EU & US Patent Applications: Specifications and Prosecution Strategies for a SIngle Application

An application originating in Europe frequently encounters substantial difficulties before the USPTO. Recurrently, claims issued to a European applicant are unnecessarily narrow by US standards or unexpectedly constrained by US principles of disavowal, disclaimer and estoppel. Claim amendments and patentability arguments that are highly effective for the EPO often prove entirely inadequate for US Patent Examiners and the PTAB. 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.

How to reconcile the differing requirements of the EPO & USPTO

  • Key, major differences between EPO and US practice
  • ‘Best practices’ for specification drafting for both the EPO and USPTO

    • Maximising scope of protection
    • Reducing potential objections
    • Minimising costs and maximising flexibility
    • EPO and USPTO definitions of prior art and priority

  • Prosecution procedures and timelines

    • EPO and USPTO views on what constitutes a proper rejection and how to respond
    • Arguments on non-technical (EPO) and ineligible (US) subject matter
    • Prosecution history estoppel in the US
    • Expediting prosecution & grant

  • Worked examples, followed by a plenary discussion


Seminar Leaders 

  • Bradley Hulbert, McDonnell Boehnen Hulbert & Berghoff LLP, Chicago
  • David Meldrum, D Young & Co LLP, London


Who Should Attend

  • Patent professionals and other executives who are responsible for patent applications that are filed in, and prosecuted before, both European and US Patent Offices
  • Manager overseeing and evaluating the multinational patent prosecution


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