TECHNOLOGY INFORMATION FORECASTING & ASSESSMENT COUNCIL
(Ministry of Science and Technology)
&
Human Resource Development Centre
(Council of Scientific & Industrial Research)
PRESENTS
FOUR- DAYS ADVANCE TOPICS WORKSHOP ON
US & EUROPEAN PATENT ISSUES DIRECTED TO PHARMACEUTICALS
22nd-25th March 2007
ABOUT THE WORKSHOP
The Indian Pharmaceutical and Drug Industry has gone through
substantial changes during the last about ten years and the changes are
coming very fast. The Indian Pharma industry is at the threshold to
take on new challenges in the expanding globalization, strongly
influenced by changing Patent Scenario. To grow, Pharma Industry is
fully aware that they need to have in-depth understanding of patent
practices, prevalent not only in India but also across the world, as
Patent Laws and Practices thereunder differ in different countries and
regions and every aspect does have a significant impact on the actual
grant, extent of patent protection and commercialisation in the
respective part of the region. Differences exist not only in Indian
patent practices vis-à-vis other countries but also between European
patent scenario and US patent scenario. These differences are quite
wide, and are not only related to grant of patent and in the scope of
protection, but the differences also exist due to national way of
deciding on infringement under various forms of claims construction.
Therefore the understanding and the assessment of patent laws and
practices and the knowledge of different doctrines within an
infringement suit is a critical need to understand the insight of
patent regime in different parts of the world and issues of
infringement leading to litigation. The workshop is organized precisely
to impart the real insight of this knowledge and answer all such
question and more. The workshop would enlighten the relevant criteria
of various aspects of Pharma patent within the different system
prevalent in United States and Europe and therefore shall support a
clear assessment in applying the different laws to the facts. This
workshop would help to form a basis on which to draw persuasive support
to structure right development, protection and commercialisation
strategy which is harmonized and is as predictable as possible to
understand the breadth and depth of patent and its consequences in
litigation.
HOW THE WORKSHOP IS UNIQUE
The
workshop is intended to provide a comprehensive understanding on
scientific process and the art of patent grant, within the gambit of US
and Europe patent practices, to improve the efficacy of claim, as the
claim language in the enforcement of patent is critical. The workshop
would also deliberate some recent case laws providing the insight of
litigation, as to predict the outcome of controversies regarding the
scope of a patented invention by making persuasive argument.
The workshop is a one point destination, communicating valuable information on various aspects of Pharma patents by those who are the best in the field with forty years of average experience. The workshop would adopt most practical methodology of sharing education by using various case studies with practical exercises, so that the scientist, patent drafter & practitioner can determine the best argument supporting a position. The workshop would provide the most useful and important forum to understand the substantive law and claim construction methodology so as to maximize the protection coverage. The knowledge grained from the workshop will go a long way in formulating patent strategy at Pharmaceutical & Drug Industry.
This is one time opportunity when Patent experts from United States and Europe would be interacting with limited delegates for four days and would answer to any query that the delegates may have. The experts may also take different positions during deliberations and would express their personal views on controversial issues and aspects. Delegates will have ample opportunities to discuss personal patent problems on a confidential note with all or any of the speakers.
ABOUT THE INSTITUTE
The
Institute of Intellectual Property Research and Practice was
established in 1995, to provide education, industrial training and
related services in the field of intellectual property rights in an
international scenario, to Indian business houses. Intellectual
Property being intangible in nature is more fragile and needs
international protection and commercialization in a global economy. In
order to protect and commercialise intellectual property, the knowledge
and update of International Scenario of Intellectual Property is
critical, in this direction the Institute has been regularly holding
International Seminars as one of its focused activities to educate and
sensitize Indian industry with International happenings in intellectual
property. The Institute organizes these seminars on its own and in
collaboration with various Government and International agencies and
has held dozens of such programmes at different places and platforms.
The Institute also conducts tailored made educational programme for
better-known corporations at their premises.
The Institute is an establishment, which provides a platform and
medium to the business houses to create, promote, protect and
commercialise the Intellectual Properties to maximize the commercial
gains. In this direction the Institute helps in formulating right IP
Strategy, has established a Valuation Centre which undertakes valuation
of Intellectual Property and an IPR Audit Cell which undertakes the IP
Due-Diligence in order to commercialise Intellectual Property and to
manage IPR-Risk. The Institute also provides end-to-end support in
transfer of Technology, Licensing, Remittance, Accounting of damages
for infringements, Verification of Royalties and License fee to foreign
countries and many more cognate and allied subjects. The Institute has
a centrally air-conditioned and well laid out premises, it has well
furnished and equipped library holding more than 4000 books on
Intellectual Property itself and all these facilities are directed
towards the goal of learning and understanding the importance of
intellectual property in order to commercialise intellectual property
and create value addition as low investment growth mantra.
