SYLLABUS FOR THREE MONTHS INSTITUTIONAL TRAINING OF EXAMINERS OF PATENTS & DESIGNS

Transcription

1 SYLLABUS FOR THREE MONTHS INSTITUTIONAL TRAINING OF EXAMINERS OF PATENTS & DESIGNS

2 INDEX Module Duration Page No.. Introduction to the Intellectual Property Rights. week 7 Day Role of IP in business and national growth 7 Day Evolution and development of monopoly 7 rights Day Designs Law 7 Day Trademarks 7 Day 5 Copyrights 8 Day 6 Geographical Indications and cyberspace 8. Invention and patentability weeks 8 Week Day Indian Patent Law 9 Day Inventions and subject matter 9 Day Criteria of patentability novelty 9 Day Criteria of patentability inventive step 9 Day 5 Criteria of patentability inventive step & 0 industrial applicability Day 6 International arrangements 0 Week Day Framework of patent applications 0 Day Patent filing 0 Day Publication requirements Day Examination provisions Day 5 Grant of a patent Day 6 PCT applications. Examination of patent applications 6 weeks Week Day Role of Examiner & Controller

3 Day Reading patents & patent information Day Constituents of patent specifications [Examiners will be split into specialty groups] Day Abstract & drawings Day 5 Patent databases Day 6 Types of searches [Examiners will be split into specialty groups] Week Day Search strategy Day Practice session on paid databases [Examiners will be split into specialty groups Science & Technology] Day Practice session on paid databases [Examiners will be split into specialty groups Science & Technology] Day International searching & preliminary examining authority Day 5 International search & examination reports Day 6 International search & examination reports Week Day Process of examination Day Examination of description 5 [Examiners will be split into specialty groups] Day Examination of claims 5 Day Day 5 Technical examination: determining novelty [Examiners will be split into specialty groups Science & Technology] Technical examination: determining inventive step and non-obviousness [Examiners will be split into specialty groups Science & Technology] 5 5

4 Day 6 Practice session 5 Week Day Patent drafting 6 Day Patent drafting 6 Day Patent drafting 6 Day Patent drafting 6 Day 5 Infringement of patents 6 Day 6 Infringement of patents 6 Week 5 Day Examination reports - Practical 6 [Examiners will be split into specialty groups] Day Examination reports Practical 7 [Examiners will be split into specialty groups] Day Hearing procedures 7 Day Amendments 7 Day 5 Practice session 7 Day 6 Evaluation session 7 Week 6 (Electronic processing of live files with discussions at the end of day) (Examination in electronic environment) Day Administrative electronic modules 7 Day Administrative electronic modules 7 Day Other modules 8 Day Practice session 8 Day 5 Evaluation session 8

5 Day 6 Evaluation session 8. Opposition, revocation and appeals week 9 Day Opposition & procedures 9 Day IPAB 9 Day Examination of oppositions (Practical) 9 Day Revocation & procedures 9 Day 5 Appeals 0 Day 6 Practice sessions & exams 0 5. Important proceedings related to patents week Day Important issues with respect to patents Day Restoration & maintenance Day Role of Patent Agents Day IP management Day 5 Technology transfer & licensing Day 6 Technology transfer & licensing 6. Administrative & service matters week Day Constitutional Law Day Administrative Law Day Service rules Day Provisions of other laws with reference to Indian Patent Office Day 5 Communication & soft skills Day 6 Communication & soft skills 5

