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    Course Information

1030  Practical European Patent Issues


No cost or obligation  
Course Length    91  minutes
Course Price    $ 119.00

Volume discounts and subscriptions are available; for more information, contact Cognistar Sales.

    Accreditation Information


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    About the Instructor(s)


  Jonathan Jackson
D Young & Co

Jonathan Jackson is a Chartered Patent Attorney and a European Patent Attorney. Prior to joining and becoming a Partner of D Young & Co, Mr. Jackson worked in the intellectual property department of Sony Corporation giving advice in a commercial environment and across all jurisdictions around the world. Jonathan has extensive experience of both pre-grant proceedings and post-grant proceedings, including oppositions and appeals at the European Patent Office, as well as hearings before the U.K. Intellectual Property Office.

Having obtained a scholarship to study for, and obtain, a master’s degree in electronic engineering, Mr. Jackson specializes in the area of electronics. In particular, he specializes in the areas of telecommunications, image processing, and solid state electronics, including power electronics, as well as all aspects of domestic appliances.

Mr. Jackson recieved his Certificate in Intellectual Property Law from Queen Mary College, University of London. He also recieved his M. Eng. from the University of Sheffield.



  Doug McCall
W.P. Thompson & Co.

Doug McCall joined W.P. Thompson & Co. in 1962 and has been a partner in the firm since 1970.

His professional activites have led him to become a member of UNION, a member of INTA, a member of I.T.M.A., and a member of ECTA.

Mr. McCall is active in CIPA, The Chartered Institute of Patent Attorneys, and is currently chairman of the Professional Guidance Committee and chairman of the International Liaison (Non-European) Committee. He is a member of the Finance & House, Trade Marks and Congress steering committees.

Mr. McCall recieved his B.Sc. (Tech.) from Manchester University Institute of Science & Technology in 1961.



  Timothy Platt
Albihns AB

Timothy Platt has been employed by Albihns AB since 1972, as a Swedish Patent Attorney since 1983 and as a European Patent Attorney since 1987. Mr. Platt deals with all aspects of patent prosecution in national, European and other foreign proceedings, including oppositions and appeals at the European Patent Office, as well as infringement and invalidity proceedings both nationally and internationally. He is a licensed practitioner (patent agent) before the U.S. Patent Office handling prosecution, appeals and re-examinations.

Mr. Platt graduated with a B.A. from Brown University in 1970. He attended the International Graduate School at the University of Stockholm from 1971 to 1972, and studied music at the University of Minnesota from 1974 to 1975. Mr. Platt received his mechanical engineering degree from Åsö Technical School, Stockholm, Sweden, in 1983.



  Michael Williams
FJ Cleveland LLP

Michael Williams is partner in FJ Cleveland LLP and secures effective patent protection for his clients’ innovations in the electrical, mechanical and software fields as part of Cleveland’s mechanical and electrical team.

Mr. Williams’ clients include a number of U.K. companies operating in fields such as electrical generators, testing equipment and packaging machines. His practice also includes providing opinions on the infringement and validity of third-party patents and providing technical support to solicitors involved in patent litigation.

Mr. William is an active member of CIPA’s International Liaison Committee, and has spoken on aspects of European patent law for AIPLA in the United States and JPAA in Japan.

Mr. Williams recieved his B.Sc. (Eng.) from Imperial College, London. In 1999 he became a European Patent Attorney and in 2000 he became a Chartered Patent Attorney.



  Gordon Wright
Elkington and Fife LLP

Gordon Wright is a partner in Elkington and Fife LLP, a firm of patent and trademark attorneys. A chemist by background, he has a doctorate from Oxford in molecular pharmacology and is both a Chartered Patent Attorney and a European Patent Attorney.

