Programme and abstracts

Thursday, 17 May 2018 

12.00 - 12.30 pm
Registration
12.30 - 1.30 pm
Buffet lunch

Plenary sessions

1.30 – 1.50 pm
Introduction and opening remarks
Myra McCormack, President, AIPLA
Niclas Morey, Principal Director User Support and Quality Management, EPO

1.50 – 2.30 pm
General topics: overview of the latest initiatives from the EPO, including timeliness via the Early Certainty programme
Karin Seegert, Chief Operating Officer Healthcare, Biotechnology and Chemistry, EPO
2.30 – 3.00 pm
EPO quality initiatives in 2018
Niclas Morey
3.00 – 3.30 pm  Coffee break 
3.30 – 4.00 pm  How and why the challenge of searching Asian documentation has become a key quality selling point of the EPO's comprehensive search which leads to worldwide coverage of the prior art
Jeremy Scott, Director Polymers, EPO, and sponsor of the EPO's Asian Patent Expert Group

Concurrent workshops (round 1)

There will be three workshops, each to be held three times in order to give seminar attendees the opportunity to attend them all. Each workshop will be chaired by an EPO director and a European patent attorney with knowledge and experience of both the European and the US systems.
4.15 – 5.45 pm  

Workshop 1:
Biotech/pharma subject-matter – patentability at the EPO and how to avoid pitfalls for US based applicants
Sandra Pohlman, partner, df-mp, Munich, Germany
Klaus-Peter Döpfer, Director Biotechnology, EPO

 

Workshop 2:
Successful filing of PCT applications at the EPO – avoiding pitfalls for US applicants
Cyra Nargolwalla, partner, Cabinet Plasseraud, Paris, France
Jeremy Scott, Director Polymers, EPO

 

Workshop 3:
Computer-implemented inventions in biotechnology and healthcare – how to obtain patents in these fields at the EPO Jon Gowshall, partner, Forresters IP LLP, London, UK
Matthias Hilbig, expert examiner, EPO

 

6.00 – 7.30 pm  Drinks reception 

Friday, 18 May 2018

8.00 – 9.00 am
Buffet breakfast – networking opportunity
9.00 – 10.00 am
Panel discussion: Prosecution of US applications at the EPO
Jon Gowshall, partner, Forresters IP LLP, London, UK
Jonathan Dermott, Senior Counsel, Amgen, Thousand Oaks, CA, USA
Albert Keyack, EPO attaché to the US
Karin Seegert
Moderator: Jeremy Scott

10.15 – 11.45 am
Concurrent workshops (round 2)
11.45 – 12.00 am
Short coffee break
12.00 – 1.30 pm
Concurrent workshops (round 3)
1.30 – 1.45 pm
Closing remarks
Chen Wang, Deputy Executive Director, Regulatory Affairs, AIPLA
Karin Seegert


Workshop abstracts

Workshop 1

Biotech/pharma subject-matter - patentability at the EPO and how to avoid pitfalls for US‑based applicants

This workshop will look at the patentability of biotech/pharma subject‑matter under the European Patent Convention (EPC). Exceptions to patentability will be discussed.

Such subject-matter includes plants/animals, (stem) cells, micro‑organisms, methods of surgery and diagnosis, antibodies and nucleic acids and medical uses thereof, personalised medicine and dose regimens.

The workshop will enable participants to draft claims encompassing the above‑mentioned subject-matter which comply with the EPC.

It will also deal with PCT applications as the basis for European applications (in particular PCT-US applications; see also workshop 2), including possible pitfalls.

Workshop 2

Successful filing of PCT applications at the EPO - avoiding pitfalls for US applicants

This workshop focuses on the intricacies and pitfalls of patent prosecution at the EPO. It is tailored particularly to US applicants filing PCT applications as a basis for European applications.

The topics discussed will be:

  • Priority rights and transfer
  • The requirements for providing examples and experimental data
  • Late filing of evidence
  • The EPO's approach to added subject-matter
  • Claim dependencies
  • Singling out and selections from lists
  • Reference documents
  • Divisional applications
  • The EPO's approach to non-unity

The workshop will enable participants to draft and prosecute applications and claims which comply with the European Patent Convention.

Workshop 3

Computer-implemented inventions in biotechnology and healthcare - how to obtain patents in these fields at the EPO

Computer-implemented inventions (CII) are becoming more and more prevalent in healthcare and life sciences. Yet US applicants in particular are often unaware that patents can be granted for such inventions at the EPO. The EPO has developed an approach to examining CII which is stable and reliable, thereby providing a high degree of predictability for applicants.

This workshop will show you how the EPO examines CII. It will focus on how you can increase your chances of getting a patent for claims comprising algorithmic/mathematical steps or features relating to the presentation of information.

Examples from the fields of bioinformatics and healthcare informatics will deepen your understanding of the decisive ingredients for a successful application in these fields.

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