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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.

14-15 May 2020

GBP 1,299 1,099 *
EUR 1,819 1,539 *
USD 2,026 1,714 *
* When you book before 31 Mar

Book now

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 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

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

14-15 May 2020
14-15 May 2020 Holiday Inn London - Kensington Forum, London GBP 1,299.00
EUR 1,819.00
USD 2,026.00
+ VAT @ 20.00%
GBP 1,099.00
EUR 1,539.00
USD 1,714.00
Until 31 Mar*
Enrol now

* Note the early booking discount cannot be combined with any other offers or promotional code

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Previous customers include...

  • AC Immune SA
  • AOMB Intellectual Property Consultants
  • BCF
  • Chas Hude A/S
  • DeltaPatents B.V.
  • DSM Intellectual Property
  • Essity Hygiene and Health AB
  • European Patent Office
  • Germain & Maureau
  • Hoffmann Eitle
  • HTC Europe Co. Ltd
  • Hunter Douglas Industries BV
  • Kolster Oy Ab
  • Maiwald Patentanwalts GmbH
  • NXP Semiconductors
  • Omya International AG
  • Patentanwälte Pinter & Weiss OG
  • Pfizer Limited
  • Plougmann & Vingtoft
  • Plougmann Vingtoft
  • Protector IP AS
  • Research and Markets
  • ROMINVENT
  • Unilever R&D
  • Valea AB
  • Waldner IP Law Ltd
  • Withers & Rogers LLP
  • Xaar Plc
  • 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

Great

Miruna Enescu, Patent Attorney, ROMINVENT

Very good

Tajeshwar Singh, Patent Attorney, Protector IP AS

Entertaining and inspiring

Henrik Mathiassen, Director of IP, Zealand Pharma

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

Katrin Lindberg, European Patent Attorney, Valea AB

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

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