Law Seminars International Presents: A Comprehensive One-Day Workshop on Successfully Drafting

Multilateral Patents

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(For this past program, we offer two options for purchase: a Homestudy (DVD and written materials) or written materials alone.)

June 23, 2008
Hotel 480 Union Square in San Francisco, CA

Who Should Order This Homestudy

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

Why Order

The seminar builds on last year's review of the increasing significance of the modern patent application description as it extends beyond considerations of enablement, support and basis for amendment, and carries ever more weight in interpreting patent claims. Major-market jurisdictions such as the European Patent Office, Japan, China and Korea 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 taking into account the latest developments in international IP law and practice.

Our faculty will recap related legal and practice issues and enable attendees to understand the interplay of the specification and claims in several major jurisdictions, in light of an evolving legislative landscape, and in conjunction with a committedly practical review of how best to use systems internationally. The day 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? How do jurisdictions differ on claim interpretation? 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.

You Will Learn About

Agenda

Monday, June 23, 2008

8:00 am

Registration and Continental Breakfast

 
8:30 am

Introduction and Overview

Christopher J. Palermo, Esq., Program Co-Chair
Hickman Palermo Truong & Becker LLP / San Jose, CA

Gwilym V. Roberts, Esq., Program Co-Chair
Kilburn & Strode / London, United Kingdom

 
8:45 am

Focus on Europe: Prosecution Trends; Analysis of Practice on Divisional Applications; Impact of the EPC Revision Act; The Effects of the London Agreement

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

David W. Hill, Esq.
Finnegan Henderson Farabow Garrett & Dunner LLP / Reston, VA

 
10:00 am

Focus on Korea: Successful Preparation and Prosecution

Preparing specifications and claims to maximize patent protection in Korea; tips and strategies for expediting Korea patent prosecution

Kyungwan Park, Esq., Senior Partner & Patent Attorney
R-O-Y-A-L Patent & Law Office / Seoul, Korea

 
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

Fast Track Patenting

Using new fast track programs including U.S. accelerated examination, Patent Prosecution Highway, and New Route, and similar efforts in other countries; risks; compare and contrast schemes - speed and effectiveness; impact on pendency, enforcement

Samson Helfgott, Esq.
KattenMuchinRosenman LLP / New York, NY

 
12:00 pm

Lunch (on your own)

 
1:15 pm

Key Industry-Specific Trends in Global Prosecution

U.K. patent office is reviewing whether inventive steps is treated at different levels for different industries; other contrasts in the ways different countries treat different industries

Daniel E. Altman, Esq.
Knobbe Martens Olson & Bear LLP / Irvine, CA

 
1:45 pm

Drafting 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

Gwilym V. Roberts, Esq., Program Co-Chair
Kilburn & Strode / London, United Kingdom

David W. Hill, Esq.
Finnegan Henderson Farabow Garrett & Dunner LLP / Reston, VA

Kyungwan Park, Esq., Senior Partner & Patent Attorney
R-O-Y-A-L Patent & Law Office / Seoul, Korea

Samson G. Yu, Esq.
Kangxin Partners P.C. / Beijing, China

Samson Helfgott, Esq.
KattenMuchinRosenman LLP / New York, NY

 
3:30 pm

Break

 
3:45 pm

Interpreting Claims and Litigating Patents Overseas: Country-Specific Considerations

Pre-filing considerations, discovery issues, trial procedures, remedies, and cultural issues of interpreting claims and litigating patents in the U.K., Germany, France, Netherlands, Japan and China

Gwilym V. Roberts, Esq., Program Co-Chaor, Moderator
Kilburn & Strode / London, United Kingdom

David W. Hill, Esq.
Finnegan Henderson Farabow Garrett & Dunner LLP / Reston, VA

Samson G. Yu, Esq.
Kangxin Partners P.C. / Beijing, China

Kyungwan Park, Esq., Senior Partner & Patent Attorney
R-O-Y-A-L Patent & Law Office / Seoul, Korea

Eifion Morris, Esq.
Clifford Chance LLP / London, UK

 
5:00 pm

Evaluations and Adjourn

 

Cancellation

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.

Cost

Our complete Homestudy Course, consisting of a 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).
Order Homestudy

Faculty Bios

Christopher J. Palermo, Program Co-Chair, partner at Hickman, Palermo, Truong and Becker, LLC, concentrates on patent, trademark, licensing, and technology development matters. He primarily advises companies in the fields of networking, telecommunications, object-oriented software and the World Wide Web. He was named a Super-Lawyer in Intellectual Property in Northern California Super Lawyers 2007.

Gwilym V. Roberts, Program Co-Chair, partner with Kilburn & Strode, 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 wrote "A Practical Guide to Drafting Patents" published by Sweet & Maxwell.

Daniel E. Altman, partner at Knobbe Martens Olson & Bear LLP, focuses on patent protection and related licensing issues, for the biotechnology, pharmaceutical and chemical industrties, specializing in foreign patent protection. He is an adjunct professor at the University of San Diego School of Law and has spoken on patent law in the United States and abroad.

Samson Helfgott, partner and director of patents at KattenMuchinRosenman LLP, focuses on domestic and international patent, trademark and copyright matters, international patent strategy and patent and trademark administration.

David W. Hill, partner at Finnegan Henderson Farabow Garrett & Dunner LLP, focuses on patent and trademark litigation, prosecution, licensing negotiations, dispute resolution, and portfolio management. He opened the firm's Tokyo branch office and spent three years in Japan as the resident partner of the firm.

Eifion Morris is a Senior Associate in the London law firm of Clifford Chance LLP.

Kyungwan Park is a senior partner and patent attorney in the firm of R-O-Y-A-L Patent & Law Office. He provides practical information on Korean patent litigation and prosecution matters.

Samson G. Yu, managing partner at Kangxin Partners P.C., focuses on all aspects of Intellectual Property law specializing in patent and trademark prosecution, trademark clearance, intellectual property due diligence, litigation and client counseling. He is a frequent lecturer on Intellectual Property issues internationally.

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