News Article
Jack Hicks Attends U.S. Bar/EPO Liaison Counsel Meeting In Germany
MUNICH—Womble Carlyle IP/Patent attorney Jack Hicks’ international work activities continued this week, as Hicks participated in the U.S. Bar/EPO Liaison Counsel meeting in Munich on Oct. 11-12.
The U.S. Bar/EPO Liaison Counsel is made up of U.S. bar association-appointed members and holds meetings to discuss matters of importance to U.S. practitioners who have clients who pursue patent protection in 38 European countries. Hicks represented the North Carolina Bar Association at the meeting.
“Participating in the U.S. Bar/EPO Liaison Counsel allows me to present issues, questions and requests to the top leadership of the EPO,” Hicks said. “This relationship is vitally important to my many U.S. clients who prosecute and defend patents in European markets.”
For example, Hicks participated in discussions on the following topics:
- Unified Patent & Unified Patent Court. The European Union nations are debating establishing a European Unified Patent that would be effective in all member states. If that comes to pass, a Unified Patent Court would serve as the exclusive jurisdiction for patent infringement and nullification (validity) proceedings.
- Approval Needed by USPTO to Send Search Results to EPO. Because of an arrangement worked out between the USPTO and the EPO, U.S. applicants are currently exempt from a requirement to personally transmit search results for a U.S. priority application to the EPO. At no charge to applicants, the USPTO will electronically deliver these search results from U.S. priority applications to the EPO, provide that permission is given. However, applicants must file a Certification and Authorization Form.
- Raising the Bar of Patent Applications. In general, the EPO wants to increase the quality of the submitted applications by, in large part, encouraging applicants to better define their invention early in the process. This early-narrowing of patent claims is somewhat contrary to the traditional U.S. patent application method, so applicants need to be aware of the differences.
Jack spent the summer of 2010 on a working sabbatical in Europe, an experience which has greatly benefitted his international patent prosecution clients. He also leads Elon University School of Law and School of Business delegations on annual trips to Asia to meet with clients as part of an International Law and Business course.
Jack Hicks is a licensed patent attorney with 25 years of experience. Hicks counsels clients to determine the type and scope of intellectual property protection that meets their business goals. A substantial portion of his practice includes the preparation and prosecution of U.S. and foreign patent and trademark applications. Hicks represents clients in the global aerospace, nanotechnology and home furnishings industries. He practices in Womble Carlyle’s Greensboro, N.C. office.
This document is intended as an informational reminder and does not constitute legal advice. If you have any questions or would like to discuss a particular situation, please contact Womble Carlyle Sandridge & Rice, LLP. The purpose of this article is to provide general information about significant legal developments and should not be construed as legal advice on any specific facts and circumstances.
