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

How to Avoid Common Pitfalls in Combined EU/US Patent Applications. This seminar addresses the parallel, but substantially different, rules for drafting and prosecuting patents required by the Examiners and Appeal Boards of the EPO and USPTO.

Course overview

This course addresses the parallel, but substantially different, rules for drafting and prosecuting patents required by the examiners and Boards of Appeal of the EPO and USPTO.

You will study the contrasting approaches of the EPO and USPTO and learn the experts’ techniques for drafting an application 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 filed with both the EPO and 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 executives 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
  • Procedures
  • Formalities

‘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/non-obviousness
  • 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

Question and answer session

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

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

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

We do not currently have dates confirmed for this course; please contact us to be informed when it is scheduled; or to discuss running this course on an in-house basis for your staff.

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Previous customers include...

  • AOMB Intellectual Property Consultants
  • Bayer Cropscience NV
  • BIIP cvba
  • Corax IP
  • DeltaPatents B.V.
  • DSM Intellectual Property
  • DuPont Nutrition Biosciences ApS
  • Essity Hygiene and Health AB
  • European Patent Office
  • Hoffmann Eitle
  • Hunter Douglas Industries BV
  • Kolster Oy Ab
  • NLO
  • NXP Semiconductors
  • Omya International AG
  • Patentanwalt Dr Andreas Weiser
  • Patentanwälte Pinter & Weiss OG
  • Patentanwaltskanzlei Matschnig & Forsthuber
  • Plougmann & Vingtoft
  • Plougmann Vingtoft
  • Protector IP Consultants AS
  • Research and Markets
  • Unilever
  • Unilever R&D
  • Waldner IP Law Ltd
  • Withers & Rogers LLP
  • Yara SA/NV
  • Zealand Pharma


Miruna Enescu, Patent Attorney, ROMINVENT

Very good

Tajeshwar Singh, Patent Attorney, Protector IP Consultants AS

Very helpful. Not too much new information but confirms my thoughts on how to draft applications.

Katrin Lindberg, European Patent Attorney, Valea AB

Entertaining and inspiring

Henrik Mathiassen, Director of IP, Zealand Pharma

I think the content was extremely good and will be helpful going forward.

Triona Walshe, Senior Intellectual Property Attorney, James Hardie Technology Limited