6 WEEK /DAY Module Introduction to the Intellectual Property Rights LECTURE SUBJECTS FACULTY Role of IP in business and national growth Day Ideas, innovation and market evolution Market competition, development of monopoly rights and Intellectual Properties Concept of property, proprietorial rights & governance policies Significance of IP and rationale for protection - Role of IP in business Evolution and development of monopoly rights Day Understanding growth of IP regimes and development of Patent Law Paris convention, Berne Convention and other international treaties GATT / WTO- framework for international trade Agreement on Trade Related Aspects of Intellectual Property Rights- TRIPS Designs Law Day Concepts, definitions and kinds of designs Protection of Designs- legal provisions Enforcement mechanisms Case study discussions Trademarks Day Trademark Law- concepts and kinds of marks Trademark practice and procedure-classification & registration Trademark Infringement and Passing off Well known and non-conventional trademarks Copyrights Day 5 Copyright Law-Essentials and kinds Ownership, authorship and assignment 6

7 Copyright Infringement and fair use doctrine Related/ neighboring rights and management of copyrights Geographical Indications and cyberspace Day 6 Geographical indications- Concepts and features Cyberspace IP, Semiconductors & Integrated Circuit Layout designs Protection of Biodiversity, Traditional Knowledge & Plant Variety Protection (PVP), Trade secrets and Confidential Information Exercises, group discussions and evaluation for the Week 7

8 Module Invention and patentability WEEK /DAY LECTURE SUBJECTS FACULTY Week Indian Patent Law Day Development of Indian Patent Law - Salient features Important definitions, terms and concepts Patent application- Applicant and kinds of application Patent office, its branches and jurisdiction Inventions and subject matter Day Patentable and non-patentable inventions- Concepts Non patentable inventions u/s - general discussions with examples Non patentable inventions u/s & and secrecy directions Exercises for study and analysis Criteria of patentability novelty Day Patentability - Issues & requirements Concept of Novelty, significance of priority and prior art Anticipation and its exceptions [S 9 ] Case study discussions with respect to novelty criteria Criteria of patentability inventive step Day Inventive step- Principles, methods & approaches Day 5 Determining inventive step - implications of technological advancement u/s () (ja) & (l) Determining Inventive step - implications of economic significance u/s () (ja) & (l) Case study discussions with respect to inventive step criteria Criteria of patentability inventive step & industrial applicability Inventive step and Obviousness with respect to Persons Skilled In The Art 8

9 Case study discussions Determining Industrial Applicability Case study discussions with respect to industrial applicability criteria International arrangements Day 6 Paris Convention - convention countries, applications and practices Patent Co-operation Treaty - importance, framework & practices National phase entry and related legal provisions Exercises, group discussions and evaluation for the week Week Framework of patent applications Day Specification, its types and contents Drawings/examples/biological material/sequences and their importance in specifications Claims and types of claims Important concepts - unity of invention, post/ antedating, conversion, cognate applications, etc Patent filing Day Filing of an application- who can file and where to file? Forms, fees and timelines for filing Formal requirements of filing - assignment, POA, request for examination, etc Practice session with respect to filing Publication requirements Day Requirements & issues of publications Publication: Contents and IP office journal Exceptions to publications. Case study discussions Examination provisions Day Essentials of examination process legal provisions Examination procedure - Part 9

10 Examination procedure - Part Report of Examiner to the Controller Grant of a patent Day 5 Grant of a Patent and its implications Rights of patentee Date and term of patent Case study discussions/films on understanding inventions PCT applications Day 6 International applications under PCT, procedure under Chapters & of WIPO Guidelines and formalities & permission u/s9 IPA National phase applications filing requirements Concerned authorities, designated member states, Strasbourg treaty for International Patent Classification (IPC) Exercises, group discussion and evaluation 0

11 Module Examination of patent applications WEEK /DAY LECTUR E SUBJECTS FACULTY Week Day Day Day Role of Examiner & Controller Role of examiner, hierarchy & reporting Concept of prior art search Examining applications and preparing examination reports (format) Role, function and powers of Controller Reading patents & patent information Understanding international coding (INID) and patent classification systems (IPC) Reading patent documents- reading patents in India, (front page information, parts and structures) Reading patents in other major jurisdictions including WIPO publications Role of IPC in patent search Constituents of patent specifications [Examiners will be split into specialty groups] Understanding patent specifications: part - relevant IPO case studies Understanding patent specifications : part - relevant IPO case studies Understanding nature of patent claims - relevant IPO case studies Understanding nature of patent claims - relevant IPO case studies Abstract & drawings

