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Patent Protection In Biotechnology: Issues and Strategies for Effective Protection Workshop Syllabus

Day One (8:30-4:30) Exploring the patent process What is a patent? Why patent? Who administers patents? What can and can't the patent office do? What rights can and cannot a patent give you? What can be patented? Criteria for obtaining a patent Types of patents Offensive patents Defensive patents Overview of the patent granting life cycle Invent, prepare & file, prosecution, patent issued Maintenance fees Review of the patent cooperation treaty Benefits

What can be patented? What can be patented in biotechnology What is not patentable In-depth exploration of the three criteria for a patent New/Novel Useful Non-Obvious How this criteria is applied in Canada, USA, Europe and Japan

Prior art searches Why search for prior art? When to perform a search Who should search? Where do you search? Review of searchable websites to use

Day Two (8:30-4:30) Anatomy of a patent application Function and rules of the application Review of biotechnology patent applications Components of an application

Writing descriptions and claims Elements of good description Writing descriptions for patents in other countries Overview of claims The picket fence strategy Creating a drafting strategy Drafting claims Types of claims The elements of claims: preamble, transition, body

Prosecution of the patent application Overview of the prosecution process in Canada, USA, Japan, Australia European patent applications Prosecution of office actions Responding to office actions

National and global strategies Developing a foreign filing system Determining when and where to file Review of the patent cooperation treaty (PCT) Benefits Countries that have a patent system and are part of PCT Review of the European patent convention (E.P.C.) Benefits

Intellectual property strategies Importance of a IP strategy Consequences of not setting up a strategy General procedures for establishing a strategy Components of an IP system Laboratory notebook/record book Invention disclosure memo (IDM) Publication approval memo

Infringement Types of infringement Remedies for infringement

Patent Protection In Biotechnology: Issues and Strategies for Effective Protection Workshop Objectives
At the end of this two-day workshop participants will be able to: 1. Describe the overall patent process and its benefits to an organization or individual inventor. 2. Describe the role of a patent agent. 3. List the three criteria that determine what can be patented. 4. Explain how to perform prior art searches using a common database. 5. Describe the components of the patent application and the rules for applications. 6. Explain the functions of, and issues surrounding, the description and claim portions of a patent. 7. Describe the process of prosecuting the patent application. 8. List the steps required to respond to Office Actions. 9. Provide rationale for national and global patent filing strategies. 10. State the rationale for developing an Intellectual Property Strategy in an organization. 11. Adapt sample invention disclosure and publication approval memos as part of a strategy to identify new inventions and to prevent premature disclosure of inventions. 12. Provide examples of Patent infringement. 13. Compare the Canadian Patent system to that of other selected countries.

Patent Protection in Biotechnology: Workshop Agenda Day One


Time 8:30 8:40 Course Content Instructor Welcome Review Objectives Group Introductions

9:00 10:30

The Patent Process What is a patent Why patent What can you patent BREAK LUNCH BREAK Prior Art Searches Importance of doing a prior art search How to conduct a prior art search Using the internet to search for prior art Biotechnology Patent Applications Functions and Rules Components of the Application Review workshop objectives Wrap up for the day What can be patented What is not patentable Criteria for a patent: New/Novel, Useful & Non-Obvious Overview of offensive and defensive patents Components of the Patent Granting Life Cycle

10:30 10:45 10:45 12:00

12:00 1:00 1:00 2:15

2:15 2:30 2:30 3:15

3:15 4:15

4:15 4:30

Day Two
Time 8:30 9:00 9:00 10:30 Course Content Review of day one content

Writing descriptions and claims How to write a description What needs to be included Drafting claims The picket fence strategy Overview of product, process & methods claims Components of the claim: Preamble, transition, body BREAK The Prosecution of the Patent Application Reviewing the process for Canada, USA, Japan, Australia European patent applications Prosecution and office actions Responding to office actions LUNCH National and Global Filing Strategies How to develop a foreign filing strategy When to file Where to file The Patent Cooperation Treaty (P.C.T.) The European Patent Convention Intellectual Property Strategies The importance of having a strategy Creating an IP Strategy Guidelines for using laboratory notebooks Purpose and contents of an invention disclosure Using publication approval memo BREAK Infringement Types of infringement Remedies for infringement Protection before grant Group Discussion Final Quiz Evaluations Closing

10:30 10:45 10:45 - 12:00

12:00 1:00 1:00 1:45

1:45 2:45

2:45 3:00 3:00 3:20

3:20-3:50 3:50 4:15 4:15 4:30