Certificate Course in Patent Law: Licensing, Claims and Litigation

Do you know the amount of settlement in Apple Inc. vs. Samsung Electronics Company Ltd., one of the most celebrated intellectual property rights battles? 

The parties agreed to settle for a whopping amount of approximately $548 million.

Dreaming of being involved with such high profile, high stake IPR battles? With an increasing amount of damages awarded in patent litigations, there is always a demand for patent lawyers who can understand and manage proceedings. Accordingly, the lawyers who appear in patent litigations charge a hefty legal fee and the work is financially rewarding. Not that anyone can simply become a patent lawyer anytime and charge such fees, but we will go there later. Right now, what can be said is that there is going to be a demand, particularly in sectors such as pharma and technology, if you do understand very well how the patent laws work.

In India, a large number of patent litigations are related to mobile phone companies, pharmaceutical companies, and the renewable energy sector. In-house lawyers in these companies cannot afford to be away from understanding how patent claims are drafted and how the litigation in these areas works. If the core assets of your employing entity are patents, you must know very well how to use as well as protect these. 

The story does not stop there. Litigation is just the tip of the iceberg. The number of patent applications filed in India annually has been increasing rapidly. The interesting thing to note is that the number of patents granted is very low as compared to the number of applications made. In the year 2017-18 alone, a total number of 47,854 applications were filed, out of which only 13,045 were actually granted patents (see here). This points towards the need of more efficient filing and prosecution, and towards a requirement of professionals who can draft bespoke claims, specifications and abstracts tailored according to the invention and the field that it belongs to. 

The inventors often approach the professionals with mere prototypes of inventions without really knowing whether an invention is patentable or not. Developing the invention further and conducting patentability search is another important task to be taken up by the practitioners. Other than conducting novelty searches, the practitioners also have to conduct patent mapping and scouting work for tech companies in order to gauge the scope of a particular technology.

From filing the application till the grant of the patent, one is required to overcome various office objections and third party oppositions. Patent prosecution is a highly extensive and demanding process which requires one to have particular skill sets in order to be able to defend their clients’ applications before the patent office.

Software, technology and pharmaceutical companies have been actively filing patent applications. If an invention pertains to a software, extra caution has to be practiced as software programs are not patentable inventions per se. In such cases, the practitioner is required to figure out ways to get it patented. He/she has to prove that the invention is more than a mere mental act and is associated with a hardware. Creativity in drafting the specification becomes extremely important here.

The pharmaceutical industry has been incessantly working on developing vaccines for the cure of Covid-19. A lot of companies are racing towards finding a remedy to the virus and getting the vaccine protected. Once the vaccine is invented and protected, the rate at which it shall be licensed is unfathomable. The industry is in need of patent practitioners more than ever. This is a great time to step into the field. 

Other than all the work generated through patent registration and enforcement, there is a great deal of work with respect to monetization of patents.  This can include advice on and drafting agreements relating to licensing and assigning of patented technologies. Many tech giants enter into cross licensing agreements with each other in order to make use of the patented technology in their products and to avoid the costs of litigation. Tech and pharmaceutical companies own a lot of patents which requires valuation and management of the portfolios. All this work is highly lucrative. 

If you do dream of working in the area of patents (which is probably why you read up to here), here are a few questions for you:

• Do you want to get into an intellectual property law firm as a patent attorney? 
• Do you want to end up as an in-house counsel in a tech or a pharmaceutical company? 
• Have you already cleared your patent agent examination but are now looking to take on the legal processes involved in registration and prosecution?
• Have you got a science degree and now dream of making it big as an in-house patent analyst or a patent consultant?

Since you have asked yourself these questions, and have (hopefully) come to some definitive answers, let’s look at  the thoughts that can stop you in your way to achieving the above:

• Do you think that your college didn’t really skill you when it comes to the practical application of patent law and that this is something that you badly need to acquire now?
• Do you think that in order to get work in the domain of patent law and understand it, it is inevitable to have a science background?
• Do you believe that if you haven’t worked in patent law since you started your career, you would need a number of years to make it anywhere in this area and therefore it is too late for you to venture into it now?
• Do you feel that it is really difficult to make a shift to patents after working in other domains of intellectual property such as trademarks? 
• Have you been practicing patent prosecution for a while, but the move to litigation seems like that elusive goal which is difficult to touch? 

If any of the things mentioned above describes how you feel, the breaking news is that all of these notions aren’t really true and can be dispelled, if you’re just willing to give it what it takes. 

