The course aims to provide researchers with insights and practical understanding of the global patent systems and how patent systems are being used by leading technology organizations to create value from laboratory science. The emphasis is on helping inventors be better informed and more effective.

• Scientists and students of NCL
• Scientists and students of IISER (only if seats available)
• Scientists and students of URDIP (only if seats available)

A patent is a legal title granting an inventor the right to exclude others from making, using or selling the claimed invention. The duration of a patent in the U.S.A is 20 years from the date of filing. A patent may be granted for "any new and useful process, machine, manufacture or composition of matter, or any new and useful improvements thereof". The term "composition of matter" relates to chemical compounds and may include mixtures of ingredients as well as new compounds.

In order for an invention to be patentable, it must be new as defined in the patent law: if the invention has been described in a printed publication or has been in public use or on sale for more than one year before the date of filing an application for a patent, a patent cannot be obtained.

An inventor can apply for a patent for the same invention in more than one country. Several patenting organizations such as the European Patent Office (EP) and the WIPO, World Intellectual Property Organization, (WO) publish patent applications. These published applications can provide information on an invention before it appears in a U.S. patent.

The patent system is designed to promote the dissemination of new technologies by publishing full details of new inventions. Chemistry, engineering, and medicine are some of the only academic fields to have an industry that is actively engaged in novel research. The bulk of publication by industrial scientists appears exclusively in the patent literature.

Patent documents are therefore an important source of information for all researchers; they often give full details of methods and of preparation of compounds, and much of the scientific information in patents is never published elsewhere.

• The course aims to provide researchers with insights and practical understanding of the global patent systems and how patent systems are being used by leading technology organizations to create value from laboratory science. The emphasis is on helping inventors be better informed and more effective.
• The strength of the faculty in this course is that they have actively worked with inventors both in IP/ attorney firms, technology/R&D companies and research organizations. Therefore, the focus of the course will be in helping scientists/inventors understand how they can make the best use of the patent system rather than trying to make them patent agents.
• To provide PhD students with a certificate course that will help them succeed in their R&D careers in academia, government research or industry. A Certificate of Participation shall be issued by IPFACE to all participants with a minimum 80% attendance record.

• Scientists and students of NCL
• Scientists and students of IISER
• Scientist and students of URDIP

• Course material- reading material
• Certificate of participation issued by IPFACE, Venture Center
• 1 year complementary browsing rights & membership of the Venture Center Library

• Introduction to Patent Systems
• Function of a patent
• Theory of "Claims"
• Process of obtaining a patent
• File-to-file and First-to-invent ideologies
• Procedural Convergence (e.g., 18 months publication)
• Litigation Systems - Damage Awards
• Challenge - Linguistic control over invention scope

• A mini-patent drafting exercise
• Component Analyses - Claims, Spec, Drawings
• Thinking of litigation implications while drafting

• Claim Drafting Styles in US/EU/India
• Types of Claims - Markush, Jepson, Multi-Dependent
• Studying at least 10 Claim examples from patents

• Common Factors across national patent systems
• US - Novelty, Non-obviousness and Utility
• EU/India - Unity, Technical Effect, Industrial Applicability and Inventive steps

• "Inventors are from Mars, Patent Attorneys are from Venus" - approaches are different
• Inputs to provide - focus on claims
• Inventor's quality checking matrix

• Determination of Rights - Rightful inventor
• Scoping of Rights - What do Claims Cover
• Fact checking tools - evidence
• Appeals
• Damages - Huge awards, introduction to damage determination

• "Inventors are from Mars, Patent Attorneys are from Venus" - approaches are different
• Inputs to provide - focus on claims
• Inventor's quality checking matrix

• Determination of Rights - Rightful inventor
• Scoping of Rights - What do Claims Cover
• Fact checking tools - evidence
• Appeals
• Damages - Huge awards, introduction to damage determination

• Equity in face of linguistic limitations in claim drafting
• How it works

• Chemical, Pharmaceutical and bio-tech cases
• Some engineering, electronics cases
• Goal: Cover about 10 case studies

• PCT system operation
• Steps and time-lines
• IPEA Reports

• Types of Patent, Maintenance Fees, Foreign Priority etc

• Freedom to operate
• Working around patents
• Law suits
• Patents and FDA
• Licensing

Profile: 12+ years of experience in the legal field covering the whole value-chain of patents from invention (at EATON), drafting and litigation (US law firms Harness Dickey, F.Chau), licensing (at IPVALUE). Previously, he was a practicing counsel at the BOMBAY HIGH COURT. He has worked through law firms in US for clients like SIEMENS, IBM, PANASONIC, TRW, SEIKO-EPSON, LG, SAMSUNG and others. Until recently, he was the Asia Pacific IP counsel for EATON, a large diversified manufacturing MNC.