ABOUT TIFAC
Technology
Information Forecasting & Assessment Council (TIFAC) is an
autonomous body registering under the Department of Science and
Technology of the Government of India. It is unique institution
covering a lot of ground of technology development, by promoting
innovative technologies at one end and providing technology support
services like information and assessment on the other.
In 1995, a Patent Facilitating Centre (PFC) was created at TIFAC
for creating patent and IPR awareness in the country and providing a
single window system for protecting the inventive works of Indian
scientists through patents and other forms of IPR. The centre has
conducted more than 320 IPR awareness workshops across the country,
sensitizing more than 40,000 scientists and technologists. PFC has
taken a number of concerted and consistent steps for capacity building
in the area of IPR at different levels of creativity and inventive
spirits by way of organizing training programmes, facilitating IP
protection and also developing facilities to conduct patent searches
etc. PFC has launched an innovative scheme of scholarships for educated
women having good science/engineering/medical qualifications under the
Women Scientists’ Scheme for unleashing dormant scientific force. In
two batches as many as 45 scientists have been given one year training
on IPR. PFC has firsts to its credit and has brought out a number of
IPR reports and IPR products, viz. Patenting of Microorganism Ekaswa
CDs on Indian Patents Patents Made Easy video, to name a few.
About Human Resource Development Centre (HRDC)
Human
Resource Development Centre has been established by Council of
Scientific & Industrial Research to promote professional human
resource management in CSIR. CSIR is country’s premier publicly funded
and the largest industrial R&D organization in the world. The
research activities of the organization carried out in its 38
laboratories located in metros and farthest corners of the country,
cover diverse activities ranging from oceanography to aviation,
biochemistry to chemicals, mining to energy etc. Its capabilities and
competencies are embodied in its 5000 highly qualified scientists and
an equally able supporting staff. CSIR is pioneer in mobilizing and
influencing national thinking on patent related issues and concerns. On
organizational level, it is seeking to maximize benefits from its
intellectual capital. The focus of HRDC is to provide and hone the
intellectual skills of CSIR personnel in organisational, managerial and
technical domains and cultivate a culture of innovation as
pre-requisite to excel. The HRDC endeavors not only to compete with the
best but also set in new trends for CSIR and for the nation as a whole.
SCHEDULE
DURATION Four Days
DATES 22-25
March 2007
FEES Rs.
22000/- per participant (non-Residential for Indian Delegates)
US
$ 600/- per participant(non-Residential for Foreign Delegates)
Residential Stay Additional
Rs.
6000/- Single well furnished accommodation for four days
stay
for Indian Delegates (lodging & Boarding, Stay from 21st to
25th
March 07 before noon, Pick up and Drop from Delhi Airport/
Rly.
Station)
US
$200/- Single well furnished accommodation for four days
stay
for Indian Delegates (lodging & Boarding, Stay from 21st to
25th
March 07 before noon, Pick up and Drop from Delhi Airport/
Rly.
Station)
Accommodation
for the speakers and the delegates is arranged at
Human
Resource Development Centre, Sector-19, Kamla Nehru
Nagar,
Central Government Enclave, Ghaziabad-201002, for
location
whereabouts log on to www.csirhrdc.res.in
VENUE Human
Resource Development Centre, Sector-19,
Kamla Nehru Nagar, Central Government Enclave, Ghaziabad
Contact Person Varun Khurana 09810185528
For assistance Vinod Khurana, Executive Director (-0120-23402010/11)
Write
To at
iiprp@sify.com or khuranavinod@yahoo.com
(Mob.
No. +91-9810281321)
Or
Naresh
Kumar , Officer on Special Duty or
S.N.
Sharma, Consultant
Human
Resource Development Centre
at
osd@csirhrdc.res.in (Tel: 0120-2788937 Fax: 2788939)
NOTE Symposium
is organised for 40 delegates, of which 12
delegates
are from CSIR and 5 Delegates from TIFAC,
23
Delegates from Pharma Industry on first come basis
WHO SHOULD ATTEND:
Representatives from Pharmaceutical
and Drugs Industry in the field of Research and Development, IP
Mangers, Patent Professionals and Consultants, Patent Attorney in the
Law Firms and in the field of Practice.