Having worked more than 20 years in the pharmaceutical industry, most recently as head of intellectual property for Sanofi-Synthélabo in France, Dr. Wright handles mainly chemical and pharmaceutical subject matter. He has an in-depth knowledge of IP topics specifically related to the pharmaceutical industry, including in particular Supplementary Protection Certificates (SPCs), regulatory data exclusivity, product life cycle management, pharmaceutical trademarks, parallel imports and international exhaustion.

During his time in the pharmaceutical industry, Dr. Wright served on many professional and industry bodies, including INTERPAT, the counsel of the TMPDF, and the IP committees of the ABPI and EFPIA. He was also chairman of the Trade Mark working group of EFPIA. He is well-known for his numerous lectures at both professional and commercial conferences, covering a wide range of IP topics related to the pharmaceutical industry.

Dr. Wright is a contributor to CIPA Guide to the Patents Act, 1977 (“the Black Book”), Sweet & Maxwell, 6th Edition, April 2009, and to Concise European Patent Law, (Kluwer) 2nd Edition, 2008, and is a council member of CIPA.



    Outline + Synopsis

Outline Synopsis
Practical European Patent Issues
    I. Introduction
        A. Announcements
        B. The Speakers
    II. Is There a Doctrine of Equivalents in Europe?
        A. The European Patent System
        B. The Situation in the U.K.
        C. Amgen
        D. The Outcome of Amgen
    III. A Practical Guide to the European Patent System
        A. Roadmap
        B. Filing the Application
        C. Prosecution and Lack of Unity
        D. Accelerated Prosecution
        E. Post Grant
    IV. Pharmaceutical Patents and Supplementary Certificates of Protection in Europe
        A. SPCs and SPC Legislation
        B. SPC: Grant Conditions
        C. Products and Patents
        D. Combination Products
        E. Formulations
    V. Safely Navigating European Novelty
        A. Novelty Requirement
        B. Three Exceptions
        C. Testing Can Destroy Novelty
        D. Prior Use
    VI. Panel Discussion
        A. Validation of Patents
        B. Experimental Use
        C. Unity of Invention
    AfterWords®
    How to Obtain a Certificate


This course discusses the nature of European patent issues and outlines the pitfalls of applying within the European Union for intellectual property patents. The speakers cover a range of topics: the doctrine of equivalents, central limitation procedure, lack of unity, supplementary protection certificates, and novelty.

In each section, the speakers focus on practical issues facing firms that need to apply for patents within the E.U.




    Content Provided By

 

The American Intellectual Property Law Association (AIPLA) is a 16,000-member, national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community. The AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright and unfair competition law, as well as other fields of law affecting intellectual property. Members represent both owners and users of intellectual property.

AIPLA was formed in 1897 in order to maintain a high standard of professional ethics, to aid in the improvements in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues.

To qualify for membership, applicants must be members in good standing of the bar of a court of record of the United States or any state. Foreign affiliate members must be able to practice in a court of general jurisdiction in their countries to be considered for membership, or be registered to practice with the Patent and/or Trademark Office of their country of citizenship. AIPLA also has student memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools. Approximately 70% of the active members are in private practice, 30% in corporate practice, with the remainder in the government or academia.

AIPLA holds three regularly scheduled conferences a year, Mid-Winter, Spring and Fall, at which the association offers educational seminars on the latest developments in intellectual property law. In addition, AIPLA holds many stand-alone seminars on specialized areas of intellectual property law at varying times of the year in locations around the United States. The association also produces a number of informative publications including the AIPLA Quarterly Journal (a scholarly law journal published four times a year), the AIPLA Bulletin (an overview of AIPLA meetings published online three times a year), and CD-ROMs and tapes which include papers or speeches presented by speakers at the meetings. The AIPLA also publishes the Report of the Economic Survey biennially.

Furthermore, the AIPLA is actively involved in shaping U.S. intellectual property policy through its work on legislation and federal regulations affecting intellectual property cases in the U.S. courts. Internationally, the AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents, regularly participates in meetings of the World Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.




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1030  Practical European Patent Issues

Course Price     $ 119.00


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