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BASIC COURSE ON
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TRAINING - BASIC COURSE ON PATENT DRAFTING

IMPARTING LEGAL AND  TECHNICAL KNOWLEDGE & SKILLS TO DEVELOP DRAFTING ACCURACY


Eligibility criteria:

  • Master degree in science
  • Degree in engineering or technology

                   OR

  • Patent Agent with degree in science, engineering or technology

    

Skills required being a good drafter

  • Knowledge on respective fields like biotechnology, chemistry, pharmacy, mechanical, electrical, software etc.
  • Knowledge on Indian patent acts & rules
  • Knowledge on patent law of all major jurisdiction
  • Novelty, priority, prior claiming, inventive step & industrial applicability: concept, analysis, technical determination based on Indian patent law & patent law of other major jurisdictions
  • Specification types, content & characteristics
  • Claims forms, types, characteristics, interpretation & construction
  • Search types, methodology & analysis
  • Infringement: concept, types, understanding & analysis
  • Office action responses
  • Amendment of specification: before & after grant
  •  Chemical structures, biotech sequences & drawings

 

Teaching mode:

CLASSROOM MODE: This program is available in classroom mode as 2 days per week (3 hours/class/day) for 10 weeks duration.  Total hours = (4 × 2) × 10=80

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

 

Course contents:

 


                                           Invention & patentability

Week 1

Criteria of patentability-Novelty, significance of priority & prior art/Inventive step/Industrial applicability / method of determination (based on Indian Law)

Non patentable inventions /comparisons with PCT, EPO &UK

Anticipation & exceptions [s 29-34]/Grounds of opposition/Grounds of revocation

Technicalities-determination of novelty (based on PCT /EPO guidelines)

Technicalities-determination of inventive step (based on PCT /EPO guidelines)

Week 2

EPO Board Cases-Novelty

EPO Board Cases-Inventive step

EPO case laws on biotechnology inventions

EPO case laws on chemical inventions

IPO-Guidelines of examination on biotechnology

UK- IPO-Guidelines of examination on biotechnology

Week 3

IPO-Guidelines of examination on TKDL

UK- Medical Guidelines

Search strategy-PATENTSCOPE/ESP@CENET/USPTO/ PAJ-FI/F term /BLAST/FASTA,

Chemical structure drawing-demonstration on freely available database

IPC search-guidelines, core level & advanced level with examples

STN overview-biotechnology sequence search & chemical structure search (based on free e-seminars )

International search & examination reports

Week 4

Infringement – burden of proof,  Amount of infringement: colorable imitation, immaterial variations, mechanical equivalents, taking essential features of inventions, doctrine of ‘pith and marrow’

Direct & literal infringement, doctrine of equivalents

Case studies

Search types- patentability search, state of the art search, infringement search/ invalidity search

Training on claims drafting

Theory, form & content of claims

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

Week 5

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

Patent claims construction- Broad & narrowing, clarity, ambiguity, inconsistencies, negative limitations & disclaimers, narrowing of claims during prosecution (with examples IPO & PCT cases)

Drafting of claims-Exercises  based on European Patent agent Exam course

Drafting of claims-Exercises 

Drafting of claims-Exercises 

Week 6

Drafting of claims-Exercises 

Drafting of claims-Exercises 

Training on drafting of specification

Specifications, its types , contents and legal framework  under Indian law and PCT, sufficiency, clarity & completeness of disclosure, technical or specialized terms

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

Preparation of drawings and sequence listings

Week 7

Reading & understanding specifications –chemicals and pharmaceuticals (based on IPO, PCT &  PCT Nat. phase)

Reading & understanding specifications –chemical and pharmaceutical  inventions (based on IPO, PCT &  PCT Nat. phase)

Reading & understanding specifications –biotechnological and medical device related inventions (based on IPO, PCT &  PCT Nat. phase)

Reading & understanding specifications –biotechnological and medical device related inventions (based on IPO, PCT &  PCT Nat. phase)

Amendment of specification & narrowing claims during prosecution, analysis of FER (based on Indian and PCT Nat. phase application), Patent of addition

Week 8

Amendment of specification & narrowing claims during prosecution, analysis of FER (based on Indian and PCT Nat. phase application)

Amendment of specification & narrowing claims during prosecution, analysis of FER(based on Indian and PCT Nat. phase application)

Amendment of specification before grant-correction, explanation and disclaimer (Biotechnological inventions)

Amendment of specification before grant-correction, explanation and disclaimer (Chemical & pharmaceutical inventions)

Amendment of specification before grant-correction, explanation and disclaimer (Medical device related inventions)

Week 9

Obtaining invention disclosure from the inventors, identifying patentable inventions and understanding the inventions

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 10

Drafting of specification (practice on exercises)

Amendment of specification after grant (Biotechnological inventions)

Amendment of specification after grant (Chemical & pharmaceutical inventions)

Amendment of specification after grant (Medical device related inventions)

Examination based on hypothetical case

 
  • 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
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