November 11 (Tue)
Session 1 - Advanced Topics in Patent Prosecution
8:30 Registration
8:55 Welcome
9:00
The U.S. examination backlog and new workflow changes
(Scott McKeown)
The USPTO has been forced to cut personnel while simultaneously addressing a historic backlog in patent applications. What do these agency struggles mean for your U.S. patent portfolio?
9:30
Claim interpretation by different courts and offices, and resulting hints/strategies for drafting a global patent application
(Dr. Lasse Christian Weinmann / Dr. Mark A G Jones / Edward Russavage )
Drafting for global certainty: Differing practice in claim interpretation, even between courts and patent offices in the same jurisdiction, can make obtaining, enforcing and clearing patents challenging in a global market. In Europe at least, evolving case law gives some hope for consistent interpretation of claims between patent examiners and patent judges, but does experience really bear this out? And how might the same claim language be interpreted differently between key jurisdictions? This session explores where pitfalls can arise both within and between territories, and gives practical advice on adapting drafting practice to improve certainty in enforceable scope. In the US, similar issues exist between the USPTO and courts, and strategies for developing enforceable rights will be discussed.
10:30
National first filing requirements / foreign filing licenses
(Christopher Furlong / Edward Russavage)
National first filing requirements / foreign filing licenses
When inventors collaborate across borders, a single misstep in foreign filing compliance can derail your entire patent strategy. This session explores differences in requirements between Europe and the United States and strategies for filing in multiple jurisdictions are involved.
Securing patent protection for AI related inventions
While both the European Patent Office and USPTO evaluate AI inventions under existing patent frameworks, ther are distinctions that fundamentally shape claim drafting strategies and prosecution outcomes. These differences create divergent paths for securing protection that demand jurisdiction-specific strategies from the outset.
AI & Copyright in the U.S.
Join us for an in-depth analysis of the evolving intersection between artificial intelligence and copyright law in Europe and the United States. The presentation will address emerging case law, legislative trends, current litigation and policy implications that are shaping the boundaries of authorship and originality in AI-generated works.
Using AI Tools in Prosecution: Professional requirements and considerations in adopting AI in patent workflows
Patent prosecution AI tools can accelerate prior art searches, draft responses, and analyze examiner patterns—but they also introduce new professional responsibilities around supervision, confidentiality, and competence. This presentation provides a roadmap for practitioners to harness AI's benefits while satisfying ethical duties and managing client expectations.
11:00 Coffee break / 休憩
11:30
Panel on Enablement
Must prior art be enabled at all? The new decision G 0001/23 sheds doubt that it must, at least if the prior art is a product on the market. We will discuss the implications of this decision and the open questions remaining.
International coordination: EPO frequently discusses Article 83 (Enablement) of medical use inventions intensively, and European/Japanese patent attorneys are repeatedly faced with the problem that we cannot/are not allowed to present corresponding plausibility arguments because these could lead to problems under obviousness in parallel proceedings in the USA.
Earlier this year, the Federal Circuit addressed the standard for enablement of prior art references under US law in Agilent v. Synthego. We will discuss the different enablement standard that applies to prior art under Section 102 and enablement under Section 112, the role of prohpetic examples and inoperative embodiments, and the potential relevance of such evidence to obviousness.
12:15
Securing patent protection for AI related inventions
(Edward Russavage)
13:00 Lunch break / 昼食
Session 2 - Patent and IP Portfolio Strategies
14:00
Validity assessment in Europe and the US
(Dr. Dominik Scheible / Dr. Thorsten Bausch / Dr. Clemens Tobias Steins / Dr. Jan Carl Zillies / Scott McKeown )
For Europe, we will focus on our practical experience in validity assessments at the UPC, and compare that to the practice of the EPO and national courts as well as the procedural and strategic implications of co-pending validity challenges, and discuss resulting filing and opt-out strategies. As regards the US, recent changes to USPTO leadership under President Trump have created significant turmoil internal to the USPTO, which has emboldened patent trolls. Patent challengers are now forced to litigate longer than before and/or consider older patent challenge mechanisms such as patent reexamination.
15:00
EPO case law update
(Dr. Daniel Grohs / Dr. Jan Carl Zillies)
The EPO’s Boards of Appeal were truly active over the last years and continue to remove their backlog. A central EPO priority is to deliver decisions of highest quality. As in previous years, the Rules of Procedure of the Boards of Appeal are used to ensure harmonization, predictability for parties and efficiency. During our EPO case law update, we will discuss a referral that is currently pending before the Enlarged Board of Appeal, look at practical implications of G2/21 in the different technical fields, and consider what is important when auxiliary requests are filed during the first instance to rely on them at the appeal stage.
15:30 Coffee break / 休憩
15:50
Soft IP in Europe: Beyond Legal Protection – Trademarks as Strategic Assets
(Michaela Ring)
We highlight key legal developments relevant for executive decision-making – including challenges around Green Claims, trademark protection in digital environments like the metaverse and proactive strategic trademark portfolio development and surveillance of trademark portfolios for safeguarding brand value and corporate reputation
16:10
Trade Dress/Design Patents in the US
(Libbie DiMarco)
Protecting unique product designs, packaging and overall look-and-feel as trade dress can be a powerful brand differentiator. While design patents provide immediate protection over the designs, the terms are limited. On the other hand, trade dress protection has no limited term as long as the design works as a source identifier. This protection enhances brand value and can provide a powerful competitive advantage.
