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Patent Protection for Software-Related Inventions

Patent law in Europe and the US
Kvinne med software
Technology and software influence most business sectors in relation to leveraging growth, and this has important implications for IP and patent laws. This course provides an intensive update on patent protection for software-related inventions, and differences in European and American patent law.

Under the guidance of experts from Management Forum you will learn to understand and gain from the development strategies impacting software patents, and the differences between patenting in the United States and Europe. We will also complete case studies on claim drafting, to illustrate how you can avoid pitfalls.

Central Topics: 

  • Recent decisions from the EPO and the US impacting patents on software and computer technologies 
  • Patenting tips and pitfalls in Europe and the US for computer-implemented inventions  
  • US prosecution strategies under the USPTO’s most recent examination guidelines 
  • Global drafting and prosecution tactics for these technologies 
  • In-house perspectives and advice for managing IP protection in these technical fields
  • Complimentary textbook and networking reception opportunities for in-person attendees

Why you should attend:

  • Learn about development strategies impacting computer-implemented innovations and patents
  • Find out about the major developments in European and U.S. patent law, such as those for GUI inventions and ‘mixed’ inventions with both patentable and non-patentable subject-matter
  • Understand the recent decisions and the differences between U.S. and European guidance in this area
  • Obtain valuable insights from experience from in-house counsel on how to best manage IP protection for these technologies

For whom?

This course is for patent attorneys (private practice and industry), in-house patent and general counsel, chief information officers and chief technology officers, business development and technology professionals.

In cooperation with:

Programme

10.00 - 10.15
Introduction
10.15 - 11.00
Patent protection for computer-implemented inventions in Europe

Nicholas Fox

  • Existing European framework for computer-implemented inventions
  • EPO Board of Appeal decisions, including most recent decisions
11.00 - 12.30
Patent protection for computer-implemented inventions in the USA

Timothy May

  • Existing U.S. framework for computer-implemented innovations
  • Update on recent U.S. court decisions and USPTO guidelines impacting software and computer-controlled technologies
  • Pitfalls and practice tips for U.S. claim drafting on functional aspects
  • Case examples and claim techniques for US practice
12.30 - 13.30
Lunch (with informal Q/A with speakers and other in-person attendees)
13.30 - 14.45
Preparation of patent applications and prosecution of European applications for software-related inventions

Nicholas Fox

  • Available claim formats and description requirements in Europe
  • Drafting applications to take account of European and US requirements
  • Filing strategies
  • Dealing with EPO objections under Article 52(1) EPC
14.45 - 15.00
Coffee / Tea Break
15.00 - 16.00
An industry view: an in-house perspective on managing IP protection of software-related inventions

Nils Ekström

  • Selecting what software technologies to patent or to protect in other ways
  • Foreign filing strategies that balance budget and likelihood of success for software innovations
  • Challenges facing companies involved in managing software patents and responsible for software-related technologies
16.00 - 16.30
Q&A
16.30 -
NIPO and Speaker Sponsored Networking Reception Featuring Wine, Beer, and Other Refreshments

Presenters

Nicholas Fox

Nicholas Fox specialises in intellectual property law with a focus on electronics, telecoms and software patent litigation. He acts both as a lawyer and as a patent attorney for clients in the European Courts and the European Patent Office. He has extensive technical experience in the electronics and telecommunications field having acted on behalf of a wide variety of multinational firms including Canon, Intel, Research in Motion and Nortel. 

Nicholas has a degree in Mathematics from Cambridge University and a master’s degree in Computer Science from Oxford University as well as an LLM in Intellectual Property Litigation. In addition to being a solicitor he is also qualified as both a European and a Chartered British patent attorney and is a member of the New York Bar. He is also qualified as a patent attorney advocate with a right of audience before the Higher Courts in all intellectual property matters. 

Nicholas is a guest lecturer for the MSc and certificate courses for patent attorneys at Queen Mary, University of London and teaches on European patent law on the JDD European Qualifying Examination course. Nicholas writes widely on intellectual property issues and is the author of the practitioner’s work: A Guide to the EPC 2000, a commentary on the European Patent Convention, published by the Chartered Institute of Patent Attorneys and the consulting editor and a significant contributor for the books: “Intellectual Property in Electronics and Software” and “Patent Subject Matter Eligibility” both published by Globe Law and Business.

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Timothy May

Timothy May has more than 20 years of experience in the field of U.S. patent law. He practices patent litigation and counsels clients on IP management matters. His practice encompasses a range of technical areas, including software, medical devices, industrial equipment, semiconductor devices, and electronics. Tim has managed patent litigation activities for overseas clients, and led litigation teams through nearly all phases of litigation, including, worldwide discovery efforts, depositions, claim construction, motion practice; as well as settlement hearings and negotiations. He has also been involved in more than 50 post-grant proceedings before the U.S. Patent and Trademark Office (USPTO).  

Tim was a resident partner in the firm’s European office for five years. While in Europe, he gained substantial experience advising European high-tech companies on U.S. patent matters. Tim currently manages the U.S. prosecution and global patent portfolios for European clients in various electrical and mechanical technologies. He is also a frequent lecturer on U.S. patent law and has spoken at numerous conferences in Europe. Before joining the firm, Tim served as a Patent Examiner at the USPTO, where he examined patent applications relating to digital communications and image analysis, and where he regularly dealt with software patentability issues.

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Nils Ekström
Nils Ekström

Nils Ekström, M. Sc Applied Physics, LL.M, European patent attorney started his career within the IP domain as an examiner at the Swedish Intellectual Property Office, first in the field of mechanics with a shift to the area of electronics as a consequence of the fast expansion in the telecom domain. In order to come closer to innovation, Nils shifted to a position at a then small patent department at AB Volvo, where he stayed for 6 years working with capturing innovation and leading prosecution of the portfolio.

After Volvo, Nils continued his career at patent law firms for 13 years to deepen the practical experience of patent prosecution. During this time he gained experience from various industries and technologies including automotive, household electronics, hygiene products, etc.

During this time Nils gained an interest in the political side of IP and held positions at the Swedish Association for Patent Attorneys (SPOF) and European Patent Institute, epi assisting with inputs in relation to legislative proposals etc.

Nils has spent the last ten years at AB Volvo, but in a new position dealing exclusively with third party matters, including enforcement and defence, assisting with IP matters in M&A’s, collaborations, sourcing, technology licensing, etc.

Nils has also been involved extensively in the matter of SEP licensing, as a practical matter as well as a political matter for the last 4 years.

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Course Team

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