US Patent Applications for European Practitioners
- European vs. US patent system: all the differences you need to know!
- Preparing a global patent application: from determining inventorship to claim drafting
- Prosecuting US patent applications after the AIA: prior art and grace period, dos and don'ts
- Recent US decisions affecting European patent practice
- Understanding post-grant challenges in the US
Aims and objectivesThis 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. The course will take you from the conception of the invention and determining inventorship to the drafting of the application and the prosecution of the patent. Practical examples will focus on issues specific to your area of practice including preparing for the new post grant challenges. Learn how to avoid pitfalls when prosecuting US patent applications especially from a European inhouse perspective.
- First-to-invent versus first-to-file and first-inventor-to-file
- Transition applications after the AIA
- Inventors as the applicant versus the employer and how that changes after the AIA
- US Novelty versus Absolute Novelty
- Obviousness versus inventive step: Strategies for attacking obviousness rejections
- Understand recent changes in the law of patentable subjects
- Role of 'conception' and 'reduction to practice'
C. Claim and specification drafting for every jurisdiction
- Drafting claims to best protect the invention and avoid relying on the doctrine of equivalents
- Claiming computer-implemented inventions
- Drafting chemical/biotech claims
- Drafting mechanical/electrical claims
- Definitions of prior art in the first-to-invent system vs. first-inventor-to-file system
- Taking advantage of new patent office programs that streamline prosecution
- Developing an effective global patent application filing strategy
- Preparing to launch a challenge
- Differences in EP oppositions
- Defending your patent in a challenge
At Molecular Partners, Marcus Kretzschmar is responsible for all aspects of IP law and the company’s patent and trademark portfolio. Among others, he advises on IP filing strategy, life cycle management, FTO, transactions, agreements and potential patent infringement, and prosecutes a global patent portfolio. Prior to joining Molecular Partners, Dr. Kretzschmar spent several years as a registered U.S. patent attorney in the Washington DC office of an international IP law firm. His experience gained at the law firm includes preparing and prosecuting domestic and international patent applications; managing international patent application portfolios; analyzing patent validity, infringement, patentability, patent eligibility, and freedom to operate. He is admitted to the bars of California and the District of Columbia and before the U.S. Patent and Trademark Office. Marcus has a background in biochemistry.
Anthony is the managing partner of Finnegan's European office in London, UK. He practices all aspects of intellectual property law, from strategic patent portfolio management to litigation with a focus on post-grant proceedings, appeals and oral hearings at the USPTO's Patent Trial and Appeal Board, as well as European Patent Office (EPO) opposition and appeal procedures. He has significant knowledge about the EPC and the diversity of laws and practice among the European national systems. His knowledge of the European legal system and how it differs from the USA allows Anthony to effectively counsel both European and US clients with global interests in intellectual property.
NL 2332 KG Amsterdam / Leiden
Phone: +31 71 535 5555
Fax: +31(0) 71 53 55 553
- 'Nice overview of the patent procedure.' (Patent Attorney)
- 'Good and broad overview of US patent law.' (Manager Patent Department)
- 'Good contents and new matters.' (Patent Specialist)
- 'Very useful!' (CEO)