Call us at: +91-80173 44048

 
 
WHAT WE DO
PATENT
TRADEMARK
COPYRIGHT
DESIGN
NON-LITIGATION LEGAL
RETAINERSHIP
ARRANGEMENT
WHO WE ARE
FAQS
PATENT
TRADEMARK
COPYRIGHT
DESIGN
TRAINING
PATENT AGENT
EXAMINATION
PREPARATORY
COURSE


BASIC COURSE ON
PATENT DRAFTING
PROSECUTION FLOWCHART
PATENT
TRADEMARK
COPYRIGHT
DESIGN
CAREERS
ARTICLES / NEWS
CONTACT US
 
TRAINING

The Controller General of Patents, Designs and Trademarks, Dept. of Industrial Policy and Promotions, Ministry of Commerce and Industry notifies about the date of conducting the examination for qualifying as Patent agents through Patent Offices at New Delhi, Mumbai, Kolkata, Chennai and in Nagpur.

Eligibility criteria

His profile:

·        Scientific/technical and legal

·        Training (qualification exam)

·        Internal (Industry)/External (Private practice)

·        Interacts with a network of national attorneys all over the world and with lawyers

 

His role:

·        Informs and advises on Intellectual Property rights

·        Guides clients to an appropriate protection and advises on a protection strategy

·        Analyses the patentability of the invention, the state of the art and rights of third parties (freedom to operate)

·        Drafts and files patent applications

·        Represents and advises the applicant on steps to take to obtain, defend and/or attack an Intellectual Property right (interaction with the competent Offices, foreign agents, and lawyers in case of litigation)

·        Play a part with assignments, licenses, due diligence, infringement, etc.  

Scheme of test

 

Paper

Subject

Marks

Paper І

Patents Act & Rules

100

Paper II

Drafting & interpretation of Patent specifications and other Documents

 

100

Viva voce

 

50

 

The qualifying marks for each written paper and for the viva voce examination is 50% each of total marks and a candidate shall be declared to have passed the examination only if he obtains an aggregate of 60% of the total marks.

 

Pattern of question papers

1.      Paper – I (Patents Act and Rules) will consist of two parts, i.e. Part A and B

a. Part A will consist of two parts, i.e. part A1 and part A2 and all questions will be compulsory.

i. Part A1, of 30 marks, will have 15 multiple choice questions of two marks each. Each question will have a maximum of six choices and a maximum of two correct choices.

ii. Part A2, of 10 marks, will have 10 true / false type questions of one mark each.

b. Part B will consist of 8 subjective type questions and the candidates will be required to attempt any 6 out of the 8 questions.

2.      Paper-II (Drafting and interpretation of the patent specification and other documents) will consist of two parts, i.e. Part A and B.

a. Part-A, of 40 marks, will consist of 6 questions of 10 marks each and the candidate will be required to attempt any 4 questions.                                                                                                                                                                

The questions will relate to drafting and interpretation of patent specifications and other documents required to be submitted under the Act and Rules.

b. Part-B, of 60 marks, will consist of parts B1 and B2

i. Part B1 will be compulsory and will consist of 1 question relating to drafting of claims and abstract from a given description of an invention.

 

ii. Part B2 will consist of 2 questions and the candidates will be required to attempt any 1 question. Out of the two questions, one question will relate to general engineering and the other question will relate to field of chemistry/life sciences.

 

CLASSROOM MODE: This program is available in classroom mode as 2 days per week (3 hours/class/day) for 14 weeks duration.                                                                                       Total hours = (3 × 2) × 14=84

CORRESPONDENCE MODE: In this program we send the participants the printed study material, various assignments on weekly basis.

 

 Course curriculum

Indian Patent Act & Rules

Week 1

Section 2. Definitions and interpretation
Rule 2. Definitions

 

Criteria of patentability-Novelty, significance of priority,  prior art, prior claiming, novelty-in cases of selection inventions, methods of determination (based on Indian Law, illustrative cases), person skilled in the art

Inventive step: basics, assessment, analysis, determination, lack of inventive step, case studies

Industrial applicability: basics, case studies

Non patentable inventions / comparisons with PCT, EPO &UK, case studies

Application for patents
Section 6-8, Rule 4-12
Types of application
Forms: 1, 2, 3,4,5 & 26 (or PA/GPA)
Section 9. Provisional and Complete specifications
Section 10. Contents of specifications
Rule 13. Specifications
Rule 15. Drawings
Rule 16. Models
Claims: object, scope, structure & assessment, Markush-type claims
Sufficiency, clarity & completeness of disclosure, technical terms
Biological material: inclusion, deposit & sequence listings

