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Mastering US Patent Practice: Prosecution, Strategy and Recent Developments Training Course

What all European patent attorneys need to know - an intensive and highly interactive training course that includes discussions on US patent law and strategies and tactics for patent prosecution at the US Patent Office

★★★★★ "Great course materials with plenty of detail which I can use in the future."

3-6 November 2026 »
from £1199

Need help? Enrol/reserve

Course overview

The United States remains one of the world's most important and commercially significant patent jurisdictions. However, US patent law continues to evolve rapidly, creating challenges for patent attorneys, in-house counsel and IP professionals responsible for protecting innovation globally.

This comprehensive and highly practical training course provides a detailed understanding of modern US patent practice, prosecution strategy and enforcement. Delegates will gain valuable insight into the latest developments at the USPTO, key Federal Circuit and Supreme Court decisions, and emerging trends affecting patentability, claim drafting, prosecution and post-grant proceedings.

The course will explain the critical differences between US and European patent practice and provide practical guidance on drafting and prosecuting stronger US patent applications. Particular attention will be given to subject matter eligibility, enablement, written description requirements, restriction practice, continuation practice, PTAB proceedings and recent developments impacting software, AI and technology-based inventions.

Attendees will learn how to navigate the US patent system more effectively, maximise patent value, reduce prosecution risk and work more efficiently with US counsel and inventors.

Key topics covered:

Legal framework
Claim construction and drafting
US patent prosecution practice and procedure
Written description and enablement
Alice and its continuing impact on subject matter eligibility
Software
AI-assisted inventions
Novelty and prior art
Obviousness
Functional claiming
Method claims
Provisional and continuing applications
Restriction practice
Current PTAB trends
Inventorship and ownership
Direct and indirect infringement
Licensing considerations
Emerging USPTO initiatives
International developments impacting US practice

Through practical examples, case studies and interactive discussions, delegates will gain the knowledge and confidence needed to develop effective US patent strategies in an increasingly complex legal environment.

This training course will also give you the opportunity to ask questions and discuss your real-life challenges with the expert trainer.

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

Benefits of attending

This is a fantastic opportunity to take full advantage of the open training course environment that this programme offers. With a high degree of interaction with the expert trainer, as well as other participants, this is a great forum for discussing your particular questions and challenges.

Offering a wide-ranging and detailed understanding, this training course covers what every European patent practitioner should know about US patent practice.

By attending this training course you will:

Gain a practical understanding of modern US patent prosecution practice
Understand the key differences between US and European patent systems
Learn how recent USPTO guidance and court decisions affect patentability
Explore current approaches to software, AI and computer-implemented inventions
Improve patent drafting strategies for US prosecution and enforcement
Build knowledge on continuation, divisional and provisional application strategies
Develop practical approaches to overcoming novelty and obviousness objections
Identify how PTAB proceedings can impact patent portfolios
Evaluate recent developments in patent term adjustment and terminal disclaimers
Explore infringement, enforcement and litigation considerations
Stay up to date with current USPTO initiatives and examination trends
Gain practical insight into managing US patent portfolios more effectively

Who should attend?

This training course has been specially designed for:

Corporate patent counsel
Patent attorneys from in-house and private practice
European patent lawyers
UK patent lawyers
US patent attorneys
Patent managers
Patent engineers
IP directors
Technology transfer professionals
Intellectual property consultants
R&D managers
Patent analysts, patent search and information specialists
Technology lawyers
All those involved with patent filings and prosecution in the United States

Popular with...

This course has proven particularly popular among our customers in these roles:

European Patent Attorney
IP Analyst
IP Manager
Manager
Patent Attorney
Patent Engineer
Patent Manager
Patent counsel
Secretary
Senior Patent Attorney

Enrol/reserve

This course will cover:

Module 1: Foundations of US Patent Practice

Overview of the US patent system

Courts, USPTO and PTAB
Key differences between US and European practice
Patentability requirements
Recent legislative and judicial developments

Claim construction and drafting for success

Claim interpretation in US courts
USPTO claim examination standards
Drafting claims for prosecution and enforcement
Common drafting pitfalls

Module 2: Patentability and prosecution strategy

Written description and enablement

Current Federal Circuit guidance
Possession requirement
Enablement after Amgen
Practical drafting strategies

Subject matter eligibility

Alice and its continuing impact
Software and AI inventions
USPTO guidance updates
Emerging trends

Novelty and prior art

First-to-file framework
Prior art considerations
Grace periods
Inventor disclosures

