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

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

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

• 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

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

• 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

This course qualifies for the following CPD programmes:

• CPD certificate of attendance: 5.50 hours
• General Council of the Bar: 5.50 hours