How to Avoid Common Pitfalls in Combined EU/US Patent Applications

16-17 May 2018


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Course Overview

THIS SEMINAR WILL INCLUDE:-

The often unseen traps posed by differing EU and US requirements
Best practices for reconciling the EU and US requirements and drafting an application to:
- Maximise scope of protection
- Reduce objections
- Minimise costs and maximise flexibility
Prosecution procedures
- EPO and USPTO approaches to rejections
- Responding to EPO and USPTO rejections, based on an optimised specification
- Limiting US prosecution history estoppel
Worked exmamples

Why you should attend

This seminar addressed the parallel, but substantially different, rules for drafting and prosecuting patents required by the Examiners and Appeal Board of the EPO and USPTO. You will study the contrasting approaches of the EPO and USPTO and learn the experts’ techniques for drafting an applications for, and responding to, rejections issued by the two offices.

PRACTICAL APPLICATIONS

You and the other delegates will be invited to correct and modify a sample application to be field with both the EPO and the USPTO.
You will be asked to develop effective arguments, for the EPO and USPTO, with respect to hypothetical patent office rejections

Who should attend

Patent professionals and other executiveds who are responsible for patent applications that are filed in, and prosecuted before, both the European and US Patent Offices
Managers overseeing and evaluating the multinational patent prosecution

Programme Day One

Review of the similarities and differences in the statutory systems of the EPO and USPTO

Legal aspects
Procedural aspects
Substantive aspects
Formal aspects

‘Best Practices’ for preparing one specification to comply with the European and US requirements for:

Priority
Added subject matter/new matter
Industrial application/utility
Novelty
Inventive step/nonobviousness
Description and sufficient basis/ enablement and written description
Claim clarity and conciseness/‘distinct claiming’
Limiting estoppel and implications of the AIA

EPO/US: Prosecution and Appeal Procedures

Likely timelines and statutory deadlines
EPO
Euro-PCT
USPTO
Burdens of proof
Use of provisional and non-provisional applications
Objections and rejections
Non-final and final Office Actions
Interviews
Patent Office appeals
Judicial appeals

EPO/US Definitions of Prior Art and Priority

EPO
- Article 54 definitions of ‘State of the Art’
US
- Definitions of ‘Prior Art’ for anticipation and obviousness
- Ramifications of the America Invents Act

Programme Day Two

EPO/US: Rejections and Responses*
Inventive Step (EPO) vs Obviousness (USPTO)
EPO/US: Strategies for persuading the Examiner and Board

Prosecution History Estoppel in the US

Estoppel variants
Controlling the adverse impact of arguments to the USPTO
Effect of representations made in corresponding, non-US applications
Disclosure obligations after Therasense

Arguments on Non-Technical (EPO)and Subject Matter (US)

Article 52(2), (3) exclusions
- ‘Technical’
- Two hurdles
- Potential technical effect T26/86 Koch & Sterzel
- Computer program/signal claims
Arguments to the USPTO after Alice
- Abstract vs Structural limitations
- USPTO “Examination Instructions”

Worked Examples

Delegates will be invited to analyse and modify sample applications suitable for the EPO and USPTO
Delegates will be asked to develop effective arguments, for the EPO and USPTO, with respect to a series of hypothetical office actions

Plenary Session
• Delegates and speakers will discuss the worked examples with the aim of optimising specifications acceptable to both the EPO and USPTO

Presenters

Bradley Hulbert

Bradley Hulbert is a founding partner in McDonnell Boehnen Hulbert & Berghoff LLP, an 80-lawyer patent firm in Chicago. Mr. Hulbert 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.

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.