How to Avoid Common Pitfalls In Combined EU / US Patent Applications

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, disclaimerand estoppel. Claim amendments and patentability arguments that are highly effective for the EPO often prove entirely inadequate before US Patent Examiners and the PTAB.

This workshop addresses the parallel, but substantially different, rules for drafting and prosecuting patents required by the Examiners and Appeal Boards of the EPO and USPTO.

You will study the contrasting approaches of the EPO and USPTO and learn the experts’ techniques for drafting an application for, and responding to, rejections issued by the two offices.

How You Will Benefit From Attending This Workshop

• 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 before US Patent Examiners and the PTAB.
  
• This workshop addresses the parallel, but substantially different, rules for drafting and prosecuting patents required by the Examiners and Appeal Boards of the EPO and USPTO.
  
• You will study the contrasting approaches of the EPO and USPTO and learn the experts’ techniques for drafting an application for, and responding to, rejections issued by the two offices.

Practical Applications 

• You and the other delegates will be invited to correct and modify a sample application to be filed with both the EPO and USPTO.
  
• You will be asked to develop effective arguments, for the EPO and USPTO, with respect to hypothetical patent office rejections.
  
• The seminar will include ongoing opportunities for you to ask questions and discuss individual concerns.

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