About the Course
Introduction
This CLE course will guide patent counsel in drafting U.S.-origin patent applications to maximize prosecution opportunities in both the U.S. and Europe. After discussing each area, the panel will offer best practices for U.S. patent application drafters to protect inventions in Europe without sacrificing U.S. strategy.
Description
When drafting U.S. patent applications, counsel's initial focus is generally to position it for success in the USPTO. Many patent holders also want international patent protection and failing to consider other legal standards can prove detrimental to achieving that end. This program will compare and contrast specific USPTO and EPO legal standards.
Differences between the U.S. and European systems include standards for priority, amendments, obviousness, enablement, and written description. As a result, any misunderstanding of these differences when drafting the U.S.-origin application can negatively impact prosecution opportunities in Europe.
Patent counsel's planning for European patent requirements during the USPTO process in anticipation of global protection will reduce costs and can overcome many obstacles presented by Europe's different approach to granting patent protection.
Listen as our authoritative panel of U.S. and European patent counsel discusses the principal considerations for drafting U.S. patent applications to maximize prosecution opportunities in Europe and examines essential differences between the USPTO and EPO approaches. The panel will offer best practices for U.S. patent application drafters to protect inventions in Europe without sacrificing U.S. strategy--and vice versa.
Presented By
With more than 25 years of experience in biotechnology patent prosecution and counseling, Ms. McNeill offers intellectual property strategy, new application preparation, patent prosecution (US and foreign), preparation and negotiation of IP transactions, USPTO contentious practice, and the full scope of counseling services to clients of various sizes. She has earned a reputation for excellence in her field, having been recognized as an IP Star by both Managing Intellectual Property and LMG Life Sciences and ranked with an AV Preeminent® Peer Review Rating from Martindale-Hubbell. ® Ms. McNeill has worked with biotech start-ups, research foundations, universities, and pharmaceutical companies, ranging from early-stage to publicly-traded companies. She has managed and directed the US and international patent portfolios for US clients and has overseen the US patent portfolio for international clients in Europe and Asia. Ms. McNeill has also expertly resolved material errors made by others in transactions with the US Patent and Trademark Office, in applications under the PCT, or in foreign patent prosecution, including filing errors and errors in the payment of maintenance or annuity fees. She also has experience in litigation and USPTO contentious proceedings.
Mr. Nørgaard counsels on all areas of life science and medical technology including anything from genetics and molecular biology to drugs, diagnostics, analytical equipment, medical equipment, and greentech. He counsels on IPR strategy, IPR organization and management of companies, business development, license agreements, freedom-to-operate, validity of patents, oppositions and appeals before the EPO (European Patent Office), in addition to drafting and prosecution of patent applications. He also serves as a technical judge in Norway. Since 2015 he has served as Chairman of the Board at HØIBERG.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Date + Time
- event
Monday, April 14, 2025
- schedule
1:00 p.m. ET./10:00 a.m. PT
- The EPO takes a literal approach to read all documents
- Drafting applications with an eye to potential future amendments
- Priority
- Novelty
- Inventive step
- Enablement
- Methods of treatment and diagnostic uses
- The EPC and the Unitary Patent
The panel will review these and other high priority issues:
- What are the considerations for patent counsel drafting U.S. applications when global patent protection is anticipated or desired?
- What are the significant differences between the U.S. and European approaches to patent applications?
- What steps should counsel take when drafting U.S. patent applications to maximize protection in Europe?
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