Week 2

Section 16: Divisional application, unity of inventions & case studies
Patents of addition
Section 54-56, case study
Post dating of application & case studies

 

PUBLICATION AND EXAMINATION OFAPPLICATIONS
 
Section 11-12
Section 143: Restrictions upon publication of specification
Rule 11: Order of recording applications
Rule 24: Publication of application
Rule 24: Request for publication
Rule 24 B: Examination of application
Forms: 9 &18
Steps & procedures in formal/ substantive examination, category of cited documents
Examination format for patent application by IPO
Rule 25-27
Screening of Applications
Section 13: Search for anticipation by previous publication and by prior claim
Rule 28:Procedure in case of anticipation by prior publication
Rule 28A:Procedure in relation to consideration of report of examiner under section 14
Rule 29: Procedure in case of anticipation by prior claiming
Rule 30: Amendment of the complete specification in case of anticipation
Section 14: Consideration of the report of examiner by Controller
Section 144: Reports of examiners to be confidential
Section 15-17
Section 18: Powers of Controller in cases of anticipation
Rule 29, 30 & 31
Section 19: Powers of Controller in case of potential infringement
Rule 32: Procedure in case of potential infringement

Section 21: Time for putting application in order for grant

Section 20: Substitution of applicants
Rule 35&36
Explanation, forms & fees
Legal assignment & Equitable assignment, merger, license
Drafting of assignment, merger &license (exclusive & non-exclusive)

PRE-GRANT OPPOSITION

Section 25& Rule 55
Grounds for Pre-grant Opposition
Proceedings under Pre-Grant Opposition
Case studies

PRE-GRANT OPPOSITION

Section 25& Rule 55A, Rule 56-63
Grounds for Post-grant Opposition
Section 150
Proceedings under Post-Grant Opposition
Form 7
Case studies

Week 3

Section 26: Action In Case Of Wrongful Obtaining

Mention Of Inventor As Such In Patent
Section 28 & Rule 66-70
Form 8 & fees

Anticipation & exceptions
Section 29-34 & Rule 28, 28 A, 20-33 

PROVISIONS OF SECRECY OF CERTAIN INVENTIONS

Section 35-42 & Rule 71-72
Form 25
Section 35- penalties

Section 43: Grant of patents
Rule 74. Form of patent
Rule 74A. Inspection of documents related to grant of patent
Section 44. Amendment of patent granted to deceased applicant
Form 10 & fees
Rule 75. Amendment of patent under section 44
Section 45. Date of patent
Section 46: Form, extent and effect of patent
Section 47: Grant of patents to be subject to certain conditions
Section 48. Rights of patentees, case study
Section 49. Patent rights not infringed when used on foreign vessels etc., temporarily or accidentally in India

Week 4

Section 50: Rights of Co-owners of Patents
Power of Controller to give directions to co-owners
Section 51 & Rule 76-78
Form 11
Section 53. Term of patent
Rule 80. Renewal fees under section 53
Section 142. Fees

AMENDMENT OF APPLICATION AND SPECIFICATION
Section 57-59, Rule 81-83
Rule 126. Form, etc., of affidavits, Drafting of affidavit, declaration
Form 13 & fees
Case studies

RESTORATION OF LAPSED PATENTS
Section 60-62, Rule 84-86

SURRENDER OF PATENTS
Section 63, Rule 87

 REVOCATION OF PATENT
Section 64-66, Grounds of revocation
Case studies

REGISTER OF PATENTS
Section 67, Rule 87

Week 5

REGISTRATION OF ASSIGNMENTS, TRANSMISSIONS ETC.
Section 68. Assignments, etc, not to be valid unless in writing and duly executed
Section 69-70, Rule 90-92
Drafting of assignment, licenses etc.
Form 16 & fees

Section 71. Rectification of register by Appellate Board.
Section 72. Register to be open for inspection
Rule 95. Inspection of register of patents under section 72; and fees payable therefor
Rule133. Supply of certified copies and certificates under sections 72 and 147
Rule 94. alteration of his name, nationality, address of patentee

PATENT OFFICE AND ITS ESTABLISHMENTS
Section 73-76
POWERS OF THE CONTROLLER GENERALLY
Section 77. Controller to have certain powers of a civil court
Rule 130. Application for review of decisions or setting aside of orders of the Controller
Form 24 & fees
Section 78. Power of Controller to correct clerical errors, etc.
Rule 122-125
Section 79. Evidence how to be given and powers of Controller in
respect thereof
Section 80. Exercise of discretionary powers by Controller
Section 81. Disposal by Controller of applications for extension of time

