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How to Avoid Common Pitfalls in Combined EU (European Union)/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.

Customised in-house training course

The content, presenters and format of this course are customised to your requirements.

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Details

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

Presenters

David Meldrum (More...)

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.

Bradley Hulbert (More...)

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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Customise & book

This course can be customised to meet your requirements, and delivered to your colleagues at your location or online. For more information, call us on +44 (0)20 7749 4730, email us at inhouse@management-forum.co.uk or contact us below:

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Continuing professional development

This course qualifies for 12 hours for your CPD records.
More about CPD

Training options

Public course dates

We can deliver and customise this course for any number of attendees, at your location or online. But if you have fewer colleagues, this course is running publically on:

  • 9-10 Nov 2022

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Previous customers include...

  • AC Immune SA
  • AOMB Intellectual Property Consultants
  • Bayer Cropscience NV
  • Budde Schou
  • Chas Hude A/S
  • Corax IP
  • D Young & Co LLP
  • DSM Intellectual Property
  • DuPont Nutrition Biosciences ApS
  • European Patent Office
  • GERMAIN MAUREAU
  • HTC Europe Co. Ltd
  • Hunter Douglas Industries BV
  • Kolster Oy Ab
  • LLC BIOCAD SK
  • Maiwald Patentanwalts GmbH
  • Nexeon Ltd
  • NLO
  • NXP Semiconductors
  • Omya International AG
  • Patentanwalt Dr Andreas Weiser
  • Patentanwälte Pinter & Weiss OG
  • Pfizer Limited
  • Plougmann Vingtoft
  • Research and Markets
  • Unilever R&D
  • Valea AB
  • Withers & Rogers LLP
  • Yara SA/NV
  • 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, Patent attorney, GERMAIN MAUREAU, May 19

Great

Miruna Enescu, Patent Attorney, ROMINVENT , May 18

Entertaining and inspiring

Henrik Mathiassen, Director of IP, Zealand Pharma, 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

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