We dug up a little deeper and found some common myths about building a career in patent laws and here we debug the inconsistencies in those myths:

Registration work is kind of all you can get and that should have to suffice. 

While being well versed in the patent drafting and registration work can pay off, it is not the only requirement that a potential client might have and so it’s definitely not all you can get. 

Right before even getting to the stage of registration, clients may need advice on whether or not their invention is patentable in the first place. It’s a question that can be faced multiple times by the likes of pharmaceutical, chemical, technology etc. companies. 

Rarely an inventor exists who does not want to monetise his invention and therefore, it's highly likely that patents are followed by requirements for advice on licensing transactions and drafting of licensing agreements or deeds of assignment. 

You could also think of how to gear up to take on opposition and litigation work.    

Companies which tend to secure a large number of patents and are looking to monetise it would also need advice on how their patent portfolio can be managed.

I need to adopt the grind for a few years of training at a firm or in a company (or training from a senior at an internship) to learn practical work

There’s a basic flaw in this belief. How do you believe the company or the senior will themselves get to do all the work that you want to learn? 

They will only pass on to you whatever they are getting and in that too, you may be involved in only specific parts of the deal. It is quite difficult that you will be involved in the process from A to Z right from sourcing the client to billing. 

The focus should not be on the number of years invested but rather  on the skills learnt. You don’t need to do grind work for a number of years to acquire specific skills. However you should have the experience of  actually doing it, grappling with it and trying to find your way out of it and then it does not matter whether you learn it in a few months or a few years. If you get to learn some skills highly in demand in one month rather than just briefly be exposed to something about the work during a full year, you are winning!

I did not focus on patents in college; it’s too late to learn about this area now.

It is never too late to learn something new. You can take up patent work even after having practiced in some other field of law as a professional. Patent law does not comprise completely alien concepts and is based on the general principles of science as well as law, which, if keenly pursued, are not impossible to learn. 

Often, it is believed that if you did not choose science as a stream during your initial schooling years, it will now be difficult to go back and take up patent laws because it requires an in-depth understanding of scientific principles before you could understand inventions and patents.

That however, is not the case. It is possible to dig into a specific invention and attempt to understand its specific features and properties, even if you are not from the science background, but you would need to keep up with your reading and work towards it.

What is the career potential after doing this course?

• There are mid-sized IP law firms (appointing between 50-200 lawyers) which engage in registration of patents, enforcement of patent rights, disputes and litigation over patents, licensing and assignment of patent rights, managing patent portfolios and such other work. These law firms provide a great opportunity to have a rewarding career in patent law to young lawyers.
• There are LPOs, technology platforms such as VakilSearch and Indiafilings that hire many lawyers and patent professionals to make patent searches and register patents at economic rates.
• Patent licensing, assignments, objections, oppositions and litigation has increased many folds over the years, turning patent law into a very lucrative profession.
• Having practical knowledge with respect to patent litigation and the various strategies and defences to be able to efficiently deal with patent infringement matters is sure to attract clients and/or employers alike. 
• The field involves a lot of advisory work with respect to patentability of an invention, licensing of standard essential technology, prior art of an invention, etc. It is highly imperative to be able to advise the client efficiently which in turn shall generate more opportunities. 
• Corporate houses and firms undertake work such as patent valuation and portfolio management for pharmaceutical and technology companies. 
• You cannot learn these things by studying any particular laws, regulations or rules, and there are no adequate books that can help you here. Success in patent law practice requires skills which are more varied than merely knowing the provisions of various statutes or having a degree in science. 
• Check out the learning objectives to understand what you will exactly need to learn.

What is unique about this course?

• The course is not limited to a provision-by-provision study of the Patents Act and associated case laws alone; rather the course trains you on different kinds of actual work that is required to be performed by industry professionals. After finishing the course, you will have as much practical knowledge as a lawyer/agent working at a big law firm with a year or two of experience. 
• It is not a mere theoretical study, but hands on practical lessons where you will have to draft a lot of documents.
• The course is tough and intensive, you will not be awarded the certificate unless you complete 50% of all the exercises. You have to spend 8-10 hours per week on this course.
• You will get personal attention and coaching from the trainer, and get individual feedback on the quality of work you produce.
• You will be writing an article every month and with our guidance, publish the same either on iPleaders blog or various other industry publications.
• We will provide you with training in professional networking, CV writing and interview skills so that you can easily find jobs.
• Those who perform well in class will be recommended to top firms for internships and jobs. If you do not need such help, let us know in what other way we can help you.
• After completing the course, you will be able to perform various tasks that fall in the domain of Patent laws and be at ease with different aspects of patents.

