Paper M3 - Producing Claims, Responses and Opposition Submissions
M3 is the drafting paper: independent and dependent claims, replies to examination reports and notices of opposition. Marks come from correct legal form, a defensible scope and an accurate basis for every feature you add.
Claim drafting
- One independent claim per category, in two-part form under R. 43(1) EPC where the closest prior art allows it: the preamble carries the shared features, the characterising part the distinguishing feature.
- Every feature must be disclosed in the application as filed; maintain a basis table mapping each claim feature to a page and line.
- Broaden only as far as Art. 84 EPC (clarity, support) and Art. 83 EPC (enablement) allow; a functional definition is safe only if the description makes the whole scope plausible.
Opposition
- Art. 99(1) EPC: nine months from the mention of grant; the fee, the reasoned statement of grounds and the evidence must be filed within that period (R. 76(2)(c) EPC).
- Only the grounds in Art. 100 EPC are available, and the opponent is bound by the grounds and facts it has put forward.
- R. 80 EPC: amendments in opposition must be occasioned by a ground for opposition, even one not raised by the opponent.
Worked example
Disclosure: a bicycle lock with a shackle, a lock body and a silicone sleeve over the shackle. The closest prior art shows shackle and body only. Reasoning: the distinguishing feature is the sleeve; the objective problem is reducing scratching of the frame; the claim stays in the apparatus category and needs no thickness figures for novelty. Draft: a bicycle lock comprising a shackle and a lock body, characterised in that the shackle is covered by a silicone sleeve. The description must support silicone as such, not merely a plastics coating.
Traps that cost marks
- A claim that still reads onto the closest prior art because the distinguishing feature sits in the preamble.
- Taking a feature from a drawing without a basis for its combination with the claim.
- Arguing at length instead of amending when a clarity or added-matter objection is raised.
- Filing the reasoning in opposition after the nine-month period has expired.