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)"

15-16 May 2024
+ 6-7 November 2024 »
from £1199

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Format: Classroom
CPD: 12 hours for your records
Certificate of completion

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Course overview

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:

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

This course is part of our collection of IP & Patents Training Courses.

Who should attend?

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

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David Meldrum
D Young & Co

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.

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Bradley Hulbert
McDonnell Boehnen Hulbert & Berghoff LLP

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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NEW higher discounts for multiple bookings - bring your colleagues to make your training budget go further:

30% off the 2nd delegate*
40% off the 3rd delegate*
50% off the 4th delegate*

Please contact us for pricing if you are interested in booking 5 or more delegates

15-16 May 2024

Classroom
Rembrandt Hotel
London

09:00-17:00 UK (London)
Course code 13674
Optional £265/€380/$435 per night

GBP 1,199 1,399
EUR 1,729 2,009
USD 1,977 2,289

Until 10 Apr

2 days classroom-based training
Optional accommodation - 2 nights including breakfast, checking in the day before the course
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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Not ready to book yet?

for 7 days, no obligation

6-7 November 2024

Classroom
Rembrandt Hotel
London

09:00-17:00 UK (London)
Course code 14014
Optional £235/€335/$385 per night

GBP 1,199 1,399
EUR 1,729 2,009
USD 1,977 2,289

Until 02 Oct

2 days classroom-based training
Optional accommodation - 2 nights including breakfast, checking in the day before the course
Meet presenters and fellow attendees in person
Lunch and refreshments provided
Download documentation and certification of completion
Fair transfer and cancellation policy

View basket

Not ready to book yet?

for 7 days, no obligation

* 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.

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 Denmark
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 France
Patent attorney, GERMAIN MAUREAU