Seminar for Software, Electronics, Mechanical and Telecommunication Patent – Oct 2011









One-Day Symposium On Advanced Patent Issues Related to :

With Focus On:


11’th October 2011, at Hotel Hilton, (Andheri East) Mumbai

12’th October 2011, at Hotel Taj Banjara, Hyderabad

About the Symposium

With Patents becoming a core part of existing economic ecosystem, exploitation of Patent Portfolio has become an industry in itself; especially with the cost of development and protection of the portfolio being enormous. It is therefore crucial to understand important Patent issues, not only for patent holders but also for entities under the threat of potential patent infringement. With significant investment required for building a strong and enforceable patent portfolio, it is important for Corporates and concerned stakeholders to understand the nitty-gritty's of patent portfolio creation, protection, management, and commercialization, without which there would always remain an open door for a serious blow either from an infringement perspective or from a patent invalidation perspective. Furthermore, US Patent scenario provides great opportunity for Indian Pharmaceutical companies for ANDA litigation, nitty-gritty of which needs to be clearly understood. At the same time we need to understand that patents are not only the dictate of large business establishments but can also provide a great lead to small and medium business establishments,which have given the whole business a new paradigm.Exclusivity rights granted through patents can only be utilized if there is comprehensive knowledge of various patent related issues, more so when the National Patent Laws & Practices relating to prosecution practices, drafting practices, examination practices, and enforcement practices differ substantially across geographies particularly for Pharmaceutical and Biotechnology domain. Furthermore, standards for protection and enforcement as applied by different National judiciaries often vary widely and therefore in the global business scenario, besides understanding of Patent Laws and Practices prevalent in India we also need to understand the practices in economically and financially important geographies such as United States. It is in this direction that the International Symposium is being organized to impart comprehensive knowledge to understand the nitty-gritty of Patent Regime related to Pharmaceutical, Biotechnology and Chemical domains for exploitation of exclusivity rights granted through patents to the best advantage of the Indian corporates.

How is the Symposium Unique

This Symposium features presentation of all important patent issues such as identification of potential inventions, Biosimilar Legislation, preparation of claim sets, prosecution and examination practices, drafting of responses of Office Actions, ANDALitigation, and recent case law updates. The speakers are a unique gathering of Patent Attorneys, who have extensive years of experience in their professional fields, and will put across to the delegates the real insight of Patent Laws and Practices as prevalent and practiced in United States, in most coordinated manner as all speakers come from the same IP Law Firm. The Symposium will provide an opportunity to receive -hand information including recent Judgment on various issues from the experts in the fields.

Why Attend

This is a one time opportunity when Patent Experts from Sughrue Mion having varied backgrounds and enormous expertise would be interacting with limited delegates and would answer to any question that the delegates may have. The speakers have thorough knowledge on the subject and have been working in the field for many decades. The speakers are selected such that the attendees can get to know the real insight and nitty-gritty followed at United States. The speakers would share real-life cases and experiences that can help the attendees in following the best practices for building their respective patent portfolios and how best to undertake ANDA Litigations. The speakers would also talk at length on the recent case laws and how courts of different geographies interpret the same application in different ways so that best practices for each geography can be put across. Sharing of practical experience would also help the delegates in gauging their understanding of complex patent issues and how claim construction can be interpreted for infringement or invalidation. Delegates would also get ample opportunities to interact with the speakers on confidential mode to understand and clarify any doubts and questions that they may have on personal basis. The knowledge gained from the workshop will go a long way in formulating the right patent strategy and building a strong and enforceable Patent Portfolio.

Who Should Attend

Research & Development Scientists, Senior Management Team, Business Risk Managers, IP Managers, IP Professionals & Consultant, I P Agents & Attorneys in the field of Practice, Professionals in Legal Domain related to, Software, Electronics, Telecommunication and Network Computing fields.

