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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 practical and interactive course will demystify the complex area of combined EU/US patent applications. The expert trainers will address the parallel – but substantially different – rules for drafting and prosecuting patents required by the Examiners and Boards of Appeal of the EPO and USPTO. They will highlight the risks and pitfalls to be aware of and explain how to avoid them or deal with them if challenged by the patent offices.
The comprehensive programme will ensure that you get to grips with the contrasting approaches of the EPO and USPTO and understand the experts’ techniques for drafting an application for, and responding to, rejections issued by the two offices.
During the practical exercises you will learn how to correct and modify a sample application to be filed with both the EPO and USPTO and practise developing effective arguments for the EPO and USPTO, taking into account hypothetical patent office rejections.
You will also have the opportunity to discuss your particular questions and concerns with the expert trainers, as well as share experiences with like-minded professionals.
Key topics to be covered:- 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
- Practical session using worked examples
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 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
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 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.
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.
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
| 13-14 May 2021 | |||
| 13-14 May 2021 | Venue not yet confirmed | + VAT @ 20.00% |
Enrol now |
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Previous customers include...
- AC Immune SA
- BCF
- BIIP cvba
- Chas Hude A/S
- DeltaPatents B.V.
- DSM Intellectual Property
- DuPont Nutrition Biosciences ApS
- Germain & Maureau
- HTC Europe Co. Ltd
- Kolster Oy Ab
- LLC BIOCAD SK
- Maiwald Patentanwalts GmbH
- NLO
- Novozymes A/S
- NXP Semiconductors
- Omya International AG
- Patentanwälte Pinter & Weiss OG
- Patentanwaltskanzlei Matschnig & Forsthuber
- Plougmann & Vingtoft
- Plougmann Vingtoft
- Research and Markets
- ROMINVENT
- Unilever
- Unilever R&D
- Valea AB
- Withers & Rogers LLP
- Xaar Plc
- Yara SA/NV
- Zacco Denmark A/S
- Zealand Pharma
“I felt very important to remind that none of the system is better, the systems are different. The course was very interesting and gave some useful practical information for improving our work as patent attorneys. ”
Alexandra Goreaud, European Patent Attorney, Germain & Maureau, May 19
“Great”
Miruna Enescu, Patent Attorney, ROMINVENT , May 18
“I think the content was extremely good and will be helpful going forward. ”
Triona Walshe, Senior Intellectual Property Attorney, James Hardie Technology Limited, May 17
“Very good”
Tajeshwar Singh, Patent Attorney, Protector IP AS, May 17
“Very helpful. Not too much new information but confirms my thoughts on how to draft applications. ”
Katrin Lindberg, European Patent Attorney, Valea AB, May 17
“Entertaining and inspiring”
Henrik Mathiassen, Director of IP, Zealand Pharma, May 17