Patent Drafting for Multiple Jurisdictions
Can Applicants File One Application and Obtain Adequate Protection in the U.S., Korea, EPO, and China?

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Wednesday, October 11, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide patent counsel on drafting for multiple jurisdictions. The panel will examine important considerations when drafting a single patent application, focusing on filing in the U.S., Korea, EPO, and China. The panel will discuss grace periods, data considerations, and how the choice of language when drafting can impact prosecution and beyond. The panel will offer best practices for drafting single patent applications for use in several countries.
Faculty

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.

Dr. Yang focuses on complex patent litigation before U.S. district courts and inter partes review (IPR) proceedings in the chemical, pharmaceutical, and biotechnological fields. She has experience representing pharmaceutical patent holders in Hatch-Waxman litigations and has drafted numerous appellant and appellee briefs for pharmaceutical clients at the U.S. Court of Appeals for the Federal Circuit. She has handled various aspects of trial preparation, including fact and expert discovery, depositions of key witnesses and experts, and motion practice, along with other pre-litigation due diligence and position analysis. She also has worked on multiple IPR cases on behalf of petitioners or patent owners and has been involved in all aspects of those cases. In addition, she has conducted a variety of due diligence analysis in the biotechnological field for licensing, acquisition, freedom-to-operate, and startup fundraising.

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

Ms. Kim focuses on patent litigation and patent prosecution in the chemical and pharmaceutical fields. Her litigation experience includes conducting discovery on Abbreviated New Drug Application (ANDA) litigation. She has also researched various legal matters in preparation of inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office.

Mr. Barcombe is a qualified European and Chartered (UK) patent attorney with a background in biotechnology. His experience extends to drafting, prosecuting and opposing European patent applications directed to a wide array of technologies, including nucleotide therapies, stem cells and biomarkers. Prior to joining the firm, Mr. Barcombe worked for another large patent law firm in the U.K. He is adept in patent drafting, prosecution, and opposition, and providing strategic advice to clients ranging from global pharmaceutical companies to startups. Mr. Barcombe has experience managing international portfolios for clinical and pre-clinical candidates and pursuing protection for the candidates themselves in addition to their medical uses, manufacturing methods, and patient subgroups. His technical expertise spans the life sciences, covering biologics, biotechnology, clean energy, food and beverage, textiles and pharmaceuticals. Mr. Barcombe previously worked in research and development for a multinational pharmaceutical company and practiced intellectual property management for a world-leading animal health institute, as well as conducted academic research investigating the delivery of therapeutic nucleotides.
Description
Many patent applicants would like to have a single patent application that will serve them in several countries. This is ambitious since there are many differences between various countries' patent systems, but perhaps not impossible. Patent counsel need to be aware of and try to balance all the different requirements in the single patent application.
Among the key considerations are grace period provisions in the various countries. A patent may only be granted for new inventions, but some countries have grace periods for inventor disclosures. This can be critical for some patents where data is needed to support patent claims. Patent counsel must be aware of the data requirements from the various countries in which they anticipate filing the patent applications, as deficiencies in the data can be difficult, if not impossible, to remedy during prosecution depending on the country. Further, when drafting an application, counsel should take care over their choice of language, as this can impact the amendments that will be permitted during prosecution, and on the ability to enforce and defend the granted patent.
Listen as our authoritative panel of patent attorneys examines some important considerations when drafting a single patent application, focusing on the key jurisdictions of the U.S., Korea, EPO, and China. The panel will discuss grace periods and how much data is recommended for filing a patent application in the U.S., Korea, EPO, and China. The panel will also examine ways of drafting the application to minimize future added subject matter and patent profanity issues in the U.S., Korea, EPO, and China.
Outline
- Grace period provisions
- Data considerations
- Language and terminology considerations
- Best practices
Benefits
The panel will review these and other key issues:
- Can I file a single patent application, or will a prior disclosure make this unfeasible?
- Do I file early with minimal data or wait until more data are available?
- What terminology should I use/avoid when drafting for multiple jurisdictions?
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