12 Day Day 5 Day 6 Significance of an abstract Understanding drawings with respect to specifications Biological materials/ working models/ engineering drawings / sequence listing Practice session : study with examples Patent databases Free/ paid patent databases and other search engines Databases used by IPO Non-patent literature database Services provided by Patent Information System (PIS) Types of searches [Examiners will be split into specialty groups] Patentability search State of the Art Legal Status and Patent Family search Practice sessions Week Day Day Search strategy Formulating strategy in accordance with the restrictions Formalities and requirements Documents Managing Data mining and mapping Case study exercises Practice session on paid databases [Examiners will be split into specialty groups Science & Technology] Introduction to STN & Micropat How to use - Practice session Evaluation exercises Practice session on paid databases

13 Day Day Day 5 Day 6 [Examiners will be split into specialty groups Science & Technology] Introduction to Thomson Reuters & Delphion How to use - Practice session Evaluation exercises International searching & preliminary examining authority ISA/IPEA & role of ISA/IPEA Functions & correspondences by ISA/IPEA India as ISA/IPEA Forms, fees and Time limits for activities by ISA/IPEA International search & examination reports Understanding International Search and Examination Reports (ISR/IPER) Analysis of Search/Examination Reports Preparing Search Reports Preparing report on patentability International search & examination reports Practice session on searches, determination of novelty, search strategy and reporting Evaluation exercises Evaluation exercises Week Process of examination Examining Ordinary Patent Applications (Formal Examination) Day Examining PCT & Convention Applications (Formal Examination) Requirements of other documents:(general) Practical exercises Examination of description [Examiners will be split into specialty groups] Day - Understanding the state of art & subject matter of invention with reference to the graphic forms of

14 representation. - Exercises Examination of claims Form and content of claims Day Kinds of claims- Dependent/Independent, Markush, Swiss, etc and multiplicity of claims Interpretation of claims Exercises Technical examination: determining novelty [Examiners will be split into specialty groups Science & Technology] Method of determining novelty Anticipation and exceptions to the anticipation Day Writing objections in respect of novelty & powers of controller in cases of anticipation. Case study (from Patent Office) discussion with respect to novelty Technical examination: determining inventive step and non-obviousness [Examiners will be split into specialty groups Science & Technology] - Determining obviousness and person skilled in the art Day 5 Methods, principles and various approaches of - determination of Inventive Step Practice session Writing objections in examination report with respect to Inventive step Case study (from Patent Office) discussion with respect Day 6 to inventive step Principles and methods of industrial applicability Writing objections in examination report vis-à-vis industrial applicability Week Patent drafting Day - Drafting of claims [ group wise study]

15 Patent drafting Day - Drafting of specifications [ group wise study] Patent drafting Day - Practice session for day Patent drafting Day - Practice session for day Infringement of patents Day 5 Day 6 Concepts, jurisdiction & Burden of proof in cases of infringement Exceptions to infringement Exceptions to infringement Defenses & innocent infringers Infringement of patents Remedies and reliefs I Remedies and reliefs II Certificate of validity of specification for infringement Case study discussions Week 5 Examination reports - Practical [Examiners will be split into specialty groups] Day - Framing an examination report with reference to Week. Examination reports Practical [Examiners will be split into specialty groups] Day - Framing an examination report with reference to Week Hearing procedures Formalities & procedures of hearings conducted by - IPO. Day Decision of Controller & consequences Controller s Powers & remedies available to applicant. Amendments 5

