European Patent Practice for U.S. Attorneys, With 2016 Supplement

As Europe progresses toward ratifying the European Unitary Patent and Unitary Patent Court, and the U.S. adjusts to Alice and the Patent Trial and Appeal Board, a major global sea change in patent law is afoot.

PreOrder--Pub. Date December 31.


EXPLORE substantive and procedural differences between European patent law and U.S. patent law.

As Europe progresses toward ratifying the European Unitary Patent and Unitary Patent Court, and the U.S. adjusts to Alice and the Patent Trial and Appeal Board, a major global sea change in patent law is afoot.  This change will greatly impact the relevance and global impact of European patent rights, as European patents become enforceable in all European Patent Convention (EPC) states. That change will likely trigger the need for U.S. companies to pursue more extensive European patent protection.  To help prepare for the new Europe, European Patent Practice for U.S. Attorneys provides attorneys, agents, and technical advisors with a useful and practical understanding of how European patent rights are secured.

This useful guide helps U.S. patent attorneys obtain an understanding of basic European patent law, develop European patent practice skills, avoid mistakes, and succeed at the European Patent Office. It provides a comprehensive overview of the European patent law as compared to U.S. patent law that enables the reader to understand European Patent Office (EPO) concepts and procedures, focusing on key differences between the U.S. and the EPC.  It also provides concise examples of various European patent prosecution techniques and numerous procedural recommendations for EPO patent prosecution. 

In particular, this guide helps attorneys:   

  • Decide whether to file for European patent rights on inventions that are important to a U.S. business
  • Avoid mistakes made during the prosecution of a European application that can jeopardize the related U.S. patent position (e.g., an important U.S. patent for Abbott Labs was held unenforceable based on conflicting positions taken by the attorney at the United States Patent Office versus the European Patent Office)
  • Expedite victory in the U.S. by learning how to successfully prosecute a European patent (e.g., C.R. Bard’s successful defense of a European Opposition brought by ACS, Inc. that lead to a $100 million settlement of a pending U.S. litigation)
  • Become more advanced practitioners of global patent law by comparing EPO and United States Patent and Trademark Office (USPTO) practice, as well as European and United States patent laws

European Patent Practice for U.S. Attorneys includes references to laws, policies, and practices of the European Patent Organization and compares them to the laws and policies followed by the USPTO, highlighting the elements of patent law and practice that are common to both jurisdictions and those elements of patent law that are core to any legal framework seeking to reward inventive and creative activity.  Armed with this knowledge, U.S. attorneys can become more effective in dealing with their European patent attorneys and better serve their clients.


The 2016 Supplement:


  • adds changes made by the European Board of Appeals to core principles of law under the European Patent Convention

  • discusses changes made to procedures to Appeal and Opposition practice

  • reviews and updates the comparison between U.S. and European law regarding patentable subject matter, including the Federal Circuit’s Enfish decision addressing the boundaries of patentable subject matter in the U.S., and the law on patentable subject matter in Europe, with changes and clarifications coming from the U.K. Courts and the European Patent Office

  • considers and compares developments in European law, including decisions from the UK courts in HTC v. Apple as well as decisions from the European Boards of Appeal including T 1214/09, Sharp

looks at proposed changes that may come into place under the Unified Patent Court and Unitary Patent regime, if these schemes are adopted by the European States 



Bloomberg BNA authors and editors are practicing professionals with insider perspectives and real-life experience. Learn more about this book’s authors and editors.
Edward J. Kelly is a partner at Ropes & Gray. Ed is a U.S. patent attorney, English Solicitor and is registered to practice before the European Patent Office.  Ed provides intellectual property advice and legal opinions and represents clients with appeals at the U.S. Patent Trial and Appeals Board, oppositions before the European patent office, re-examination proceedings at the U.S. Patent and Trademark Office (USPTO). He also provides strategies for securing patents, trademarks and copyrights to a broad range of clients.

Ropes & Gray partner Charles D. Larsen is a U.S. patent attorney and English solicitor, and is registered to practice before the European Patent Office. Chuck has a particular emphasis on intellectual property strategies and transactions in the U.S. and Europe. He represents clients in contested patent proceedings before the USPTO, European Patent Office, and the UK High Court.  He also advises clients in patent validity, infringement, and freedom to operate studies for both U.S. and European patents, and advises clients in various intellectual property transactions.

Anita Varma is a partner and co-head of Ropes & Gray's intellectual property rights management practice group and has over 20 years of experience in intellectual property law as a lawyer and as a Patent Examiner at the USPTO.  Her experience as a Patent Examiner provides unique insights into the workings of the USPTO and as a Solicitor in England & Wales she is registered to practice before the courts of England and Wales and before the European Patent Office.

Christopher P. Carroll is counsel in Ropes & Gray's intellectual property group.  He is a U.S. patent attorney, a solicitor in the Republic of Ireland, a solicitor in England & Wales, and registered to practice before the European Patent Office. Christopher has argued at Oral Proceedings before the Board of Appeal, Opposition Division, and Examining Division at the European Patent Office.


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