Maximizing Patent Prosecution Opportunities in Europe: Tactics for Counsel When Drafting U.S.-Origin Applications

Navigating Differing USPTO and EPO Legal Standards While Maintaining U.S. Patent Strategy

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, January 23, 2014
Recorded event now available


This CLE webinar will provide guidance for patent counsel in drafting U.S.-origin patent applications to maximize prosecution opportunities in both the U.S. and Europe. After discussing each area, the panel will offer best practices for U.S. patent application drafters to protect inventions in Europe without sacrificing U.S. strategy.

Description

When drafting U.S. patent applications, counsel's initial focus is generally to position it for success in the USPTO. Many patentholders also want global patent protection and failing to consider other legal standards can prove detrimental to achieving that end. This program will compare and contrast certain USPTO and EPO legal standards.

Important differences exist between the U.S. and Europe systems, including standards for priority, amendments, obviousness, enablement and written description. As a result, neglecting these differences when drafting the U.S.-origin application can negatively impact prosecution opportunities in Europe.

Patent counsel's planning for European patent requirements during the USPTO process in anticipation of global protection will reduce costs and can overcome a number of obstacles presented by Europe's less flexible approach to granting patent protection.

Listen as our authoritative panel of U.S. and European patent counsel discusses key considerations for drafting U.S. patent applications to maximize prosecution opportunities in Europe and examines important differences between the USPTO and EPO approaches to patent applications. The panel will offer best practices for U.S. patent application drafters to protect inventions in Europe without sacrificing U.S. strategy—and vice versa.

Outline

  1. The EPO takes a literal approach to reading all documents
  2. Drafting applications with an eye to potential future amendments
  3. Priority
  4. Novelty
  5. Inventive step
  6. Enablement
  7. Methods of treatment and diagnostic uses

Benefits

The panel will review these and other key questions:

  • What are the key considerations for patent counsel drafting U.S. applications when global patent protection is anticipated or desired?
  • What are the significant differences between the U.S. and European approaches to patent applications?
  • What steps should counsel take when drafting U.S. patent applications to maximize protection in Europe?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Rebecca M. McNeill
VIVICAR Law, PLLC, Boston

Ms. McNeill is a U.S. patent attorney at VIVICAR Law, PLLC, an IP and business law firm with an international client base where her client-focused practice includes patent prosecution, counseling and litigation. Ms. McNeill specializes in the biotech and pharma space with over 18 years of experience, including a long tenure at one of the U.S.'s largest IP firms. She has also served as the Head of IP and Legal Affairs for a venture-backed biotech startup.

Jens Viktor Nørgaard, Partner, Head of Biotechnology & Plant Sciences
HØIBERG, Denmark

Mr. Nørgaard is a Partner and Head of Biotech at HØIBERG, a leading life-science IPR law firm in the Medicon Valley Region in Denmark. He is a European patent attorney specializing in biotech and medtech practice with 15 years of experience, including a period as in-house director of IPR at two biotech companies.

Ordering

Recorded Event

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On-Demand CLE - Audio Recording

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Program Materials

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Program Materials

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Customer Reviews

I liked the practical insights, particularly when tied to cases the presenters had worked on.

Michael Gray

Kohler

Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

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The program had a lot to cover and the speakers did a superb job of moving through the difficult subject matter.

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Intellectual Property Law Advisory Board

Stephen R. Baird

Shareholder

Winthrop & Weinstine

Charles S. Baker

Partner

Fulbright & Jaworski

David S. Bloch

Partner

Winston & Strawn

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Bassam N. Ibrahim

Shareholder

Buchanan Ingersoll & Rooney

Mark P. Wine

Partner

Orrick

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