Patent Prosecution Strategies
- Strategic IP goals
- Patent prosecution: a strategic overview
- General patent prosecution strategies
- Expediting strategies
- Delaying strategies
- Special strategies for patent prosecution: submarine, swiss cheese and more
Aims and objectivesIn this seminar the strategic IP goals that can be facilitated by patent prosecution strategies will be explored. It will become apparent that it is important to define such prosecution-related strategic IP goals to quickly answer questions arising daily from patent prosecution like: when can patent prosecution be expedited and what needs to be done; can the pendency of an application be prolonged; what are the strategic prosecution tools to strengthen the own IP portfolio and/or to weaken the competitor's IP portfolio. Our speakers have collected hands-on experience in one of the largest IP departments in Europe and they will demonstrate proven patent prosecution strategies. They will discuss the advantages and/or disadvantages associated with specific prosecution strategies. After attending this seminar, you will be able to optimise your patent prosecution strategy.
- IP Strategy and patent prosecution
- Overview over the EP grant procedure
- Patent filing strategies
- Broadest possible protection
- Earliest possible patent grant
- Timing your application using the PCT
- Request for expedited prosecution (PACE)
- Categorical request for examination to avoid Rule 70(2) delay
- Accelerated Rule 71(6) procedure
- Patent Prosecution Highway
- "Provisional" application
- Main requests and auxiliary requests
- Interview and oral proceedings
- Strategic use of Rule 71
- Time limit extensions
- Loss of rights and further processing
- Impermissible requests and amendments
- Rule 137(3) and (5)
- Article 123(2)
- Appeal strategies
- Interlocutory revision
- Appeal proceedings
- Divisionals during appeals
- Hide your intentions
- Submarine strategy
- Non unity strategy
- Hidden invention strategy
- Wrong classification strategy
- Selection after filing
- Weaken other patents
- Swiss cheese strategy
- Embracing strategy
- Strategic use of divisonals
- Ace up the sleeve
- Priority chain strategy
- Divide et impera strategy
- Search strategies
- Incomplete search or No search
- Search / No search
Hendrik Promies is a qualified German and European Patent Attorney. He has joined the Siemens IP department in 2001 after working for three years as an engineer in product qualification and has since been an IP Counsel for different businesses and in different functions. From 2010 to 2016 he managed a team of IP counsels specialised in communications technology and computer-implemented inventions and has recently taken over full IP responsibility for an internationally active business of Siemens.
Dr. Gregor Knöner is a qualified German and European Patent Attorney and a partner of Kahler Käck Mollekopf, a patent law firm based near Munich in Germany. His main focus lies on European and PCT patent prosecution as well as on opposition and invalidity proceedings. He counsels his clients consistently on patent prosecution strategies. Prior to joining Kahler Käck Mollekopf, Gregor has acted for six years as a Senior IP Counsel in the Siemens IP department, where he was responsible for a Siemens business with subsidiaries in several European countries.
NL 2332 KG Amsterdam / Leiden
Phone: +31 71 535 5555
Fax: +31(0) 71 53 55 553
Leiden is just 16 minutes from Amsterdam Schiphol airport by train, and the course hotel is close to the central station.
First-hand update for patent practitioners & EQE candidates: Each year the boards of appeal of the European Patent Office hand down more than 2000 decisions. These decisions set the standard for interpreting and applying the European Patent Convention (EPC).
15.11.2019 in Amsterdam
This practical course centers around an interactive case study that provides participants with a hands-on analysis of US patent law in comparison to European Law. Special attention will be paid to US practice in the post-AIA world.
14.11.2019 in Amsterdam/Leiden
This seminar shall provide a sound overview about different local laws in important countries in EU and beyond with respect to employee invention rights. It shall enable the participants to address complex situations when designing and negotiating agreements for cross-border R&D.
28.11.2019 in München
Learn in this hands-on course how to improve your patent portfolio management skills. Get more information and register here!
21. - 22.11.2019 in Amsterdam
The seminar aims to give a practical, in-depth understanding of the European Patent System.
20. - 21.11.2019 in Amsterdam/Leiden