INSTITUTE OF INTELLECTUAL PROPERTY
RESEARCH & PRACTICE
AND
TECHNOLOGY INFORMATION FORECASTING
& ASSESSMENT COUNCIL
(Ministry of Science and Technology)

organises
Six Days Workshop
on

DRAFTING AND PROSECUTION OF
PATENT APPLICATIONS
Covering United States and
European Patent Laws & Practices

with Focus on
CHEMISTRY and PHARMACEUTICALS
16th to 21st January, 2006

ABOUT THE WORKSHOP
The Indian Pharmaceutical and Drug Industry has gone through substantial changes during the last about ten years and is at the threshold to take on new challenges in the expanding globalization, which are making India the R&D hub centre. To grow, the 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 change does have a significant effect on the actual extent of patent protection. Differences have existed not only in Indian patent practices vis-à-vis other countries but also between Europe patent practices and US patent practices and particularly in the scope of protection related to pharmaceutical industry. Major differences are due to national way of deciding on infringement under various forms of claims construction and the assessment of the different doctrines within an infringement suit. Therefore there is a critical need to understand the insight of claims construction and issues of infringement leading to litigation, and the workshop is organized precisely to impart the real insight of this knowledge and answer all such questions and more. The workshop would enlighten the relevant criteria within the different system and therefore shall support a clear assessment in applying the different laws to the facts, which would help to form a basis on which to draw persuasive support from a scope determination which is harmonized and is as predictable as possible to understand the consequences in litigation of choices made in different claims.

HOW THE WORKSHOP IS UNIQUE
The workshop is intended to provide a comprehensive understanding on scientific process and the art of claims construction, within the gambit of US and Europe patent practices, to improve the efficacy of claim drafting, as the claim language in the enforcement of patent is critical. The workshop would also cover 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 by those who are the best in the field with forty years of average experience, covering the most pharmaceutical pertinent cases relating to every claim construction principle, with practical claim drafting exercises, so that 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 gained from the workshop will go a long way in formulating patent strategy at Pharmaceutical & Drug Industry.
This is one time opportunity when Six Patent Experts from United States and Europe Patent Office would be interacting with limited delegates for Six-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. At the same time the Institute has well stocked library which would remain open till late hours for the delegates to make use of the facility after workshop hours.
The Institute in collaboration with TIFAC has organized many such workshop in the recent past e.g. Six Days workshop on 'European Patent Laws & Practices' for Pharmaceutical Industry during Oct'04 and Six-Days Workshop on United States Patent Laws & Practices with focus on Pharmaceutical & Drug Industry during April 2005, therefore the Institute well understands the need and expectations of the delegates from the Pharmaceutical & Drug Industry and assures you all that the workshop will live much beyond the expectation of delegates in all respects and would provide great value addition.

ABOUT THE ORGANIZERS
About the Institute
The Institute of Intellectual Property Research and Practice was registered as a society in 1995, primarily to provide industrial training and education in the field of intellectual property rights, their practices and legal enforcement in an international scenario. Intellectual property being intangible in nature is more fragile and needs international protection and commercialization in a global economy. In order to protect and commercialize intellectual property, the knowledge and update of international scenario of intellectual property is critical. 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.
The institute also provides a platform and medium to exploit intellectual assets to maximize and hone intellectual skills in the field of IPR in India. In this direction the Institute has established a Valuation Centre which undertakes valuation of intellectual capital with focus on Brand valuation and an IPR Audit Cell, in order to make IPR as low investment growth mantra and to manage IPR-Risk. The Institute also provides assistance 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 3000 books on intellectual property itself and all facilities are directed towards the goal of learning the benefits of intellectual property research and practice.

About the TIFAC
Technology Information Forecasting & Assessment Council (TIFAC) is an autonomous body registered under the Department of Science and Technology of the Government of India. It is a unique institution covering a lot of ground on 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 so far conducted 289 IPR awareness workshops across the country, sensitizing more than 30,000 scientists and technologists. PFC has set-up 20 Patent Information Centres (PICs) in 20 states.
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 spirit by way of organising training programmes, facilitating IP protection and also developing facilities to conduct patent searches, etc. PFC has launched a scholarships for educated women having good science/engineering/medical qualifications under the Women Scientists' Scheme for unleashing dormant scientific force. PFC has many 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.

