend the description to align it with the claims because "Any inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought" (Guidelines F-IV 4.3). But is this necessary? Is it justified by the case law? Is it even relevant for post-grant proceedings at national courts? To address these questions, UNION-IP has gathered together some illustrious and knowledgeable people from across Europe to discuss the matter at a 'roundtable' event to be held at the German Patent and Trade Mark Office (DPMA) in Munich on Friday 24 February 2023. 

The event, titled "What Does My Claim Cover? - Intended and Unintended Consequences of Amendments During Prosecution and Post-Grant Proceedings", will be an excellent opportunity to debate the impact of the changes to the Guidelines for Examination (F-IV 4.3 in particular) in relation to amendments to the description, in judicial proceedings and before the EPO. There will be two panels comprising speakers including judges and experienced professionals.

The first panel, which will discuss the changes to the Guidelines and how they have changed practice at the EPO, will include Gerry van Dooren (EPO DG1 Operations Director), Felix Hermann (Boehmert & Boehmert) and Thomas Burchardi (Ericsson).

The second panel, which will discuss how claim scope is affected by the description in litigation, will include Edgar F. Brinkman (Senior Judge, District Court of The Hague), Matthias Zigann (Presiding Judge at Regional Court Munich, UPC Judge for Munich Local Division), James Mellor (UK Patents Court Judge) and Lionel Martin (August Debouzy). 

The panels will be moderated by UNION-IP Patents Commission President Rui Gomez and Vice-President Joana Santos. The event will be introduced by Fabian Edlund, President of UNION-IP, together with Bernd Maile, Vice-President of the DPMA. 

The registration fee, which includes lunch at the DPMA (which has always been very good at past events) is 175 Euros for non-members and 120 Euros for UNION-IP members. 

A brochure for the event, which includes details of how to register, is available here from the UNION-IP website. 

The event is the first one to be held in person since February 2020, so will be a very good opportunity to finally get out of the office and meet some people in real life, particularly as trips to Munich are getting more infrequent. I look forward to seeing you there!

UNION-IP Winter Roundtable 2021

 

The Union IP Roundtable, held annually towards the end of February, is a regular feature in my calendar. In previous years I have attended the meeting at the DPMA in Munich to hear discussions of various topics relevant to patent practitioners across Europe. I attended my first one as a speaker, presenting my ideas on partial priority a little while before the Enlarged Board of the EPO agreed with me. Since then, topics have covered "Smart IP", literal and non-literal infringement, and indirect infringement. The topics and speakers are always carefully chosen to encourage a range of views from different European jurisdictions, which often highlight the differences that still exist in the patent world across Europe, despite extensive harmonisation over the past few decades. 

The topic for this year's roundtable relates to the one thing it has been impossible to avoid for the past 12 months or so. The title is "IP strategy and challenges in an era of cooperation", which in essence is about what we can do in response to new challenges such as Covid-19 and how IP can help (or possibly hinder). Two main topics will be covered: how governments can balance patent rights and public health (e.g. crown use provisions and when they should be used), and whether or not to patent in the age of Covid-19 (e.g. whether it is acceptable to patent treatments to protect public health). I have my own views on these subjects, but I will certainly be interested to hear what others have to say.

The speakers at the event include Michael Fysh QC SC (former Patents County Court judge), Matthieu Dhenne (Partner at Ipsilon), Jorge Contreras (University of Utah & Open Covid Pledge co-founder), Keiko Higuchi (Mitsubishi), David Rosenberg (former GSK vice president of IP) and Nigel Clarke (patent information expert at the EPO). The full programme can be viewed here. 

As with everything else these days, the meeting will be held entirely online, so there is no excuse not to go this time. The registration fees are consequently lower than normal, being only 20 Euros for Union members and 80 for non-members. Registration is required by 25 February 2021, so book your place now.