Tuesday 31 January 2023

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!

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