Best Practices for Parallel EP & US Patent Applications
- EPO vs. USPTO: important differences to keep in mind when drafting patent claims and applications
- Recommendations for prosecuting an application through parallel grant procedures at the EPO and USPTO
- Avoid duplication of work through an optimised patent application
- Best practices for drafting an optimised EP and US Patent Application
Aims and objectivesThose seeking to have a patent granted by the EPO and USPTO for the same invention face the challenge of satisfying different requirements for the two jurisdictions. For example, a claim granted by the EPO may have a different scope than one granted by the USPTO. Moreover claim amendments permissible at the EPO might be impermissible at the USPTO and vice versa.
You will save time and money by optimising your patent applications for both offices. By keeping in mind major differences, you can avoid duplicating work and achieve better results. Using concrete examples, our speakers will develop with you guidelines for preparing a patent application optimised for undergoing parallel procedures at the EPO and USPTO.
Then this course is designed for you. Knowledge on patents is assumed.
- Procedural aspects
- Official letter /office action
- Appeal proceedings/after final practice
- Unity/restriction; priority claims
- Formal aspects
- Fees, number of pages, number of claims; renewal fees/annuities
- Drafting: antecedent basis, two-part form, preamble
- USPTO: duty of disclosure
- Substantive aspects/prior art
- Inventive step: problem-solution-approach vs. obviousness
- Description and sufficient basis/enablement and written description
- Typical claim differences
- Clarity and conciseness/distinct claiming
- Claim interpretation and prosecution history estoppel
- Non-technical subject matter/patent eligibility
- Claim amendment (inadmissible extension)/added subject matter
- Specification contents
- Drafting of patent claims
- Preparing the specification
- Prosecuting through parallel granting procedures
- Lessons learned
- Avoiding duplication of work
- Repeated use of work results
- What an optimised patent application could look like
Thomas advises Europe-based clients doing business in the United States on their IP matters. A focus of his practice is on US patent law which includes patent applications, post-grant proceedings, patent litigation and providing expert opinions. Thomas contributes a regular column on recent developments in US patent law to one of the leading German IP law journals.
Simone is a European Patent Attorney and is active for the patents and licenses department of TRUMPF since 2008. Simone is involved in applying for patents worldwide, including application at the EPO and USPTO, for the provider of lasers and machine tools. She has gained much experience in drafting patent specifications that meet European as Well as US requirements.
NL 1011 Amsterdam
Phone: +31 20 5300800
Fax: +31 20 5300801
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