Patent Protection for Software-Related Inventions in Europe and the USA

An intensive update on patent protection for software-related inventions covering all the major developments in European patent law in particular GUI inventions and ‘mixed’ inventions with both patentable and non-patentable subject matter

7 Mar 2018

& 20 Sep 2018

GBP 699 599 *
EUR 979 839 *
USD 1,090 934 *
* When you book before 18 Dec

Book now

Course overview

Topics to be covered in this seminar

  • Recent decisions from the EPO and the US impacting patents on software and computer technologies
  • Procedures and pitfalls in the fields of computer-implemented inventions in Europe and the US
  • Latest US strategies post-Alice and under the USPTO’s most recent guidelines
  • Global drafting and prosecution tactics for these technologies

Why you should attend

  • Learn about development strategies impacting software patents
  • Find out about the major developments in European patent law, in particular GUI inventions and ‘mixed’ inventions with both patentable and non-patentable subject-matter
  • Learn about recent US case law impacting software patents in the US
  • Understand and exploit the differences between the United States and Europe on the scope of available patent protection
  • Learn tactics for US practice and the latest US strategies in dealing with obviousness and the rise of indefiniteness and written description issues
  • Complete case-studies on claim drafting, illustrating how to avoid pitfalls
  • Join the ongoing public debate about whether patent protection should be available for software-related and business-related inventions

Who should attend

  • Patent attorneys (both from private practice and industry)
  • In-house patent and general counsel
  • Chief information officers
  • Chief technology officers
  • Business development and technology professionals

Programme

Patent Protection for software-related and business-related inventions in Europe

  • Review of European law relating to the protection of software-related and business-related inventions
  • Review of EPO Board of Appeal decisions including most recent decisions

Patent Protection for software-related and business-related inventions in the United States

  • 2017 update on recent Federal Circuit decisions impacting software
  • Patent practice in the wake of the US Supreme Court’s Alice decision
  • Detailed analysis of USPTO’s post-Alice guidelines
  • Case examples and claim techniques for US practice
  • Post-grant considerations for these technologies

Preparation of patent applications and prosecution of European applications for software-related and business-related inventions

• Available claim formats and description requirements in Europe
• Drafting applications to take account of European and US requirements
• Filing strategies
• Dealing with EPO objections under Article 52(1) EPC

An industry view: an in-house perspective on managing IP protection of software-related inventions

  • Selecting what software technologies to patent or to protect in other ways
  • Foreign filing strategies that balance budget and likelihood of success for software innovations
  • Challenges facing companies involved in managing software patents and responsible for software-related technologies

WorkshopQuestions, answers and discussion of specific examples

  • An interactive session designed to apply earlier discussion to practical situations
  • Examples and approaches for protecting software and computer-related innovations, taking into account the unique requirements in the US and Europe

Presenters

David Meldrum

David Meldrum has been in private practice since 1998 and joined D Young & Co in 2001 and became a partner in 2006. David practises in a variety of engineering disciplines including computer hardware and software, electronics, optics, nanotechnology, medical devices, automotive engineering and registered designs. He is experienced in all aspects of patent procurement including drafting specifications, international filing programmes and patent prosecution, and in portfolio management and competitor monitoring. He is a member of the Institution of Engineering and Technology (IET) and a member of the Institute of Electrical and Electronics Engineers (IEEE). David’s clients include multi-national corporations and SMEs based in the UK, Europe and worldwide and he regularly presents IP lectures for clients and associates. He is a contributor to the D Young & Co Patent Newsletter.

Tim May

Timothy May is a partner in the Washington, DC office of Finnegan LLP. He has over 20 years experience in the field of US patent law, and focuses his practice on advising European high-tech companies on US patent matters. He counsels clients in all areas of US patent practice and currently manages the patent portfolios for several European clients in various electrical and mechanical technologies. He also counsels clients on patent validity and infringement. Prior to joining the firm, he served as a Patent Examiner at the US Patent and Trademark Office, where he examined applications involving digital communications, image analysis and testing and measurement devices.

Jonathan Garner

Jonathan Garner is a Patent Manager at Canon Europe Ltd. He is a Chartered Patent Attorney and European Patent Attorney and has spent the last 10 years working with software and related technologies. His experience includes patent drafting and prosecution, freedom-to-operate searches, infringement opinions, validity searches and related advice. He also has experience of a wide range of other matters relating to IP including inventor compensation schemes, designs, overseas patent prosecution. Jonathan started out his career at fJ Cleveland where he was a technical assistant for 5 years.

Continuing professional development

This course qualifies for the following CPD programmes:

  • CPD certificate of attendance: 5.50 hours
  • General Council of the Bar: 5.50 hours

Book now

7 Mar 2018
7 Mar 2018 Rembrandt Hotel, London GBP 699.00
EUR 979.00
USD 1,090.00
+ VAT @ 20.00%
GBP 599.00
EUR 839.00
USD 934.00
Until 18 Dec
Enrol now
20 Sep 2018
20 Sep 2018 Venue not yet confirmed GBP 699.00
EUR 979.00
USD 1,090.00
+ VAT @ 20.00%
Enrol now

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