The law and interpretation of patent claims varies widely in different jurisdictions. Therefore, understanding how patent
claims are interpreted in different regions is essential when trying to prove patent infringement and validity in order to protect an organisation’s primary assets. This course has been specifically designed for all patent professionals doing business in a complex multi-jurisdictional environment.
The programme, presented by our expert speaker faculty, will include fact-based scenarios and case examples, with comparisons of the USA, UK and German
approaches to claim construction and validity determination. The speakers will provide recommendations for both litigating patents and preparing patent applications to the best advantage.
Attending this course will provide the perfect opportunity for interaction with experts, as well as other like-minded participants. It will also provide the
This intensive one-day seminar will:
perfect forum for discussing any issues of particular concern in relation to patent construction.
- Explain how your patent claims will be construed in Germany, UK and USA
- Highlight the divergent methods employed in the three jurisdictions to interpret similar claim language
- Rationalise the disparate effect of the doctrines of equivalents in the three jurisdictions
- Compare the distinct litigation arguments and strategies that would be used in each of the three jurisdictions to construe similar claims
- Illustrate the major claim interpretation approaches with interactive panel discussions of real-life cases
Who should attend
- Patent professionals in private practice, including patent attorneys and lawyers
- Heads of IP, heads of patents and in-house patent counsel at every level
- Patent engineers and inventors
- All whose responsibilities include the need to understand the scope of patent coverage in USA, UK and Germany
Patent claim construction generally
Doctrines of equivalents and purposive construction
- In the USA
- Inherent ambiguities of the all-elements rule
- Use of intrinsic and extrinsic evidence
- Counterintuitive interpretation of functional claims
- USPTO proceedings vs infringement litigation
- In the UK
- Court’s approach to the ‘normal’ interpretation of the claims …
- … and the (wider) scope of protection under the UK doctrine of equivalents
- Accepted principles of claim construction (Virgin Atlantic)
- The approach taken to parameters, numerals and specific claim form
- In Germany
- Literal infringement and ‘functional’ interpretation
- Can ‘functional’ interpretation result in construction ‘below’ the wording?
- Numerals and literal infringement
Arguments and strategy: how to maximise the likelihood of a finding of infringement at each phase of a patent litigations
- In the USA
- Sub-tests for determining equivalents
- Counterweights to ‘equivalence’
- Unintended disavowal
- Prosecution history estoppel and its variants
- In the UK
- The groundbreaking judgement in Actavis vs Lilly
- Does a ‘variant’ vary from the invention in an immaterial way? Or achieve substantially the same result in the same way?
- Compliance with EPC Article 69 and Protocol
- UK court’s willingness to refer to EPO prosecution history
- In Germany
- The Schneidmesser questions
- Relevance of Pemetrexed
- Has the scope of protection become broader again?
- Relevance of prosecution history
Comparative case studies
- Pleadings (Germany, UK, USA)
- Disclosure (UK, USA)
- Expert evidence (UK, USA)
- Trial (Germany, UK, USA)
- Presentations of real-life case studies with interactive panel discussions explaining the often dissimilar approaches that were or would be taken in the three jurisdictions for interpreting specific claims
William Cook is a partner in Marks & Clerk Solicitors in London. He is involved in all aspects of IP licensing and enforcement, specialising in particular in patent litigation. As well as leading patent infringement and validity litigation in the UK and co-ordinating across the EU, USA and Asia, he works on FRAND licensing, patent essentialilty, exhaustion of rights and IP/competition law issues. He also presents regularly on patent law and procedure in the UK and internationally.
Ulrich Blumenröder is a partner at Grűnecker, Kinkeldey, Stockmair & Schwanhäusser, an IP-firm in Munich, which focuses equally on both IP-litigation and IP-prosecution.
He is active in all fields of intellectual property but primarily specialises in patent litigation. He has litigated for both plaintiffs and defendants in all prominent German courts in normal as well as preliminary injunction proceedings.
He frequently gives lectures on various topics of patent law. He has written articles and is author of ‘German Regulations on Industrial Products’ (1997).
Bradley Hulbert is a founding partner in McDonnell Boehnen Hulbert & Berghoff LLP, an 80-lawyer patent firm in Chicago. He has been lead counsel in a wide range of successful patent lawsuits and has overseen the development of a diverse range of extensive, international patent portfolios. He is an adjunct professor of law at the Chicago-Kent Law School.
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
|13 May 2020
|13 May 2020
||Cavendish Hotel, London
+ VAT @ 20.00%
Until 31 Mar*
* Note the early booking discount cannot be combined with any other offers or promotional code