About David Jasiewicz: I’m David, a trainee patent attorney in our Manchester office. I have a background in chemistry and before joining Appleyard Lees I worked in a patent law firm in Japan. Outside of work I enjoy playing tennis, and more recently looking after my new born daughter.
Patent applications are legal documents with several sections to them. The most important section is the claims, which define how much legal protection the applicant is seeking for an invention. The description describes the invention in more detail and supports the claims.
As a trainee patent attorney, from time to time I have had to amend the description of European patent applications. This is because the European Patent Office wants the description to match the claims, and usually the claims are amended during the application process to overcome objections from the European patent office. Amending the description can take a while, but it’s important to get it right because mistakes can cause problems down the line.
I was interested to hear that in a recent decision (T1989/18), the European Patent Office’s Board of Appeals said that there was no legal basis for a European patent application to be refused just because the description has not been amended in line with the claims. Hopefully this means we won’t have to spend so much time amending descriptions in the future!
Given how useful this new decision is for anyone involved in the prosecution of European patents, I jumped at the chance to share the news by writing an article (and this blog post!) about it. To start with, I read the decision in detail and also read about the legal background. Writing articles is a great way to become familiar with the latest case law, which trainees need to know about for their exams. Moreover, all patent attorneys need to know about the latest developments for their day to day practice.
