Presented by
Management Forum

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.

3-4 Nov 2021 + 3 more dates

Enrol now

  • Format: Live online, Classroom
  • CPD: 12 hours for your records
  • Certificate of completion

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

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

Enrol now

The How to Avoid Common Pitfalls in Combined EU/US Patent Applications course will cover:

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

  • Legal aspects
  • Procedures
  • Formalities

‘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/non-obviousness
  • 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

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

Enrol now

David Meldrum

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.

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 How to Avoid Common Pitfalls in Combined EU/US Patent Applications Live online/Classroom training

3-4 Nov 2021

Live online

09:30-17:00 UK (London) (UTC+00)
10:30-18:00 Paris (UTC+01)
05:30-13:00 New York (UTC-04)
Course code 11805

  • GBP 1,099
  • EUR 1,579
  • USD 1,786

View basket 

11-12 May 2022

Live online

09:30-17:00 UK (London) (UTC+01)
10:30-18:00 Paris (UTC+02)
04:30-12:00 New York (UTC-04)
Course code 11629

  • GBP 899 1,099
  • EUR 1,299 1,579
  • USD 1,474 1,786

Until 06 Apr

View basket 

15-16 Aug 2022

Classroom
London venue TBC

09:00-17:00 UK (London)
Course code 11892

  • GBP 1,099 1,299
  • EUR 1,539 1,819
  • USD 1,714 2,026

Until 11 Jul

  • 2 days 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

View basket 

2-3 Nov 2022

Live online

09:30-17:00 UK (London) (UTC+00)
10:30-18:00 Paris (UTC+01)
05:30-13:00 New York (UTC-04)
Course code 11893

  • GBP 899 1,099
  • EUR 1,299 1,579
  • USD 1,474 1,786

Until 28 Sep

View basket 

Reviews of IPI's How to Avoid Common Pitfalls in Combined EU/US Patent Applications training course


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.

May 15 2019

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

May 17 2017

Entertaining and inspiring

Henrik Mathiassen
Director of IP, Zealand Pharma

UK

  • D Young & Co LLP
  • HTC Europe Co. Ltd
  • Nexeon Ltd
  • NXP Semiconductors
  • NXP Semiconductors Ltd
  • Pfizer Limited
  • Procter & Gamble Technical Centres Ltd
  • Unilever
  • Waldner IP Law Ltd
  • Withers & Rogers LLP
  • Xaar Plc
  • Zealand Pharma

Netherlands

  • AOMB IP Consultants
  • AOMB IP consulting
  • DeltaPatents B.V.
  • DSM
  • European Patent Office
  • Hunter Douglas Industries BV
  • NLO
  • Unilever

Denmark

  • Chas Hude A/S
  • DuPont Nutrition Biosciences ApS
  • Novozymes A/S
  • Plougmann & Vingtoft
  • Zacco Denmark
  • Zacco Denmark A/S

Germany

  • Dreiss Patentanwalte
  • Henkel KGaA
  • Hoffmann Eitle
  • Liedtke & Partner
  • Maiwald Patentanwalts GmbH

Belgium

  • Bayer CropScience N.V.
  • BIIP cvba
  • IBA
  • Yara SA/NV

Austria

  • Patentanwalt Dr Andreas Weiser
  • Patentanwälte Pinter & Weiss OG
  • Patentanwaltskanzlei Matschnig & Forsthuber

Switzerland

  • AC Immune SA
  • Omya International AG
  • Société des Produits Nestlé S.A.

Sweden

  • Essity Hygiene and Health AB
  • Valea AB

Canada

  • BCF

France

  • GERMAIN MAUREAU

Ireland

  • James Hardie Technology Limited

Luxembourg

  • Corax IP

Norway

  • Protector IP AS

Romania

  • ROMINVENT

Russia

  • LLC BIOCAD SK

Enrol now

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