LawSikho

Global Patent Strategist Program: Mastering UK, EPO & JPO for R&D Professionals

This course is recognized by the National Skill Development Corporation, a PPP under the Ministry of Skill Development and Entrepreneurship of the Government of India. You will receive a certificate cobranded by NSDC and Skill India on successful completion.

Syllabus

Introduction to Intellectual Property

Definition and types of IP – Patents, Trademarks Copyrights, Utility Patents, Designs Trade Secrets, Importance of IP in today's global economy Overview of patent law and its significance - Patent Law in UK, Europe and Japan PCT and Madrid protocols

The Patent Application Process: General Concepts

Invention Disclosure - A detailed description of the invention, including its features, advantages, and how it works. Patentability assessment – Prerequisites for an invention - (novelty, non-obviousness, and utility). Procedures for invention disclosure and patentability assessment with respect to novelty and inventiveness specific to UK, Japan and European Patent Offices Components of Patent Application – Title, Abstract, Filed and Background of the invention, Summary, Prior Art, Drawing and Claims Comparative Analysis of Patent Applications and Claim construction of patents filed across UK, Europe and Japan.

UK Intellectual Property Office (IPO) Procedures

Significance, Roles, and Responsibilities of UK IPO Overview of the Patents Act 1977 – UK Patent System Prior Art Search, Patent Filing, Examination, and Grant Procedures – Timeline and Fee Post Grant procedure – Opposition, Appeal, and Maintenance Fee Additional considerations for UK patent applications – Priority Date, Patents of Addition and Term of Patent Eligibility for Patent Agents:

Membership in the Chartered Institute of Patent Agents (CIPA), Qualifications, Qualifying Examination and Experience Required.

Filing, Examination of Application & Grant – Post Grant Procedures

Japan Patent Office (JPO) Procedures

Role of JPO in Intellectual Property Administration Patent Filing Procedure, related Fee, Timelines, Opposition, Grant and Post Grant Procedures with respect to Japanese Patent Law Filing of Applications in Japanese Language along with English Abstracts Japanese Patent Law – Distinction against UK and European Patent Laws

European Patent Office (EPO) Procedures

Introduction to EPO European Patent Convention – Member States, National Phase Entry Procedure Patent Filing Procedure – Priority Date, Electronic and Physical filing, Fee, Applicable Languages and Timelines Prior Art Search , Examination Report and Patent Grant Post-Grant Procedures – Opposition, Appeals and Maintenance Fee and Term of Patent

International Patent Applications (PCT)

PCT – Fundamentals, benefits of member states, timelines and fee structure Administrating Bodies – World Intellectual Property Organization (WIPO), Receiving Offices (RO), International Searching Authorities (ISA), International Preliminary Examining Authorities (IPEA), Desi PCT Filing requirements for Patent Applications Specific Requirements by UK IPO, JPO and EPO as Receiving Offices (RO) International Search and Examination Article 19 Amendments International Preliminary Examination National Phase Entry – with respect to UK IPO, JPO and EPO

Patent Drafting and Claiming

Structure, Prerequisites and Construction of a Patent Claim Specific Requirements in Claim Drafting – EPO, UK IPO and JPO Challenges in Claim Construction Claims – Types & Categories Breadth & Scope of Claims Effective Drafting techniques Best Practices in Claim Construction, Claim Analysis Strategies Employed in respective Jurisdiction – Portfolio Management, Cross- Licensing and Standard Essential Patents

Patent Searching and Analysis

Major Patent Databases - Espacenet (EPO), J-PlatPat (JPO), Ipsum (UK IPO), Ipsum (UK IPO) and Commercial Databases like Patbase, PatSeer, PatSnap, Questel Orbit Patent classification systems (CPC, IPC) Prior Art Search – Tools

AI Tools
Patent Analytics Software
FTO & Citation Tools

Landscape Analysis & Report Competitor Analysis

Patent Licensing and Commercialization

Licensing Agreements – Exclusive, Non Exclusive and Hybrid Arrangement Licensing requirements in EPO JPO and UK IPO Prerequisites in Licensing Royalty and Negotiation in Licenses Patent Portfolio Administration & Optimization IP Valuation – Cost, Market & Income Approach

Patent Litigation

Patent Litigation - Overview, jurisdiction & Venue Litigation Procedures – UK IPO, JPO, EU IPO Pre – Litigation Procedure Litigation – Pleadings, Filing & Trial Procedure Defenses & Procedural Grounds to Patent Infringement Patent Infringement – Remedies Monetary Compensation Expert Witness & Expert Evidence Procedures

Patent Enforcement and Remedies

Patent Infringement Damages – underlying principles Damages – Types Patent Infringement – Percentage Calculation Lost Profits Analysis & Calculation – Causation Proof & Market Analysis Determination of Fair Royalty Patent Trolls and Defensive Strategies Prevention of Possible Infringement & Response Strategies Calculation of Damages

Global Patent Portfolio Management

Importance of Maintaining a IP Portfolio Strategic Planning and Portfolio Optimization Filling Strategies across UK, Japan and Europe Market Analysis and Jurisdiction Specific Requirements Cost Specifications – Filing, Translation, Maintenance Fee and Local representative fee Importance of Patent Renewal in Portfolio Management – Best Practices and Monetization Strategies Tools for Effective Portfolio Management – Patent Docketing, Budget Forecasting Cost Optimization

Ethical Considerations in Patent Law

Patent Trolling, Misrepresentation and False Claims Duty of Candor Duty of Disclosure in Patent Application Misconduct in Patent Portfolio Management

Intentional Omission of Prior Art
Misleading and False Experimental Data
Incorrect inventorship claims

Prevention and Remediation Ethical Obligations of Patent Attorneys and Agents under the Jurisdictions of UK IPO, JPO, and EPO Relationship and Code of Conduct between Patent Attorneys and Agents Duties towards Patent Offices Compliance Requirements

Documentation of Relevant Records
Client Portfolio Management
Professional Development

Conflict of Interest Management Strategies

Patent Trends and Emerging Technologies

Patent Trends in Specific Industries within the Jurisdictions of UK, Japan and Europe Analysis of Technology and Software Patents & Computer Related Inventions Life Sciences and Healthcare Manufacturing Industry Artificial Intelligence – Patentability Considerations Green Technologies – Patenting of Inventions that employ technology to mitigate pollution and foster Sustainable Development Biotechnology & Nanotechnology Patent Implications & Cross-Jurisdictional Challenges Future Considerations

Intellectual Property Strategy for Startups and SMEs

IP strategy for budding startups – Recommendations, Threats and Challenges Licensing and partnerships IP due diligence Mergers and Acquisitions Patent licensing, Assignment and Transfer of Ownership IP in Cross-border Transactions with Dispute Resolution in International Context IP and Open Innovation Case Studies

Course Plan

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