Patent Drafting & Prosecution Based on a Single EPO/USPTO Specification

Course Schedule: 8:15 – 11:30 a.m.; 1:30 – 4:45 p.m. (Days 1 & 2); 8:15 – 11:30 a.m. (Day 3)


Course Description:

While the EPO and USPTO have similar requirements for patent applications, the same application can have dramatically different results in Europe and the U.S. An application originating in the U.S. frequently encounters substantial difficulties before the EPO. For example, the U.S. applicant often finds itself unable to amend claims in a manner clearly available during the U.S. prosecution because of European “Priority Rules.” Recurrently, claims issued by the EPO to a U.S. applicant are unnecessarily narrow by European standards.

This course will show you how to draft and prosecute one, optimized patent application, that will comply with the differing requirements of both the EPO and USPTO.

There will be practical worked examples, illustrations, demonstrations of “best practice” and plenty of discussion, ensuring that you will go home with a realistic and workable solution to a perennial problem.

The need for optimizing a patent application, so as to meet the requirements of both the USPTO and European Patent Office, has never been greater. And USPTO and EPO Examiners continue to act on divergent expectations regarding the applications they review.

This course will give attendees a comprehensive overview of the principles underlying the preparation and prosecution of patent applications in both the U.S. and Europe.

The speakers will:

• Explain key, major differences between practice before the USPTO and European Patent Office
  
• Compare and contrast the sometimes quite different statutory requirements in each jurisdiction, and propose solutions to maximize the scope of protection and minimize costs
  
• Offer the “best practices” for preparing an application that is well-suited for filing in both the U.S. and Europe
  
• Discuss the implications of different EPO/U.S. prosecution procedures and timelines
  
• Describe differences in “prior art” definitions between the EPO and the USPTO
  
• Show how to draft effective responses to EPO rejections, comparing EPO “inventive step” and USPTO “obviousness” arguments

Practical application:

• During the course, attendees will be invited to edit sample claims, specification, and responses to Official Actions.
  
• Such sessions will be followed by plenary sessions during which attendees and speakers will discuss the worked examples to produces optimal submissions to the EPO and USPTO.

Faculty:

Bradley Hulbert, McDonnell Boehnen Hulbert & Berghoff LLP, Chicago

David Meldrum, D Young & Co LLP, London