Module 3: Building stronger US patent portfolios

Obviousness

Current obviousness standards
KSR and subsequent developments
Drafting and prosecution strategies

Functional claiming

Method claims

Impossibility
Judicial interpretation

Strategic filing approaches

Provisional applications
Continuations
Continuations-in-part
Divisionals
Global filing considerations

Restriction practice

Restriction requirements
Election of species
Rejoinder practice

Module 4: PTAB, enforcement and emerging issues

Post grant challenges

Inter Partes Review (IPR)
Post-Grant Review (PGR)
Reissue and re-examination
Current PTAB trends

Patent term and portfolio management

Patent term adjustment
Patent term extension
Terminal disclaimers
Recent developments

Inventorship and ownership

Joint inventorship
AI-assisted inventions
Ownership disputes
Assignment issues

Enforcement and litigation

Direct and indirect infringement
Doctrine of equivalents
Willfulness
Damages and remedies
Licensing considerations

Future trends

AI and patent practice
Emerging USPTO initiatives
Key cases to watch
International developments impacting US practice

Enrol/reserve

James Suggs
McDonnell Boehnen Hulbert & Berghoff LLP

James V. Suggs is a partner in the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff LLP, located in Chicago, where he practices patent law and serves as Chair of the firm’s Chemical Practice Group. He applies his broad technical experience in a wide variety of chemical, polymer, materials science, pharmaceutical, optical, photonic, semiconductor and related technologies. He handles all facets of patent law, with an especial focus in patent procurement, strategic counseling, freedom-to-operate and due diligence opinions.

He also has an active inter partes review practice. His litigation experience includes federal district court and appellate practice as well as advocacy in forums such as the International Trade Commission, and spans a diverse range of technologies. He has experience with all kinds of clients, from large multinational corporations, to science-based startups, to academic research institutions, and works with law firms in Europe and worldwide to successfully prosecute their applications at the USPTO.

More details

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

3-6 November 2026

Live online

13:30-17:00 UK (London) (UTC+00)
14:30-18:00 Paris (UTC+01)
08:30-12:00 New York (UTC-05)
Course code 16394

GBP 1,199 1,399
EUR 1,679 1,959
USD 1,927 2,239

Until 29 Sep

4 sessions of 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

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* 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 Mastering US Patent Practice: Prosecution, Strategy and Recent Developments training course

Great course materials with plenty of detail which I can use in the future.

Jun 13 2024

Sarah James United Kingdom
Patent Attorney, Unilever

Dec 15 2022

The content, the presentation and the speaker were very good. All topics were presented in a clear manner.

MARIA LUISA MARCHESI Italy
Italian Patent Attorney, ENI CORPORATE UNIVERSITY SPA

Dec 5 2019

Excellent! Very good and helpful overview of US patent law with a focus on the differences to European law. I particularly liked the very interactive discussions.

Hendrik Freudenberger Germany
IP Legal Advisor, Sasol Chemie GmbH & Co. KG

Dec 5 2019

Very thorough and well presented.

Elisabetta Mauri Italy
Director of Intellectual Property, Dompé Farmaceutici SPA

Dec 5 2019

The course gives European practitioners a good overview of the peculiarities of US patent law and the ways in which US practice sometimes differs from our own. The presentation was lively and the speakers provided plenty of background from their own experience.

Erik Bartelds Netherlands
patent attorney, Arnold + Siedsma

Dec 4 2018

Excellent speakers.

Omar Jabarti Saudi Arabia
Engineer, Saudi Aramco

Jun 13 2018

A great overview, excellent speakers with comprehensive knowledge.

Peter Atzmüller Austria
Key Patent Information Professional, voestalpine Stahl GmbH

Jun 13 2018

The course was exactly what I expected with a good quality of written documentation and highlighting of specific ongoing topics by the speakers.

Andreas Bazzon Liechtenstein
Patent Attorney Candidate, Kaminski Harmann Patentanwälte AG

Jun 13 2018

Both entertaining and educative.

Lorenz Kallenbach Switzerland
Corporate Patent Counsel, Merck

Jun 13 2018

The dual presentation works well. Interaction with audience very positive. Comprehensive update on US patent practice by knowledgeable speakers in an interactive atmosphere.

Marijke Hogenbirk Netherlands
Senior Patent Attorney , Shell International B.V.

Jun 13 2018

The speakers were very direct and the course was interactive – I never for a minute lost interest.

Asteria Zitrou Greece
Intellectual Property Supervisor, Pharmathen