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Description Amendments at the EPO and Implications for U.S. Litigation: Updated EPO Guidelines for Examination

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

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Conducted on Thursday, April 14, 2022

Recorded event now available

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This CLE webinar will guide patent counsel on the description amendments and the amended/updated European Patent Office (EPO) Guidelines for Examination. The panel will discuss what it could mean for U.S. litigation and what applicants/counsel should consider or do to comply with the guidelines and reduce the amount of potentially negative impact on U.S. litigation.

Description

The EPO updates its Guidelines for Examination every year and the latest version went into effect on March 1, 2022. The update in 2021 revised the section that relates to adapting the description for consistency with the claims. As a result, many applicants experienced a stricter approach from EPO examiners such that significant description amendments were required before an application could proceed to allowance. The update in 2022 brings further changes to this section, which may indicate a relaxation of the approach. However, it is likely that many EPO examiners will still require significant description amendments to achieve consistency between the description and claims.

The Federal Circuit will consider relevant statements made to foreign patent offices. It is an open question how description amendments made during European prosecution may affect U.S. litigation; U.S. courts have yet to grapple with this specific question. However, patent owners should be mindful of the potential impact that their description amendments in Europe could have on the assessment of related U.S. patents in U.S. litigation.

Listen as our authoritative panel of patent attorneys examines description amendments and the updated EPO Guidelines for Examination. The panel will discuss what it could mean for U.S. litigation and what applicants/counsel should consider or do to comply with the Guidelines and reduce the amount of potentially negative impact on U.S. litigation.

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Outline

  1. Updated EPO Guidelines for examination
  2. Description amendments
  3. What it means for U.S. litigation
  4. Best practices
    1. Responding to objections of inconsistency between the description and claims
    2. Drafting patents
    3. Responding to rejections

Benefits

The panel will review these and other key issues:

  • What implications could the amended EPO Guidelines have for U.S. litigation?
  • What steps should counsel take to minimize the potential negative impact for U.S. patents?

Faculty

Holt, Cora
Cora R. Holt

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Holt is an experienced patent litigator at both the appellate and trial levels. A former clerk at the U.S. Court of...  |  Read More

Morozova, Yelena
Yelena Morozova

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Morozova's professional career has spanned across three countries and more than ten years of legal experience...  |  Read More

O’Flynn, Maeve
Maeve O’Flynn

Partner
Finnegan Europe

Ms. O’Flynn is a European and UK patent attorney with more than a decade of in-house experience, having worked at...  |  Read More

Neer, William
William C. Neer

Attorney
Finnegan Henderson Farabow Garrett & Dunner

Mr. Neer's practice encompasses patent litigation and prosecution in the areas of chemicals, cosmetics,...  |  Read More

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