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FICPI ACADEMY OF EDUCATION 2017 PATENT DRAFTING TRAINING COURSE LATIN AMERICA EDITION RIO DE JANEIRO, BRAZIL COURSE DATES SEGMENT 1: 5-9 JUNE 2017 SEGMENT 3: 11-15 SEPTEMBER 2017 APPLICATION CLOSING DATE: 15 MAY 2017 www.ficpi.org PLATINUM SPONSOR With the support of ASIPI, the Inter-American Association of Intellectual Property. GOLD SPONSORS WITH THE FINANCIAL SUPPORT OF THE EUROPEAN PATENT OFFICE

FICPI ACADEMY OF EDUCATION...FICPI ACADEMY OF EDUCATION 2017 PATENT DRAFTING TRAINING COURSE LATIN AMERICA EDITION RIO DE JANEIRO, BRAZIL COURSE DATES SEGMENT 1: 5-9 JUNE 2017 SEGMENT

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Page 1: FICPI ACADEMY OF EDUCATION...FICPI ACADEMY OF EDUCATION 2017 PATENT DRAFTING TRAINING COURSE LATIN AMERICA EDITION RIO DE JANEIRO, BRAZIL COURSE DATES SEGMENT 1: 5-9 JUNE 2017 SEGMENT

FICPI ACADEMY OF EDUCATION2017 PATENT DRAFTING TRAINING COURSELATIN AMERICA EDITION RIO DE JANEIRO, BRAZIL

COURSE DATES

SEGMENT 1:

5-9 JUNE 2017

SEGMENT 3:

11-15 SEPTEMBER 2017

APPLICATION

CLOSING DATE:

15 MAY 2017

www.ficpi.org

PLATINUM SPONSOR

With the support of ASIPI, the Inter-American Association of Intellectual Property.

GOLD SPONSORS

WITH THE FINANCIAL SUPPORT OFTHE EUROPEAN PATENT OFFICE

Page 2: FICPI ACADEMY OF EDUCATION...FICPI ACADEMY OF EDUCATION 2017 PATENT DRAFTING TRAINING COURSE LATIN AMERICA EDITION RIO DE JANEIRO, BRAZIL COURSE DATES SEGMENT 1: 5-9 JUNE 2017 SEGMENT

The Fédération Internationale des Conseils en Propriété

Intellectuelle (FICPI) has developed the Patent Drafting

Training Course to teach the preparation of patent

specifications and claims.

The Course will be of particular benefit to those who have

between one (1) and five (5) years experience in the IP

profession and those who wish to improve their drafting skills

and knowledge of the IP systems most commonly used.

THE COURSEThis Course is organised by FICPI. The Course follows the

successful format started in Singapore in 1997 and in Australia

and Europe in 1999. It is divided into three (3) segments.

COURSE EMPHASISThe emphasis of the Course is on practical work. Following each

lecture session students’ breakout into groups of about six (6)

people to work on an exercise. The exercise is then discussed at

a plenary session before the next lecture or workshop begins. At

the conclusion of the first segment students are given four (4)

drafting exercises to work on, one at a time over the following

three (3) months.

The tutors comment on each paper in turn and review them as

a whole during the third segment.

The Course is directed to teaching the art of patent drafting.

Tutoring will be given in drafting techniques used in major

jurisdictions, namely Europe, the United States of America,

China, and Japan.

Students who satisfactorily complete the Course will receive

a certificate indicating they have done so at a satisfactory

standard in Patent Drafting. Satisfactory completion of the

Course requires that all of the set assignments be completed.

YOU ARE INVITED TO APPLY2017 FICPI PATENT DRAFTING TRAINING COURSE — LATIN AMERICA EDITION

Segment 1: A series of tutorials and workshops will

be presented over five (5) days from 5-9 June 2017.

Segment 2: Students will be required to submit

answers to four (4) drafting exercises over the

following months by correspondence (one exercise

approximately every three (3) weeks). These will be

assessed by the tutors and written comments sent to

the students.

Segment 3: A second series of tutorials and

workshops will be presented over five (5) days from

11-15 September 2017.

The Course will be conducted in English.

Page 3: FICPI ACADEMY OF EDUCATION...FICPI ACADEMY OF EDUCATION 2017 PATENT DRAFTING TRAINING COURSE LATIN AMERICA EDITION RIO DE JANEIRO, BRAZIL COURSE DATES SEGMENT 1: 5-9 JUNE 2017 SEGMENT

APPLICATION & DEADLINE15 April 2017 - Early bird deadline (to qualify for

reduced Course fees)

15 May 2017 - Final deadline to submit application

Please send your application to:

Mr. Eric Le Forestier

c/o LE FORESTIER CONSEIL

22, rue du Plateau Saint-Antoine

F-78150 Le Chesnay | France

Phone: +33 1 78 52 72 20 | Fax: +33 1 77 74 61 91

Email: [email protected]

With a copy to Mr. Geoffrey de Kleine

Email: [email protected]

VENUEBoth series of tutorials will be held at the Windsor Barra Hotel

in Rio de Janeiro, Brazil.

Windsor Barra da Tijuca

Avenida Lucio Costa, 2630 | Rio de Janeiro, RJ | 22620172 | Brazil

Tel: +55-21 2195-5000 | Fax: +55-21 2195-5050

[email protected]

http://www.windsorbarrahotel.com.br/

ACCOMMODATION AND TRANSPORTThe cost of travel to Brazil and accommodation must be borne

by students. Students must make their own reservation at the

Windsor Barra Hotel where FICPI has negotiated a preferential

rate. Lunches will be provided.

COSTStudents are required to make one payment of US$2,500.00

upon acceptance to the Course. Applications completed by

15 April 2017 will qualify for a US$150 early bird discount

provided that the course fees are fully settled within ten (10)

days from our invoice date. The same US$150 discount will

apply to ASIPI Members. These discounts are not cumulative.

This payment covers the cost of all three segments of the

Course, that is, the tutorials in June and September 2017, as

well as the correspondence assignments.

ENTRY REQUIREMENTSStudents should have a prior elementary knowledge of the

process of obtaining patents and have a demonstrable need

to learn the art of drafting patent specifications. The Course

is primarily intended for students based in a South American

country. Students should demonstrate English proficiency.

Admission to the Course is at the sole discretion of the FICPI

Training and Education Commission.

The Course will be limited to 40 students.

Page 4: FICPI ACADEMY OF EDUCATION...FICPI ACADEMY OF EDUCATION 2017 PATENT DRAFTING TRAINING COURSE LATIN AMERICA EDITION RIO DE JANEIRO, BRAZIL COURSE DATES SEGMENT 1: 5-9 JUNE 2017 SEGMENT

SEGMENT 1: FIRST SERIES OF TUTORIAL SESSIONS

INTRODUCTION

• Explanation of Patent Drafting Course

• Patent law and practice review

SPECIFICATION STRUCTURE

• Description

• Drawings

• Claims

• Abstract

PRE-DRAFTING PREPARATION

• Interviewing inventors

• Identifying the invention

APPROACHES TO CLAIM DRAFTING

• Functional analysis

DRAFTING CLAIMS WITH REFERENCE TO SPECIFIC PRIOR ART

DRAFTING A DESCRIPTION TO SUPPORT CLAIMS

The above topics will be covered via lectures and workshops

over the five (5) days. The emphasis will be on gaining

practical experience via workshop activities mainly dedicated

to claim drafting.

SEGMENT 2: CORRESPONDENCE ASSIGNMENTSFOUR DRAFTING ASSIGNMENTS

• Four exercises selected by students among a series must be

completed to gain a Certificate

SEGMENT 3: SECOND SERIES OF TUTORIAL SESSIONSREVIEW OF CORRESPONDENCE ASSIGNMENTS

ADVANCED DRAFTING

• Drafting for different jurisdictions

• Amending claims in view of prior art

• Claim construction in different jurisdictions

PATENT CLAIMS AT COURT

• Validity and infringement

The emphasis in Section 3 will be once again on gaining

practical experience via workshop activities including claim

drafting, claim amendments and mini mock trials.

*The content of this training course does not necessarily represent the

views of the EPO.

COURSE CONCEPT

Page 5: FICPI ACADEMY OF EDUCATION...FICPI ACADEMY OF EDUCATION 2017 PATENT DRAFTING TRAINING COURSE LATIN AMERICA EDITION RIO DE JANEIRO, BRAZIL COURSE DATES SEGMENT 1: 5-9 JUNE 2017 SEGMENT

MR. GEOFFREY DE KLEINE

Borden Ladner Gervais LLP Course Co-ordinator

CANADA

MR. ERIC LE FORESTIER

Le Forestier Conseil Course Co-ordinator

FRANCE

Geoff is a partner in the national firm of Borden Ladner Gervais in Canada. He is a

Registered Patent Agent in both Canada and the United States. Geoff works with a

range of clients in the materials and metallurgical, mechanical and electrical fields.

He has extensive experience drafting and prosecuting patent applications in the

electronic packaging, electronic device and material processing and metallurgical

fields. Geoff has acted as a tutor on FICPI’s Patent Drafting Courses since 2004 and

has been Course leader since 2011.

Eric is a civil engineer graduate from the Ecole Nationale Supérieure des Mines de Paris

(1980), with a specialisation in Computer Technology. He successfully followed the

CEIPI course in Strasbourg (1986-1987) and qualified as French and European Patent

Attorney in 1988. He has been operating since 1980 for French and foreign clients in

patent drafting, prosecution and opposition, opinions, French and international patent

litigation, IP agreements and licensing, IP audits and due diligence and IP strategy,

in the fields of mechanics, physics, electronics, materials, information technology

and telecom. After 27 years at Regimbeau in Paris, among which 18 as partner of the

firm, he founded his own practice at the beginning of 2013, dedicating himself to high

level advisory work as well as prosecution work for a wide range of clients, especially

French and foreign start-ups and SMEs. He is personally involved in all cases. Eric has

acted as tutor on FICPI’s European Patent Drafting Courses since 1999.

