Law Seminars International Presents

A Comprehensive One-Day Workshop on

Successful Multilateral Patents

With representatives from Australia, China, Japan and the United Kingdom

June 26, 2007
Crowne Plaza Union Square Hotel in San Francisco, CA
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Who Should Attend

Patent attorneys in private, corporate, or public agency practice, patent managers, inventors, and anyone dealing with international patent preparation and prosecution

Why Attend

The importance of the modern patent application description extends beyond considerations of enablement, support and basis for amendment, as it becomes more significant in interpreting patent claims. The law may differ from country to country, but in the UK, since Kirin-Amgen, and in the U.S., since Phillips v AWH, the description has become fundamental and a "dominant" source of interpretive guidance. Other major-market jurisdictions such as the European Patent Office, Japan, China and Australia have country-specific requirements for a description that will be successful both in prosecution and enforcement. Further, companies filing applications in multiple countries are constantly searching for methods of efficiency and maximum impact in multilateral prosecution. This workshop will enable attendees to understand the interplay of the specification and the claims in several major jurisdictions. The workshop will culminate in a discussion and redrafting of an actual patent specification for a simple mechanical invention, covering best practices for drafting the same description for success in multiple countries, and will answer questions such as: Can a multilateral application satisfy the EPO "problem-solution" approach without unduly limiting the claims elsewhere? What particular statements could broaden the scope of equivalents? What statements are unintentionally limiting? ~ Program Co-Chairs: Christopher J. Palermo, Esq. and Gwilym V. Roberts, Esq.

What You Will Learn

~Successful patent preparation and prosecution with the EPO, JPO, Australia and China ~Managing multilateral patent procurement; selecting foreign jurisdictions most appropriate for patent applications ~PCT rule changes and multilateral initiatives ~Drafting the specification and claims in a multilateral patent application: benefits and drawbacks, drafting issues ~Litigating patents overseas: country-specific considerations

Agenda

Tuesday, June 26, 2007
8:00 am Registration & Continental Breakfast
8:30 am Introduction & Overview
  Christopher J. Palermo, Esq., Program Co-Chair
 Hickman, Palermo, Truong & Becker, LLP / San Jose, CA
8:45 am Focus on Europe: Successful Preparation and Prosecution
  Formal requirements for the description and claims in the EPO; recent case decisions affecting how descriptions and claims should be drafted for success; EPO operational issues
  Gwilym V. Roberts, Esq., Program Co-Chair
 Kilburn & Strode / London, United Kingdom
9:30 am Focus on Japan: Successful Preparation and Prosecution
  How the JPO determines lack of inventive step; how the description and claims should be drafted for success
  Hirohito Katsunuma, Esq.
 Kyowa Patent and Law Office / Tokyo, Japan
10:00 am Focus on Australia: Successful Preparation and Prosecution
  Preparing specifications and claims to maximize patent protection in Australia; tips and strategies for expediting Australian patent prosecution
  Barry Eagar, Esq.
 Eagar & Buck Patent Attorneys / Brisbane, Australia
10:30 am Break
10:45 am Focus on China: Successful Preparation and Prosecution
  Perspectives and suggestions on patent prosecution in China; the current patent system and development trends of patent law in China
  Samson G. Yu, Esq.
 Kangxin Partners P.C. / Beijing, China
11:15 am PCT Rule Changes, the US-JP Patent Prosecution Highway, EPO-US Priority Document Sharing, and Other Multilateral Initiatives
  Harmonizing and standardizing policies and procedures: Status of pilot programs, suggestions under consideration, and the impact on patent practitioners' practice
  Mae Joanne Rosok, Esq.
 Seed Intellectual Property Law Group PLLC / Seattle, WA
12:00 pm Lunch (on your own)
1:15 pm Managing Multilateral Patent Procurement
  Selecting foreign jurisdictions most appropriate for patent applications corresponding to a prior U.S. case; ensuring consistent claim coverage across multiple countries; management systems; managing outside counsel
  Travis W. Thomas, Esq.
 Baker Botts LLP / Dallas, TX
1:45 pm Drafting the Specification and Claims in a Multilateral Patent Application
  Can a U.S. application be drafted for later successful foreign prosecution with minimal changes in the specifications? Proposed form introduced; interactive panel addressing benefits and drawbacks; drafting issues; multiple jurisdiction claims
  Christopher J. Palermo, Esq., Program Co-Chair, Moderator
 Hickman Palermo Truong & Becker LLP / San Jose, CA
  Can a U.S. application be drafted for later successful foreign prosecution with essentially no changes in the specifications? Proposed form introduced; interactive panel addressing benefits and drawbacks; drafting issues; multiple jurisdiction claims
  Gwilym V. Roberts, Esq., Program Co-Chair
 Kilburn & Strode / London, United Kingdom
  Hirohito Katsunuma, Esq.
 Kyowa Patent and Law Office / Tokyo, Japan
  Barry Eagar, Esq.
 Eagar & Buck Patent Attorneys / Brisbane, Australia
  Samson G. Yu, Esq.
 Kangxin Partners P.C. / Beijing, China
3:30 pm Break
3:45 pm Litigating Patents Overseas: Country-Specific Considerations
  Pre-filing considerations, discovery issues, trial procedures, remedies, and cultural issues of litigating patents in the UK, Germany, France, Netherlands, Japan and China
  Gwilym V. Roberts, Esq., Program Co-Chair, Moderator
 Kilburn & Strode / London, United Kingdom
  Tibor Gold, Esq.
 Kilburn & Strode / London, United Kingdom
  Hirohito Katsunuma, Esq.
 Kyowa Patent and Law Office / Tokyo, Japan
  Barry Eagar, Esq.
 Eagar & Buck Patent Attorneys / Brisbane, Australia
  Samson G. Yu, Esq.
 Kangxin Partners P.C. / Beijing, China
5:00 pm Conclusions, Evaluations & Adjourn

