US Patent Practice Seminar: Highlights of the Differences Between US and Europe (London, United Kingdom - December 4-5, 2018) -

The "US Patent Practice " conference has been added to's offering.
The differences between US and European practice will be highlighted, providing a better understanding of the US system, and enabling you to work more effectively with your US counterparts.
Gain an update on the latest state of US Patent Law, including the latest legislative changes under the America Invents Act, recent and pending US Supreme and other Court decisions of importance, and current happenings in the USPTO.
Take away specification and claim drafting tips to give your application a solid footing for US prosecution and enforcement. Take advantage of the open seminar environment that results in a high degree of interaction with the seminar leaders and among the participants; bring your particular questions and concerns for discussion.

Key Topics To Be Covered At This Seminar:

  • Legal framework
  • AIA overview
  • US patent prosecution
  • Enablement
  • Definiteness
  • Novelty and prior art
  • Obviousness
  • Provisional and continuing applications in USPTO programs
  • Duty of candor
  • Infringement
  • Patent litigation and damages

Who Should Attend:

  • Corporate Patent Counsel
  • Patent Attorneys from corporate and private practice
  • Intellectual Property Consultants
  • Patent Managers and Engineers
  • Company Legal Advisers
  • All those involved with patent protection in the United States


Registration and refreshments

Introduction to the seminar

Legal framework

  • Statutes and rules
  • Courts and agencies

AIA overview / claim construction

  • Phillips - broad multifaceted inquiry
  • Claim constructions rules and guidelines
  • Claim construction in the USPTO


US patent prosecution - general flow

Written description

  • Possession' of claimed invention
  • Ariad - increased focus on what inventors actually did


  • Wands factors - to show whether amount of experimentation necessary would be undue'
  • Interplay with written description requirement

Best mode

  • Effect of the AIA



  • Nautilus - the reasonable certainty' standard
  • USPTO practice

Means-plus-function claiming

Statutory subject matter

  • Supreme Court jurisprudence
  • USPTO guidance



Patent Law Treaty implementation

Novelty and prior art

  • Pre-AIA - first to invent'
  • Post-AIA - first to file'

Close of day one


Novelty/prior art (if necessary)

  • Obviousness
  • Graham and KSR
  • USPTO practice - prima facie obviousness

Provisional applications

  • Pre-AIA vs. Post AIA

Continuing applications

  • Continuations, divisionals, continuations-in-part


Restriction practice

  • Restriction vs. Election of Species
  • Rejoinder

Patent term and PTA

Obviousness - type double patenting

  • Gilead cases
  • Terminal disclaimers

USPTO programs

  • Terminal disclaimers

Patent Law Treaty Implementation

Obviousness - type double patenting

  • Accelerated examination, track one, patent prosecution highway
  • First action interview, after-final consideration, pre-appeal brief request for review pilot programs

Duty of candor

  • Citation of references
  • Inequitable conduct



Post-issuance practice

  • Re-examination and re-issue
  • Inter partes review, post-grant review, covered business method review


  • Direct infringement
  • Contributory infringement and inducement
  • Extraterritorial infringement

Doctrine of equivalents

  • Function/way/result test
  • Festo - prosecution history estoppel


  • Opinions

Declaratory judgment

Patent litigation and damages

Close of Course

For more information about this conference visit

Laura Wood, Senior Manager
For E.S.T Office Hours Call 1-917-300-0470
For U.S./CAN Toll Free Call 1-800-526-8630
For GMT Office Hours Call +353-1-416-8900
Related Topics: Patents

Laura Wood, Senior Manager
For E.S.T Office Hours Call 1-917-300-0470
For U.S./CAN Toll Free Call 1-800-526-8630
For GMT Office Hours Call +353-1-416-8900
Related Topics: Patents