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Litigation-Proofing and Proving your Patent Claims Training Course

This seminar provides a comprehensive overview of the principles of patent claim interpretation in the USA, UK and Germany.

1 Feb 2022

& 20 May 2022 , 22 Nov 2022

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Details

Course Overview

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 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

Programme

Patent claim construction generally

  • 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

Doctrines of equivalents and purposive construction

  • In the USA
    • Sub-tests for determining equivalents
    • Counterweights to ‘equivalence’
    • Vitiation
    • 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

Arguments and strategy: how to maximise the likelihood of a finding of infringement at each phase of a patent litigations

  • Pleadings (Germany, UK, USA)
  • Disclosure (UK, USA)
  • Expert evidence (UK, USA)
  • Trial (Germany, UK, USA)

Comparative case studies

  • 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

Presenters

Bradley Hulbert (More...)

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.

Ulrich Blumenroeder (More...)

Ulrich Blumenröder is a partner at Grünecker PartG mbB, an IP firm in Munich which focuses equally on both IP-litigation and IP-prosecution. Ulrich is active in all fields of intellectual property but specialises primarily in patent litigation.

Ulrich Blumenroeder (More...)

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 (More...)

Bradley Hulbert is a founding partner in McDonnell Boehnen Hulbert & Berghoff LLP, an 80-lawyer patent firm based in Chicago. Bradley has been lead counsel in a wide range of successful patent lawsuits and is an adjunct professor of law at the Chicago-Kent Law School.

Book now

Book now

1 Feb 2022
Face-to-face, (venue not yet confirmed)
1 Feb 2022
Face-to-face
(venue not yet confirmed)
GBP 699 599
EUR 979 839
USD 1,090 934
Until 28 Dec*
Enrol now
to attend
Face-to-face
(venue not yet confirmed)
  • 1 day classroom-based training
  • Meet presenters and fellow attendees in person
  • Lunch and refreshments provided
  • Download documentation and certification of completion
  • Fair transfer and cancellation policy
20 May 2022
Live webinar
20 May 2022
Live webinar
GBP 599 499
EUR 859 719
USD 970 814
Until 15 Apr 22*
Enrol now
to attend
Live webinar
22 Nov 2022
Live webinar
22 Nov 2022
Live webinar
GBP 599 499
EUR 859 719
USD 970 814
Until 18 Oct 22*
Enrol now
to attend
Live webinar

Learn more about our face-to-face and webinar training formats.

* Note the early booking discount cannot be combined with any other offers or promotional code

Continuing professional development

This course qualifies for 6 hours for your CPD records.
More about CPD

Customised in-house training

We can customise this course to meet the requirements of your organisation and deliver it at your location and/or online.

Contact us

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Previous customers include...

  • AB Electrolux
  • Abzena plc
  • Awapatent AB
  • Boult Wade Tennant
  • Canon Europe Ltd
  • DSM IP Assets BV
  • DuPont Nutrition Biosciences ApS
  • Epping Hermann Fischer Patentanwalts GmbH
  • GEA Procomac
  • J K Gadzama & Partners
  • Kao Germany GmbH
  • Ladas & Parry LLP
  • Marks & Clerk LLP (London)
  • Metayage IP Strategy Consulting LLP
  • Müller Fottner Steinecke Rechtsanwalts- und Patentanwaltspartnerschaft mbB
  • Octrooibureau Van der Lely N.V.
  • Patentanwalt Dr Andreas Weiser
  • Patentanwaltskanzlei Matschnig & Forsthuber
  • Renishaw plc
  • Rolls-Royce PLC
  • Sanofi Aventis Groupe
  • Scandinavian Health Limited
  • SKF BV
  • Solvay SA
  • Sony Europe Limited
  • Stratagem IPM Ltd
  • Swisscom (Switzerland) Ltd.
  • Volkswagen AG
  • Xaar Plc
  • ZBM Patents S.L.

All the webinar was very interesting. The webinar was carried out very well. Easy to participate. The speakers very good in maintaining the attention of the participants.

Maria Luisa Marchesi, Italian Patent Attorney, Eni S.p.A., May 21

Very interesting. The comparisons between the different jurisdictions were very helpful.

Andreas Leijon, Senior Patent Attorney, Alfa Laval Corporate AB, May 21

Lovely!

Joe Gaal, Senior Patent Attorney, Syngenta Ltd, May 17