Our latest COVID-19 information - full Autumn programme of webinars now in place

US Patent Practice Training Course

*What all European patent attorneys need to know*

An intensive and highly interactive two-day seminar including discussions on US patent law and strategies and tactics for patent prosecution at the US Patent Office

Customised in-house training course

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

Contact us

Details

Course overview

Key topics covered:

  • Legal framework
  • Claim construction
  • US patent prosecution practice and procedure
  • The written description, enablement and best mode requirements
  • 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
  • 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 will highlight the important differences between US and European patent practice and provide you with the opportunity for in-depth discussions about prosecution practice and procedure throughout the two days. The programme will cover important tactics to get the most out of your prosecution dollar, and provide lots of claim drafting tips to give your application a solid footing for US prosecution and enforcement.

This event 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. You will also get to grips with 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

Accreditation

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.

Programme

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

Enablement

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

Best mode

  • Effect of the AIA

Definiteness

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

Means-plus-function claiming

Statutory subject matter

  • Supreme Court jurisprudence
  • USPTO guidance
  • Court of Appeal

Utility

  • Impossibility
  • Judicial interpretation

Patent Law Treaty implementation

Novelty and prior art

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

Obviousness

  • 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

Inventorship

  • 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

Infringement

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

Doctrine of equivalents

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

Willfulness

  • Opinions

Declaratory judgment

  • Burdens of proof

Patent litigation and damages

  • Remedies
  • Entire market value
  • Injunctive relief

Presenters

James Suggs (More...)

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 (More...)

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.

Customise

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:

Please complete all fields marked as required.

By submitting your enquiry, you explicitly consent to us us processing the personal data you have included in this form in accordance with our privacy policy.

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:

  • 3-4 Dec 2020
  • 10-11 Jun 2021
  • 17-18 Jun 2021
  • 29-30 Nov 2021
  • 1-2 Dec 2021

Book now

You may also be interested in

Previous customers include...

  • AA Thornton & Co
  • Albany International Ltd
  • Alk Abello
  • Alstom Technology Ltd
  • Ambu A/S
  • ASTEC CUSTOM POWER (HK) LTD
  • AstraZeneca PLC
  • Awapatent A/S
  • Bardehle Pagenberg Partnerschaft mbB
  • D Young & Co LLP
  • Draka Comteq Fibre BV
  • GE India Technology Centre Pvt Ltd
  • Janssen Pharmaceutica NV
  • Kaminski Harmann Patentanwalte
  • KAO Corporation S.A.
  • Kennedys Patent
  • Leo Pharma A/S
  • Nissan Technical Centre Europe
  • Olswang LLP
  • Oxford Gene Technology IP Ltd
  • Pharmathen S.A.
  • Procter & Gamble
  • Shell International BV
  • Sony Europe Limited
  • Stratagem IPM Limited
  • Syngenta Limited
  • Technology Company Schlumberger
  • Unilever PLC
  • Widex A/S
  • Wolfson Microelectronics PLC

Very thorough and well presented.

Elisabetta Mauri, Director of Intellectual Property, Dompé Farmaceutici SPA, Dec 19

The course gives European practitioners a good overview of the peculiarities of US patent law and the ways in which US practice sometimes differs from our own. The presentation was lively and the speakers provided plenty of background from their own experience.

Erik Bartelds, patent attorney, Arnold + Siedsma, Dec 19

Excellent! Very good and helpful overview of US patent law with a focus on the differences to European law. I particularly liked the very interactive discussions.

Hendrik Freudenberger, IP Legal Advisor, Sasol Chemie GmbH & Co. KG, Dec 19

Excellent speakers.

Omar Jabarti, Engineer, Saudi Aramco, Dec 18

The speakers were very direct and the course was interactive – I never for a minute lost interest.

Asteria Zitrou, Intellectual Property Supervisor, Pharmathen, Jun 18

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

Marijke Hogenbirk, Senior Patent Attorney , Shell International B.V., Jun 18

Both entertaining and educative.

Lorenz Kallenbach, Corporate Patent Counsel, Merck, Jun 18

The course was exactly what I expected with a good quality of written documentation and highlighting of specific ongoing topics by the speakers.

Andreas Bazzon, Patent Attorney Candidate, Kaminski Harmann Patentanwälte AG, Jun 18

A great overview, excellent speakers with comprehensive knowledge.

Peter Atzmüller, Key Patent Information Professional, voestalpine Stahl GmbH, Jun 18

The course gave a very good general picture of US patent practice and I really liked all the real-life examples.

Leena Marquis, Patent Engineer, Seppo Laine Oy, Jun 17

Tphe resenter was engaging and open to questions.

Claire Goodier, Director of Intellectual Property, International, The Boots Company plc, Jun 17

Entertaining and interesting programme.

Patrick John Couzens, Patent Attorney, Société des Produits Nestlé S.A., Dec 16

The speakers are excellent.

Paul Van Helvert, Manager Intellectual Property, Wageningen UR, Dec 16