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 premium CLE video webinar with Q&A
This CLE course will guide 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.
Outline
- The EPO takes a literal approach to read all documents
- Drafting applications with an eye to potential future amendments
- Priority
- Novelty
- Inventive step
- Enablement
- Methods of treatment and diagnostic uses
- The EPC and the Unitary Patent
Benefits
The panel will review these and other high priority issues:
- What are the 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?
Faculty
Rebecca M. McNeill
Partner
McNeill Baur
Ms. McNeill offers intellectual property strategy and advises on new application preparation, patent prosecution (U.S.... | Read More
Ms. McNeill offers intellectual property strategy and advises on new application preparation, patent prosecution (U.S. and foreign), and preparation and negotiation of IP transactions, and provides the full scope of counseling services. She has a special interest in counseling clients on patent application filing and developing worldwide prosecution strategies in concert with clients’ business goals. She has managed and directed the U.S. and international patent portfolios for U.S. clients and has overseen the U.S. patent portfolio for international clients in Europe and Asia.
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Jens Viktor Nørgaard
Partner, Head of Biotechnology & Plant Sciences
HØIBERG
Mr. Nørgaard counsels on all areas of life science and medical technology including anything from genetics and... | Read More
Mr. Nørgaard counsels on all areas of life science and medical technology including anything from genetics and molecular biology to drugs, diagnostics, analytical equipment, medical equipment, and greentech. He counsels on IPR strategy, IPR organization and management of companies, business development, license agreements, freedom-to-operate, validity of patents, oppositions and appeals before the EPO (European Patent Office), in addition to drafting and prosecution of patent applications. He also serves as a technical judge in Norway. Since 2015 he has served as Chairman of the Board at HØIBERG.
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