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Course Details

This CLE webinar will guide patent counsel on the description amendments and the amended/updated European Patent Office (EPO) Guidelines for Examination. The panel will discuss what it could mean for U.S. litigation and what applicants/counsel should consider or do to comply with the guidelines and reduce the amount of potentially negative impact on U.S. litigation.

Faculty

Description

The EPO updates its Guidelines for Examination every year and the latest version went into effect on March 1, 2022. The update in 2021 revised the section that relates to adapting the description for consistency with the claims. As a result, many applicants experienced a stricter approach from EPO examiners such that significant description amendments were required before an application could proceed to allowance. The update in 2022 brings further changes to this section, which may indicate a relaxation of the approach. However, it is likely that many EPO examiners will still require significant description amendments to achieve consistency between the description and claims.

The Federal Circuit will consider relevant statements made to foreign patent offices. It is an open question how description amendments made during European prosecution may affect U.S. litigation; U.S. courts have yet to grapple with this specific question. However, patent owners should be mindful of the potential impact that their description amendments in Europe could have on the assessment of related U.S. patents in U.S. litigation.

Listen as our authoritative panel of patent attorneys examines description amendments and the updated EPO Guidelines for Examination. The panel will discuss what it could mean for U.S. litigation and what applicants/counsel should consider or do to comply with the Guidelines and reduce the amount of potentially negative impact on U.S. litigation.

Outline

  1. Updated EPO Guidelines for examination
  2. Description amendments
  3. What it means for U.S. litigation
  4. Best practices
    1. Responding to objections of inconsistency between the description and claims
    2. Drafting patents
    3. Responding to rejections

Benefits

The panel will review these and other key issues:

  • What implications could the amended EPO Guidelines have for U.S. litigation?
  • What steps should counsel take to minimize the potential negative impact for U.S. patents?