To get ICFO researchers to understand the basics of the patent, to learn how to find, read and interpret patent documents and to get familiar with some basic patent writing techniques. Researchers will understand the value and role of patents in the technology ecosystem, will get familiar with the patent prosecution process and learn to manage patent information comfortably. 

Dates:  

19^th of June, 14:30 – 18:00, Elements Room  

20^th of June, 10:00-13:00, Elements Room 

Target group:   This course is directed to to R&D researchers and staff without previous knowledge of the patent system. 

Available places: Limited places available 

Training content:  

A first session will be used to overview through several examples the basics of the patent system, its motivation and social impact and its use in several technology corporations in the telecom, electronics and photonics fields. The fundamental nature of a patent right will be introduced, explaining the impact 

of such a nature in the business dynamics. The general principles of patentability will be explained and the architecture of a patent document will be introduced, so participants get familiar in managing patent information. The aim of the next session of the course is to provide the participants with some basic practical knowledge concerning fundamental patent-related issues, such as patent writing, scope of protection and patent prosecution. The goal is to enable researchers to become effective and proactive when participating in the process of patenting as a result of their R&D. This session will include a practical case: a real patent in the photonics field will be handed-out to the researchers who will practice in writing some claims. Participants will be able to share their proposals which will be discussed as a group. 

Day #1 

Ecosystem – A technology and patent-based business model. IP business in telecoms/electronics: Apple and Samsung, Qualcomm, Rambus, Tessera, Nortel, Google. The Fractus case. The MP3 case: Fraunhoffer/Thomson. Examples of a patent-based technology companies in Photonics (Rambus, Tessera). The essentials of the patent system: Why do patents exist? What is a patent? Patenting inventions vs. patenting products. The patent as a technical document. The patent as a legal document. Social impact of patenting. The patent as a negative right. Impact of patents in business dynamics.  

General requirements for patentability. Exclusions from patentability. Patents as a source of knowledge: patent searches. The patent system worldwide: national filings and rules, patent cooperation treaty. Data structure of a patent and patent application document. Inventors and Assignees. Filing, priority, publication and granting dates. Structure of a patent document. Example: a patent on an Erbium Doped Fiber Amplifier (EDFA). Patent specification and claims. Patent specification: background, summary of the invention, description of the preferred embodiments/best mode, list of figures, drawings and claims. 

Day #2 

Scope of protection and patent infringement. 

Claim structure: limiting features and scope of protection. Claim features and novelty. Independent and dependent claims. Claim hierarchy and protection level graphs. The onion layer structure. Multidependency. Independent claims in the EPO and in the US. Structure of a claim: preamble, limiting features and the two-part form. Basic and special types of claims (Markush, means plus function, product by process,..). Limiting words: ‘comprising’, ‘including’ vs. ‘consisting of’. Support according to EPO and USPTO rules. Independent and dependent claims: scope and validity. Claims as the skeleton of a patent specification. Claim drafting session – Students will read a patent specification on a Photonics system (e.g. a compact disk system based on a laser diode) and prepare a set of independent and dependent claims. Three students will present simultaneously their claim proposals. The class will discuss the scope of protection of both sets and support according to the US and EPO perspectives. 

Trainer:  

Prof. Carles Puente Baliarda 

Chief Scientist, co-founder, Fractus S.A. 

Professor, Barcelona-Tech (UPC) 

Prof. Carles Puente is a co-founder and director at Fractus S.A., where he has been in charge of technology and intellectual property portfolio development since 1999. As a CTO and IPR director, he developed an antenna technology and patent portfolio which has been massively adopted by the cell phone industry and licensed to 10 of the top cell phone OEMs worldwide. Carles is a university professor at Barcelona Tech (UPC), where he is currently teaching graduate courses on technology and patent asset management. 

In 2013 he has been teaching patent management at the Executive Master in Technology Management of the University of Pennsylvania, a program sponsored by the Wharton business school. He has been an invited speaker in several industry/entrepreneurship forums including the Licensing Executive Society meeting in Barcelona (2012), the FINAVES meeting at IESE Business School (2012), the Mobile World Congress (2007), the REE by Stanford University (2007), the European Venture Capital Association (2001) and the International Congress of the Forum for ICT Professionals (2001). 

As a researcher and scientist, Carles and his team have been nominated to the European Inventor Award by the European Patent Office (2014), and awarded with the Technology Pioneer award by the World Economic Forum (2005), the European Information Technology Grand Prize by the European Commission (1998), the Premi Ciutat de Barcelona (1999) and Best Doctoral Thesis in Mobile Communications in Spain (1997). He is an inventor in 145 granted patents (including 83 US patents) within a set of 400 patent and patent applications worldwide, and has co-authored over 150 scientific papers in scientific journals and conference proceedings. He was an invited speaker at the Antennas and Propagation Millennium Conference in Davos (2000), the Gordon Research Conference on Fractals (1998) and the Fractals in Engineering conference (1997). He holds a Ph.D. in Telecommunications 

Engineering from Barcelona Tech (UPC,1997), a M.Sc. from the University of Illinois at Urbana- 

Champaign (1994), and a Telecom Engineer degree from Barcelona Tech (1992)