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Management Forum

How to Avoid Common Pitfalls in Combined EU (European Union)/US Patent Applications Training Course

This seminar addresses the parallel, but substantially different, rules for drafting and prosecuting patents required by the Examiners and Appeal Boards of the EPO and USPTO.

★★★★★ "Very relevant to point out the differences in the US audience (examiners, judges, jury) and the diff... more (7)"

15-16 May 2024
+ 6-7 November 2024 »

from £1199

Need help?  Enrol or reserve

Course overview

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

This course is part of our collection of IP & Patents Training Courses.

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

Enrol or reserve

David Meldrum
D Young & Co

David Meldrum has been in private practice since 1998 and joined D Young & Co in 2001 and became a partner in 2006. David practises in a variety of engineering disciplines including computer hardware and software, electronics, optics, nanotechnology, medical devices, automotive engineering and registered designs. He is experienced in all aspects of patent procurement including drafting specifications, international filing programmes and patent prosecution, and in portfolio management and competitor monitoring. He is a member of the Institution of Engineering and Technology (IET) and a member of the Institute of Electrical and Electronics Engineers (IEEE). David’s clients include multi-national corporations and SMEs based in the UK, Europe and worldwide and he regularly presents IP lectures for clients and associates. He is a contributor to the D Young & Co Patent Newsletter.

More details

Bradley Hulbert
McDonnell Boehnen Hulbert & Berghoff LLP

Bradley Hulbert is a founding partner in McDonnell Boehnen Hulbert & Berghoff LLP, an 80-lawyer patent firm based in Chicago. Bradley has been lead counsel in a wide range of successful patent lawsuits and is an adjunct professor of law at the Chicago-Kent Law School.

More details

NEW higher discounts for multiple bookings - bring your colleagues to make your training budget go further:

  • 30% off the 2nd delegate*
  • 40% off the 3rd delegate*
  • 50% off the 4th delegate*

Please contact us for pricing if you are interested in booking 5 or more delegates

15-16 May 2024

Classroom
Rembrandt Hotel
London

09:00-17:00 UK (London)
Course code 13674
Optional £270/€351/$405 per night

  • GBP 1,199 1,399
  • EUR 1,729 2,009
  • USD 1,977 2,289

Until 10 Apr

  • 2 days classroom-based training
  • Optional accommodation - 2 nights including breakfast, checking in the day before the course
  • Meet presenters and fellow attendees in person
  • Lunch and refreshments provided
  • Download documentation and certification of completion
  • Fair transfer and cancellation policy

View basket 

 
Not ready to book yet?

for 7 days, no obligation

6-7 November 2024

Classroom
Rembrandt Hotel
London

09:00-17:00 UK (London)
Course code 14014
Optional £240/€312/$360 per night

  • GBP 1,199 1,399
  • EUR 1,729 2,009
  • USD 1,977 2,289

Until 02 Oct

  • 2 days classroom-based training
  • Optional accommodation - 2 nights including breakfast, checking in the day before the course
  • Meet presenters and fellow attendees in person
  • Lunch and refreshments provided
  • Download documentation and certification of completion
  • Fair transfer and cancellation policy

View basket 

 
Not ready to book yet?

for 7 days, no obligation

* Early booking discounts may not be combined with other discounts or offers. As such, the discounts for 2nd/3rd/4th delegates are based on the full price; and apply only when booking multiple delegates on the same date.

Reviews of IPI's How to Avoid Common Pitfalls in Combined EU/US Patent Applications training course


Very relevant to point out the differences in the US audience (examiners, judges, jury) and the differences to European examiners. A lot of examples from court cases etc. Good, practical tips on how to find the golden mean when preparing a patent application that can work both in EP and in the US. Course content, presentation and speakers all amazing. An eye opener for anyone familiar with EP practice, but not so much with US practice (or vice versa) - avoiding ethnocentrism. Expert level course (ideal for me with 20 years EP experience). Very knowledgeable and experienced speakers who could pinpoint the trouble points for EP practitioners.

