EPO and US Patent Prosecution with One Specification: How to Reconcile the Differing Requirements of the EPO and USPTO

The different rules and analyses of the European and US Patent Offices invariably cause difficulties to applicants who adopt a single approach for amending claims and arguing for the patentability of their inventions. Claim amendments and patentability arguments that are highly effective for the EPO often prove entirely inadequate for the USPTO.

The seminar addresses the parallel, but substantially different, standards for patentability employed by the Examiners and Appeal Boards of the EPO and USPTO. By attending, you will see the contrast in practices before the EPO and USPTO and learn the experts’ techniques for responding to rejections issued by each of the patent offices.

This seminar can be attended as a standalone event, but will also be a useful follow-on to Management Forum’s successful course on preparing a single application both for the EPO and USPTO.

Topics covered at this seminar:

• Prosecution Procedures and Timelines


• Definitions of Prior Art and Priority


• Rejections and Responses


• Prosecution History Estoppel in the US


• Arguments on Non-technical (EPO) and Subject matter (US)


• Worked Examples