TUTORSTHE PANEL OF TUTORS IS MADE UP OF VERY EXPERIENCED PATENT PROFESSIONALS FROM AROUND THE WORLD, ALL SUPPORTED BY FICPI’S TRAINING AND EDUCATION COMMISSION.

Page 6: FICPI ACADEMY OF EDUCATION...FICPI ACADEMY OF EDUCATION 2017 PATENT DRAFTING TRAINING COURSE LATIN AMERICA EDITION RIO DE JANEIRO, BRAZIL COURSE DATES SEGMENT 1: 5-9 JUNE 2017 SEGMENT

Scott is primarily focused on fostering client relationships and building successful

collaborations. Beyond that, he has experience in procurement and analysis

of Intellectual Property Rights (IPRs), and has a unique level of experience in

international IPR protection. Scott handles patent protection in the electronics, optics,

semiconductor, information systems, telecommunications, computer software and

medical device technology sectors, because of his strong technical background in

electrical engineering. Scott has advised Fortune 500 companies, universities, foreign

governmental research institutes, small to medium sized businesses, and technology

start-ups regarding patent portfolio development and management. He has experience

in IP dispute resolution and IPR procurement. Scott has lived and worked in Hong Kong

and Singapore, and has an extensive network of contacts and relationships in Asia.

MS. JING HE

Beijing San Gao CHINA

Jing graduated from Beijing Polytechnic University with a bachelors of science

degree in Automatic Control, and obtained her master degree in Management

of Information Systems from University of Waterloo, Canada. Ms. He is a specialist

consultant on Chinese IP issues. She has over 15 years of experience in the fields of

telecommunications, internet, software, and electronics. Prior to her IP career, she

gained over ten years of industry experience as an engineer in Siemens and Ericsson.

In addition to consulting actively in patent prosecution practice, she also has much

experience in patent invalidation before the Chinese Patent Reexamination Board.

She is regularly invited by domestic institutes and enterprises to lecture on current

intellectual property matters.

MR. JOSEPH MORALES

The Morales Law Firm USA

Joe is a registered patent attorney dedicated to helping companies and inventors

protect their intellectual property assets. He received a Bachelor of Science degree from

the University of Maryland, Baltimore County (UMBC) in biochemistry and molecular

biology. During his undergraduate studies at UMBC, he worked in two different biology

labs that focused on bacterial gene regulation. Joe spent fifteen years in the Maryland

Army National Guard. He began his military career as an enlisted soldier with the 82nd

Airborne Division at Ft. Bragg, North Carolina. He went to flight school immediately after

completing his studies at UMBC and served as team leader in a medical evacuation unit

and a company commander of an air traffic control unit in Maryland. After flight school,

Joe worked in the Biochemistry Department of the Bloomberg School of Public Health

at Johns Hopkins University, where he assisted in the study of protein interactions and

the composition of the mammalian nuclear pore complex.

MR. S. SCOTT GORDON

Gordon Intellectual Property Law, PLLC

USA

Page 7: FICPI ACADEMY OF EDUCATION...FICPI ACADEMY OF EDUCATION 2017 PATENT DRAFTING TRAINING COURSE LATIN AMERICA EDITION RIO DE JANEIRO, BRAZIL COURSE DATES SEGMENT 1: 5-9 JUNE 2017 SEGMENT

Shoichi Okuyama is a registered patent attorney. He specialises in electrical engineering

and chemistry. He has been Principal of Okuyama & Sasajima since 2009. Prior to that,

he had been Principal Partner at Okuyama & Co. from 2001 to 2009. Dr. Okuyama is

a former President of Japan Patent Attorneys Association. He currently serves as an

expert member of the Intellectual Property Strategy headquarters organised by the

Prime Minister of Japan. Dr. Okuyama has received a number of awards, including in

2003 an award from the Commissioner of the Japan Patent Office for his contributions

to the IP community, an Award of Merit from AIPPI in 2011, and in 2013 a Distinguished

Service Medal from The Linn Inn Alliance of the American Inns of Court.

Simon is a European Patent Attorney and Chartered Patent Attorney (UK). Formerly

Director of Patents at British Telecommunications (BT) in London, Simon is now a

freelance consultant aiming to base himself in Thailand. His primary specialism is

opto-electronics and optical communications, but he has worked extensively on most

telecommunications technologies. Until he left BT at the end of 2015, Simon was chair

of the Patents Committee of the IP Federation. He has, since 1989, been principal tutor

in the London group of the CEIPI basic training course. Simon has been a tutor for all

of FICPI’s SEAD Patent Drafting Courses.MR. SIMON ROBERTS

BT Group Legal Services UNITED KINGDOM

DR. SHOICHI OKUYAMA

Okuyama and Co. JAPAN