Litigation-Proofing and Proving your Patent Claims

Course Overview

The law and interpretation of patent claims varies widely in different jurisdictions. Therefore, understanding how patent
claims are interpreted in different regions is essential when trying to prove patent infringement and validity in order to protect an organisation’s primary assets. This course has been specifically designed for all patent professionals doing business in a complex multi-jurisdictional environment.

The programme, presented by our expert speaker faculty, will include fact-based scenarios and case examples, with comparisons of the USA, UK and German
approaches to claim construction and validity determination. The speakers will provide recommendations for both litigating patents and preparing patent applications to the best advantage.

Attending this course will provide the perfect opportunity for interaction with experts, as well as other like-minded participants. It will also provide the
perfect forum for discussing any issues of particular concern in relation to patent construction.

• Explain how your patent claims will be construed in Germany, UK and USA
• Highlight the divergent methods employed in the three jurisdictions to interpret similar claim language
• Rationalise the disparate effect of the doctrines of equivalents in the three jurisdictions
• Compare the distinct litigation arguments and strategies that would be used in each of the three jurisdictions to construe similar claims
• Illustrate the major claim interpretation approaches with interactive panel discussions of real-life cases

Who Should Attend

• Patent professionals in private practice, including patent attorneys and lawyers
• Heads of IP, heads of patents and in-house patent counsel at every level
• Patent engineers and inventors
• All whose responsibilities include the need to understand the scope of patent coverage in USA, UK and Germany

Programme

• In the USA
  • Inherent ambiguities of the all-elements rule
  • Use of intrinsic and extrinsic evidence
  • Counterintuitive interpretation of functional claims
  • USPTO proceedings vs infringement litigation
• In the UK
  • Court’s approach to the ‘normal’ interpretation of the claims …
  • … and the (wider) scope of protection under the UK doctrine of equivalents
  • Accepted principles of claim construction (Virgin Atlantic)
  • The approach taken to parameters, numerals and specific claim form
• In Germany
  • Literal infringement and ‘functional’ interpretation
  • Can ‘functional’ interpretation result in construction ‘below’ the wording?
  • Numerals and literal infringement

• In the USA
  • Sub-tests for determining equivalents
  • Counterweights to ‘equivalence’
  • Vitiation
  • Unintended disavowal
  • Prosecution history estoppel and its variants
• In the UK
  • The groundbreaking judgement in Actavis vs Lilly
  • Does a ‘variant’ vary from the invention in an immaterial way? Or achieve substantially the same result in the same way?
  • Compliance with EPC Article 69 and Protocol
  • UK court’s willingness to refer to EPO prosecution history
• In Germany
  • The Schneidmesser questions
  • Relevance of Pemetrexed
  • Has the scope of protection become broader again?
  • Relevance of prosecution history

• Pleadings (Germany, UK, USA)
• Disclosure (UK, USA)
• Expert evidence (UK, USA)
• Trial (Germany, UK, USA)

• Presentations of real-life case studies with interactive panel discussions explaining the often dissimilar approaches that were or would be taken in the three jurisdictions for interpreting specific claims