US Patent Practice

US Patent Practice, What European patent attorneys need to know. A 2-day highly interactive seminar

13-14 Jun 2019

& 5-6 Dec 2019

GBP 1,299
EUR 1,819
USD 2,026

Book now

Course Overview


  • Legal framework
  • AIA overview
  • US patent prosecution
  • Enablement
  • Definiteness
  • Novelty and prior art
  • Obviousness
  • Provisional and continuing applications n USPTO programs
  • Duty of candor
  • Infringement
  • Patent litigation and damages

Why you should attend

  • The differences between US and European practice will be highlighted, providing a better understanding of the US system, and enabling you to work more effectively with your US counterparts
  • Gain an update on the latest state of US Patent Law, including the latest legislative changes under the America Invents Act, recent and pending US Supreme and other Court decisions of importance, and current happenings in the USPTO
  • Take away specification and claim drafting tips to give your application a solid footing for US prosecution and enforcement
  • Take advantage of the open seminar environment that results in a high degree of interaction with the seminar leaders and among the participants; bring your particular questions and concerns for discussion

Who should attend

  • Corporate Patent Counsel
  • Patent Attorneys from corporate and private practice
  • Intellectual Property Consultants
  • Patent Managers and Engineers
  • Company Legal Advisers
  • All those involved with patent protection in the United States

Programme Day One

Registration and refreshments

Introduction to the seminar

Legal framework

  • Statutes and rules
  • Courts and agencies

AIA overview / claim construction

  • Phillips – broad multifaceted inquiry
  • Claim constructions rules and guidelines
  • Claim construction in the USPTO


US patent prosecution – general flow

Written description

  • ‘Possession’ of claimed invention
  • Ariad – increased focus on what inventors actually did


  • Wands factors – to show whether amount of experimentation necessary would be ‘undue’
  • Interplay with written description requirement

Best mode

  • Effect of the AIA



  • Nautilus – the ‘reasonable certainty’ standard
  • USPTO practice

Means-plus-function claiming

Statutory subject matter

  • Supreme Court jurisprudence
  • USPTO guidance



Patent Law Treaty implementation

Novelty and prior art

  • Pre-AIA – ‘first to invent’
  • Post-AIA – ‘first to file’

Close of day one

Programme Day Two


Novelty/prior art (if necessary)

Graham and KSR
USPTO practice – prima facie obviousness

Obviousness (continued)

Provisional applications

  • Pre-AIA vs. Post AIA

Continuing applications

  • Continuations, divisionals, continuations-in-part


Restriction practice

  • Restriction vs. Election of Species
  • Rejoinder

Patent term and PTA

Obviousness – type double patenting

  • Gilead cases
  • Terminal disclaimers

USPTO programs

  • Terminal disclaimers

Patent Law Treaty Implementation

Obviousness – type double patenting

  • Accelerated examination, track one, patent prosecution highway
  • First action interview, after-final consideration, pre-appeal brief request for review pilot programs

Duty of candor

  • Citation of references
  • Inequitable conduct



Post-issuance practice

  • Re-examination and re-issue
  • Inter partes review, post-grant review, covered business method review


  • Direct infringement
  • Contributory infringement and inducement
  • Extraterritorial infringement

Doctrine of equivalents

  • Function/way/result test
  • Festo – prosecution history estoppel


  • Opinions

Declaratory judgment

Patent litigation and damages

Close of Course


This seminar merits 12.5 hours under the UK Solicitors Regulatory Authority self accreditation scheme (refg. CJA/MAFO) and may also be relevant training under the IPREG CPD self accreditation scheme.


James Suggs

James Suggs is a partner in the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff LLP, located in Chicago, where he practices patent law. He prepares and prosecutes patent applications, prepares opinions of counsel, performs patent due diligence studies and provides patent counselling and portfolio management services in a wide variety of technologies, including chemical, pharmaceutical, materials science, semiconductor, integrated optics, optical fiber, and related technologies. His litigation experience includes federal district court and appellate practice as well as advocacy in forums such as the International Trade Commission, and spans a diverse range of technologies.

Nicole Reifman

Nicole Reifman is a partner with McDonnell Boehnen Hulbert & Berghoff LLP, Chicago where she has gained diverse experience in obtaining, evaluating and enforcing intellectual property. She has experience in all phases of patent preparation and prosecution, and concentrates in representing clients in the mechanical and electrical arts, including drive train systems, medical devices, electromechanical, telecommunications and material sciences matters. She also has experience in all phases of patent litigation. She provides counselling regarding the procurement, enforcement, and licensing of intellectual property rights, including trademark, trade secret and copyright issues. She actively manages trademark portfolios and develops brand building and protection strategies for her clients. She is also the Recent Developments Editor of the University of Illinois Journal of Law, Technology, and Policy.

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

13-14 Jun 2019
13-14 Jun 2019 Rembrandt Hotel, London GBP 1,299.00
EUR 1,819.00
USD 2,026.00
+ VAT @ 20.00%
Enrol now
5-6 Dec 2019
5-6 Dec 2019 Rembrandt Hotel, London GBP 1,299.00
EUR 1,819.00
USD 2,026.00
+ VAT @ 20.00%
Enrol now

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  • AstraZeneca R&D Charnwood
  • Awapatent A/S
  • Dako Denmark A/S
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  • EGIS Pharmaceuticals PLC
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  • Ericsson AB (EAB)
  • F. Hoffmann-La Roche AG
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  • Helze BV
  • Industrial Property Portuguese Office
  • J E Dias Costa, Lda
  • Lifescan Scotland Ltd
  • Mewburn Ellis LLP
  • ORANGE Ltd
  • Pfizer Limited
  • R G C Jenkins & Co
  • Saudi Aramco
  • Sofics BVBA
  • Sonn & Partner
  • Sony Mobile Communications AB
  • Studio Bonini Srl
  • Valneva Austria GmbH
  • ZBM Patents S.L.

Comprehensive, knowledgable. Good voices. Great overview, excellent speakers...

Peter Atzmüller, Key Patent Information Professional, voestalpine Stahl GmbH

Both entertaining and educative

Lorenz Kallenbach, Corporate Patent Counsel, Merck

The dual presentation works well. Interaction with audience very positive. Comprehensive update on US patent practice by knowledgeable speakers in interactive atmosphere.

Marijke Hogenbirk, Senior Patent Attorney , Shell International B.V.

The pace was good. Both the speakers' pace, and the coffee and lunch breaks. There were so many questions from the audience, which slowered the pace a little, but this was OK. Wish we had an extra day to cover all the topics in a little more detail.

Asteria Zitrou, Intellectual Property Supervisor, Pharmathen

Exactly what I expected. Quality of written documentation. Good highlighting of specific on-going topics by speakers.

Andreas Bazzon, Patent Attorney Candidate, Kaminski Harmann Patentanwälte AG

The course gave a very good general picture of US patent practice

Leena Marquis, , Seppo Laine Oy

Presenter was engaging, open to questions

Claire Goodier, Director of Intellectual Property, International, The Boots Company plc

Entertaining and interesting programme

Patrick John Couzens, Patent Attorney, Nestle Research Centre

Speakers are excellent

Paul Van Helvert, Manager Intellectual Property, Wageningen UR