16:45
AI & Copyright in the U.S.
(Edward Russavage)
17:15 Q&A
17:30 End of Conference Day 1
18:00 Reception dinner / レセプション
November 12 (Wed)
Session 3 - Advanced Topics in Patent Litigation
8:30 Registration
8:55 Welcome
9:00
Post grant procedures: Navigating the US PTAB’s discretionary denial process and new political agenda
( Scott A. McKeown)
The USPTO has implemented radical changes to the PTAB patent challenge landscape. In the second half of of 2025 alone, the USPTO will have denied more petitions (as a matter of procedural discretion) than in the previous 4 years combined! This segment will address the numerous new discretionary considerations, their likelihood of continuing, and what if any change can be expected heading into 2026.
9:45
UPC Case law Update
(Dr. Clemens Tobias Steins )
In its first 26 months, the UPC issued over 100 decisions on the merits at first instance, and the Court of Appeal (CoA) handed down its first judgments on the merits, too. It is time to review how the UPC, and in particular the CoA, are shaping substantive patent law in Europe. We will focus on infringement aspects, such as claim construction, infringing acts, defences, and liability for infringement, as well as the requirements for provisional injunctions.
10:30 Coffee break / 休憩
11:00
Lessons to be learned from the recent decisions on Standard Essential Patents
(Holger Stratmann / Michele Baccelli / Libbie DiMarco )
2024 was a busy year regarding standard-essential patents (SEPs) in Europe. The UPC handed down its first decisions of SEP cases in 2024, most notably the decisions Philips v. Belkin, Panasonic v. Oppo and Huawei v. Netgear. In these three decisions, issued by the UPC’s Court of First Instance, the Court established its approach to SEP matters and the FRAND defense in application of the CJEU ruling Huawei v. ZTE. We will have a closer look into these decisions as they provide a first insight how the UPC may approach FRAND determinations in SEP litigation.
SEP litigation popular in the U.S., particularly in disputes relating to WiFi and other communications technoogy. These disputes are characterized by complex legal battles over patents that are considered essential to industry standards and that implicate FRAND rights. SEP holders and implementers alike face challenges when navigating these disputes, which often span multiple jurisdictions and require strategic licensing and litigation approaches. Trends in recent U.S. litigation indicate that the ITC remains an attractive forum for SEP holders despite the potential for complex “public interest” issues relating to FRAND obligations.
12:00
Panel with industry members on FRAND royalty setting in view of licensing and litigation
(Michele Baccelli / Holger Stratmann / Libbie DiMarco )
- Discuss about FRAND and royalty rates
- How to set up a new FRAND program in view of a new standard or a new technology market covered by the patent (eg IoT)
13:00 Lunch break (3F „SHINJU”) / 昼食 (3階「真珠」)
EXECUTIVE SESSION - TRENDS AND PERSPECTIVES IN IP LITIGATION AND MONETIZATION FOR IP EXECUTIVES
14:00
Panel on global litigation strategies in view of the UPC and new rules on international jurisdiction
(Holger Stratmann / Dr. Mark A G Jones / Dr. Clemens Tobias Steins / Dr. Dirk Schüssler-Langeheine
- Panel on first-hand experience at the UPC
- The Impact of the CJEU BSH vs. Electrolux decision on European litigation strategies
- Unitary patents and divisional applications as a tool for effective patent enforcement in Europe
- Short arm UK or long arm UPC: strategic considerations for challenging patent infringement in the UK market using both traditional and new venues. Focus on comparing UPC and UK procedural and substantive issues in view of recent developments in each forum, which may favour, block or mandate one venue or the other
- Antitrust issues of patent enforcement - The divisional game and the Teva decision of the European Commission
- ITC and district court litigation remain popular options for enforcing patents in US. District court litigation allows companies to recover monetary damages, which can be significant in some cases, while the ITC offers immediate injunctive relief. The ITC has certain parallels with UPC litigation and has an extraterritorial reach.
- Litigation funding has continued to increase in 2024 and 2025. We will consider the impact on defendants and what courts are doing in response.
- In 2014, the US Supreme Court clarified the standard for what constitutes unpatentable subject matter under Section 101. We will summarize the latest trends in Section 101 challenges in district court, describe when such challenges are most likely to succeed, and explain how Section 101 defenses can play an important part of an overall defensive strategy.
15:15
Trends in damages awards in US patent litigation
(Eric Rutt / Dr. Dirk Schüssler-Langeheine )
Over the past 10 years, US juries have increasingly awarded larger damages. At the same time, the Federal Circuit has scrutinized damages awards for compliance with the requirement that plaintiffs "apportion" damages to features that are actually patented and the requirement that licenses relied upon as evidence of a reasonable royalty be "comparable." We will discuss strategies for defendants to limit their damages exposure by relying on the apportionment and comparable license requirements.
15:45 Coffee break / 休憩
16:00
Industry panel on global IP portfolio, litigation and monetization strategies
(Michele Baccelli / Libbie DiMarco)