ABOUT THE FACULTY
Mr. John Richards:
Mr. John Richards after obtaining his graduate degree in National
Science with specialization in Chemistry and master from Cambridge
University and Law Degree from University of London started his career
in the Patent Department in the year 1966 with Albright & Wilson
Ltd. London, as Patent Attorney. Mr. Richards joined the International
Law Firm Ladas and Parry at its New York office in the year 1973 and
become a Partner in the firm in the year 1982. He is a member of the
New York Bar Association, American Bar Association, American Group of
AIPPI, Chartered Institute of Patent Agents (U.K.) and American
Association for the Advancement of Science among others. Mr. Richards
is also European Patent Attorney and has written for various
publications including Patent World. He is the author of book entitled
“Legal Aspects of Introducing Products to United States Market” and is
Adjunct Associate Professor of Law with Fordham University School of
Law. Mr. Richards has been ranked by Managing Intellectual Property as
one of the worlds’s leading Patent Attorneys and has been listed by
Legal Media Group as one of the World's Leading Patent Law Experts 2003
- 2005. Mr. Richards specializes in Pharma and biochemical patent
matters including drafting and prosecution of patent applications in
these fields in the United States and abroad. He is also widely
experienced in the negotiation and drafting of patent and know-how
license agreements.
Mr. Clifford Mass:
Mr. Clifford Mass received masters in Molecular Biology from University of Pennsylvania during 1972 and J.D. from Emory University in 1977. He is admitted to the bars of New York, Georgia. He is also admitted to Federal district courts in New York and Georgia, and to the Federal Circuit Court of Appeals and was registered to practice before US Patent and Trademark Office during 1988. His practice involves patent drafting, litigation and prosecution with focus on Chemistry & Pharmaceuticals. He has extensive experience in patent preparation and prosecution, with a focus on biotechnology and the chemical arts, including recombinant nucleic acid technologies, pharmaceuticals and polymer chemistry. He often provides validity and infringement opinions in these and other art areas.
Mr. Mass has represented his patent clients in various courts and has successfully represented the applicants in large number of patent appeal wherein the Board of Patent Appeals and Interferences reversed an Examiner’s decision. Mr. Mass is a senior partner in Ladas & Parry, which has played an important role in World Intellectual Property Practices for over 90 years. Mr. Mass is also an experienced litigator. He has been lead attorney in complex patent interferences, including multi-party interference. He has both first chair and second chair litigation experience in the Federal courts, and has prosecuted and argued cases before the Board of Patent Appeals and Interferences. His reported cases include: Ex parte Van Tunen, 67 USPQ 2d 1518 (BPAI 2003); Accent Designs, Inc. v. Jan Jewelry Designs, Inc., 30 USPQ 2d 1734 (S.D.N.Y. 1993) and 32 USPQ 2d 1036 (S.D.N.Y. 1994); and Kochler v. Mustonen, 774 F. Supp. 641 (D.D.C. 1991) among many others.
Dr. Leander A. Feiler:
Dr. Feiler underwent studies in zoology, physics and chemistry and also in intellectual property at the University of Munich; he did his graduation in organic chemistry, physics and genetics. He is highly qualified in the technical field of chemistry (9 scientific publications and 7 patent applications), with emphasis on pharmaceuticals and medicinal chemistry. After successful careers in the chemical industry (Hoechst AG) and at the German Patent and Trademark Office (DPMA), Munich (patent examiner, Regierungsdirektor) Dr. Feiler joined the European Patent Office (EPO) as examiner and retired in 2002 as Directorate Adviser after 28 years of experience. Dr Feiler is strongly active with EPO on various educational assignments and during the last years he was highly appreciated as tutor within the EPO and as lecturer within the framework of the International Academy of the EPO. His lectures within the framework of the WIPO-seminar "Asian Regional Seminar on Intellectual Property Rights Issues in the Field of Traditional Medicines" (1998) in New Delhi, as well as in seminars and workshops organised in 2000, 2002, 2003, 2004 and 2005 by the "Institute of Intellectual Property Rights and Practice" (IIPRP) in cooperation with the Indian Government establishments were highly estimated. He is presently based in Munich, is an international consultant in the field IPR specifically on inventions directed to organic chemistry and pharmaceuticals. In 2006 Dr. Feiler was active to train Indian patent examiners and controllers in Nagpur and in the 4 Indian Patent Offices as part of EPO Team.
