IDS held international event on amendments to patent claims in celebration of World IP Day

IDS held international event on amendments to patent claims in celebration of World IP Day

On April 25, Dannemann Siemsen Institute (IDS) held the second Agenda IDS of 2023, in celebration of World IP Day, with the topic Amendments to patent claims: Global updates.

The international on-line event, which reunited speakers from Brazil, India and Germany, was opened by Patricia Porto, the academic coordinator of IDS and was moderated by Ivan Ahlert, senior partner at Dannemann Siemsen. The panel was also formed by Ankush Verma, from India, managing associate at Remfry & Sagar, Alexander Wyrwoll, from Germany, partner at Winter, Brandl, and by Monique Teixeira, partner at Dannemann Siemsen.

Ahlert explained that the ideal time for amendments would be after the examiner has rendered his opinion on what the closest prior art is and what would be new and inventive in the patent application as filed.

Dr. Wyrwoll explained that under the European Patent Convention (EPC) amendments can be submitted regarding the patent application or the patent already granted. He also indicated what are the main points to be considered on amendments according to the EPC, and what would be the rules to be followed when submitting an amendment according to the Board of the European Patent Office.

According to Mr. Verma, under Indian law, there is no time limit for submitting amendments, it can be made either before or after the grant of the patent. He also explained that a justification must be offered as to why the amendment is necessary. The most appropriate time would be to submit amendments after the examiner’s first opinion since one could justify the submission of the amendments due to the examiner’s manifestation.

Monique Teixeira clarified that due to the wording of art. 32 of the Industrial Property Law and the absence of BRPO rules to regulate amendments after the examination of the patent application has started, several interpretations have been given to the deadline for the submission of amendments after the examination has started, the most reasonable should be, according to her opinion, that after the examination of the patent application, amendments are accepted, provided that they are restricted to what was disclosed in the application as filed.