Successful Multilateral Patents Workshop

1
Successful Multilateral Patents Workshop

• Introductory Remarks
• Christopher J. Palermo
• Hickman Palermo Truong Becker LLP
• San Jose, California

2
Overview

• Global faculty
• Morningcountry focus
• Lunch locations
• Afternoonmultilateral focus
• Post-workshop issues

3
Motivations

• Specification (description) drafting is generally
  learned on the job
• Few texts give practical guidance
• RobertsA Practical Guide to Drafting
  Patentsleading the way?

4
Motivations

• USIncreased influence of the specification since
  2004 as a result of Federal Circuit decisions
• Phillips v. AWH
• Post-Phillips Decisions
• Decreasing importance of the doctrine of
  equivalents
• UKKirin-Amgen
• Collapse of (EC) Community Patent efforts

5
Motivations

• Avoiding re-work for applications filed in
  multiple jurisdictions
• Adding sections of text required in local
  practice
• Deleting impermissible statement
• Changing claim format to meet local requirements
• Adding omnibus claims where permitted

6
Motivations

• Avoiding re-work for applications filed in
  multiple jurisdictions
• Benefits of re-work
• Forces repeated focus on the case
• Forces focus on particular requirements of each
  jurisdiction as each country filing is performed
• Defers costs until each country filing is
  actually performed
• Generates fees

7
Motivations

• Avoiding re-work for applications filed in
  multiple jurisdictions
• Drawbacks of re-work
• Generates fees
• Ultimately tedious
• Attention to particular requirements of each
  country comes far too late

8
Motivations

• Resolve country-specific issues
• EPOCan an application conform to the
  problem-solution approach without unduly limiting
  the claims in other countries?

9
Motivations

• Why are we not thinking globally when we first
  draft the description?

Brilliant!
10
And so, on to Europe!