WORKING OF PATENTS AND COMPULSORY LICENCE AND REVOCATION
Section 82-92,92A,  Rule-96-102
Form:14, 17, 19, 20 & 21
Time line for compulsory licenses, Case studies

Week 6

USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND ACQUISITION OF INVENTIONS BY CENTRAL GOVERNMENT
Section 99-103

INFRINGEMENT OF PATENTS
Section 104-107, 107A, 108-114
Amount of infringement: colorable imitation, immaterial variations, mechanical equivalents, taking essential features of inventions, doctrine of ‘pith and marrow’
Literal & direct infringement, doctrine of equivalents
Case studies

APPELLATE BOARD
Section 116, 117A-117H

PENALTIES
Section 118-124

PATENT AGENTS

Section 125 & Rule 108, 118
Section 126 & Rule 109-111, 111A, 112-115
Section 127, Rule 135
Section 128-130, Rule 116-117
Section 131, Rule 119-120
Section 132

CONVENTION APPLICATIONS

Section 133-139,  Rule 121
Case studies

Week 7

MISCELLANEOUS

Section 141-157, 157A,158, 159, 160, 163
Section 146, Penalty, Form
Rule 121, 121A, Rule 126-139
Practice of forms and fees

PATENT COOPERATION TREATY

Introduction to PCT, graphical representation of PCT
PCT international phase guidelines
Basic idea on PCT forms (editable), International Search report (ISR) & International Preliminary report on patentability (IPRP)
Filing of amendments under Article 19 & 34

PCT INDIA

Section 10(4) A
Patent amendment Rule(s): Rule 17-19, 19A- 19N, 27, 138
Fees payable under PCT: Fifth schedule
India as RO: guidelines, procedures & explanation, graphical representation

National phase:
Introduction, basic requirement ( per new & earlier guidelines)
Meeting official objections to National phase application(s)

Graphical representation of patent procedure(s)
FAQS on patents

Logical and analytical questions with answers on patent procedures

Week 8

Concept on Patentability

Determination of novelty (based on PCT /EPO guidelines)

Determination of inventive step (based on PCT /EPO guidelines)

Determination of industrial applicability (based on PCT /EPO guidelines)

IPO-Guidelines of examination on biotechnology
UK- IPO-Guidelines of examination on biotechnology

IPO- Guidelines of examination on TKDL
EPO- Medical guidelines

EPO-Guidelines on  Chemical inventions

Week 9

Idea on searching

Search strategy-PATENTSCOPE / ESP@CENET/ USPTO

IPC – search methodology

International search & examination report-format/interpretation/analysis

Exercises

Comparison of Patent Law of Major Jurisdictions

Week  10

Training on claims drafting

Claims set- Independent/dependent/ multiplicity of claims/ unity of inventions

Kinds of claims- apparatus or device claims /method or process claims /product-by-process claims /result to be achieved & parameter claims / composition claims/ biotechnology claims

Kinds of claims:  Markus claims/ means plus function claims/ reach through claims/ Swiss claims/use claims/ omnibus claims/ Jepson claims

Drafting of claims-Exercises 

Drafting of claims-Exercises 

Week 11

Drafting of assignments, licenses, affidavit & petitions

Drafting of petition under Rules 137 & 138

Exercises on drafting of affidavit for different purposes

Exercises on drafting of assignment, agreement

Exercises on drafting of licenses (Exclusive & non-exclusive)

Exercises on drafting of Compulsory licenses

Training on drafting of specification

Week 12

Specifications, its types , contents and legal framework  under Indian law and PCT

Drawings/examples/biological material/sequences and their importance in specifications

Reading & understanding specifications (based on IPO, PCT &  PCT Nat. phase)

Reading & understanding specifications (based on IPO, PCT &  PCT Nat. phase)

Drafting of specification (practice on exercises)

Week 13

Drafting of specification (practice on exercises)

Drafting of specification (practice on exercises)

Drafting of specification (practice on exercises)

Drafting of specification (practice on exercises)

Drafting of specification (practice on exercises)

Week 14

Previous years question papers

Discussions on previous years question papers

Discussions on previous years question papers

Discussions on previous years question papers

Discussions on previous years question papers

MOCK TEST

 
  • Time
  • Reasonable charges based on time and content
  • No shortcut -through study of the Patent Act and Rules
  • Concept on patentability -based on IPO, US, EPO and
    PCT guidelines
  • Claims structures, construction, types & analysis
  • Drafting: style, format & practice
  • Time
  • Reasonable charges based on time and content
  • Course content based on extensive legal & technical
    research
Copyright © 2019 P. MAZUMDAR & ASSOCIATES- All Rights Reserved.   ARESS COMMUNET