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Management Forum

Litigation-Proofing and Proving your Patent Claims

This seminar provides a comprehensive overview of the principles of patent claim interpretation in the USA, UK and Germany.

1 Feb 2022 + 2 more dates

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  • Format: Classroom, Live online
  • CPD: 6 hours for your records
  • Certificate of completion

Course Overview

The law and interpretation of patent claims varies widely in different jurisdictions. Therefore, understanding how patent
claims are interpreted in different regions is essential when trying to prove patent infringement and validity in order to protect an organisation’s primary assets. This course has been specifically designed for all patent professionals doing business in a complex multi-jurisdictional environment.

The programme, presented by our expert speaker faculty, will include fact-based scenarios and case examples, with comparisons of the USA, UK and German approaches to claim construction and validity determination. The speakers will provide recommendations for both litigating patents and preparing patent applications to the best advantage.

Attending this course will provide the perfect opportunity for interaction with experts, as well as other like-minded participants. It will also provide the perfect forum for discussing any issues of particular concern in relation to patent construction.

  • Explain how your patent claims will be construed in Germany, UK and USA
  • Highlight the divergent methods employed in the three jurisdictions to interpret similar claim language
  • Rationalise the disparate effect of the doctrines of equivalents in the three jurisdictions
  • Compare the distinct litigation arguments and strategies that would be used in each of the three jurisdictions to construe similar claims
  • Illustrate the major claim interpretation approaches with interactive panel discussions of real-life cases

Who should attend

  • Patent professionals in private practice, including patent attorneys and lawyers
  • Heads of IP, heads of patents and in-house patent counsel at every level
  • Patent engineers and inventors
  • All whose responsibilities include the need to understand the scope of patent coverage in USA, UK and Germany

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The Litigation-Proofing and Proving your Patent Claims course will cover:

Patent claim construction generally

  • In the USA
    • Inherent ambiguities of the all-elements rule
    • Use of intrinsic and extrinsic evidence
    • Counterintuitive interpretation of functional claims
    • USPTO proceedings vs infringement litigation
  • In the UK
    • Court’s approach to the ‘normal’ interpretation of the claims …
    • … and the (wider) scope of protection under the UK doctrine of equivalents
    • Accepted principles of claim construction (Virgin Atlantic)
    • The approach taken to parameters, numerals and specific claim form
  • In Germany
    • Literal infringement and ‘functional’ interpretation
    • Can ‘functional’ interpretation result in construction ‘below’ the wording?
    • Numerals and literal infringement

Doctrines of equivalents and purposive construction

  • In the USA
    • Sub-tests for determining equivalents
    • Counterweights to ‘equivalence’
    • Vitiation
    • Unintended disavowal
    • Prosecution history estoppel and its variants
  • In the UK
    • The groundbreaking judgement in Actavis vs Lilly
    • Does a ‘variant’ vary from the invention in an immaterial way? Or achieve substantially the same result in the same way?
    • Compliance with EPC Article 69 and Protocol
    • UK court’s willingness to refer to EPO prosecution history
  • In Germany
    • The Schneidmesser questions
    • Relevance of Pemetrexed
    • Has the scope of protection become broader again?
    • Relevance of prosecution history

Arguments and strategy: how to maximise the likelihood of a finding of infringement at each phase of a patent litigations

  • Pleadings (Germany, UK, USA)
  • Disclosure (UK, USA)
  • Expert evidence (UK, USA)
  • Trial (Germany, UK, USA)

Comparative case studies

  • Presentations of real-life case studies with interactive panel discussions explaining the often dissimilar approaches that were or would be taken in the three jurisdictions for interpreting specific claims

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Bradley Hulbert

Bradley Hulbert is a founding partner in McDonnell Boehnen Hulbert & Berghoff LLP, an 80-lawyer patent firm in Chicago. He has been lead counsel in a wide range of successful patent lawsuits and has overseen the development of a diverse range of extensive, international patent portfolios. He is an adjunct professor of law at the Chicago-Kent Law School.

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Ulrich Blumenroeder

Ulrich Blumenröder is a partner at Grünecker PartG mbB, an IP firm in Munich which focuses equally on both IP-litigation and IP-prosecution. Ulrich is active in all fields of intellectual property but specialises primarily in patent litigation.

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Ulrich Blumenroeder

Ulrich Blumenröder is a partner at Grűnecker, Kinkeldey, Stockmair & Schwanhäusser, an IP-firm in Munich, which focuses equally on both IP-litigation and IP-prosecution.
He is active in all fields of intellectual property but primarily specialises in patent litigation. He has litigated for both plaintiffs and defendants in all prominent German courts in normal as well as preliminary injunction proceedings.
He frequently gives lectures on various topics of patent law. He has written articles and is author of ‘German Regulations on Industrial Products’ (1997).

More details

Bradley Hulbert

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.

