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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:
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 2018 Cumulative Supplement adds:
Brand-new Chapter 18 providing an in-depth comparison of the U.S. Alice/Mayo two-part patent eligibility test with the UK and EPO patent eligibility and patentability approaches with respect to computer-implemented inventions; the new chapter gives U.S. practitioners approaches applied by UK and European practitioners addressing similar patent eligibility issues under European laws
Chapter 1 update discussing the UK’s ratification of the UPC in early 2018, leaving German ratification as the remaining obstacle to UPC implementation
Chapter 6 revision discussing recent UK High Court cases that follow on from the Actavis v. Eli Lilly decision and raise new legal questions regarding novelty and infringement law in the UK
Chapter 4 analysis discussing recent changes in the EPO Guidelines for Examination regarding the presentation of information and graphical user interfaces (GUI) in patent claims
Chapter 2 update reviewing the formation of a Boards of Appeal Unit—a significant organizational change at the EPO intended to ensure independence of the Boards of Appeal
Chapter 3 discussion referring to new EPC Rule 51(1) that allows for payment of the third year renewal fee during EPO national entry filing
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