16 Day Day 5 Amendments before grant Amendments after grant Powers of Controller with respect to amendments Practical exercises. Practice session Case study discussions Evaluation session Day 6 Evaluation exercises Week 6 (Electronic processing of live files with discussions at the end of day) (Examination in electronic environment) Day Administrative electronic modules Examination Module: Introduction to the electronic, examination module, processing and submission of various documents/ notes by Examiner & Controller, Practice sessions Administrative electronic modules Day - Practice/ Evaluation sessions Other modules RMID Module GPM Module Publication module Day Register of Patents module, Cash module, Other modules Practice session Day - Practice session Evaluation session Day 5 Day 6 Exams on syllabus covered. Exams on syllabus covered. Evaluation session 6

17 Module Opposition, revocation and appeals WEEK /DAY Day Day Day Day LECTURE SUBJECTS FACULTY Opposition & procedures Pre-grant opposition-who can file, grounds of opposition and proceedings Post grant opposition- who can file & grounds of opposition and proceedings Case studies pre grant opposition from Patent Office Case studies post grant opposition from Patent Office IPAB - IPAB, its constitution, jurisdiction & scope Study of judgments delivered by IPAB along with the main file of Patent / Application Examination of oppositions (Practical) Pre grant case study along with the live file Post grant case study along with the live file Revocation & procedures Revocation Concepts, jurisdiction, parties involved Grounds of revocation Procedure, form, fees, time limits Case study discussions Case study discussions Day 5 - Appeals Appeals against orders / decisions of the Controller 7

18 Power of Controller to review Appeals against decision of IPAB Role of High Court in cases where a counter-claim for revocation on the ground of non-validity is taken. Discussions Practice sessions & exams Day 6 Practice session on Syllabus covered Exams on Syllabus covered Practice session on Syllabus covered Exams on Syllabus covered 8

19 Module 5 Important proceedings related to patents WEEK /DAY Day LECTURE SUBJECTS FACULTY Important issues with respect to patents Introduction to working of patents and compulsory licenses Procedure for dealing with applications u/s 8,85 Compulsory licenses in special cases and licensing of related patents Licenses to operate as a deed and termination of licenses Restoration & maintenance Restoration and maintenance of a patent Use of inventions for Government purposes Day Acquisition of inventions by the Central Government Register of Patents Role of Patent Agents Role of Patent agents Offences and penalties under IPA Day Case study discussions Case study discussions IP management IP incubation and asset identification Day IP management 9

20 IP audit IP valuation Technology transfer & licensing Technology transfer and types of transfer Day 5 Assignment Licensing in/ out and cross-licensing Structuring a licensing agreement Technology transfer & licensing Day 6 Sale, gift and devolution of property Surrender of patents Case study discussions Evaluation exercises 0

21 Module 6 Administrative & service matters WEEK /DAY Day LECTURE SUBJECTS FACULTY Constitutional Law Introduction to Indian Constitution Fundamental Rights- Article to and Judicial review Right to Information Act, 005-relevant provisions and issues for IPO Organs of the Government and their working ( legislature, executive & judiciary) Administrative Law Principles of natural justice State and delegated legislation Day Government of India Service rules Government of India Service rules Service rules Leave rules & Conduct rules Financial rules & vigilance related matters Day Laws & rules protecting disadvantaged groups in India Anti- dowry provisions and other service related matters Provisions of other laws with reference to Indian Patent Office Day Interpretation of Statutes and General Clauses Act

22 Provisions of CPC, Limitation Act and Evidence Act Alternate Dispute Resolution & laws of Arbitration and Conciliation Offences and liabilities under the provisions of various legislations in India and cross-border issues Communication & soft skills Communication skills - Legal writing and citation, formatting tips Day 5 Proficient use of language Proof reading and effective presentation skills Listening skills, group dynamics and team skills Communication & soft skills Personality development Understanding self - personality & Goal setting Day 6 Developing interpersonal communications skills Managing time, stress &conflict (workshop) Closing ceremony will be preceded by moot hearing sessions (evaluation exercise), wherein the Examiners will act as Patent Agents as well as hearing officers.