CERTIFIED SPECIALIST PROGRAM
INTELLECTUAL PROPERTY - CORE KNOWLEDGE OF PATENT LAW
ESSENTIAL
What is a patent
The parts of a patent (claims,
disclosure, drawings)
The purpose of the claims, disclosure
and drawings.
Patent rights are defined by the claims.
Types of patent claims (methods,
apparatus and article claims)
Differences between a patent
and a trade secret, industrial
design, copyright or trademark
What is a trade secret or confidential
information
What is an industrial design
What is the boundary between
copyright and industrial design
What is a trade-mark; what are trademarks for
How do you protect a new plant
How are integrated circuits protected
Patentable subject matter –
what can be patented
What subject matter is patentable and
what is not
Computer programs
Methods of doing business
Life forms
INTERMEDIATE
ADVANCED
Special patent issues
Biotechnology
Pharmaceuticals
Computer related inventions
Chemical inventions
PM (NOC) regulations
ESSENTIAL
INTERMEDIATE
ADVANCED
Plants
Methods of medical treatment\
Games
Interpretation of patents –
how is a patent interpreted or
construed and by whom ?
Validity of a patent – what
are the grounds of invalidity
of a patent
Persons skilled in the art (“PSITA”)
Common general knowledge
Rules for construing a patent
Date at which a patent is construed
(interpreted)
Novelty
Inventiveness (non-obviousness)
Utility
Sufficiency of the specification –
enabling disclosure
Claim broader than what is (a)
disclosed or (b) actually invented
Best mode requirements
Person skilled in the art (“PSITA”)
Teams of researchers in multidisciplinary areas
Novelty
Novelty provisions of the Patent
Act in detail
The universe of relevant prior
art for novelty
Pre 1 October 1989 patent
novelty
Inventiveness (non-obviousness)
Non-Obviousness provisions of
the Patent Act
Universe of relevant prior art for
obviousness
Utility
False promise in the disclosure
Claims include inoperable
embodiments
ESSENTIAL
United States Patent Law
International Patent Law
Basic Patent Office knowledge
Title searching at CIPO
Novelty searching at CIPO
Invalidity searching at CIPO
• Basic appreciation of US patent law
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and how it differs from Canadian
patent law.
• Knowledge of Title 35 of the US Code
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• Knowledge of contributory
infringement, file wrapper estoppel
and Markman hearings.
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Basic knowledge of the Paris
Convention
Basic knowledge of the Patent
Cooperation Treaty
Basic knowledge of the European
Patent Convention
ADVANCED
Cross border activities for
method claims
Purposive construction of claims
with the assistance of a person
skilled in the art (“PSITA”)
Who is an infringer (selling,
importing, making, repairing, using,
inducing infringement, joint
tortfeasors)
Infringement – how to
determine whether a claim in
a patent has been infringed
Basic Patent Office
knowledge
INTERMEDIATE
Clearance or right to use
searching at CIPO
Drafting a right to use opinion.
Some knowledge of
US civil procedure as
applicable to patent
matters.
Awareness of
interference practice
to determine priority
of inventorship.
Awareness of the jurisprudence
of the US Court of Appeals for
the Federal Circuit (“CAFC”) in
the patent law area.
1. PATENT PROSECUTION
ESSENTIAL
Knowledge of:
Working knowledge of
What is a patent.?
What rights does a patent confer?
The nature of a negative right.
•
formalities of a patent application
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international treaties governing patents especially as to priority dates
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Paris Convention, European Patent Convention and the Patent Cooperation Treaty
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US patent law including 35 USC 101 to 103
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Canadian patent law principles
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Deadlines for filing a patent application
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Maintenance fees for applications and for patents
Skills
Basic claim drafting skills – able to draft patent claims that properly delimit an invention.
Answer routine office actions from CIPO or other Patent Office
Understand the nature of an invention
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write a simple patent disclosure
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prepare sketches of the drawings after having been apprised of the nature of the invention.
Work with an inventor (s) to define the scope of the invention
Prepare a basic patentability opinion
INTERMEDIATE
Knowledge of:
Working knowledge of
• claim drafting so as to write valid claims
• re-issue applications
• re-examinations
• disclaimers
• protests
• international patent treaties and their application
• US patent law
• Interactions among patents, trade secrets, trade-marks, industrial designs and copyright
• Pertinent Competition Act issues.
Successfully passed the Patent Agents’ Examination set by the Patent Office. (i.e., achieved licensure as a patent agent)
Licensed as a US patent agent by virtue of having become a registered Canadian patent agent
Skills
Able to overcome novelty and obviousness objections from a patent examiner by amending claims, argument or both
Deal with divisional applications
Draft claims
Dealing with multiple priority claims
ADVANCED
Knowledge of:
Advanced knowledge of
• types of claim are most appropriate to best protect an invention
• US patent law and experience in prosecuting patent applications in the USPTO
• European Patent Office (EPO) and its procedures
• Patent Cooperation Treaty (PCT) and how to file and advance a PCT patent application
• range of claims from excessively narrow to as broad as possible.
