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 webinar with Q&A

Conducted on Monday, July 13, 2020

Recorded event now available

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Course Materials

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.


When drafting U.S. patent applications, counsel's initial focus is generally to position it for success in the USPTO. Many patent holders 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 specific USPTO and EPO legal standards.

Differences between the U.S. and European systems include standards for priority, amendments, obviousness, enablement, and written description. As a result, any misunderstanding of 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 many obstacles presented by Europe's different approach to granting patent protection.

Listen as our authoritative panel of U.S. and European patent counsel discusses the principal considerations for drafting U.S. patent applications to maximize prosecution opportunities in Europe and examines essential 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 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?


McNeill, Rebecca
Rebecca M. McNeill

McNeill Baur

Ms. McNeill offers intellectual property strategy and advises on new application preparation, patent prosecution (U.S....  |  Read More

Nørgaard, Jens Viktor
Jens Viktor Nørgaard

Partner, Head of Biotechnology & Plant Sciences

Mr. Nørgaard counsels on all areas of life science and medical technology including anything from genetics and...  |  Read More

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