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Successful Multilateral Patents Workshop: Key Insights and Global Perspectives

Join us as we explore the dynamics of drafting patents in a multilateral context. Led by esteemed experts from Hickman Palermo Truong & Becker LLP, this workshop will cover global patent strategies, the importance of understanding country-specific requirements, and the challenges of maintaining uniformity across jurisdictions. Topics include recent changes in patent law influenced by landmark cases, the significance of detailed specifications, and methods to avoid re-work in multijurisdictional filings. Engage in discussions on effective practices for global patent drafting and learn how to navigate complex legal environments.

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Successful Multilateral Patents Workshop: Key Insights and Global Perspectives

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Presentation Transcript

  1. Successful Multilateral Patents Workshop Introductory Remarks Christopher J. Palermo Hickman Palermo Truong & Becker LLP San Jose, California

  2. Overview • Global faculty • Morning—country focus • Lunch locations • Afternoon—multilateral focus • Post-workshop issues

  3. Motivations • Specification (description) drafting is generally learned on the job • Few texts give practical guidance • Roberts—A Practical Guide to Drafting Patents—leading the way?

  4. Motivations • US—Increased influence of the specification since 2004 as a result of Federal Circuit decisions • Phillips v. AWH • Post-Phillips Decisions • Decreasing importance of the “doctrine of equivalents” • UK—Kirin-Amgen • Collapse of (EC) Community Patent efforts

  5. Motivations • Avoiding re-work for applications filed in multiple jurisdictions • Adding sections of text required in local practice • Deleting impermissible statement • Changing claim format to meet local requirements • Adding omnibus claims where permitted

  6. Motivations • Avoiding re-work for applications filed in multiple jurisdictions • Benefits of re-work: • Forces repeated focus on the case • Forces focus on particular requirements of each jurisdiction as each country filing is performed • Defers costs until each country filing is actually performed • Generates fees

  7. Motivations • Avoiding re-work for applications filed in multiple jurisdictions • Drawbacks of re-work: • Generates fees • Ultimately tedious • Attention to particular requirements of each country comes far too late

  8. Motivations • Resolve country-specific issues • EPO—Can an application conform to the problem-solution approach without unduly limiting the claims in other countries?

  9. Motivations …Why are we not thinking globally when we first draft the description? Brilliant!

  10. And so, on to Europe!

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