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Management Forum

How to Avoid Common Pitfalls in Combined EU (European Union)/US Patent Applications Training Course

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.

★★★★★ "Very relevant to point out the differences in the US audience (examiners, judges, jury) and the diff... more (7)"

6-7 November 2024 »
from £1199

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Format: Classroom
CPD: 12 hours for your records
Certificate of completion

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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 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
Practical session using worked examples to help embed the learning

This course is part of our collection of IP & Patents Training Courses.

Benefits of attending

By attending this course you will:

Consider the similarities and differences between the EPO and USPTO
Learn about the best practices for preparing to comply with European and US requirements
Expand your knowledge on prosecution and appeal procedures
Get to grips with EPO and US definitions of prior art and priority
Understand inventive step (EPO) vs obviousness (US)
Explore the arguments on non-technical (EPO) and subject matter (US)

Who should attend?

This course has been specially designed for:

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

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This course will cover:

Day 1
Day 2

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

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

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David Meldrum
D Young & Co

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.

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Bradley Hulbert
McDonnell Boehnen Hulbert & Berghoff LLP

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.

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NEW higher discounts for multiple bookings - bring your colleagues to make your training budget go further:

30% off the 2nd delegate*
40% off the 3rd delegate*
50% off the 4th delegate*

Please contact us for pricing if you are interested in booking 5 or more delegates

6-7 November 2024

Classroom
Rembrandt Hotel
London

09:00-17:00 UK (London)
Course code 14014
Optional £240/€312/$360 per night

GBP 1,199 1,399
EUR 1,729 2,009
USD 1,977 2,289

Until 02 Oct

2 days classroom-based training
Optional accommodation - 2 nights including breakfast, checking in the day before the course
Meet presenters and fellow attendees in person
Lunch and refreshments provided
Download documentation and certification of completion
Fair transfer and cancellation policy

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* Early booking discounts may not be combined with other discounts or offers. As such, the discounts for 2nd/3rd/4th delegates are based on the full price; and apply only when booking multiple delegates on the same date.

Reviews of IPI's How to Avoid Common Pitfalls in Combined EU/US Patent Applications training course

Very relevant to point out the differences in the US audience (examiners, judges, jury) and the differences to European examiners. A lot of examples from court cases etc. Good, practical tips on how to find the golden mean when preparing a patent application that can work both in EP and in the US. Course content, presentation and speakers all amazing. An eye opener for anyone familiar with EP practice, but not so much with US practice (or vice versa) - avoiding ethnocentrism. Expert level course (ideal for me with 20 years EP experience). Very knowledgeable and experienced speakers who could pinpoint the trouble points for EP practitioners.

Nov 8 2023

Lars Hald Denmark
Senior Patent Manager, Ambu A/S

May 15 2019

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 France
Patent attorney, GERMAIN MAUREAU