A US and EP Comparison on Added Subject Matter

Our recent webinar comparing US and EP approaches to added subject matter was well attended and the number of questions we received in the Q&A clearly showed that added subject matter at the EPO remains a hot topic for attorneys around the world.

Our top tips for minimizing the likelihood of added matter problems at the EPO are:

1. Build-in basis for combinations at the drafting stage

• • • Consider adding multiple claim dependencies and/or multiply dependent numbered embodiments

2. Assume the Examples and Figures are merely illustrative

• • • Assume that you will not be able to use the Examples and Figures as basis for amendments during prosecution, and build in any key features into the general description when drafting

3. Take care with amendments during prosecution

• • • Added matter is frequently fatal at opposition so take the time to stress test claims of important cases prior to grant – there is no presumption of validity at the EPO

A recording of the webinar and a copy of the slides can be found here. If you have any questions on specific added matter problems affecting your patent portfolio, please contact Sarah Rodriguez or Victoria Barker for tailored advice.