Patent Protection for Software-Related Inventions

- in Europe and the USA
We have invited Management Forum for an intensive update on patent protection for software-related inventions. We will cover all the major developments in European patent law, in particular graphical user interface (GUI) inventions and ‘mixed’ inventions with both patentable and non-patentable subject matter.

At this seminar, you will learn about development strategies impacting software patents. Find out about the major developments in European patent law and learn about recent US case law impacting software patents in the US. We will discuss the differences between patenting in the United States and Europe. During the day 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
  • Procedures and pitfalls in the fields of computer-implemented inventions in Europe and the US
  • An in-house perspective on managing IP-protection of software-related inventions
  • How to understand and exploit the differences between the United States and Europe on the scope of available patent protection
  • Ongoing public debate about whether patent protection should be available for software-related and business-related inventions
  • Tactics for US practice and the latest US strategies in dealing with obviousness and the rise of indefiniteness and written description issues
  • Tips and tricks for US practice




0830 - 0900
Registration, coffee/tea
0900 - 0905

Bente Fjeldberg, Patentstyret

0905 - 0915

Timothy May, Finnegan LLP and Nicholas Fox, Simmons & Simmons LLP

0915 - 1015
Patent Protection for software-related and business-related inventions in Europe
  • European law relating to the protection such inventions
  • EPO Board of Appeal decisions, including most recent decisions

Nicholas Fox, Simmons & Simmons LLP

1015 - 1030
Coffee Break
1030 - 1130
Patent protection for software-related inventions in the USA
  • Existing US framework for software patent innovations
  • Update on recent US court decisions and USPTO guidelines impacting software and computer-controlled technologies
  • Case examples and claim techniques for US practice

Nicholas Fox, Simmons & Simmons LLP

1145 - 1230
1230 - 1345
Preparation of patent applications and procedure of European applications for softwre-related inventions
  • 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

Nicholas Fox

1345 - 1400
Coffee Break
1400 - 1530
An industry view: an in-house perspective on managing IP protection of software-related inventions
  • 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

Timothy May

ca 1545 -
End of seminar
NB. Programme may be subject to changes


Timothy May

Timothy May is a partner in Finnegan LLP's Washington, DC office.He has more than 20 years of experience in the field of U.S. patent law, practicing patent litigation and counseling 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 40 reexamination and post-grant proceedings before the 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 a frequent lecturer on U.S. patent law, and has spoken at numerous conferences in Europe.

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Nicholas Fox

Nicholas Fox works at Simmons & Simmons LLP in London. He 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 to Intellectual Property in Electronics and Software published by Globe Law and Business in 2013.

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