Pre-Conference Workshop: Tuesday, 5 OctobePre-Conference Workshop: Tuesday, 5 October 2010
2.00 – 5.00 (Registration From 1:30)
Drating Successful Patent Applications
for Biotechnology-Related Inventions
Adrian Bradley, Partner, Cleveland (UK)
Ian Bryan, IP Counsel, GE Healthcare (UK)
Thomas Kowalski, Partner, Frommer, Lawrence & Haug (US)
The drafting of patent applications covering biotechnology related inventions such as research tools, pharmaceuticals, genomics, proteomics and diagnostics is becoming increasingly complex. Moreover, the rapidly evolving science and technology makes it imprudent to rely upon yesterday’s ‘tried and true’ drafting methods.
The workshop leaders will walk you through the process of drafting complex claims and specifications. Get the tools you need to draft applications that will withstand future challenges.
• What the examiners are looking for
• What you should include – and avoid – in drafting a
successful patent application in light of evolving case law
• How to address European and Federal Circuit case law in
your application proactively
• When to file broad and when to file narrow claims
• Whether claims of differing scope should be filed in
the same or separate applications – impact of new EPO
limitations on divisional applications
• Claim categories: How to ensure a broad scope of
protection (purpose-limited / Swiss claims, national
requirements, dosage regimens)
• Preparing in advance for search limitations – impact
of new EPO practice
• Enablement and written description – anticipating
and defending against attacks arising from changing
requirements
• What are we to do about biological products (nucleic acids,
proteins, antibodies) that at the time of filing, can only be
described functionally and not structurally?
• What to consider when claiming diagnostic methods
in view of recent Enlarged Board of Appeal decisions
• How can Bilski affect claim drafting for biotechnological
inventions in the US?
The workshop will also cover issues that should be considered when drafting claims in the context of litigating or licensing biotechnology patent claims including:
• Consideration of claim language – how to permit the
patentee to meet the burden of proving infringement
without unnecessary difficulty
• Products and processes – do claims cover those products or
processes that will be commercialised?
• Doctrine of equivalents – how to determine infringement,
how to build the basis for an enlarged scope of protection
Conference Details
