Efficient dialog between patent examiners and patent attorneys or applicants

Transcription

1 Efficient dialog between patent examiners and patent attorneys or applicants Draft Programme - draft version 12 May May 2014 Oslo, Norway Venue Norwegian Intellectual Property Office (NIPO) Sandakerveien Oslo 1 Norway Seminar reference OS For further information please contact Ms Christine Bruyen European Patent Office European Patent Academy Bob-van-Benthem-Platz Munich Germany Tel. +49 (0) cbruyen@epo.org In co-operation with the Norwegian Intellectual Property Office

2 Your trainers Mr Giorgio Acerbis Examiner, Joint Cluster Consumer and Medical Technology European Patent Office, Munich Mr Acerbis obtained a degree in aeronautical engineering at Politecnico of Milan (Italy) in In 1996 he worked within the Aviation Safety Group at the Joint Research Centre of the European Commission in Italy, and from 1997 to 1998 he worked in the Reliability and Maintenance Schedules Department of the airline company Air Europe. He joined the EPO in The Hague in 1998 as a search examiner, and soon extended his tasks to substantive examination. After his tranfer to the EPO in Munich, he started work within opposition divisions. Since 2006 he is giving training to newcomer examiners, and in 2009 he joined the Drafting Group of the Learning and Development department of the EPO. As an examiner, he is involved in all the aspects of the patent procedure from classification to opposition proceedings mainly in the field of consumer technology. Ms Maria Louka Examiner, Joint Cluster of Medical and Consumer Technology European Patent Office, Munich Ms Louka is a physicist who studied physics at the University of Athens in Greece. She then obtained a Master degree on Medical Physics at the University of Surrey (UK), and worked as a medical physicist at the University Hospital Aretaieion in Athens. She joined the EPO in Munich as a patent examiner in the field of medical technology in She also worked for three years at the EPO in The Hague as a trainer in substantive examination in various technical fields. At the EPO she works in the field of orthopaedic surgical instrumentation and joint implants. She is involved in search and examination of patent applications, as well as in opposition procedures. She is also coaching new examiners. Ms Kristine Rekdal European Patent Attorney, Bryn Aarflot Ms Rekdal started as an examiner at the in 1995, and became later Head of Section for Electronics/Constructions in the Patent Department. She joined Bryn Aarflot in 1998, and has been a partner at the firm since Ms Rekdal holds extensive experience in general and strategic patents counseling, patent drafting and prosecution, clearance and IP analysis including due diligence and freedom to operate opinions, as well as oppositions, administrative limitation and revocation proceedings, infringement analyses and proceedings, and advising in patent litigation. She has acted as an expert judge in the Norwegian court. She advises national and international clients in particular within oil & gas, information technology, physics, electronics, biophysics and optics. Kristine has extensive experience in advising start-up businesses and research organizations.

3 Mr Harald Tafjord European Patent Attorney, Bryn Aarflot Mr Tafjord started his career in 1989 within measurement technique and electronics at the University of Oslo/European Organization for Nuclear Research. He has a Bachelor in Electronics and a masters degree in Physics. He started as an examiner at the in he worked as a patent engineer at the telecom company Ericsson AS working with research and development departments internally. Since 2003, he has been a patent attorney, joined Bryn Aarflot in 2007, and has been a partner at the firm since He holds extensive experience in general and strategic patents counseling, patent drafting and prosecution, clearance and IP analysis including due diligence and freedom to operate opinions, as well as patent oppositions, and advising in patent litigation. He advises national and international clients in particular within oil and gas, information technology, physics, electronics, and telecommunication. Mr. Tafjord is the leader of the Norwegian Patent Attorney Association, NPF, and has been an ExCo delegate at AIPPI where he also has taken part in working groups. Jon D. Heggstad European Patent Attorney, Bryn Aarflot Mr Heggstad started as an examiner at the in He has also been in charge of IP at a Norwegian startup firm where he worked from 1996 to He joined Bryn Aarflot in 1998, and has been a partner at the firm since He holds extensive experience in general and strategic patents counseling, patent drafting and prosecution, as well as patent oppositions. He also works with administrative limitation and revocation proceedings, infringement analyses and proceedings, and advising in patent litigation. Mr Heggstad has acted as an expert judge in the Norwegian court. He advises national and international clients in particular within oil and gas, renewable energy, general mechanics, offshore exploration and vessels. Furthermore, Mr Heggstad is a member of a FICPI group discussing industrial design issues. Ms Turid Tronbøl IP Manager and European Patent Attorney, FMC Technologies (FMC Kongsberg Subsea AS). After finishing her Masters in Mechanical Engineering Ms Tronbøl joined the Norwegian Patent Office as an examiner in 1995, from she held the position as Head of department for petroleum cases at the Norwegian Patent Office. After a short period as an advisor at the Ministry for Trade and Industry, she joined Onsagers AS as a Patent Attorney in She became partner in Onsagers and also Director for their London Office and headed their Patent department for some years before she left in She

