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 • Morning—country focus • Lunch locations • Afternoon—multilateral focus • Post-workshop issues

3. Motivations • Specification (description) drafting is generally learned on the job • Few texts give practical guidance • Roberts—A Practical Guide to Drafting Patents—leading the way?

4. Motivations • US—Increased 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” • UK—Kirin-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 • EPO—Can 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!