This seminar builds on our recent discussion of important issues that arise in, and the differences between, U.S. and EP prosecution practices. This time, we will focus on effective application drafting strategies, how applications can best be drafted for successful prosecution in the USPTO and European Patent Office (EPO). There is no ideal way to draft a patent application. What may be effective and good practice in the EPO can actively harm an application before the USPTO and vice versa. The best that patent attorneys can do is to understand the implications of how they draft and tailor their approach depending on the issues and consequences on a case by case basis.
Topics to be discussed include:
Protecting borderline patent-eligible subject-matter, e.g., computer-implemented inventions, business methods, therapeutic methods and methods of diagnosis, etc.
Language to use (or avoid) when drafting claims, e.g., functional claim language, groups, etc.
Addressing and avoiding clarity and enablement issues
What is a good claim in the EPO and the U.S. and why they can be so different
What helps to provide you with flexibility to amend during prosecution and what may end up restricting the scope of protection