Law Seminars International Presents: An Advanced One-Day Workshop on

Successful Multilateral Patents
With representatives from Australia, China, Germany, Japan, the United Kingdom and the United States

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

April 7, 2008
Hilton Crystal City Hotel at National Airport in Arlington, VA

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 importance of the modern patent application description extends beyond considerations of enablement, written description, and 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 U.K., 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 South Korea have country-specific requirements for a description that will be successful both in prosecution and enforcement. Furthermore, companies filing applications in multiple countries are constantly searching for methods of efficiency and maximum impact in multilateral prosecution, and proper drafting of the specification is rarely a subject of formal training. It is usually learned on the job over a long time period.

This workshop will enable attendees to understand the interplay of the specification and the claims in several major jurisdictions and 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. It will answer questions such as: Is it possible to draft and file a specification in the U.S. that satisfies multiple country requirements without undue limitations on U.S. claims? 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 or the interpretation of the claims? What statements are unintentionally limiting?

~ Program Co-Chairs: Christopher J. Palermo, Esq. and Larry S.Nixon, Esq.

You Will Learn About

Agenda

Monday, April 07, 2008

8:00 am

Registration and Continental Breakfast

 
8:30 am

Introduction and Overview

Larry S. Nixon, Esq., Program Co-Chair
Nixon & Vanderhye PC / Arlington, VA

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; EPO operational issues; the problem/solution approach to inventive step

Elizabeth Dawson, Esq., Senior Patent Attorney
Ipulse / London, UK

 
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 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., Managing Partner
Kangxin Partners P.C. / Beijing, China

 
11:15 am

Update on Multilateral Initiatives: USPTO, EPO, JPO and Others

Current trilateral activities directed toward harmonizing application format; status of pilot programs for sharing priority documents and search results; new procedures under consideration and their impact on patent practice; activity at WIPO

Charles Eloshway, Esq., Patent Attorney
U.S. Patent and Trade Office / Alexandria, VA

 
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

Jeff Nelson, Esq.
Nixon & Vanderhye PC / Arlington, VA

 
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 essentially no 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

Elizabeth Dawson, Esq.
Ipulse / London, UK

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

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

Larry S. Nixon, Esq., Program Co-Chair, Moderator
Nixon & Vanderhye PC / Arlington, VA

Georgina Collins, Esq.
Lawrence Graham LLP / London, UK

Wolfgang Festl-Wietek, Esq., Ph.D.
Viering Jentschura & Partner / Munich,

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

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

 
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

This program qualifies for 6.5 VA CLE 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 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).
Order Homestudy

Faculty Bios

Larry S. Nixon, Program Co-Chair and partner at Nixon & Vanderhye, focuses on IP law including patent law opinions and litigation and specializes in medical devices, speech recognition, voicemail, cryptography and digital imaging. He was listed in The Best Lawyers in America and in Virginia Super Lawyers.

Christopher J. Palermo, Program Co-Chair and partner at Hickman, Palermo, Truong and Becker, LLC, focuses on patent, trademark, licensing, and technology development matters. He 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.
Full bio and contact info for Christopher J. Palermo at Hickman Palermo Truong & Becker LLP

Georgina Collins, head of the IP Group at Lawrence Graham LLP of London, UK, advises on all aspects of Intellectual Property. She was named by the UK and European Editions of Chambers & Partners as a leader in her field and described as "bright, reactive and pragmatic, a practitioner par excellence, with a rare insight into multinational and multidisciplinary problems."

Elizabeth Dawson, senior patent attorney with Ipulse in London, focuses on European patent applications and is experienced in telecommunications and electronics. She works with inventors to help them understand the patent process and help them to maximize the potential of their ideas and is a council member of FICPI-UK.

Charles Eloshway is a Patent Attorney in the Office of Intellectual Property Policy and Enforcement (OIPPE) at the U.S. Patent and Trademark Office. He represents the U.S. in multilateral and bilateral negotiations on matters concerning patent law and practice and represents the USPTO in Trilateral Office cooperation efforts.

Wolfgang Festl-Wietek, Ph.D., partner at Viering Jentschura & Partner, focuses on litigation in trademark and patent law as well as law against unfair competition. He is an authorized "Specialist attorney for intellectual property matters" from the German Bar and deals with contract preparation, infringement cases and opinion work. He published an article on the benefits of Trade Dress Protection and is a committee member of the International Trademark Association (INTA).

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 developing an extensive knowledge of Japanese intellectual property law and Japanese culture."

Jeff Nelson, partner at Nixon & Vanderhye P.C., litigates patent disputes, prepares and prosecutes U.S. patent applications, manages prosecution of foreign patent applications, prepares opinions and conducts due diligence investigations on patent issues. He has tried to verdict patent and copyright cases, presented at summary judgment and Markman claim construction hearings and made appellate oral arguments before the Federal Circuit.

Samson G. Yu, managing partner with Kangxin Partners P.C. in Beijing, specializes in patent and trademark prosecution, due diligence, litigation and client counseling. He has litigated numerous IP disputes involving patent and trademark infringement and unfair competition. He was named a "Leading Lawyer" by Asia Law and Practice and as a "Leading Patent Attorney" by the Beijing Intellectual Property Office.
Full bio and contact info for Samson G. Yu at Kangxin Partners P.C.

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