SCHEDULE
Duration : Six Days
Dates : 16th to 21st January, 2006
Fees : Non-Residential:
Rs. 25000/- per participant (for Indian delegates)
US $ 700/- per participant (for foreign delegates)
Residential:
Additional Rs. 11000/- per participant for residential stay for Indian delegates (lodging & boarding) stay from 15th to 21th January, 2006 (before noon) with independent A/C room.
US $ 300/- per participant for foreign delegate (lodging & boarding) .
stay from 15th to 21st January, 2006 (before noon) with independent A/C room.
Venue : Institute of Intellectual Property Research and Practice .
Plot No. B-28, Sec- 32, Institutional Area, Gurgaon - 122001, Haryana.
For Any Query Write To : Mr. Vinod Khurana, Secretary General
at iiprp@sify.com or khuranavinod@yahoo.com
Contact Person : Mr. John Peter John, Mobile No. +91-9810281321
Note : Residential accommodation is assured only for delegates whose confirmation is received by 10th January, 2006.

About the Faculty
Dr. Thomas D. Paul: Dr. Paul received Graduation in Biology in 1970 from Carroll College, an M.S. in 1975 and a Ph.D. in Medical Genetics in 1977 from Indiana University and a J. D. cum Laude, in 1987 from the University of Houston. Dr. Paul serviced as a assistant Professor at State University of New York at Buffalo from 1977 to 1984 and completed research, teaching and publication on genetics and biochemistry. Dr. Paul joined Fulbright & Jaworski L.L.P. in the year 1986 and is a partner in the firm. He is registered to practice as Patent Attorney in Supreme Court of Texas in 1987 and before U.S. Patent and Trademark Office in 1988. His practice involves patent prosecution, litigation and licensing with focus on Pharmaceuticals, Drugs and Clinical tests. Dr. Paul is board certified by the Diplomat of American Board of Medical Genetics subspeciality Clinical Biochemical Genetics.
Dr. Leander A. Feiler: Dr. Feiler is international consultant with focus on patent procedure and protection based at Munich. Before his present assignment he was working as an Adviser Organic Chemistry/ Pharmaceuticals with the European Patent Office (EPO) at Munich for many years. He took over as advisor after 28 years of experience as patent examiner at the German Patent Office and European Patent Office . He studied Zoology and Chemistry at the University of Munich and did graduation in Organic Chemistry, Physics and Genetics and also underwent studies in Intellectual Property. Dr. Feiler is highly qualified in the technical field of Chemistry with 9 scientific publications and 7 patent applications with emphasis on Pharmaceuticals and Medicinal Chemistry.
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 18 years, with a focus on chemistry and pharmaceuticals. Dr. Schoen is a partner in Henkel, Feiler & Hanzel, Munich. Dr. Schoen has spoken on various international forums on issues related to patenting of pharmaceuticals & drugs, and has visited India on the request of the Institute for six times and is well known in the Indian pharmaceuticals industry.
Dr. Ramesh K. Shukla: Dr. Shukla is international consultant with focus on European patent procedure, appeal and protection and is based at London. Dr. Shukla has recently retired as Chairman of Technical Board of Appeal, and Technical Member of Enlarged Board of Appeal in the European Patent Office, He studied at M.S. University of Baroda (India) and was awarded Ph.D. Degree in 1970 for his work on growth of single crystals. He worked as Research Associate at University College London from 1970 to 1973 and joined the British Patent Office as patent examiner and thereafter moved to EPO. In March 1990, he was elevated as Technical Member of a Technical Board of Appeal at EPO.
Mr. Paul E. Krieger : Mr. Krieger did his LL.M during 1971 from George Washington University after B.S., Min-Engr. and LL.B. He has more than 30 years of Intellectual Property Law Counseling and Litigation experience and has been a lead Counsel in more than 50 Patent Law Suits throughout the United States. He is adjunct professor for 20 years at University of Huston Law Center. He is a senior Partner in Fulbright & Jaworski, LLP and looks after the firm's Huston office. He has lectured for practicing law institutes in the US, UK, Italy, China, Japan among other countries on topics related to patent infringements, protections and litigations.
Mr. John T. Callahan: Mr. Callahan received his Masters in Chemistry in the year 1985 from Calhotic University of America and J.D. from University of Baltimore School of Law in 1990. Mr. John Callahan is a managing partner of international law firm Sughrue Mion and is looking after Washington D.C. office. His areas of practice includes patent drafting, reissue and re-examination proceeding and world wide prosecution with focus on Pharmaceuticals and Chemical. Mr. Callahan counsels a variety of international clients providing clearance, enforceability, validity opinions and licensing matters. Mr. Callahan has lectured widely on U.S. Intellectual Property Laws. He has lectured for practicing law institutes in the US, Korea, Japan among other countries on topics including opinion writing, and on genetic drug litigations.

