How to Avoid Common Pitfalls in Combined EU (European Union)/US Patent Applications Training Course
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.
★★★★★"Very relevant to point out the differences in the US audience (examiners, judges, jury) and the diff... more (7)"
This practical and interactive course will demystify the complex area of combined EU/US patent applications. The expert trainers will address the parallel – but substantially different – rules for drafting and prosecuting patents required by the Examiners and Boards of Appeal of the EPO and USPTO. They will highlight the risks and pitfalls to be aware of and explain how to avoid them or deal with them if challenged by the patent offices.
The comprehensive programme will ensure that you get to grips with the contrasting approaches of the EPO and USPTO and understand the experts’ techniques for drafting an application for, and responding to, rejections issued by the two offices.
During the practical exercises you will learn how to correct and modify a sample application to be filed with both the EPO and USPTO and practise developing effective arguments for the EPO and USPTO, taking into account hypothetical patent office rejections.
You will also have the opportunity to discuss your particular questions and concerns with the expert trainers, as well as share experiences with like-minded professionals.
Key topics to be covered 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
Practical session using worked examples to help embed the learning
Consider the similarities and differences between the EPO and USPTO
Learn about the best practices for preparing to comply with European and US requirements
Expand your knowledge on prosecution and appeal procedures
Get to grips with EPO and US definitions of prior art and priority
Understand inventive step (EPO) vs obviousness (US)
Explore the arguments on non-technical (EPO) and subject matter (US)
Who should attend?
This course has been specially designed for:
Patent professionals and other executives who are responsible for patent applications that are filed in and prosecuted before both the European and US Patent Offices
Managers overseeing and evaluating multinational patent prosecution
David Meldrum 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 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.
* Early booking discounts may not be combined with other discounts or offers. As such, the discounts for 2nd/3rd/4th delegates are based on the full price; and apply only when booking multiple delegates on the same date.
Reviews of IPI's How to Avoid Common Pitfalls in Combined EU/US Patent Applications training course
Very relevant to point out the differences in the US audience (examiners, judges, jury) and the differences to European examiners. A lot of examples from court cases etc. Good, practical tips on how to find the golden mean when preparing a patent application that can work both in EP and in the US. Course content, presentation and speakers all amazing. An eye opener for anyone familiar with EP practice, but not so much with US practice (or vice versa) - avoiding ethnocentrism. Expert level course (ideal for me with 20 years EP experience). Very knowledgeable and experienced speakers who could pinpoint the trouble points for EP practitioners.
Nov 8 2023
Lars Hald Senior Patent Manager, Ambu A/S
May 15 2019
I felt very important to remind that none of the system is better, the systems are different. The course was very interesting and gave some useful practical information for improving our work as patent attorneys.
Alexandra GOREAUD Patent attorney, GERMAIN MAUREAU
May 16 2018
Great
Miruna Enescu Patent Attorney, ROMINVENT
May 17 2017
Very good
Tajeshwar Singh Patent Attorney, Protector IP AS
May 17 2017
I think the content was extremely good and will be helpful going forward.
Triona Walshe Senior Intellectual Property Attorney, James Hardie Technology Limited
May 17 2017
Very helpful. Not too much new information but confirms my thoughts on how to draft applications.
Katrin Lindberg European Patent Attorney, Valea AB
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