For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Tuesday, 7 May 2013

Patent seminars focus on differences in claim construction, patentability standards

Despite his natural preoccupation with trade marks while attending this year's International Trademark Association annual Meeting, this Kat has not forgotten about patents. He notes that his friends at Management Forum have a couple of patent seminars coming up in the very near future -- next week, in fact. both seem pretty useful, but their very usefulness highlights what can be described as arbitrary and objectively unjustifiable differences between patent systems and the way they work.

Merpel indulges in a little
purposive construction ...*
On Thursday 16 May there's "The Impact of Patent Construction – How to prove Infringement and Validity in the USA, UK and Germany" (details here), which seeks to provide both an analysis and a comparison of the varying approaches in the US, UK and Germany regarding patent claim construction, their respective doctrines of equivalents, purposive construction and validity. This seminar, the organisers promise, will be illustrated with examples and case studies. As usual there will be plenty of opportunities for questions and discussion. The big question which Merpel hopes will be asked is why there should be differences between these jurisdictions in terms of claim construction: he accepts that different modes of claim construction may be engaged with regard to different types of patent and different sectors of technology, but feels that the basic principles -- even if they may be applied inconsistently from time to time -- should by now be set in concrete. Perhaps speakers Ulrich Blumenröder (Grünecker, Kinkeldey, Stockmair & Schwanhäusser, Munich), William Cook (Marks & Clerk, London) and Bradley Hulbert (McDonnell Boehnen Hulbert & Berghoff, Chicago) can be tempted to explain why this is not, or should not be, the case.

On the next day (Friday 17 May) comes "Prosecution of EPO and US Patent Applications Based on a Single Specification"  (details here)--  another useful seminar which has been designed to help applicants wanting to adopt a single approach when prosecuting patent applications before both European and US Patent Offices. Say the organisers: "Learning how to work with the parallel but substantially different standards of patentability employed by the EPO and USPTO should prevent seminar attendees from making avoidable mistakes thereby saving time, money, and unnecessary aggravation". Again, Merpel feels that, after so many years of discussing standards of patentability and their mode of assessment, whether in conferences, meetings of international bodies or anywhere else, it is sad and regrettable that major patent-granting organisations' standards of patentability should remain far enough apart to form a credible basis for a patent seminar.

Both seminars will be held in the Cavendish Hotel, Jermyn Street, London, and details of available discounts for IPKat readers are available from Josephine Leak at josephine.leak@management-forum.co.uk -- so long as you remember to mention 'IPKat' in your email.

* Bob Cat the Builder, by CaptainScratch (Deviant Art}

2 comments:

Anonymous said...

Say the organisers: "Learning how to work with the parallel but substantially different standards of patentability employed by the EPO and USPTO should prevent seminar attendees from making avoidable mistakes thereby saving time, money, and unnecessary aggravation". Again, Merpel feels that, after so many years of discussing standards of patentability and their mode of assessment, whether in conferences, meetings of international bodies or anywhere else, it is sad and regrettable that major patent-granting organisations' standards of patentability should remain far enough apart to form a credible basis for a patent seminar....

Happily none of my clients have filed in the EPO. But a few weeks ago, in a visit to the DC area, a younger colleague, head of IP for a Baltimore-based firm with multiple offices, told me that the EPO has become so difficult, apparently through over-literal constructions, that more experienced patent drafters can't cope. One has to be trained from the ground up in EPO idiosyncrasies to gain allowances.

MaxDrei said...

Sympathy for the Person in Baltimore. Plenty of opportunity for conference organisers to sell tickets to discuss this subject. Drafting in chem/bio is not so bad because they know what they have invented. But in engineering, I think you simply cannot reconcile best drafting practice, US-style, with best practice EPC-style.

For the EPO it is vital scrupulously to match technical efeects to technical Features, in your specification, from the get go, and include a correspondingly graded set of dependent Claims, onion layer style, climbing steadily the mountain of patentability towards the Peak of the Best Mode (best effect from the most specific combination of Features).

Do that for the USPTO though and your Client will suffer.

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