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US Patent Practice - What European Patent Attorneys Need to Know: London Conference, 5th & 6th June 2014

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SOURCE Research and Markets

DUBLIN, May 8, 2014 /PRNewswire/ --

Research and Markets ( has announced the addition of the "US Patent Practice - What European Patent Attorneys Need to Know (Seminar, London)" conference to their offering. 

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The US Patent Practice - What European Patent Attorneys Need to Know seminar will be held on the 05-06 June 2014 at The Rembrandt Hotel, London

US and European patent practice differ in many essential ways. The comprehensive programme of this course, with practical examples, will highlight and explain these differences from the US point of view, giving delegates a better understanding of the US system, and enabling them to work more effectively with their US counterparts and draft applications that can most effectively serve as priority applications in the US.

Highlights of the programme:

- The latest changes in statutory law, including the provisions of the AIA
- Claim construction - the different ways the USPTO and the courts determine claim meaning and scope 
- Successful US claim drafting - tools, strategies and pitfalls 
- Novelty and the transition to First-to-File' under the AIA
- Double Patenting - a trap for the unwary corporate client
- Fulfilling the Duty of Candor and avoiding the scourge of inequitable conduct
- Patent prosecution: Rules, Regulations and Best practices, including restriction and continuation practice
- Direct and Indirect Infringement - including liability of suppliers and contractors
- Patent Litigation - and how to protect against the liberal discovery in US courts
- And much more 

The course has been designed for:

- 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
- Anyone drafting patent applications that might serve as a priority application in the US

A Certificate of Attendance for Professional Development will be given to each participant who completes the course.


This course merits 11 hours under the UK Solicitors Regulation Authority self-accreditation scheme (ref. CJA/MAFO), and may also be relevant training under the IPReg CPD self-accreditation scheme.

Key Topics Covered: 


Claim Construction
- How the Courts and the USPTO determine claim meaning
- Claim drafting best practices

35 U.S.C. - 112 - Specification, Enablement, Written 
Description, Claims
- Written Description
- Ariad v. Eli Lilly
- Enablement
- In re Wands Factors
- Best Mode, pre- and post-AIA
- Means-Plus-Function claiming (35 U.S.C. - 112 - 6)
- Definiteness of claims

35 U.S.C. - 101 - Patentable Subject Matter
- Patentable subject matter
- Computer-implemented inventions and business methods
- In re Bilski
- Medical diagnostic and treatment methods
- Prometheus v. Mayo Clinic
- Products of nature
- Myriad gene patenting litigation

35 U.S.C. - 101 - Utility 

35 U.S.C. - 102 - Novelty
- All elements rule
Genus/species considerations
- Enabling disclosure
- Inherency
- Analysis of pre-AIA 35 U.S.C. - 102(a)-(g) 
- On sale bar
- Secret prior art - 35 U.S.C. - 102(e)
- Analysis of post-AIA 35 - 102 - comparison and contrast with pre-AIA law
- How the USPTO is adapting to change to first-to-file' system

35 U.S.C. - 103 - Non-obviousness
- The factual inquiries of Graham v. John Deere
- The Supreme Court's latest guidance - KSR v. Teleflex
- Responding to obviousness rejections in the USPTO
- Common ownership, joint development and obviousness
- Obviousness under the AIA - how changes in the definition of prior art affect obviousness determinations

Patent Prosecution 
- Provisional applications
- Continuation and Continuation-in-Part applications
- Restriction Practice and Divisional applications
- Patent term and Patent term adjustment
- Accelerated and Prioritized Examination
- Patent Prosecution Highway

Obviousness - Type Double Patenting

The Duty of Candor 
- Avoiding inequitable conduct
- Time and manner of citing prior art
- Disclosure of related prosecution


Interference and Derivation Proceedings
- Interferences - pre-AIA applications
- Conception and reduction to practice
- Derivation proceedings in post-AIA applications, as compared to interferences
- Best practices in documenting conception, diligence and reduction to practice

Post Issue Practice
- Post-grant review under the AIA
- Re-examination procedure and strategy
- Supplemental examination
- Re-issue
- Certificates of Correction

35 U.S.C. - 271 - Infringement
- Markman proceedings in the courts
- Literal Infringement
- Doctrine of Equivalents analysis
- Hilton Davis v. Warner Jenkinson
- Festo
- Indirect Infringement - liability for infringement by others
- Joint infringement - method claims with a third-party performing a step
- Infringement by importation into the US - 35 U.S.C. - 271(g)
- Willful infringement
- Opinions of counsel
- Significance (Knorr-Bremse, In re Seagate)
- Notice of Infringement preparation, and response: Declaratory Judgments

Patent Litigation and the Liberal Scope of Discovery

Remedies - to the Victor Belong the Spoils

Damages: How determined, how to factor into your claim drafting
- i4i v. Microsoft
- Lucent v. Gateway
- Entire Market Value
- eBay v. MercExchange 

For more information visit

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