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Litigation-Proofing and Proving your Patent Claims

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

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The content, presenters and format of this course are customised to your requirements.

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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

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.

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.

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Customise & book

This course can be customised to meet your requirements, and delivered to your colleagues at your location or online. For more information, call us on +44 (0)20 7749 4730, email us at inhouse@management-forum.co.uk or contact us below:

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Continuing professional development

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

Training options

Public course dates

We can deliver and customise this course for any number of attendees, at your location or online. But if you have fewer colleagues, this course is running publically on:

  • 8 Nov 2022

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Previous customers include...

  • AB Electrolux
  • Abzena plc
  • Alison Gallafent Limited
  • Appleyard Lees IP LLP
  • Awapatent AB
  • Bird & Bird LLP
  • British Telecommunications plc
  • DSM IP Assets BV
  • EGIS Pharmaceuticals PLC
  • Eni S.p.A.
  • IBA
  • Infineum UK Ltd
  • Institut Straumann
  • Kao Germany GmbH
  • Maiwald Patentanwalts GmbH
  • Metayage IP Strategy Consulting LLP
  • Müller Fottner Steinecke Rechtsanwalts- und Patentanwaltspartnerschaft mbB
  • Novo Nordisk A/S
  • Omya International AG
  • Patentanwalt Dr Andreas Weiser
  • Patentanwaltskanzlei Matschnig & Forsthuber
  • Ropes & Gray LLP
  • Scandinavian Health Limited
  • Shell International BV
  • Solvay SA
  • Sony Europe Limited
  • UDL Intellectual Property
  • Volkswagen AG
  • Williams Powell
  • Xaar Plc

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