Patent Drafting for Multiple Jurisdictions

Can Applicants File One Application and Obtain Adequate Protection in the U.S., Korea, EPO, and China?

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


Conducted on Wednesday, March 31, 2021

Recorded event now available

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Program Materials

This CLE webinar will guide patent counsel on drafting for multiple jurisdictions. The panel will examine important considerations when drafting a single patent application, focusing on filing in the U.S., Korea, EPO, and China. The panel will discuss grace periods, data considerations, and how the choice of language when drafting can impact prosecution and beyond. The panel will offer best practices for drafting single patent applications for use in several countries.

Description

Many patent applicants would like to have a single patent application that will serve them in several countries. This is ambitious, since there are many differences between various countries' patent systems, but perhaps not impossible. Patent counsel need to be aware of and try to balance all the different requirements in the single patent application.

Among the key considerations are grace period provisions in the various countries. A patent may only be granted for new inventions, but some countries have grace periods for inventor disclosures. This can be critical for some patents where data is needed to support patent claims. Patent counsel must be aware of the data requirements from the various countries in which they anticipate filing the patent applications, as deficiencies in the data can be difficult, if not impossible, to remedy during prosecution depending on the country. Further, when drafting an application, counsel should take care over their choice of language, as this can impact the amendments that will be permitted during prosecution, and on the ability to enforce and defend the granted patent.

Listen as our authoritative panel of patent attorneys examines some important considerations when drafting a single patent application, focusing on the key jurisdictions of the U.S., Korea, EPO, and China. The panel will discuss grace periods and how much data is recommended for filing a patent application in the U.S., Korea, EPO, and China. The panel will also examine ways of drafting the application to minimize future added subject matter and patent profanity issues in the U.S., Korea, EPO, and China.

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Outline

  1. Grace period provisions
  2. Data considerations
  3. Language and terminology considerations
  4. Best practices

Benefits

The panel will review these and other key issues:

  • Can I file a single patent application, or will a prior disclosure make this unfeasible?
  • Do I file early with minimal data or wait until more data are available?
  • What terminology should I use/avoid when drafting for multiple jurisdictions?

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Murphy, Amanda
Amanda K. Murphy, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new...  |  Read More

Barker, K. Victoria
K. Victoria Barker, Ph.D.

Attorney
Finnegan Europe

Dr. Barker is a Chartered UK and European patent attorney with experience in all areas of patent portfolio management...  |  Read More

Kim, Kyu Yun
Kyu Yun Kim

Associate
Finnegan Henderson Farabow Garrett & Dunner

Ms. Kim focuses on patent litigation and patent prosecution in the chemical and pharmaceutical fields. Her litigation...  |  Read More

Yang, Yieyie
Yieyie Yang, Ph.D.

Attorney
Finnegan Henderson Farabow Garrett & Dunner

Dr. Yang focuses on complex patent litigation before U.S. district courts and inter partes review (IPR) proceedings in...  |  Read More

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