Report to the Asian Patent Attorneys Association

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Augustus Russell
5 years ago
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1 Report to the Asian Patent Attorneys Association Re: Report on attendance of the APAA Patent Drafting Course, 6 th -10 th June 2015, Macau 1. Preparations for the course started in early 2013 with my trip to the World Intellectual Property Organization (WIPO) in Geneva where discussions were held with Director General Francis Gurry and representative officers of the WIPO Academy. Following such discussions and having studied the contents of material developed by WIPO, it was considered that those were suitable for use in the context of the Patent Drafting Course to be specially adapted for our members within the APAA jurisdictions which are at different stages of their industrial and economic development with different degrees of sophistication in their patent systems. 2. Following further discussions, APAA was licensed to use the WIPO materials. Supplemental tools were developed in aid by Mr. Anton Blijlevens (APAA Academy Co-Chair Professional Training) and his colleague, Ms. Sarah Barclay to facilitate the conduct of the training. 3. A survey was conducted prior to launching the course to ascertain the level of interest and the depth of training which was most suitable. The course materials were then refined and marketing materials developed before the course was advertised in May The patent class has 18 participants from 8 jurisdictions (Hong Kong, Indonesia, Macau, Myanmar, Philippines, Singapore and Thailand). 5. Macau was chosen as the venue for various reasons. We would like to engage those Recognized Groups which have not hosted an APAA conference to participate in meaningful projects of the Association. It would provide opportunities for the local group to gain experience in organizing Association activities. Additionally, weaved into the programme is a workshop on the final day when local professional and business communities are invited to participate. That is intended to further raise the local group s profile locally, promote their interactions with the industry and attract new members. 6. The course venue chosen is designed for small class lectures, being our preferred approach in a training of this type. 7. We were lucky to have the full support of the Macau Group led by its President Mr. Nuno Sardinha and Rui Cunha Foundation of Macau (a charitable foundation which promotes cultural activities in Macau). A well-furnished lecture theatre with 25 comfortable seats with audio and visual equipment was provided to us free of charge for 5 days. The Macau Group was determined to give all participants a connoisseur experience of providing lunches to them at the Club Militar with food prepared by a chef flown in from Portugal. The final lunch with VIP guests invited to join the participants was served in Club s Gallery where art pieces were displayed. 8. I kicked start the course on Day 1 with introductory remarks and joined the course again on Day 5 as a speaker on IP Alternative Disputes Resolution when some 60 participants

2 took part. 9. A conference programme is provided as attachment A. 10. A follow up survey is being conducted by the APAA Academy Co-Chair on feedback of the course for further refinement of future courses. 11. Snapshots taken during the course are provided as attachment B. =e&n= C. K. Kwong President APAA 10 th July 2015

3 PATENT SURGERY COURSE 2015 DAILY SCHEDULE DAY ONE 9.00 to 9.30 Introduction of the course and outline of the course structure. Identifying and Understanding Inventions 9.30 to Obtaining invention disclosures from inventors including practical exercises to Identifying patentable inventions and understanding the invention. Patent Claim Drafting 1.30 to 4.00 Different methodical approaches for preparing claims after the invention has been identified and understood. Practical exercises applying the different methods discussed to 4.30 Summary and recap of day one. DAY TWO 9.00 to 9.30 Recap of day one and outline of day two. Patent Claim Design 9.30 to Specific types of claims, clarity, claim word choice. Checking the claim to check it captures competing products, avoids unnecessary limitations, claim elements are related to each other, overcomes the prior art, and is industrial applicable. This session will include practical exercises applying the different methods discussed to Continuing specific types of claims, clarity, claim word choice. Typical Parts of the Patent Application 1.30 to 4.00 Detailed description, drawings, background, abstract, summary and how those sections support the claims, including practical exercises to 4.30 Summary and recap of day two _1.docx

4 DAY THREE 9.00 to 9.30 Recap of day two and outline of day three. Prosecuting Patent Applications 9.30 to Responding to office actions, including amending claims and developing arguments, including practical exercises. Patent Strategy to Offensive and defensive patenting, and design-around techniques. Regional Differences 1.30 to 4.00 Discuss differences between countries and regions: two-part claims, unity of invention, equivalents, novelty to 4.30 Summary and recap of day three. DAY FOUR 9.00 to 9.30 Recap of day three and outline of day four. Practical Prosecution Skills 9.30 to Reducing claims to avoid excess claims fees, converting claims between different formats, preparing a divisional specification, utility model claim selection to Continuation of practical prosecution skills. Regional Differences 1.30 to 3.30 Update on patent law in the US, Europe and China to 4.30 Summary and recap of days one to four. DAY FIVE Welcoming and Opening Remarks to CK Kwong President APAA International and Nuno Sardinha da Mata President Macau Group APAA Session 1 - How to Use IP Rights to Expand and Protect Your Business Abroad Moderated by Luis Sales Marques - President of Institute of European Studies of Macau to Gonçalo Cabral - Legal Adviser to the Macau Government to Break Frederico Conde - Business owner Marketing specialist

5 Session 2 - Topical IP Issues Moderated by Rui Cunha, President of Rui Cunha Foundation, Lawyer to 1.30 China's Model/Design Patent System Michael Flint Partner, Marks and Clerk, Hong Kong 1.30 to 2.30 Lunch break Building an IP Culture to Capitalise on Innovation Anton Blijlevens Partner, AJ Park, Australia and New Zealand Session 3 - Alternative Dispute Resolution in IP Moderated by Tong Io Cheng - Full Professor at Macau University Faculty of Law 2.30 to 3.50 Arbitration/Mediation of IP Disputes Generally CK Kwong Partner, Sit Fung Kwong and Shum, Hong Kong, President APAA International Fernando Simões - Assistant Professor at Macau University Faculty of Law 3.50 to 4.00 Closing Remarks Anton Blijlevens Co-chair APAA Academy

WIPO LIST OF NEUTRALS BIOGRAPHICAL DATA

ARBITRATION AND MEDIATION CENTER WIPO LIST OF NEUTRALS BIOGRAPHICAL DATA C. K. KWONG Sit, Fung, Kwong & Shum 9 th Floor, York House The Landmark 15 Queen s Road Central Hong Kong, China Telephone: +852