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When "Please amend to fall into line with the granted claims in the US" might not work in Europe and Japan

"Please amend to fall into line with the granted claims in the US" is a phrase generally received with caution from attorneys practicing in non-US jurisdictions. The principle cause for caution is the lack of relative flexibility outside of the US when it comes to support arguments for amendments, and to the nature of empirical evidence required to be present in the application. Consequently, when a patent application is drafted solely with the USPTO in mind, the lack of flexibility in other jurisdictions can make securing commercially relevant claims scope more difficult in those jurisdictions. By examining a sample bio-pharma claim and supporting evidence, this presentation aims to provide US practitioners with a practical insight into how far you can push basis (support) and evidence requirements in both Europe and Japan. The presentation will conclude with guidance on how these lessons can inform a drafting style that should make prosecution in both Europe and Japan a more successful exercise.

Jan 20, 2021 10:00 PM in London