Description Amendments at the EPO and Implications for U.S. Litigation: Updated EPO Guidelines for Examination

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Thursday, April 14, 2022
- 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 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

Ms. Holt is an experienced patent litigator at both the appellate and trial levels. A former clerk at the U.S. Court of Appeals for the Federal Circuit, she represents clients in patent disputes before the Federal Circuit, the U.S. Supreme Court, and district courts across the country. She handles cases involving a variety of technologies, with an emphasis on the biotechnology, pharmaceutical, and life sciences industries. She also assists clients in portfolio counseling matters and proceedings before the U.S. Patent and Trademark Office (USPTO).

Ms. Morozova's professional career has spanned across three countries and more than ten years of legal experience across two continents. Her unique background enables her to understand cultural nuances and helps her to advise a broad range of clients across the world. Qualified as a patent attorney in the United States and Europe, she focuses her practice on patent procurement and portfolio development in all fields of engineering on both sides of the Pond. She has technical expertise across different fields of engineering, most particularly in information technology and software, telecommunications, and mechanical. Her experience includes patent drafting and prosecution of patent and design applications internationally, developing and implementing IP strategies tailored to business plans, worldwide patent portfolio management, freedom-to-operate searches and infringement, and validity advice. She has worked with a diverse range of global clients from startups to large corporations and is well adept at understanding and meeting the different aims and requirements of each individual client.Â

Ms. O’Flynn is a European and UK patent attorney with more than a decade of in-house experience, having worked at some of the world’s largest multinational corporations in the oil and chemical industries. She has worked for a range of clients, from startups to multinationals, covering diverse technologies such as cosmetics, sustainable chemistry, and catalysis.

Mr. Neer's practice encompasses patent litigation and prosecution in the areas of chemicals, cosmetics, plants, and pharmaceuticals. He has assisted with a variety of matters, including complex pharmaceutical patent litigation under Hatch-Waxman, proceedings before the Patent Trial and Appeal Board (PTAB), and patent prosecution.
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
- Updated EPO Guidelines for examination
- Description amendments
- What it means for U.S. litigation
- Best practices
- Responding to objections of inconsistency between the description and claims
- Drafting patents
- 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?
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