Experience:

• 2005-current: Patent Associate at Gopakumar Nair Associates (GNAs). Marketed the organization as the premier IPR related service provider in Pune, especially in the field of chemicals and pharmaceuticals. Trained in patent search and patent drafting.
• 2002-2005: Consultant (QA) at BDH Industries Ltd and
• 1998-2001 : Executive and later Assistant manager-QA at BDH Industries Ltd
• 1995-1997:Technical Coordinator at the MD`s office of Themis Pharmaceuticals. Accomplished almost doubling of production capacity of tablet manufacturing.
• 1991-1995: Chemist-Formulation Development, German Remedies Ltd. Involved in development of conventional dosage forms, scaling-up trials and transfer to production, Member of trouble-shooting team to solve quality related problems.

Achievements:

• Developed a substantial client base for GNAs and potential partners for GNA Patent Gurukul
• Team member that achieved WHO-GMP approval for over 100 products involving non-sterile and sterile dosage forms.
• Developed over ten solid, semi-solid and injectable dosage forms which were marketed successfully
• Approved by FDA, Maharashtra in Quality Control

Profile: Kaushik Gala brings over 10 years of technology and business experience to Venture Center. Prior to joining Venture Center as Business Development Manager in February 2009, he was co-founder and COO of Moneyoga, a capital market analytics and algorithmic trading venture - one of the earliest of its kind in India. At Moneyoga, Kaushik was involved in all key aspects of a technology startup, including company formation, business and financial planning, product development, fund-raising, market trials and exploring partnerships and exit opportunities with industry leaders.

Prior to founding Moneyoga, Kaushik was Manager of IP Operations at IPVALUE Management - a provider of strategic intellectual property advisory and transaction services, funded by marquee private equity firms. At IPVALUE (Bangalore), Kaushik held responsibilities for mining, evaluation and commercialization of patent portfolios of clients such as Xerox, Palo Alto labs and British Telecom. Kaushik was also involved in several time-sensitive patent portfolio valuation engagements, part of some of the largest private equity deals in the semiconductor technology industry.

Prior to IPVALUE, Kaushik spent several years at Motorola's Semiconductor Products Sector (now an independent company - Freescale Semiconductor) in Austin, Texas. Kaushik held positions of increasing responsibility between 1999 and 2005, starting as part of a corporate R&D team focused on electronic design automation, followed by program management, and finally holding primary responsibility for mining and evaluation of Freescale's semiconductor patent portfolio.

Kaushik resides in Pune, India with his family. He maintains a blog related to capital markets and technology startups. He is also a visiting faculty at SIBM-Pune, where he teaches MBA students topics related to entrepreneurship, financial markets and technology commercialization. He can be contacted at kaushik@venturecenter.co.in.

Profile: Dr. Sivaram is the Director of NCL. After obtaining his master's degree in chemistry at IIT Kanpur in 1967, he moved to Purdue University, Indiana, USA for his PhD, where he associated with Professor Herbert C. Brown, Nobel Laureate. Subsequently, he spent a few years at the Institute of Polymer Science, The University of Akron, Akron, Ohio, USA working with Prof J.P. Kennedy as a Research Associate in the area of polymer chemistry. Before joining NCL in 1988 he was heading the Research Center at Indian Petrochemicals Corporation Ltd. (IPCL), Vadodara.

Dr Sivaram has an outstanding track record in invention, patenting and licensing amongst inventors in India. The licensing of his patents on solid state polycondensation of polycarbonates to GE Plastics was an important milestone for India as an exceptional case of Indian inventions receiving interest from global players

Profile: Dr. Kulkarni area of interest is in controlled release delivery systems, molecularly imprinted polymers , Protein Carbohydrate interactions , Supramolecular Chemistry of Polymers , R&D Management. He has been awarded Young Associateship of the Indian Academy of Sciences, Bangalore (1984), Fellow of the Maharashtra Academy of Sciences (1990), Fellow of the Indian Academy of Sciences, Bangalore (1996), Indian Society for Plastics Pune, award for research in Polymers (1996), IPI-UDCT Diamond Jubilee Visiting Professor in Polymer Processing (1997), KG Naik Gold medal 1999.

Profile: He has also been a Chevening Technology Enterprise Fellow with the Centre for Scientific Enterprises, London Business School and Cambridge University, UK. He brings with him considerable experience in technology development and commercialization (two successfully commercialized families of products), working with start-up companies (in Cambridge-UK and India) and engaging with large corporations on research and consulting projects as project leader.

• Lecture 1: Short movie Introduction to Patent By the US Federal Judicial Center
• Lecture 2: Sample patent for mini-drafting exercise | USPTO flow chart
• Lecture 3: Sample patents for drafting claims :US 942,699 | US 2,825,721 | US 4,683,202
• Lecture 5: Sun v. Elli Lilly case :US 4,808,614 | US 5,464,826
• Lecture 6: Patent infringement