US Patent Practice

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

5-6 Dec 2019

& 11-12 Jun 2020 , 3-4 Dec 2020

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

Book now

Course overview


  • Legal framework
  • Claim construction
  • US patent prosecution practice and procedure
  • The written description, enablement and best mode requirements n Definiteness
  • Statutory subject matter
  • Novelty and prior art
  • Obviousness
  • Provisional and continuing applications
  • Restriction practice and obviousness – type double patenting
  • USPTO programs
  • Patent Law Treaty implementation n Duty of candor
  • Infringement
  • Patent litigation and damages

Why you should attend

The area of US patent practice can be complex and confusing. Are you up to date with the latest court decisions and best practice?

This highly interactive seminar will give you a comprehensive understanding of the US patent system and enable you to work more effectively with your US counterparts. It highlights the important differences between US and European patent practice and gives you the opportunity for in-depth discussions about prosecution practice and procedure throughout the two days. This programme will cover important tactics to get the most out of your prosecution dollar, and provides lots of claim drafting tips to give your application a solid footing for US prosecution and enforcement.

This seminar will bring you right up to date on the latest legislative changes under the America Invents Act (AIA), as well as all the recent and pending US Supreme and other court decisions of importance. Plus, get to grips with the current happenings in the USPTO that could impact on your role.

This is a fantastic opportunity to take full advantage of the open seminar environment that this event offers. With a high degree of interaction with the expert trainers as well as other participants, this is a great forum for discussing your particular questions and concerns. Offering a wide-ranging and detailed understanding, this seminar covers what every European patent practitioner should know about US patent practice.

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

Legal framework

  • Statutes and rules
  • Courts and agencies
  • Requirements for patentability

Claim construction

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

US patent prosecution – general flow of events

Written description

  • ‘Possession’ of claimed invention
  • Ariad – increased focus on what inventors actually did
  • Written description guidelines
  • Negative limitations


  • Wands factors – to show whether the 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
  • Court of Appeal


  • Impossibility
  • Judicial interpretation

Patent Law Treaty implementation

Novelty and prior art

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

Programme day two

Novelty/prior art (if necessary)


  • Graham and KSR
  • USPTO practice – prima facie obviousness
  • USPTO KSR guidelines
  • Method claims

Provisional applications

  • Pre-AIA vs post-AIA

Continuing applications

  • Continuations, divisionals, continuations-in-part

Restriction practice

  • Restriction requirement
  • 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 (continued)

  • 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


  • Conception
  • Joint inventorship
  • Interference practice
  • Derivation actions

Post-issuance practice

  • Re-examination and re-issue
  • Inter partes review
  • Post-grant review
  • Covered business method review
  • Supplemental examination
  • Certificates of correction


  • Direct infringement
  • Contributory infringement and inducement
  • Extraterritorial infringement
  • Exhaustion

Doctrine of equivalents

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


  • Opinions

Declaratory judgment

  • Burdens of proof

Patent litigation and damages

  • Remedies
  • Entire market value
  • Injunctive relief


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 V. Suggs is a partner in the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff LLP, located in Chicago, where he practices patent law and serves as Chair of the firm’s Chemical Practice Group. He applies his broad technical experience in a wide variety of chemical, polymer, materials science, pharmaceutical, optical, photonic, semiconductor and related technologies. He handles all facets of patent law, with an especial focus in patent procurement, strategic counseling, freedom-to-operate and due diligence opinions. He also has an active inter partes review practice. 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. He has experience with all kinds of clients, from large multinational corporations, to science-based startups, to academic research institutions, and works with law firms in Europe and worldwide to successfully prosecute their applications at the USPTO.

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

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
Limited places
11-12 Jun 2020
11-12 Jun 2020 Rembrandt Hotel, London GBP 1,299.00
EUR 1,819.00
USD 2,026.00
+ VAT @ 20.00%
Enrol now
3-4 Dec 2020
3-4 Dec 2020 Rembrandt Hotel, London GBP 1,299.00
EUR 1,819.00
USD 2,026.00
+ VAT @ 20.00%
Enrol now

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Previous customers include...

  • AiCuris Anti-infective Cures GmbH
  • Alfa Wassermann S.p.A.
  • Berggren Oy Ab
  • British Telecommunications Plc
  • Chanel PB
  • Chinoin Zrt - member of sanofi-aventis Group
  • Dupont Teijin Films UK Ltd
  • EDP Patent Attorneys B.V.
  • EP&C
  • ExxonMobil Chemical Europe Inc
  • Fujirebio-Europe NV
  • Hansson Thyresson Patentbyra AB
  • Hoiberg A/S
  • Kaminski Harmann Patentanwälte AG
  • Lifescan Scotland Ltd
  • Nutricia Research BV
  • P&G
  • Philips International B.V. - IP&S
  • Pirelli & C SPA
  • Primrose Oy
  • Procter & Gamble
  • Provvisionato & Co S.r.l.
  • QinetiQ Limited
  • Roche Diagnostics Ltd
  • Technology Company Schlumberger
  • Unilever Patent Group
  • Warwick Partnership Ltd
  • ZBM Patents S.L.

Everything was great except the course was for two days which is very short and intensive.

Omar Jabarti, Engineer, Saudi Aramco

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

Peter Atzmüller, Key Patent Information Professional, voestalpine Stahl GmbH

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.

Both entertaining and educative

Lorenz Kallenbach, Corporate Patent Counsel, Merck

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 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

Presenter was engaging, open to questions

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

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

Leena Marquis, Patent Engineer, Seppo Laine Oy

Speakers are excellent

Paul Van Helvert, Manager Intellectual Property, Wageningen UR

Entertaining and interesting programme

Patrick John Couzens, Patent Attorney, Nestle Research Centre