Patent application drafting and prosecution
This domain tests the craft: converting a client disclosure into a claim set that survives Art. 83, 84 and 123(2) EPC, handling priority, and prosecuting before the EPO and, where relevant, the IPI. The typical task gives you a disclosure and a prior-art document and asks for claim 1 plus a short justification.
Claim architecture
- One independent claim per category (product, process, apparatus, use); two-part form under R. 43(1) where a closest prior art exists, otherwise a single-part claim.
- Functional features only where the description supplies a test and the feature is not a mere desideratum.
- Second medical use: purpose-limited product claim under Art. 54(5); the Swiss-type claim is the older fallback and no longer the primary vehicle.
- Product-by-process only where the product cannot be defined structurally.
Amendments, support and sufficiency
- Art. 123(2): the gold standard is direct and unambiguous derivation; no intermediate generalisation; a feature lifted from a drawing must carry the drawing's context.
- Disclaimers only on the G 1/03 criteria; range amendments under G 2/10.
- Art. 84: the claim must be supported across its whole scope. Art. 83: no undue burden, deposit where the invention relies on biological material.
Prosecution
Reply to the WO-ISA/search opinion with the request for examination; Art. 94(3) communications; amendments as of right under R. 137(2) with the first reply, later ones needing the examiner's consent (R. 137(3)); auxiliary requests; Art. 116 oral proceedings; appeal with notice in 2 months and grounds in 4.
Worked example
The disclosure reads: 'solvent: ethanol, isopropanol or acetone, preferably ethanol; concentration 40–70 % v/v'. Claim 1 as filed: '40–95 %'. The examiner raises Art. 123(2) and Art. 84. Reasoning: 95 % has no basis anywhere in the application, so the amendment adds matter; independently, the claim is unsupported. Amend to '40–70 %', which is literally disclosed. Do not amend to '45–65 %' - no basis, and it is an intermediate generalisation. Narrowing to ethanol alone is a selection from a three-item list and is allowable provided the description links ethanol to the effect relied on.
Traps
Drafting to the client's commercial wish rather than the disclosure. Assuming 'preferably' supports a sub-range as such. Amending after the first reply without consent. Using the priority document as an amendment basis in the EP phase - it is not part of the application as filed. Overlooking that a broad claim can fail Art. 83 even if every feature is literally disclosed.