Nov 8 2023

Lars Hald
Senior Patent Manager, Ambu A/S

May 15 2019

I felt very important to remind that none of the system is better, the systems are different. The course was very interesting and gave some useful practical information for improving our work as patent attorneys.

Alexandra GOREAUD
Patent attorney, GERMAIN MAUREAU

May 16 2018

Great

Miruna Enescu
Patent Attorney, ROMINVENT

May 17 2017

Very good

Tajeshwar Singh
Patent Attorney, Protector IP AS

May 17 2017

I think the content was extremely good and will be helpful going forward.

Triona Walshe
Senior Intellectual Property Attorney, James Hardie Technology Limited

May 17 2017

Very helpful. Not too much new information but confirms my thoughts on how to draft applications.

Katrin Lindberg
European Patent Attorney, Valea AB

May 17 2017

Entertaining and inspiring

Henrik Mathiassen
Director of IP, Zealand Pharma

United Kingdom

  • Cambridge Display Technology Ltd
  • D Young & Co LLP
  • HTC Europe Co. Ltd
  • Nexeon Ltd
  • NXP Semiconductors
  • NXP Semiconductors Ltd
  • Pfizer Limited
  • Procter & Gamble Technical Centres Ltd
  • Unilever
  • Waldner IP Law Ltd
  • Withers & Rogers LLP
  • Xaar Plc
  • Zealand Pharma

Denmark

  • Ambu A/S
  • Budde Schou
  • Chas Hude A/S
  • DuPont Nutrition Biosciences ApS
  • Novozymes A/S
  • Plougmann & Vingtoft
  • Zacco Denmark
  • Zacco Denmark A/S

Netherlands

  • AOMB IP Consultants
  • AOMB IP consulting
  • DeltaPatents B.V.
  • DSM
  • European Patent Office
  • Hunter Douglas Industries BV
  • NLO
  • Unilever

Germany

  • Dreiss Patentanwalte
  • Henkel KGaA
  • Hoffmann Eitle
  • Liedtke & Partner
  • Maiwald Patentanwalts GmbH

Belgium

  • Bayer CropScience N.V.
  • BIIP cvba
  • IBA
  • Yara SA/NV

Austria

  • Patentanwalt Dr Andreas Weiser
  • Patentanwälte Pinter & Weiss OG
  • Patentanwaltskanzlei Matschnig & Forsthuber

Sweden

  • Essity Hygiene and Health AB
  • Ström & Gulliksson AB
  • Valea AB

Switzerland

  • AC Immune SA
  • Omya International AG
  • Société des Produits Nestlé S.A.

Norway

  • Onsagers AS
  • Protector IP AS

Canada

  • BCF

France

  • GERMAIN MAUREAU

India

  • Tata Steel

Ireland

  • James Hardie Technology Limited

Japan

  • Lexia Partners

Luxembourg

  • Corax IP

Romania

  • ROMINVENT

Russia

  • LLC BIOCAD SK

Enrol or reserve

Run How to Avoid Common Pitfalls in Combined EU/US Patent Applications Classroom for your team

2 days

Typical duration

Pricing from:

  • GBP 800
  • Per attendee, based on 10 attendees
  • Course tailored to your requirements
  • At your choice of location, or online

 

We can customise this course to your requirements and deliver it on an in-house basis for any number of your staff or colleagues.

Contact our in-house training experts Aleksandra Beer and Yesim Nurko to discuss your requirements:

Multiple colleagues? See above for details of our discounts for 2, 3, or 4 delegates. For more, talk to one of our training experts to discuss how to:

Run this course conveniently and cost-effectively in-house for your staff and colleagues

Aleksandra Beer

Aleksandra BEER
Training expert

Yesim Nurko

Yesim NURKO
Training expert

+44 (0)20 7749 4749

inhouse@ipi.academy