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.



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 four new chapters and a new appendix, as well as updates to the main volume discussions: 

  • Chapter 14: National Validation, the process by which an applicant receiving a granted European Patent registers that patent right with the at least some of the national patent offices of the contracting states, extension states and validation states, to secure in those states a national patent that can be enforced by the respective national courts.
  • Chapter 15: Text for Grant, addressing whether one translation of the granted patent has greater legal significance than the other translations; whether the arguments and communications between the applicant and the EPO are part of the record used when determining the scope of the protection conferred by the patent; and related questions for U.S. practitioners when considering the effect of rulings of the Boards of Appeal and decisions from the Opposition Division.
  • Chapter 16: Selecting and Maintaining Countries for Validation, which informs readers about when and where to validate the granted European patent as a national patent in a contracting state of the EPC or of an extension state, which is a state that has extended protection of the European patent right in that respective state.
  • Chapter 17: The Unitary Patent and the Unified Patent Court, discussing a group of agreements that streamline the process for validating and enforcing European patents, which are expected to take effect during the latter part of 2017.
  • Appendix B:  Summary Chart of U.S. Patent Statute and Rules Compared With Corresponding Rules of Procedure of the Unified Patent Court.
  • It also addresses changes made by the European Board of Appeals to core principles of law under the EPC and changes made to procedures to Appeal and Opposition practice; reviews and updates the comparison between U.S. and European law on patentable subject matter, including the Federal Circuit’s Enfish decision addressing patentable subject matter in the U.S. and decisions on patentable subject matter in Europe, including changes and clarifications coming from the U.K. Courts and the EPO; and reviews developments in European law including decisions from the U.K. courts like HTC v. Apple and decisions from the European Boards of Appeal such as T 1214/09, Sharp.


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. He is a U.S. patent attorney, a Solicitor of England and Wales, and a registered practitioner before the European Patent Office. Ed helps U.S. and European clients secure and enforce rights in both the U.S. and Europe. He handles matters before the U.S. Patent Trial and Appeal Board and oppositions before the European patent office. Ed is a graduate of Lehigh University and Boston College Law School.

Charles D. Larsen is an intellectual property partner at White & Case. He is a U.S. patent attorney, a Solicitor of England and Wales, and a registered practitioner before the European Patent Office. Chuck has a particular emphasis on intellectual property strategies, litigation, and transactions in the U.S. and Europe. He represents clients in contested patent proceedings before the USPTO, the 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 more than 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 allows her to provide her U.S. and European clients with unique insights into the workings of the USPTO. As a Solicitor in England and Wales, she practices before the courts of England and Wales and before the European Patent Office.

Christopher P. Carroll is an intellectual property partner at White & Case LLP. He is a U.S. patent attorney, a solicitor in the Republic of Ireland, and a solicitor in England and Wales and is registered to practice before the European Patent Office. Christopher counsels U.S. and European clients on various matters and has extensive experience at Oral Proceedings before the Board of Appeal, Opposition Division, and Examining Division at the European Patent Office.


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