Original Air Date 8.27.20
This course has expired and is no longer eligible for CLE.

There are many differences between the patent prosecution practice before the USPTO and the patent prosecution practice before the EPO. In many situations, the differences may be significant and thus may impact the patent application drafting and prosecution processes in the jurisdictions. The differences and the reasons for the differences are often dynamic and can change rapidly. Some of the differences are rooted in the dynamically changing patent law, others are rooted in the different patent prosecution standards.
This paper provides a review of some of the differences between the practice before the USPTO and before the EPO. The paper also attempts to provide some guidance to patent prosecutors to allow them avoiding some prosecution pitfalls in both jurisdictions.
In our Part 1 of 3 webinar, we discussed the differences in the US and the EP patent eligibility standards. In this Part 2 of 3, we discuss the differences in determining claim definiteness, enablement and admissibility. In our upcoming Part 3 of 3, we will discuss the differences in addressing anticipating rejections, obviousness-based rejections, and certain procedural differences in, for example, appeal proceedings and oral proceedings.

Presenters:

Malgorzata Kulczycka of Hickman Palermo Becker Bingham LLP
Eric-Michael Dokter of Viering, Jentschura & Partner