Dr. Christoph Schoen:
Dr. Schoen passed his examination in Chemistry in 1989 with specialization in Organic Chemistry, Pharmacology and Biochemistry. While doing his Doctor’s degree, he completed studies in Business Administration and Management at the Technical University of Munich. He has been practicing as a Patent Attorney for more than 15 years, with a focus on Chemistry and Pharmaceuticals. His areas of practice include litigation, interferences, client counseling and preparation and prosecution of patent applications. He often provides validity and infringement opinions in these areas. Dr. Schoen has conducted and presented in various symposiums and workshop on patent practices in various countries including India, organised by Institute of Intellectual Property Rights and Practice in 2000, 2002, 2003, 2004 and 2005. Dr. Schoen is a partner in Henkel, Feiler & Hanzel leading Intellectual Property Law firm with its head quarter at Munich.
PROGRAMME
DAY 1
0900-0930: Registration
0930-1030: Important aspects of Patent granting procedure at US and quick
review of recent case laws, impacting claim drafting
1030-1115: Differences between EPO and US approaches to obviousness.
1115-1130: Tea
1130-1215: Types of claims and how to formulate a set of claims for
invention directed to pharmaceutical active compound.
1215-1345: Breadth of claims in view of novelty and inventive step &
bioequivalence of substituents.
1345-1430: Lunch
1450-1615: Identity of invention and priority, with focus on "techniques used
to identify invention"
1615-1630: Tea
1630-1800: Written description and enablement of the claims.
DAY 2
0930-1100: Often observed weak areas in the process of patent claims and grant.
1100-1120: Tea
1120-1300: How to draft Patent application and how to judge the validity of
other parties patents to maximize the chances of success in
enforcement
1300-1345: Lunch
1345-1800: Exercise and case studies on various aspects of novelty,
inventive steps and scope of protection.
1900-2200: Cocktail cum Dinner
DAY 3
THE EUROPEAN SCENARIO
0930-1045: Inaugural Session: Principles for Drafting European and U.S.
Patent; Applications
1045-1100: Tea
1100-1200: Types of claims with practical examples
1200-1315: How to formulate a set of claims for an invention and importance
of the bioequivalence of substituents.
1315-1400: Lunch
1400-1515: Novelty according to Art. 54 EPC
1515-1615: Selection inventions.
1615-1630: Tea
1630-1730: The Inventive Step requirement.
1730-1830: The evaluation of inventive step by application of the
problem/solution approach
DAY 4
0830-0930: The Dangers of Effecting Amendments
0930-1030: The examination procedure as to novelty and inventive step and
its relevance to the broadness of claims
1030-1045: Tea
1045-1130: Patentability of polymorphs
1130-1230: Questions of Uniformity
1230-1315: Lunch
1315-1500: Exercises on claim drafting and amendments during prosecution
1500-1515: Tea
1515-1550: Evaluation and Discussions on the exercise
1550-1600: Concluding - Session
REGISTRATION FORM
Please register the following participant:
Name: ____________________________________________
Designation:________________________________________
Organisation:_______________________________________
Address___________________________________________
E-mail:____________________________________________
Tel. _____________________Fax.______________________
Delegation Fee: Rs. 22000/- per participant(non-Residential for Indian Delegates)
US $600/- per participant(non-Residential for Foreign Delegates)
Additional Charge for Residential Delegation:
Rs.
6000/- for Indian Delegate and US $ 200/- for Foreign Delegates
Please mail the complete form for Registration along with your payment in favor of "Institute of Intellectual Property Research and Practice to;
Amar Raj Lall
President
Institute of Intellectual Property Research and Practice,
IFAIA Centre, S/20-22, Greater Noida Shopping Plaza
UPSIDC Site – IV, Plot No. S-7/2, Kasna Road
Greater Noida – 201 308, UP, India.
E-mail: iiprp@sify.com or khuranavinod@yahoo.com
For any query please contact
Varun Khurana
Phone: +91-120-2342010/ 11, 2340556
Fax: +91-120-2340557
Mobile" +91-9810185528
INSTITUTE OF INTELLECTUAL PROPERTY RESEARCH & PRACTICE