Two Day Virtual Training Course: How to Avoid Common Pitfalls in Combined European Union/US Patent Applications, March 17-18, 2022

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Mar 08, 2022, 06:15 ET

DUBLIN, March 8, 2022 /PRNewswire/ -- Final days to register for the "How to Avoid Common Pitfalls in Combined EU (European Union)/US Patent Applications Training Course" that has been added to ResearchAndMarkets.com's offering.

This practical and interactive course will demystify the complex area of combined EU/US patent applications. The expert trainers will address the parallel - but substantially different - rules for drafting and prosecuting patents required by the Examiners and Boards of Appeal of the EPO and USPTO. They will highlight the risks and pitfalls to be aware of and explain how to avoid them or deal with them if challenged by the patent offices.

The comprehensive programme will ensure that you get to grips with the contrasting approaches of the EPO and USPTO and understand the experts' techniques for drafting an application for, and responding to, rejections issued by the two offices.

During the practical exercises, you will learn how to correct and modify a sample application to be filed with both the EPO and USPTO and practise developing effective arguments for the EPO and USPTO, taking into account hypothetical patent office rejections.

You will also have the opportunity to discuss your particular questions and concerns with the expert trainers, as well as share experiences with like-minded professionals.

Key topics to be covered:

The often unseen traps posed by differing EU and US requirements
'Best practices' for reconciling the EU and US requirements and drafting an application to:

Maximise scope of protection
Reduce objections
Minimise costs and maximise flexibility

Prosecution procedures

EPO and USPTO approaches to rejections
Responding to EPO and USPTO rejections, based on an optimised specification
Limiting US prosecution history estoppel

Practical session using worked examples

Who Should Attend:

Patent professionals and other executives who are responsible for patent applications that are filed in and prosecuted before both the European and US Patent Offices
Managers overseeing and evaluating multinational patent prosecution

Key Topics Covered:

Review of the Similarities and Differences in the Statutory Systems of the EPO and USPTO

Legal Aspects
Procedures
Formalities

'Best Practices' for Preparing One Specification to Comply With the European and US Requirements For:

Priority
Added Subject Matter/New Matter
Industrial Application/Utility
Novelty
Inventive Step/Non-Obviousness
Description and Sufficient Basis/Enablement and Written Description
Claim Clarity and Conciseness/'Distinct Claiming'
Limiting Estoppel and Implications of the AIA

EPO/US: Prosecution and Appeal Procedures

Likely Timelines and Statutory Deadlines

EPO
Euro-Pct
USPTO

Burdens of Proof
Use of Provisional and Non-Provisional Applications
Objections and Rejections
Non-Final and Final Office Actions
Interviews
Patent Office Appeals
Judicial Appeals

EPO/US Definitions of Prior Art and Priority

Article 54 Definitions of 'State of the Art'

Definitions of 'Prior Art' for Anticipation and Obviousness

EPO/US: Rejections and Responses

Inventive Step (EPO) Vs Obviousness (USPTO)
EPO/US: Strategies for Persuading the Examiner and Board

Prosecution History Estoppel in the US

Estoppel Variants
Controlling the Adverse Impact of Arguments to the USPTO
Effect of Representations Made in Corresponding, Non-US Applications
Disclosure Obligations After
Therasense

Arguments on Non-Technical (EPO) and Subject Matter (US)

Article 52(2), (3) Exclusions - 'Technical'

Two Hurdles
Potential Technical Effect T26/86 Koch & Sterzel
Computer Program/Signal Claims

Arguments to the USPTO After Alice

Abstract Vs Structural Limitations
USPTO 'Examination Instructions'

Worked Examples

Delegates Will Be Invited to Analyse and Modify Sample Applications Suitable for the EPO and USPTO
Delegates Will Be Asked to Develop Effective Arguments for the EPO and USPTO With Respect to a Series of Hypothetical Office Actions

Plenary Session

Delegates and Speakers Will Discuss the Worked Examples With the Aim of Optimising Specifications Acceptable to Both the EPO and USPTO

For more information about this conference visit https://www.researchandmarkets.com/r/35yknk

Media Contact:

Research and Markets
Laura Wood, Senior Manager
[email protected]

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SOURCE Research and Markets