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International Patent Subject Matter Eligibility: Court Treatment, Patent Office Practices, Filing and Claiming

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

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Conducted on Thursday, January 20, 2022

Recorded event now available

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This CLE webinar will guide patent counsel on patent subject matter eligibility around the world. The panel will discuss court treatment, practices of the various patent offices, and prosecution strategies. The panel will offer guidance on determining where to file applications, the risks and benefits of certain claim types and language, and tips for strengthening patent portfolios.


Every year patentees file more patent applications in a wider range of countries. Since the Patent Cooperation Treaty (PCT) came into force in 1978, nearly four million PCT applications have been filed to enable patentees to obtain international protection for their inventions – and more than half of these PCT applications were filed in the last ten years. A broad patent portfolio is of increasing importance to large and small companies in a variety of fields.

Yet, prosecuting patents in different countries can be challenging. Each country has its own laws for pursuing patent applications and achieving enforceable patents. And while treaties and other agreements (like the Paris Convention and the PCT) lay a foundation for many countries’ patent systems, local patent law varies widely on the issue of patent eligibility. Patent attorneys and the clients they serve therefore must be cognizant of these differences in eligibility law in different jurisdictions and take them into account when pursuing patent protection internationally.

Listen as our authoritative panel of patent attorneys discusses the significant differences in subject matter eligibility in the United States and before the European Patent Office (EPO). Panel members will also provide insights gleaned from their recently published global guide to patent subject matter eligibility, which examines the different approaches to subject matter eligibility in many important jurisdictions around the world.



  1. Patent eligible subject matter and patent office practices
    1. Europe
    2. U.S.
    3. Overview of other significant jurisdictions (Japan, Australia, China, Canada, etc.)
  2. Best practices
    1. Where to file
    2. Claim types and language
    3. Strengthening patent portfolios


The panel will review these and other essential matters:

  • How do the patent offices around the world treat eligibility issues?
  • What considerations should counsel weigh when determining where to file patent applications around the world?
  • What steps can counsel take to strengthen global patent portfolios?


Browning, Paul
Dr. Paul W. Browning, Ph.D.

Finnegan Henderson Farabow Garrett & Dunner

Dr. Browning focuses on patent litigation and appeals. He has led teams as first chair at trial, at Markman...  |  Read More

Johns, Christopher
Christopher C. Johns

Finnegan Henderson Farabow Garrett & Dunner

Mr. Johns maintains a diverse patent practice, including drafting and prosecuting patent applications related to...  |  Read More

Leiman, Sara
Dr. Sara A. Leiman, Ph.D.

Finnegan Henderson Farabow Garrett & Dunner

Dr. Leiman prosecutes and provides strategic counseling on U.S. and foreign patent portfolios, provides validity and...  |  Read More

Morozova, Yelena
Yelena Morozova

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

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