Amending Patent Applications: Legal Considerations and Potential Pitfalls

This presentation is targeted toward patent professionals and patent translators who wish to gain a better understanding, and hence a competitive edge, by more fully understanding the constraints and considerations of their direct or indirect customers, patent attorneys.  Stephen Scott will look at the legal requirements for amendment of a patent application, with particular focus on European practice under the European Patent Convention.  The presentation will consider matters such as added subject-matter, support and clarity, issues which a good patent translator should be very familiar with when translating patent specifications and office actions.  The presentation will address the factors a patent attorney will consider when deciding how to amend a patent application.  By providing examples of allowable and unallowable amendments, the presentation aims to provide a useful insight into the potential pitfalls when amending patent applications, and how these pitfalls might influence the translation choices of patent translators.  A patent translator should leave this presentation with a better understanding of issues that might arise after a translation has been submitted, and thereby have a clearer picture of what is a “good translation”, and of important issues that should be included in a translation memo.