Track D

D2 An International Perspective: Writing a Patent Application for Global Examination and Licensing - CLE Eligible

Track: IP Trends and Successful Practices

Target Audience: Intermediate

Kirsteen Gordon, Marks & Clerk LLP

Richard Gibbs, Marks & Clerk LLP
Craig Hayden, Tarolli, Sundheim, Covell & Tummino LLP
Mash-Hud Iqbal, Marks & Clerk LLP
Tony Raven, University of Cambridge Enterprise
Richard Wesorick, Tarolli, Sundheim, Covell & Tummino LLP

When drafting a patent application, it is crucial to consider where it may eventually be filed and prosecuted. Most universities aim to license their technology before national examination starts, and licensees often wish to file widely, including in the United States, Europe and Asia. We’ll discuss the issues that regularly come up during the examination of U.S.-originating patent applications and how they may be mitigated. The focus will be on strategies that will help applicants secure useful and valuable intellectual property protection in the U.S., Europe and China. Using real-life examples, the session will highlight the jurisdictional differences in patentable subject matter (for both biology-type subject matter and software inventions); tactics for avoiding added matter objections; how to handle the requirement of supporting data and sufficient disclosure; and the state of U.S. patent law and the question of patent-eligible subject matter.

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