4 then joined FMC Technologies, FMC Kongsberg Subsea AS, which is a world provider of subsea technologies, where she now is an IP manager. Ms Tronbøl is also a board member of Norwegian Association of Patent Engineers in Business (NIP). Mr Carsten Lous Director of IPR and European Patent Attorney, Stokke AS Mr. Lous was a Product Manager at BASF Norway from 1996 to 1999 within chemicals for the paper industry before entering the IP-field. He then functioned as Patent Attorney at Oslo Patentkontor AS until 2007 before joining Zacco Norway AS and working as Patent Attorney and Manager of Patent and Designs during the last years until Mr Lous has since been Director of IPR at the children s furniture and equipment producer Stokke AS. He holds a M.Sc. in chemistry from EHICS in Strasbourg. He is also chairman of the Norwegian Association of Patent Engineers in Business (NIP) and a board member of the Norwegian Association for the Protection of Industrial Property Rights (NIR). Mr George von Staden Communication Specialist, George Consulting George von Staden was born in Washington D.C., grew up in Cape Cod Massachusetts and is a German // English Bilingual. His career began as a commercial diver off the shores of Texas, he then Mastered ocean engineering moved to Europe and Mastered in communication science. In 1997 he formed his companies in Munich being CMT and George Consulting. His expertise is found in technical professional development, Team Developments, Leadership Development, Presentation and Negotiation, Sales and Trade Show Training. He has 15 years experience servicing the European Patent Organization. George von Staden received honors in Manager Magazine as most valuable consultant Ms Inger Rabben Examiner, Section of Biotechnology and Mechanics Ms Rabben holds a M.Sc. in neurophysiology from the University of Oslo. She worked in a research group at the Institute of Physiology, University of Oslo, from 1997 to From earlier, she holds a Bachelor in Teaching from the Academy of Dance, Oslo and has several years of teaching experience. She started working as a patent examiner in biotechnology at the Norwegian Industrial Property Office in Since 2007 she has been involved in the coaching and training of newcomer examiners and for three years she was also an adviser for the examiners in biotech and organic chemistry. As an examiner she works with search and examination of applications as well as oppositions, mainly in the field of biotechnological methods and antibodies.

