http://ipkitten.blogspot.com/2022/05/epo-workshop-to-provide-users-with-more.html
There has been a ream of recent decisions from the EPO Boards of Appeal on whether the requirements in the Guidelines for Examination on description amendments has legal basis in the EPC (IPKat). The significance of the two decisions finding a lack of legal basis for the description amendment requirement (T 1989/18 and T 1444/20) has been questioned in light of the opposing case law. It has been particularly noted that the two Boards of Appeal in these cases (3.3.01 and 3.3.04) contained the same legal member (Lukas Bühler). Notably, the decisions also relate to patent applications from the same applicant (Roche). Will the EPO thus be happy to ignore the decisions in T 1989/18 and T 1444/20 as aberrations stemming from a rogue member of the Boards of Appeal?
| Description amending |
A sign of the way the wind is blowing at the EPO might be found in the EPO’s press release following “a user discussion” on the updates to the Guidelines for Examination 2023. On the controversial topic of description amendments, the press release briefly reports that:
the EPO understood the users’ concerns as to the need of more certainty. The users were invited to join the online workshop on this topic organised by the EPO for 23 June 2022.
According to the online summary, attendees of the Adaptation of the description workshop will, for the price of € 140.00, be provided with insights “into some of the legal and practical aspects to be considered in relation to the adaptation of the description to the claims before the EPO […] The speakers will also share their experience and views on this legal requirement against the backdrop of the recent case law of the Boards of Appeal”. The speakers will apparently include “experienced EPO examiners and lawyers, members of the Boards of Appeals, national judges and user representatives”.
This Kat wonders whether Mr Bühler is invited.
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