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TRAINING - PATENT AGENT EXAMINATION PREPARATORY COURSE

COURSE VALUE BASED ON EXAM SPECIFIC NEED AT A REASONABLE COST

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

  • Must be a citizen of India
  • Must have attained minimum age of 21 years
  • Degree in science, engineering or technology from any university
  • Must have qualified Patent Agent Examination

     Every registered patent agent has the right to practice before the Controller, to prepare all documents, transact all business and discharge such other functions. The patent agent duly authorized may sign all applications and communications to the Controller.

 

Role of the Patent Agent

 
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 Part 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.

 

 Teaching mode

 

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 OF APPLICATIONS

Section 11-12

Section 143: Restrictions upon publication of specifications

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

PRE-GRANT OPPOSITION

Section 25& Rule 55

Grounds for Pre-grant Opposition

Proceedings under Pre-Grant Opposition

Case studies

 

POST-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

 

Reference books: Bare Act and the list of various hand books on Patent Law & practices will be provided after  enrollment for the course. Kindly note that the candidates have to arrange their books by themselves, as no such books will be provided from our end.

 

 

 
  • 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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