Tuition

Regular tuition for this program is $695 with a group rate of $620 each for two or more registrants from the same firm. For government employees, we offer a special rate of $545. For students and people in their job for less than a year, our rate is $347.50. All rates include admission to all seminar sessions, food and beverages at breaks, and all course materials. Make checks payable to Law Seminars International.

Cancellation & Substitution

You may substitute another person at any time. We will refund tuition, less a $50 cancellation fee, if we receive your cancellation by 5:00 p.m. on Wednesday, June 20, 2007. After that time, we will credit your tuition toward attendance at another program or the purchase of a homestudy. There is a $25 cancellation fee for Course Materials orders and $50 for Homestudy orders.

Continuing Education Credits

Law Seminars International is a State Bar of California approved MCLE provider. This program qualifies for 6.75 California MCLE credits. Upon request, we will apply for CLE credits in other states and other types of credits.

Location

The workshop will be held at the Crowne Plaza Union Square Hotel at 480 Sutter Street in San Francisco, CA 94108. Call the hotel directly at (415) 398-8900 for reservations at the special negotiated rate of $179 and mention that you are attending a Law Seminars International workshop. Rooms are on a first come, first served basis.
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If You Cannot Attend

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $705. The written course materials alone are available for $100. We will ship your homestudy order via UPS ground within two weeks after the seminar or the date we receive payment (whichever is later).
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Faculty Bios

Christopher J. Palermo, Program Co-Chair and partner with Hickman, Palermo, Truong & Becker, LLP, concentrates on patent prosecution, trademark, and licensing matters primarily advising companies located in the U.S., U.K., and Japan with technology relating to networking, telecommunications, object-oriented software, and the World Wide Web. His sub-specialties include medical devices, speech recognition, voice mail, e-commerce, cryptography, and digital imaging. He is active in the Intellectual Property Owners trade association.

Gwilym V. Roberts, Program Co-Chair and partner with Kilburn & Strode in London, practices as a Chartered Patent Attorney, European Patent Attorney, and certified Patent Agent Litigator. His focus is in the physics, computing and communications fields, addressing worldwide patent filing strategies, problems of capturing and exploiting IP with a special interest in basic mechanics of patent drafting. He sits on the Chartered Institute of Patent Attorneys (CIPA) Patents and Textbooks committees and is a CIPA delegate to the Patent Practice Working Group. He is the author of "A Practical Guide to Drafting Patents" published by Sweet & Maxwell (November 2006).

Barry Eagar is a patent and trademark attorney with Eagar & Buck Patent Attorneys in Brisbane, Australia. He specializes in procuring IP rights for companies in the IT industry both in Australia and internationally. His firm is a boutique practice working with clients in the IT and electronics industries. Barry enjoys speaking and last year he delivered a presentation to the ABA Intellectual Property Section on the law relating to software inventions in Australia and on prosecution tips and strategies in Australia. He has also spoken at meetings of the Intellectual Property Society of Australia and New Zealand (IPSANZ) and the Australian Computer Society in connection with software and business method patents in Australia.

Tibor Gold, partner with Kilburn & Strode in London, specializes in trademark, design, and copyright law, with extensive experience in drafting and prosecuting patent applications, registering trademarks and designs worldwide, and in licensing IP. In the 2007 New Year's Honours List, he was awarded an MBE by Her Majesty the Queen, in recognition of services to Intellectual Property.

Hirohito Katsunuma, senior partner and patent attorney at Kyowa Patent and Law Office in Tokyo, Japan, specializes in mechanical engineering, computer software, information technology and semiconductor, and handles prosecution and litigation in IP. He is a council member of the Asian Patent Attorneys Association (APAA) and a chairman of the Copyright Committee of APAA Japan Group.

Mae Joanne Rosok, an attorney with Seed Intellectual Property Law Group PLLC, specializes in biotechnology patent matters. During her career as a research scientist, she authored several publications, prepared regulatory documents for submission to the FDA, and was a named inventor on several patents.

Travis W. Thomas, an attorney with Baker Botts LLP, concentrates on patent counseling, litigation, and prosecution in the areas of telecommunications, electronics, and software. He develops and manages patent portfolios for established public companies and start-up ventures, litigates patent disputes, and has drafted and prosecuted patent applications.

Samson G. Yu, managing partner with Kangxin Partners P.C.’s Beijing office, specializes in patent and trademark prosecution, trademark clearance, intellectual property due diligence exercise, litigation and client counseling. He is a standing committee member of All-China Patent Attorneys Association and was nominated by Asia Law Magazine as one of top ten IP lawyers in Asia in 2006.