Managing Priority Between U.S. and European Patents: Minimizing Ownership, Same Invention, Scope, and Other Risks

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


Conducted on Tuesday, August 17, 2021

Recorded event now available

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Course Materials

This CLE course will guide patent counsel on priority issues when seeking patent protection in both the U.S. and Europe. The panel will discuss the differences between the jurisdictions and the potential pitfalls applicants may encounter, including disparities over ownership which pose some of the biggest risks. The panel will address how to avoid or overcome these challenges and offer best practices for patent filings to avoid priority issues and ensure protection in both the U.S. and EU.

Description

While protecting patentable inventions in both the U.S. and Europe is the foundation of many patent portfolios, priority arrangements in the U.S. can challenge obtaining patent protection in Europe. This problem was highlighted by the European Patent Office's (EPO) ruling on the CRISPR gene-editing patent last year.

The issue of priority was front and center in the EPO's Board of Appeal 2020 decision in the patent dispute over the rights to commercialize CRISPR technology. The Board held that the Broad Institute of MIT's European patent be revoked after it dismissed the institution's claims over its patent's priority date. The Board recently published its decision, which noted that it followed EPO case law on the issue of priority and found that all applicants must be listed on both the initial and subsequent applications to be entitled to priority.

It is critical for patent counsel to understand where the potential risks, whether related to ownership, same invention, or broad vs. narrow scope, may arise when preparing and filing patent applications in the U.S. or EU.

Listen as our authoritative panel of patent attorneys examines priority arrangements and patent protection in the U.S. and EU. The panel will discuss the differences between the jurisdictions and the potential pitfalls applicants may encounter, including disparities over ownership which pose some of the biggest risks. The panel will address how to avoid or overcome these challenges and offer best practices for patent filings to avoid priority issues and ensure protection in both the U.S. and EU.

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Outline

  1. Priority: the interplay between the U.S. and EU
  2. Risks/pitfalls
    1. Ownership
    2. Same invention
    3. Scope: broad vs. narrow claims
    4. Other risks
  3. Recent decisions
    1. CRISPR
  4. Best practices for filing to protect patents in both the U.S. and EU
    1. Appropriate claims
    2. Robust disclosure
    3. Attention to drawings/specification figures
    4. Consider recent case law

Benefits

The panel will review these and other high priority issues:

  • What are the differences between the U.S. and European approaches to priority?
  • What are the considerations for patent counsel drafting U.S. applications when patent protection in Europe is anticipated or desired?
  • What are the potential risks that counsel may need to overcome when drafting U.S. or EU patent applications to maximize protection?

Faculty

Ammelburg, Moritz
Moritz Ammelburg, Ph.D.

Principal
Fish & Richardson

Dr. Ammelburg is an imaginative life scientist holding a doctorate in biochemistry. His practice focuses on patent...  |  Read More

Fasse, J. Peter
J. Peter Fasse

Principal
Fish & Richardson

Mr. Fasse’s practice emphasizes client counseling and patent prosecution in a wide variety of technologies, with...  |  Read More

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