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.
15-16 May 2019
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.
Review of the similarities and differences in the statutory systems of the EPO and USPTO
‘Best practices’ for preparing one specification to comply with the European and US requirements for:
EPO/US: Prosecution and appeal procedures
EPO/US definitions of prior art and priority
Question and answer session
EPO/US: Rejections and responses
Prosecution history estoppel in the US
Arguments on non-technical (EPO) and subject matter (US)
Bradley Hulbert is a founding partner in McDonnell Boehnen Hulbert & Berghoff LLP, an 80-lawyer patent firm in Chicago. He has been lead counsel in a wide range of successful patent lawsuits and has overseen the development of a diverse range of extensive, international patent portfolios. He is an adjunct professor of law at the Chicago-Kent Law School.
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.
This course qualifies for the following CPD programmes: