Patenting Public-Funded Research for Technology Transfer

ICRIER Working Paper No. 244

Patenting Public-Funded Research for Technology Transfer: A Conceptual-Empirical Synthesis of US Evidence and Lessons for India

January 2010

by

Amit Shovon Ray

Sabyasachi Saha

The question of protecting intellectual property rights by academic inventors was never seriously contemplated until the introduction of the Bayh-Dole Act in 1980 in the US. The Act allowed universities to retain patent rights over inventions arising out of federally-funded research and to license those patents exclusively or non-exclusively at their discretion. This particular legislation was a response to the growing concern over the fact that federally funded inventions in the US were not reaching the market place. In this paper, we present a critical review of the US experience after the Bayh-Dole Act and argue that the evidence is far from being unambiguous. We discuss the debate surrounding the Act – the extent to which it was successful in achieving its objectives, the unintended consequences, if any, and more generally, the effectiveness of IPR as a vehicle of technology transfer from universities. We also discuss the limited evidence on Bayh-Dole type legislations introduced in other countries. A new legislation, along the lines of the US Bayh-Dole Act – The Protection and Utilisation of Public Funded IP Bill, 2008 – is presently before the Indian parliament. The paper presents an Indian perspective against the backdrop of the US experience in an attempt to draw concrete lessons for India.

Abstract File | Full Text in PDF

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Online Certifications from WIPO Worldwide Academy

WIPO Worldwide Academy offers following Online Certifications

* General Course on Intellectual Property (DL-101) [March 1 to April 19, 2010]
Summary: This course covers the main areas of intellectual property, namely copyright, related rights, patents, trademarks, geographical indications, industrial design, plant breeders’ rights, unfair competition and international registration systems.

* Patent Information Search (DL-318E) [March 11 to May 19, 2010]
Summary: The intention of this distance learning course relating to patent information searching is to introduce you to, and illustrate the concepts, of searching patent information.

* Arbitration and Mediation Procedure under the WIPO Rules (DL-317E) [March 16 to April 27, 2010]
Summary: This advanced course is intended to describe the main features and advantages of the procedures designed by the WIPO Arbitration and Mediation Center; how the selection process of the most appropriate dispute resolution procedure for any given case; and how to draft appropriate dispute resolution clauses for insertion into and agreement.

* Trademarks, Industrial Designs and Geographical Indications (DL-302E) [March 10 to May 18, 2010]
Summary: This advanced course is intended to provide training material online to cover intellectual property aspects which are closely related to trade and competition in the globablized market. Additionally, the course is intended to educate and raise awareness of some of the complex issues that surround the protection and management of intellectual property for branding.

* Patents (DL-301E) [March 9 to May 17, 2010]
Summary: This advanced course is intended to explain the basic principles of patents, their economic impact, the process of patenting, describe technology transfer, patent pool and the traditional use of patents by centers of knowledge such as universities. It covers the important aspects of the patent document used in the enforcement of patent rights and the various aspects of enforcement.

Last date for enrollment is February 18, 2010.

Further Details:
http://www.wipo.int/academy/en/courses/distance_learning/catalog/c_index.html

Advanced Patent Drafting Workshop Being Organised by CII

Confederation of Indian Industry & Andhra Pradesh Technology Development and Promotion Center is organizing an

Advanced Patent Drafting Workshop on Patent Drafting & Technical Skills
(Better Training, Better Writing and Better Patents)
Date: 5-6 October 2009

Venue: National Academy of Agricultural Research Management Campus, Rajendra Nagar, Hyderabad 500 407

Fee Structure per delegate: Rs. 5000/-

India is growing in technology in leaps and bounds yet there exists a dearth of professionals who understand the dynamics involved in the field of Patent Drafting and Technical Writing Skills. To bridge this lacuna, APTDC under the aegis of CII is organizing an intense and comprehensive one and half day practical Patent Drafting is aimed and provides you cost effective and high quality patent writing skills development, patent specification drafting includes a written description of the invention, background, drawings, summary abstract of the disclosure, patent analysis, patent mapping and listing of claims conforming to the standards and requirements of an International application.


The Workshop will cover:
1) Improve your patent drafting skills.
2) Understand what drives the framing of critical drafting.
3) Acquire theoretical and practical skills related to patents and patent application procedures and to develop claim drafting skills.
4) The core skills to be imparted include scope of patent, patent application procedures, different types of claims, and claim drafting, in compliance with procedural requirements.

Who should attend?
1) Attending the workshop are scientists, researchers, technology managers, inventors, SME’s and attorneys with technical backgrounds, who will be drafting patent claims in the future.
2) This program is designed for private or corporate practitioners with patent experience who wish to improve their general claim drafting and amendment writing skills. Registrants will have the opportunity to concentrate on the specialized skilld required in their technological area.
3) Course material will include sample problems and model solutions.

Early registration is advisable as enrollment is limited.

Programme Schedule
(Each subject is 1 hour except as noted)
Day One, October 5, 2009

Review – Anatomy of a Patent

I. Goals for each section
II. General drafting strategy

Background – Multiple Theories

I. Purpose of the Background
a) Tell the story
b) Avoid Mistakes
II. Discussing prior art

Drafting for Clarity

I. The art of description
II. Claim construction
III. Ensuring that terms mean what you want them to mean

Drafting for Written Description

I. The Written Description Requirement
a) General
b) Chemical cases
c) Biotech cases.
II. Problem areas prosecution, continuations, priority cases
III. Identifying problems during drafting.

Drafting Enablement

I. The Enablement Requirement
II. Using the level of skill in the art
III. Enabling the full scope of the claims.
IV. Experimentation what is “undue”?

Day Two, October 6, 2009

Avoiding Drafting Pitfalls

I. “Patent Profanity”
II. Prosecution history.
III. “Last step before submission”
IV. Checklist

Claims – Scope and Coverage

I. Using Statutory classes
II. Varying claim scope
III. Claims and Specification developing scope.

Claims – Numbers and Relative Terms

I. Plural and singular
II. Claiming relative terms
IV. Functional claiming
V. Ranges

Claims – Preambles, Terms

I. Preamble as limitation.
II. Definiteness
III. Broadening with claim terms
IV. Broadening with spec terms

Claim Families

I. Identifying Potential infringers.
II. Drafting to cover all possible targets.
III. Using dependent claims
IV. Picket fences

Claims and Spec Together – Claim Interpretation (2 hour)

I. Claim construction Exercise
a) From both sides
b) Present arguments

For any queries, contact:
Kamaraju Chitrapy
Executive Officer – IPR
Confederation of Indian Industry
Andhra Pradesh Technology Development & Promotion Centre
1-11-252/9, Plot No:7 Regal house, II Floor,
Motilal Nehru Nagar, Begumpet, Hyderabad -500 016
Tel: 91-40277765837
Fax: 91-40-27765836
Mobile: 98492-39783
e-mail: c.kamaraju@cii.in
Website : http://www.aptdc.com

Conference on Recent Trends in Patinformatics

Conference on Recent Trends in Patinformatics

9-12 December 2009

Organized by: Society for Information Science (SIS) and CSIR’s Unit for Research and Development of Information Products (URDIP)

Venue: National Chemical Laboratory, Pune, India

What is Patinformatics?

Patinformatics is newly emerging science, which involves analyzing set of patent data to discover relationship and trends which would be difficult to see when working with patent documents on a one-on-one basis.

A patent document is a complete disclosure of commercial, scientific and technological information. It is estimated that about 70% of the information disclosed in patents is never published anywhere else. Very often, it is also the earliest disclosure of a new technology or a new product.

A unique and valuable source of scientific and technical information, patent literature is often overlooked and underutilized by researchers and information professionals. This is understandable, given that until recently it was difficult for everyone to access patent information.

However Internet has made a paradigm shift; patent information is now readily accessible for free on the World Wide Web. Patent offices in most developed nations including new emerging economies maintain web-enabled patent databases containing millions of patent records. The European Patent Office’s esp@cenet system alone has more than 50 million patent documents from approximately 70 countries, the earliest dating from the mid-19th century.

There are also very specialized value added paid databases such as Delphion, Derwent, Micropatent, Patbase, Patent Cafe, Q Pat etc., which are available for patent document retrieval. The semantic patent search technology has revolutionized patent research.

Patinformatics Tools

Patent analysis results can be displayed by visual representation using bar graphs, polygonal line graphs, pie charts, radar charts and other charts/graphs, which are called Patent Maps. The various tools useful to generate patent maps are Vantage Point, Aureka ThemeScape, Crystal Xelcious, STNAnaVist, etc.

There is now integration of Latent Semantic Analysis / advanced linguistics patent search technology, portfolio management software, online patent analytics, international patent database into a Decision Support System (DSS) class of enterprise software applications.

Patinformatics Applications

Patent information is more than just technological or legal information. Some of the practical applications of patent information include: Management of Research and Development (R&D), A Tool for Creative Thinking, Competitor Monitoring, Technology Assessment, New Venture Evaluation, Input for Licensing Strategy, Supporting Mergers and Acquisitions (M&A) and Human Resource Management. In today’s complex knowledge-driven economy, effective use of patent information while developing and introducing a new product may determine the success or failure of the product and, in turn, the success or failure of the company itself.

Opportunities

The advent of Internet and availability of patent databases, software and analytical tools has created more opportunities in the area of patent search, analysis and other value added services. India has become an attractive destination for patent related services because of availability of technical human resource and cost effectiveness.

This calls for appropriate human resource development and up gradation of skills of existing information professionals.

Call for Papers
Realizing the importance of this newly emerging area, Society for Information Science (SIS) in collaboration with CSIR’s Unit for Research and Development of Information Products (URDIP) is conducting a four day Conference on “Recent trends in Patinformatics” from 9-12 Dec.2009. In addition, database and software vendors will conduct training programmes for the benefit of members.

Papers are invited from information and R&D professionals on various aspects of patinformatics such as new patent databases, software solutions, analytical case studies, reviews and discussion papers.

Who should attend?

  • Scientists, Patent Analysts, Researchers, Technical Managers, Information Science Professionals, IP Professionals and R&D Managers.

Important Dates

  • Abstract submission: 15th September 2009
  • Acceptance of abstracts: 30th September 2009
  • Submission of full Paper: 30th October 2009

Event Details

  • 9 December 2009: Training Sessions / Evening: Inaugural function and dinner
  • 10-11 December 2009: Technical Sessions
  • 12 December 2009: Training Sessions / Sight Seeing

Registration Fees

  • SIS Members : Rs.1,500
  • Non-Members : Rs. 2,000 (Academia/Research)/ Rs. 3,000 (Industry)
  • Students: Rs. 500 (limited seats)
  • Foreign delegates: USD 100

Delegates (including speakers and vendors) must register before 15th October 2009.

Conference Secretariat

Mrs. R. Jansi
URDIP, “Jopasana”, 85/1, Paud Road, Kothrud Pune 411 038, INDIA
Email:
sis2009@urdip.res.in; Tel: +91-20-25382296 (Extn: 225)

Further Details

Patent Office to issue Electronic Notifications

The latest reform which has been introduced by the newly appointed Controller General Mr. P H Kurien on the recommendations of the fifth Consultative Working Group on Patents , Designs and Trademarks in India (held in April, 2009) is the issuing of electronic notifications to patent applications which has come into effect from the beginning of this month. Correspondence in electronic form will go a long way in expediting the process of obtaining patents.

Notification

Online certificate course on Intellectual Property Rights

Applications are invited for admission to the following online certificate courses:-

1. Intellectual Property Right and Information Technology in the Internet Age
(This course will cover the basic laws of Patents, Copyright, Trademarks and Management in IPRs)

2. Cyber Laws
(This course will cover the fundamentals of Cyber Law and Cyber World, Regulatory Framework, Cyber Crimes and E-Commerce)

Eligibility:

Anyone who is pursuing / has pursued diploma or degree after 10+2 and has access to computer and Internet can apply

Duration   : Three Months (commencing from 17th August, 2009)

Fee             : Rs. 4,000/- (Four Thousand only); 100 US$ (for foreign students)

Last Date  : 10th August, 2009.


Click here to download Application Form (IPRs)

Click here to download Application Form (Cyber Laws)

CERTIFICATE COURSE ON INTELLECTUAL PROPERTY RIGHTS & IP SERVICES

INDIAN INSTITUTE OF TECHNOLOGY DELHI in joint collaboration with GLOBAL INSTITUTE OF INTELLECTUAL PROPERTY under the aegis of Foundation for Innovation & Technology Transfer announces CERTIFICATE COURSE ON
INTELLECTUAL PROPERTY RIGHTS & IP SERVICES from 13–18 July 2009.

For more details please click here