Money-back guarantee

If you take this course, follow it diligently for a month, do all the exercises but still do not find value in it, or not able to understand or follow it or not find it good for any reason, we will refund the entire course fee to you. It is a 100% money-back guarantee with only one condition, you must pursue it properly for a month. If you don’t find it valuable after that, get your entire money back. Refer to our refund policy here.

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Principal learning objectives:

• Learn how to identify whether an invention is a patentable subject matter and advise the client accordingly;
• Learn how to efficiently conduct novelty searches before applying for registration;
• Learn how to conduct patent scouting and landscaping for companies dealing in patentable subject matter;
• Learn how to conduct freedom to operate searches;
• Learn how to accurately draft patent specifications, description of drawings and abstract for a patent application; 
• Learn how you can draft claims with respect to different industries such as chemical, mechanical and pharmaceutical;
• Learn how to file an online patent application and fill the relevant forms to be attached therewith;
• Learn how to amend or withdraw an already filed patent application;
• Learn how you can fulfil the patent office’s requirement to divide a patent application; 
• Learn how you can apply for a patent of addition once the parent application has been filed; 
• Learn how to overcome the patent office objections in the first examination report;
• Learn how to overcome software and abstract idea objections by the patent office;
• Learn how to file a patent revocation petition before Intellectual Property Appellate Board;
• Learn how to file a pre grant opposition after the publication of the patent application;
• Learn how to file a post grant opposition within one year of grant of the patent;
• Learn how to advise a client to enforce his rights in a patent by filing a patent infringement suit;
• Learn how you can proficiently prepare a defence/settlement strategy against a patent infringement suit;
• Learn how to file an application before the registrar for review of his decision
• Learn how to file an appeal before the Intellectual Property Appellate Board against the controller’s decision;
• Learn how to file an international patent application through PCT or Paris convention route;
• Learn how to identify whether an invention is patentable subject matter in the U.S.
• Learn how you can file a provisional as well as a complete patent application in the U.S; 
• Learn how to file a reply to the examination report before USPTO;
• Learn how you can advice your client with respect to licensing of a patent and draft patent licensing agreement for him/her. 
• Learn how to advice your client with respect to assignment of patent and draft patent assignment agreements skillfully;
• Learn how to draft Inventions agreements/Non disclosure agreements; 
• Learn the techniques of developing and maintaining a patent portfolio;
• Learn how to effectively deal with matters surrounding standard essential patents;
• Learn how to draft a license deed in compliance with FRAND terms of licensing. 
• Learn how you can efficiently use patent docketing softwares to keep a track of the ongoing matters. 

List of Weekly Exercises

• Identify if a subject matter is patentable;
• Conduct novelty searches to ensure patentability of an invention;
• Draft an abstract and claims for an application;
• Draft a description of drawings and background of invention 
• Prepare the requisite forms to be filed with the application and identify the details to be filled in an online application.  
• File an application for amendment or withdrawal of a patent application.
• Prepare and file a divisional patent application 
• Prepare and file a patent of addition.
• Prepare a reply to the first examination report thereby overcoming the office objections 
• File a petition in IPAB for revocation of a registered patent;
• Draft a pre-grant notice of opposition to object the grant of a patent;
• Draft a post-grant opposition for cancellation of registration of a patent;
• Initiate a suit for patent infringement by drafting a plaint 
• Prepare a defence strategy against a patent infringement suit and draft a written statement. 
• File a review application before the controller of patents requesting him to review his own decision. 
• File an appeal before IPAB against the controller’s decision;
• Register a  patent in the US after filing an application in India. (Filing directly in the US and filing via PCT) 
• Exercise on patent prosecution in US (Novelty and non-obviousness)
• Draft a patent licensing agreement between an inventor/applicant and a company for the exploitation of his invention;
• Draft a cross licensing agreement as a means to settle disputes. 
• Draft a patent Assignment agreement 
• Draft an inventions agreement/ a non disclosure agreement between a tech company and its employee. 
• Advice an organization for the creation and maintenance of a patent portfolio
• Advice your client with respect to the use of standard essential technology in its product and identify the correct forum for a dispute in relation to the same.