Upstate Medical University

CNYBAC presents: How to Draft an International Patent Application

Presenters:  Preben Rasmussen, PhD and Jakob Poulsen, PhD, VALUA ApS 

Many applicants for patents in the US focus on drafting patent applications for the USPTO. Applicants who are eager to go beyond the US market will find that an International (PCT) patent application is a useful tool for building a patent portfolio covering several different countries.  

Due to the differences in patent law, prosecution standards and case law for countries outside of the US, an International patent application is preferably drafted having such differences in mind. This necessitates differences in structure, claim wording and references as well as the standard of sufficiency of disclosure. 

We will address these points and provide our recommendations for addressing the different standards. The presentation will describe strategy consideration you may apply in order to get the best possible patent application supporting your business.  



Preben Rasmussen, Ph.D., European Patent Attorney 
Preben has mainly worked within biotechnology and Life sciences, in particular within Molecular biology, patenting of enzymes, microorganisms and fermentation technology, and has further knowledge in the pharmaceutical area including patent term extensions such as SPCs. Preben has previously worked extensively with global IP strategies, building patent portfolios in several jurisdictions, including USA, Europe, China, Japan, Brazil and Australia and obtained his PhD at the Laboratory of Microbiology, and Master of Engineering at the Technical University of Denmark. 

Jakob Poulsen, Ph.D., European Patent Attorney  
Jakob carries experience from private practice as well as medium sized pharmaceutical companies, including both the generic and the originator industry. His experience comprises patent infringement litigation, legal opinions, due diligence and general patent work, such as drafting, prosecution, and opposition work. Focus has been on building patent protection in the US, Europe, Japan, Canada, Australia and New Zealand. Jakob has in particular experience within Life Science (working with pharmaceuticals, chemistry and biotechnology), as well as software related inventions and received his Ph.D. in Solid State Chemistry from Kyoto University in Japan as well as a M.Sc. Physics-Chemistry at Aarhus University, Denmark.