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).

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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.

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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

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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

1 day live online training
Browser-based, no download usually required
See presenters and interact with fellow attendees
Download documentation and certification of completion
Fair transfer and cancellation policy

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

1 day live online training
Browser-based, no download usually required
See presenters and interact with fellow attendees
Download documentation and certification of completion
Fair transfer and cancellation policy

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 Sweden
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 Italy
Italian Patent Attorney, Eni S.p.A.