More details

Book Litigation-Proofing and Proving your Patent Claims Classroom/Live online training

1 Feb 2022

Classroom
London venue TBC

09:00-17:00 UK (London)
Course code 11900

  • GBP 599 699
  • EUR 839 979
  • USD 934 1,090

Until 28 Dec

  • 1 day classroom-based training
  • Meet presenters and fellow attendees in person
  • Lunch and refreshments provided
  • Download documentation and certification of completion
  • Fair transfer and cancellation policy

In your basket 

20 May 2022

Live online

09:00-17:00 UK (London) (UTC+01)
10:00-18:00 Paris (UTC+02)
04:00-12:00 New York (UTC-04)
Course code 11623

  • GBP 499 599
  • EUR 719 859
  • USD 814 970

Until 15 Apr

In your basket 

22 Nov 2022

Live online

09:00-17:00 UK (London) (UTC+00)
10:00-18:00 Paris (UTC+01)
04:00-12:00 New York (UTC-05)
Course code 11901

  • GBP 499 599
  • EUR 719 859
  • USD 814 970

Until 18 Oct

In your basket 

Reviews of IPI's Litigation-Proofing and Proving your Patent Claims training course


Very interesting. The comparisons between the different jurisdictions were very helpful.

May 26 2021

Andreas Leijon
Senior Patent Attorney, Alfa Laval Corporate AB

May 26 2021

All the webinar was very interesting. The webinar was carried out very well. Easy to participate. The speakers very good in maintaining the attention of the participants.

Maria Luisa Marchesi
Italian Patent Attorney, Eni S.p.A.

May 15 2018

Excellent venue/presentation/speakers. Interactive.

Peter Ten Haaft
European and Dutch Patent Attorney, NLO

May 15 2018

Brilliant course and content. Clear and brilliant speakers.

Cristian Benelli
IP Manager, GEA Procomac

May 16 2017

Lovely!

Joe Gaal
Senior Patent Attorney, Syngenta Ltd

UK

  • Abzena plc
  • Addleshaw Goddard LLP
  • Alison Gallafent Limited
  • Appleyard Lees IP LLP
  • Bird & Bird LLP
  • Boult Wade Tennant
  • British Telecommunications plc
  • Canon Europe Ltd
  • Clyde & Co LLP
  • De La Rue Holdings plc
  • GKN Aerospace
  • Infineum UK Ltd
  • Johnson Matthey PLC
  • Loughborough University
  • Marks & Clerk LLP (London)
  • NXP Semiconductors Ltd
  • Pfizer Limited
  • Renishaw plc
  • Rolls-Royce PLC
  • Sony Europe Limited
  • Stratagem IPM Ltd
  • Syngenta Ltd
  • Urquhart-Dykes & Lord LLP
  • Williams Powell
  • Xaar Plc

Denmark

  • Chas Hude A/S
  • Coloplast A/S
  • DuPont Nutrition Biosciences ApS
  • Guardian IP Consulting I/S
  • Novo Nordisk A/S
  • Zacco Denmark
  • Zacco Denmark A/S

Sweden

  • AB Electrolux
  • AB Volvo
  • Alfa Laval Corporate AB
  • AstraZeneca
  • Awapatent AB
  • Ericsson AB
  • SHL Group AB

Germany

  • Epping Hermann Fischer Patentanwalts GmbH
  • Hoffmann Eitle
  • Kao Germany GmbH
  • Maiwald Patentanwalts GmbH
  • Müller Fottner Steinecke Rechtsanwalts- und Patentanwaltspartnerschaft mbB
  • Volkswagen AG

Netherlands

  • DSM IP & Licensing BV
  • DSM IP Assets BV
  • NLO
  • Octrooibureau Van der Lely N.V.
  • Shell International BV
  • SKF BV

Italy

  • Datalogic IP Tech Srl
  • Eni S.p.A.
  • GEA Procomac

Spain

  • Abeinsa Ingenieria Y Construccion Industrial SA
  • Abengoa
  • ZBM Patents S.L.

Switzerland

  • Institut Straumann
  • Omya International AG
  • Swisscom (Switzerland) Ltd.

United States of America

  • Constellation Law Group PLLC
  • Ladas & Parry LLP
  • Ropes & Gray LLP

Austria

  • Patentanwalt Dr Andreas Weiser
  • Patentanwaltskanzlei Matschnig & Forsthuber

Belgium

  • IBA
  • Solvay SA

Finland

  • Kolster Oy Ab
  • Primrose Oy

France

  • Sanofi Pasteur
  • SEB Developpement

Hungary

  • EGIS Pharmaceuticals PLC

India

  • Metayage IP Strategy Consulting LLP

Nigeria

  • J K Gadzama & Partners

Norway

  • JOTUN A/S

Portugal

  • BIAL – Portela & Cª, S.A

Taiwan

  • Scandinavian Health Limited

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Multiple colleagues?
Talk to one of our training experts to discuss how to:

Run this course conveniently and cost-effectively in-house for your staff and colleagues

Aleksandra BEER
Training expert

+44 (0)20 7749 4749

inhouse@ipi.academy