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

This course addresses the parallel, but substantially different, rules for drafting and prosecuting patents required by the examiners and Boards of Appeal 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 field with both the EPO and the USPTO.
• You will be asked to develop effective arguments, for the EPO and USPTO, with respect to hypothetical patent office rejections

THIS SEMINAR WILL INCLUDE:

• 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

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
• Managers overseeing and evaluating the multinational patent prosecution

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