How to Avoid Common Pitfalls in Combined EU/US Patent Applications (London, United Kingdom - May 16-17, 2018)

  • ID: 4435953
  • Conference
  • Location: London, United Kingdom
  • 2 Days
  • Management Forum
  • Conference Dates: May 16-17, 2018
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How to Avoid Common Pitfalls in Combined EU/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.

Course Overview

THIS SEMINAR WILL 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

Worked exmamples

Why you should attend

This seminar addressed the parallel, but substantially different, rules for drafting and prosecuting patents required by the Examiners and Appeal Board of the EPO and USPTO. You will study the contrasting approaches of the EPO and USPTO and learn the experts’ techniques for drafting an applications for, and responding to, rejections issued by the two offices.

PRACTICAL APPLICATIONS

  • You and the other delegates will be invited to correct and modify a sample application to be field with both the EPO and the USPTO.
  • You will be asked to develop effective arguments, for the EPO and USPTO, with respect to hypothetical patent office rejections
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Programme Day One

Review of the similarities and differences in the statutory systems of the EPO and USPTO

  • Legal aspects
  • Procedural aspects
  • Substantive aspects
  • Formal aspects

‘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/nonobviousness
  • 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
Ramifications of the America Invents Act

Programme Day Two

  • 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 Mr David Meldrum,
    Patent Attorney ,
    D Young & Co


    David 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 Mr Bradley Hulbert,
    Founding Partner,McDonnell Boehnen Hulbert & Berghoff LLP ,
    Management Forum


    Bradley J. Hulbert is a founding partner in McDonnell Boehnen Hulbert & Berghoff LLP, an 80-lawyer patent firm in Chicago. Mr. Hulbert has overseen the development of a diverse range of extensive, international patent portfolios and has worked as an adjunct professor of law at the Chicago-Kent Law School for more than 20 years.

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  • Patent professionals and other executiveds who are responsible for patent applications that are filed in, and prosecuted before, both the European and US Patent Offices
  • Managers overseeing and evaluating the multinational patent prosecution
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ADDRESS

De Vere Holborn Bars
138 - 142 Holborn
London, EC1N 2NQ
London
EC1N 2NQ
United Kingdom


DIRECTIONS

Rail
The nearest tube is Chancery Lane on the Central Line.
When leaving the station take exit 2 and the entrance to Holborn Bars is locaed approximately 50 metre ahead in the large red brick building.

Road
From London Waterloo there are two bus services available, Bus 341 and Bus 521 (only Mon-Fri)
Alighting at Holborn Circus bus stop will ensure you are opposite the entrance to Holborn Bars

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