SCHEDULE OF SPEECHES INDIA 2006
Monday 16th January, 2006, Day 1
09.00 - onwards : Registration
09.30 - 10.00 : Inaugural Session
10.00 - 10.30 : Tea Break
Part 1
The United States Scenario
Introduction
Prosecution of Pharma Patents: An overview of patent drafting and prosecution for patents dealing in the field of Pharma. - Tom Paul
Written Description/Enablement: Important issues dealing with the written description and enablement of the claims. - John Callahan/Tom Paul
Lunch
Prodrugs & Polymorphs/Metabolites & Intermediates: In Pharma compounds other than the main compound can be important. Issues related to protection of these other compounds.
- Tom Paul/ John Callahan
Strengthening US Patents for Litigation: In the US the major enforcement of patents is through litigation. Steps that should be taken to strengthen the claims before entering litigation - Paul Krieger
Claim Drafting Practice Session 1 - All Speakers
Tuesday 17th January, 2006, Day 2
Interference: The process in the US to determine the real inventor when two or more different individuals claim the same invention. - John Callahan
Markman Hearings: The process and how inventors can help or hurt themselves during prosecution. - Tom Paul
Lunch
Reexamination: One alternative to litigation is reexamination , and how inventors can use this procedure to strengthen patent claims. - John Callahan
Other ways to protect your IP in the pharmaceutical industry . - Paul Krieger
Claim Drafting Practice Session 2 - All Speakers
Wednesday 18th January, 2006, Day 3
Preparation for Litigation: What you should do to get your patent and company in position to successfully evaluate and enforce your patent. - Paul Krieger
Doctrine of Equivalents: How can you protect your invention if the claims do not literally read on the infringing device. - John Callahan
Emails are Forever: What everybody should know before you begin litigation in the US.
- Paul Krieger
Lunch
Overview of New Patent Law Legislation: The current status of proposed changes in the US patent law. -Tom Paul
Summary/Conclusion of part 1 Programme - All Speakers
1930 - 2200 Cocktail cum Dinner for all delegates with the faculty for informal and closer interaction

Part 2
The European Scenario
Thursday 19th January, 2006, Day 4
Technical Session I
Introductory talk : The European Patent organization, the European Patent Office and the patent granting procedure in general - Dr. Leander A. Feiler
Technical Session II
Types of Claims with practical examples - Dr. Leander A. Feiler
Lunch Break
Clarify of the claims and support by the description - Dr. Leander A. Feiler
Drafting of claims and specification (exercise) - Dr. Christoph Schoen
Friday, 20th January, 2006, Day 5
Allowability of amendments - Dr. Christoph Schoen
Admissibility of a disclaimer - Dr. Ramesh Shukla
Technical Session III
How to formulate a set of claims for invention directed to pharmaceutically active compounds - Dr. Leander A. Feiler
Lunch Break
Technical Session IV
The examination procedure to evaluate the breadth of claims in a patent application directed to chemical products having pharmaceutical activity specifically in view of novelty and inventive step; the importance of the bioequivalence of substituents.

- Dr. Leander A. Feiler
Technical Session V
The Neem Oil Case - Dr. Leander A. Feiler
Saturday, 21th January, 2006, Day 6
Technical Session VI
Identity of invention and priority, discussion of G 2/98 - Dr. Ramesh Shukla
Claim structure of patent application directed to polymorphs - Dr. Leander A. Feiler
Lunch Break
Litigation of IP rights and litigation proceedings in Germany - Dr. Christoph Schoen
Exercises on various aspects of novelty and inventive step, scope of protection
- Dr. Christoph Schoen
Summary/Conclusion - All Speakers

REGISTRATION FORM

Please register the following participant:

Name: ____________________________________________

Designation:________________________________________

Organisation:_______________________________________

Address___________________________________________

E-mail:____________________________________________

Tel. _____________________Fax.______________________

Registration (Strike out whichever is not applicable)
Non-Residential
Rs. 25000/- per participant for Indian Delegate
US $ 700/- per participant for Foreign Delegate

Residential
Rs. 25000 + Additional 11000 = Total Rs. 36000/-
US$ 700 + 300 = Total $ 1000/-
Enclosed is Cheque/draft in favor of “Institute of Intellectual Property Research & Practice”. Payable at New Delhi for

Rs.________________________________________

Draft/Cheque No.__________________Dated____________

Drawn on ________________________

(Signature)

Foreign delegates to make payment by Banker's Cheque/Bank Transfer only.
Please mail the completed form along with your payment to:
(use photocopy if required)

Mr. Amar Raj Lall
President
Institute of Intellectual Property Research and Practice, Plot No. B-28, Sector 32, Institutional Area
Gurgaon-122 001 (Haryana), INDIA
Tel. #(0124) 2382202, 2382203, Fax #(0124) 2384898
Mobile : 9810281321, E-mail: iiprp@sify.com

Mr. R. Saha
Advisor (DST) & Director (PFC)
TIFAC, Dept. of Science & Technology
Technology Bhavan, New Mehrauli Road, New Delhi - 110 016
Ph.# (011) 26859581/26863877, (011) 26967458
Fax. # (011) 26863866, E-mail : tifac@nda.vsnl.net.in