• Software and business method patents
• Compulsory licensing of patents
Skills
Outstanding ability to draft claims
As skilled in US patent law as for Canadian patent law
Advise clients on obtaining a range of claims from excessively narrow to as broad as possible
Devise patent strategies which will advance the client’s business interests such as drafting patents for possible future new
technology in consultation with the client.
Write claims, which are valid and enforceable by a court. In other words, able to write a commercially valuable patent if the
underlying invention is sufficiently important.
Defend or prosecute a compulsory licence application in the Patent Office
2. PATENT LICENSING AND INTELLECTUAL PROPERTY (“IP”) DUE DILLIGENCE
ESSENTIAL
Knowledge of:
Working knowledge of
• basic clauses in a licence agreement
• due diligence checking:
• title to patent
• Any security interests on title ?
• Are all maintenance fees paid ?
• Is the patent being worked ?
• Is anyone infringing the patent ?
• patent assignment documents
• basic principles of contract law applicable to assignments and licences
Skills
Draft a simple licence agreement.
Prepare a patent assignment document.
INTERMEDIATE
Knowledge of:
Working knowledge of
• whether use of the licensed technology infringe any third party patents ?
• effect of boilerplate clauses
Skills
Draft complex licence agreements for unique cases
Draft effective representations and warranties
Sufficient familiarity of licence drafting to write a licence to achieve the client’s business goals.
ADVANCED
Knowledge of:
Advanced knowledge of
• taxation issues
• Competition law matters and licensing
• Esoteric items: PPSA, bankruptcy issues
• how respond to a cease and desist letter accusing the client of patent infringement.
Skills
Advise on the management of a patent portfolio including earning income by patent licensing.
Negotiate and draft a complex patent licence agreement covering numerous patents.
3. PATENT OPINIONS
ESSENTIAL
Knowledge of:
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Working knowledge of
• elements of the various causes of action or defences.
• limitations on patent opinions
Skills
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Legal skill of being able to recognize the relevant law governing a factual situation. (i.e., that patent is involved and not the law of
negligence)
Apply the relevant patent law to the fact situation at hand.
Communicate a patent opinion comprehensibly in writing or orally
Prepare a simple patent legal opinion on validity, infringement or scope of a patent licence including a review of:
• Facts
• Law
• Application of the law to the facts
• Limitations on the scope of the opinion.
INTERMEDIATE
Knowledge of:
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Working knowledge of
• appropriate limitations required for opinions – an opinion is not a guarantee or an insurance policy .
Skills
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Prepare a competent infringement
Prepare a competent validity opinion.
ADVANCED
Knowledge of:
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Working knowledge of
• US patent law governing interpretation of patents
• US patent law governing patent infringement including literal infringement; the doctrine of equivalents and file wrapper
estoppel
• US patent law on validity of patent claims. (examination of prior art and the file wrapper)
• US patent law that he or she can write an opinion designed to defend against a claim of willful patent infringement.
Skills
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Prepare a complex infringement or validity opinion upon which a party can rely to make a business decision.
Conduct a patent and trade secret audit for a client
4. PATENT LITIGATION
ESSENTIAL
Knowledge of:
Working knowledge of
• entire litigious process from filing a case through to trial
• law of evidence
• how to work backwards from the factual elements of a legal test to the facts that must be found to make out a cause of
action or defence
• limitation periods
Skills
Draft a Statement of Claim or Statement of Defence
Prepare a simple motion (e.g., particulars, reattendance to answer questions at discovery)
Argue a simple motion including preparing a supporting factum or memorandum before a master or prothonotary.
Prepare a cease and desist letter
Draft a release from liability
INTERMEDIATE
Knowledge of:
Working knowledge of
• rules of pleading
• document collection and document - What is the test for relevancy
• how to organize a document collection with a client
• how to organize and keep track of massive volumes of documents including working with paralegals or other nonlawyers
• law of evidence.
• infringement actions
• impeachment action including standing to impeach
• Draft documents to settle an action
Skills
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Prepare an outline of discovery questions
Prepare outline of cross examination questions
Prepare affidavits for motions including summary judgment/ interlocutory injunction
Cross examine on an affidavit
Conduct a short examination for discovery (knowing the bases for objection)
Defend a cross examination/discovery – knowing the grounds of objection
Examine a witness in chief at trial
Write a factum/memorandum for a summary judgment motion
Write a factum/memorandum for an interlocutory injunction motion
Argue motions
Draft a counterclaim to impeach a patent
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Negotiate a settlement agreement
ADVANCED
Knowledge of:
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Advanced knowledge
• of civil procedure.
• evidence
Skills
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Prepare memorandum/factum and arguing case in a Court of Appeal.
Cross examine witnesses at trial.
Present opening and closing arguments at trial.
Prepare expert’s affidavit
Prepare expert to testify at trial
Cross examine expert witnesses