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.


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.


  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


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.


Rebecca M. McNeill

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.


CLE On-Demand - Streaming Audio

Includes recorded streaming audio of full program plus PDF handouts.

On-demand is the only recorded format recognized for CLE credits in DE, IN, KS, LA, MS, NC, OH, OK, SC, TN, VA, WI.

AK, AZ, CA, CO, CT, DE, FL, GA, HI, IA, ID, IL, IN*, KS, KY, LA, ME, MN, MO, MT, NC, ND, NH**, NJ, NM, NV, NY, OH*, OK, OR, PA, SC, TN, TX, UT, VA, VT, WA, WI, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

*Only available for attorneys admitted for more than two years. For OH CLE credits, only programs recorded within the current calendar year are eligible - contact the CLE department for verification.

**NH attendees must self-determine if a program is eligible for credit and self-report their attendance.

CLE On-Demand Audio $297.00

How does this work?

Recorded Event

Includes full event recording plus handouts.

Strafford is an approved provider and self-study CLE credit is available in most states.

AK, AZ, CA, CO, CT, FL, GA, HI, IA, ID, IL, KY, ME, MN, MO, MT, ND, NJ, NM, NY, OR, PA, TN, TX, UT, VT, WA, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

Strafford will process CLE credit for one person on each recording.

Additional copies of a recording can be purchased at a discount. Please call Strafford Customer Service toll-free at 1-800-926-7926 ext 10 or email to place your order.

Recorded Webinar Download $297.00

How does this work?

Recorded Audio Download (MP3) $297.00

How does this work?

DVD (Slide Presentation with Audio) $297.00 plus $9.45 S&H

How does this work?


Strafford webinars offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program).  Please note that our webinars do not feature videos of the presenters.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

or call 1-800-926-7926

CLE Credits

Many states grant CLE credits for on-demand streaming audio programs and recorded events. Our programs are pre-approved in many states. Refer to our state CLE map for state-specific information.

or call 1-800-926-7926

Customer Reviews

I felt the program offered a good mix of business and legal concerns.

David Crapo


The seminar featured very knowledgeable presenters on an extremely important topic.

Kenneth Mathieu

FTI Consulting

The presentations were at such a high level that even a practitioner with basic knowledge of the subject could take away pertinent learning.

Van Hilderbrand

Sullivan & Worcester

The program was very informative and the information was precise and straight forward.

Michael Bradford

Speidel Law Firm

The speakers were very knowledgeable about the area and you could tell they cared. It was nice to call in and be able to speak to them live.

Shari J. Reich

Kenney Shelton Liptak Nowak

or call 1-800-926-7926

Intellectual Property Law Advisory Board

Stephen R. Baird


Winthrop & Weinstine

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Ian N. Feinberg


Feinberg Day Alberti & Thompson

Bassam N. Ibrahim


Buchanan Ingersoll & Rooney

Mark P. Wine



or call 1-800-926-7926

Our Guarantee

Strafford webinars are backed by our 100% Unconditional Money-Back Guarantee: if you are not satisfied with any of our products, simply let us know and get a full refund. For more information regarding complaints and refunds, please contact us at 1-800-926-7926 ext 10. Complaints regarding this program can be submitted via the course evaluation found in the “Thank you” e-mail at the end of the course.