Legal aspects of Patent information (APIC)
4 in-depth sessions of 3 hours on the Legal Aspects of Patent Information
Part 1: Priority and novelty revisited, inventive step
In this part the students will learn when a claim to priority is valid or invalid and what this means for the determination of novelty. With regards to novelty the students will learn what determines whether a disclosure is prior art and how such a disclosure is interpreted both from a European point of view and from a US point of view. Further they will understand how inventive step is regarded and what this means for their searching strategy.
- An extensive overview of all matters that relate to the nature and (in)validity of a priority claim.
- For novelty a review is presented on the case law underlying Art. 52 and 54 of the EPC and 35 U.S.C. §102 of the US patent law with some historical perspective (first to file/first to invent).
- The aspects of inventive step (and how Europe and the USA investigate the presence of inventive step) will be covered.
Part 2: Claim interpretation
The students will learn how courts (and patent attorneys) interpret claims and the scope of the claims. Also they will realize what aspects are relevant for the amendments of claims (e.g. as a result of novelty and/or inventive step objections).
- Overview of the types of claims and the meaning of words in the claims.
- A large part of this training is a practical exercise on how claims are read for determining novelty and inventive step and how they may be amended to overcome these objections.
- Further, the actual procedure from application to grant of the patent and possibilities for amendments even after grant is explained.
Part 3: Patent formalities
The students will be able to understand what the effects of certain formal acts during the prosecution of a patent will be and how this shows in the registers.
- Explanation of the different treaties that govern patent application and granting (TRIPs, PCT, EPC, PLT, etc.).
- Further, the general formalities (time limits, payments) along the life of a patent and (non-)compliance with these with results and repair possibilities are covered.
- Life time of patents and possible extensions and invalidation procedures (e.g. third party observations, opposition) are explained.
Part 4: Infringement
The students will understand what aspects determine infringement and how infringement (or invalidity of the patent) may be treated before a court.
A detailed overview is given of the rights that a patent (and patent application) will give to the holder and how to exercise these rights. This discussion will also cover the exemptions to patent infringement (such as the Bolar exemption), exhaustion, licensing and relations with (European) competition rules. Also the court procedure will be highlighted and the new UP/UPC procedure will be covered.
Bart van Wezenbeek