5 Mr Bjorn Lovas Examiner, Petroleum technology Mr Løvås obtained a bachelor of science in Petroleum Technology in 1994 and a master of science in Mathematics and Physics in 1996, both at the University of Stavanger (NO). He joined the in 1997 as an examiner in the field of petroleum technology, and today he is the technical coordinator for the Petroleum group. Since about the year 2000 he has been involved in training of novice examiners, and for a few months in 2013 he was acting Head of Section for Petroleum, Ship and Construction. Mr Olav Bergheim Examiner, Mechanics Before joining the NIPO, Mr Bergheim was a European Patent Attorney at Zacco Norway AS and a Research Manager at Jøtul AS. He holds a M.Sc. of NTNU (NO). Mr Bjørn Tisthammer Examiner, Mechanics and ICT Before joining the NIPO, Mr Tisthammer was European Patent Attorney at Tandbergs Patentkontor (NO), CEO at Totalprosjekt AS (NO), Aker Engineering AS (NO), and Product developer at Grorud Jernvarefabrikk (NO). He holds a B. Sc Mech. Engineering and a M.Sc. Comp. Sci. of the University of Newcastle (UK). Mr Bill Arlander Examiner, Geophysics Before re-joining the NIPO recently, Mr Arlander was a Patent Attorney at Zacco Norway AS, an examiner at NIPO ( ), and a Research Scientist at NILU (NO), Chalmers (SE) and Max Planck Institute (DE). He holds a Ph.D from the University of Köln (DE). Mr Jan Ove Askautrud Examiner, ICT Before joining the NIPO in 2012, Mr Askautrud was European Patent Attorney at Plougmann & Vingtoft (NO), Protector (NO) and ABC Patent (NO), R&D engineer at Autronica AS (NO) and at Autodisplay AS (NO), and Research Scientist at SINTEF (NO). He holds a B.Sc. Honours from Univ. of Glasgow in Electronics and Electrical Engineering and a Ph.D. in Electronics/Physics from NTNU (NO).

6 Monday, 26 May 2014 Room The Turbine Writing the first office communication Registration Welcome and introduction to the seminar programme Marcus Rabe, European Patent Academy, European Patent Office The fundamentals of communication and efficient dialog Coffee break Writing the first communication or written opinion: how to efficiently address substantial and formal deficiencies including best practice and bad examples Ms Inger Rabben, Examiner, Mr Giorgio Acerbis, Examiner, European Patent Office Lunch Division into working groups (see Excel sheet) Exercise on how to write the first office communication each group analyses a pre-drafted first office communication and proposes amendments Coffee break Exercise (continued) Presentation of the solution by one of the groups in the plenary, and discussion Feedback session on the writing of the first office communication End of the seminar day Welcome Cocktail

7 Tuesday, 27 May 2014 Room The Turbine Replying to applicant s submissions The examiner s communication seen from the applicant s side, applicant s strategies and what kind and amount of information is required by the applicant Ms Kristine Rekdal, European Patent Attorney, Bryn Aarflot Mr Carsten Lous, Director of IPR and European Patent Attorney, Stokke AS Replying to applicant s submissions: analysis of applicant s submissions; how to write an efficient reply, including other forms of communication Mr Bjorn Lovas, Examiner, Ms Maria Louka, Examiner, European Patent Office Coffee break Division into working groups (see Excel sheet) Exercise on how to analyse applicant s submission and how to write an efficient reply; each group analyses the applicant s submission, discusses it, agrees on a solution and writes a reply Lunch break Exercise on how to analyse applicant s submission and how to write an efficient reply (continued) Presentation of the solution by one of the groups in the plenary, and discussion Coffee break Feedback session on replying to applicant s submissions Interviews: - when and how? - how to prepare? - do s and dont s Presentation of a template for the preparation of interviews (how to prepare, setting of goals, strategy, schedule of interview)

8 Mr Giorgio Acerbis, Examiner, European Patent Office Ms Kristine Rekdal, European Patent Attorney End of the seminar day Networking dinner Feestningen Restaurant Myntgata Oslo

9 Wednesday, 28 May 2014 Room The Turbine Efficient dialog during professional interviews Key aspects of professional interviews Preparation of role plays of professional interviews Ms Maria Louka, Examiner, European Patent Office Coffee break Division into small groups Role plays of professional interviews (see Excel sheet) Lunch break Role plays of professional interviews (continued) Feedback session on role plays Coffee break Evaluation session Evaluation Exchange of experience and ideas Presentation of certificates Marcus Rabe, European Patent Academy, European Patent Office End of the seminar