About the Organizers

IIPRD is a premier Intellectual Property Consulting and Commercialization / Licensing Firm with a diversified business practice providing services in the domain of Commercialization, Valuation, Licensing, Transfer of Technology and Due-Diligence of Intellectual Property Assets along with providing complete IP and Patent Analytics and Litigation Support Services to International Corporates and Global IP Law Firms. IIPRD also provides industrial training to Indian business houses. In this direction, IIPRD has been regularly holding International Seminars as one of its focused activities on its own and in collaboration with various Government and International agencies. IIPRD has held scores of National and International Programmes. IIPRD also conducts tailor made educational programmes for better known corporates at their premises specific to their needs. IIPRD has been established as an earnest and sincere effort by corporate trained IP practitioners to assist Global Business Houses in strategizing their growth by leveraging their IPR's through effective Creation, Promotion, Protection, and Commercialization of IP. IIPRD has a legacy of over ten years of existence and is among the Indian IP Firms to have core focus on Commercialization, Technology Transfer, and Licensing for numerous Indian and Global Corporates, with Patent practitioners from across technology domains.
BSKB was founded in 1976 with the merger of Birch & Birch and Stewart & Kolasch, BSKB now employs over 200 people in offices located in Virginia, San Diego, California and Falls Church. BSKB has consistently ranked in the five of all law firms worldwide in the number of U.S. patents issued by the USPTO and is also consistently ranked in the 50 law firms in trademarks submitted. Birch, Stewart, Kolasch & Birch, LLP ("BSKB") is a highly respected international intellectual property law firm committed to obtaining and enforcing intellectual property rights for its clients. BSKB has been providing a full range of intellectual property services for over 30 years with specialization in chemistry, medical devices, biotechnology, pharmaceuticals, diagnostics, healthcare, computer science and mechanical and electrical technologies for its internal clients.
Carpmaels & Ransford has been at the vanguard of intellectual property for over 200 years and is the oldest firm of patent attorneys in the United Kingdom. The product of expertise and experience, underpinned by a lot of hard work makes Carpmaels & Ransford a leader in the field for acquiring patent rights in Europe, and around the world. Clients include many European, US and Asian household names. The firm is also highly-regarded for its tenacity and expertise in European Patent Office opposition and appeal proceedings, with its skills being sought in patent actions before the UK courts and in pan-European enforcement. Broad-based technical expertise is organised into dedicated teams with key technical and professional skills specific to emerging and established industries. Developments in the law and technology are closely followed.This enables Carpmaels & Ransford to maintain the highest levels of service that global clients have come to expect.
About Khurana & Khurana, Advocates and IP Attorneys
Khurana & Khurana is more than a full service IP Law firm and is among the youngest Indian IP Law firms to have been ranked and recommended by Legal 500 and Managing IP. K&K was formed in the year 2006 with the very focus of providing End-to-End IP Legal Services along with its Sister Concern IIPRD, which supplement each other in order to provide end-to-end services to the corporate world in the IP Field. K&K and IIPRD, through their team of over 40 IP Attorneys and Practitioners, together form a niche in the IP domain by taking any corporate from the stage of IP Creation and Protection through its team of Attorneys to the stage of IP Valuation, Licensing, and Commercialization. Team of IP Attorneys/Practitioners having high level of technical and legal competence gives the right competitive edge and positioning to K&K as a law firm focused on creating immense IP value for its clients. K&K today represents global Corporates across geographies and technology domains and helps then successfully enforce, litigate, and protect their IP Portfolio in India.
Our Media Partner National Bar Association of India
National Bar Association of India (NBAI) is incorporated as a non-profit, non- political and non-governmental association. NBAI is advised by a panel of eminent jurists, senior lawyers, eminent academicians, law firm partners and industry representatives. NBAI achieves its goals by providing opportunities for legal education, seminars, camaraderie & networking, Pro-bono Work, Public Interest Litigations and the opportunity to make a positive contribution to the Indian legal & justice systems. NBAI enjoys strong and productive relationship with Indian Government and Judiciary. NBAI's mission is to provide for welfare of Legal Community and to provide them with one collective voice to reform the Indian Legal System and remove Government bureaucratic rules & regulations (red tape) in order to usher effective and quick justice to its citizen, leading to nation's economic & business growth. For more details about NBAI, kindly visit

programme outline

0900-0915:RegistrationSESSION-I (0915-1045) (By Michael K. Mutter) Patenting Software, Electronic, and Network Computing at USPTO : Obtaining patents that will support determination of Infringement; Statutory claims; Acceptable claim styles; Patentability under In re Bilski; Computer readable medium claims - In re Beauregard; Transient claims under In re Nuijten; Test for and scope of means plus function claims; Support in specification; Modifications permissible under US laws after filing; The dangers of divided infringement; Compare method and system claims; How best to handle cost effective prosecution.SESSION-II (1100-1230) (By Tarun Khurana) Introduction to Indian Patent System; Requirements for patentability of Software & Electronic inventions with focus on Novelty, Inventive Step, and Technical Effect. Types of claims used for protecting Computer Implemented Inventions; Types of claim construction allowed by Indian Patent Office/Examiners; Comprehensive analysis of granted Indian patents with respect to as filed /national phase filed patent applications.SESSION-III (1230-1330) (By Dr. Viswanathan Seshan) Effective Patent Preparation and Prosecution Practices at Corporates in context of US, Indian, and European Markets - An In-House Counsel's perspective.SESSION-IV (1415-1545) (By John Brunner) Patentability requirements for Software/Electronic subject matters at European Patent Office; Differences in patentability requirements in India, EPO and within European Countries with regards to technical effect and tangible output; Patent application preparation strategies keeping in mind EPO practices; Recent case laws; Best practices for obtaining European Patents cost effectively.SESSION-V (1600-1715) (By Michael K. Mutter, John Brunner, Tarun Khurana) Sharing live experiences of preparing patent applications; Best practices for claim drafting through practical demonstrations; Preparing efficient responses to office actions in EPO, USPTO, and India (Covered Sequentially By Speakers from India, US, and EP).SESSION-VI (1700-1730) (By All Speakers) Questions and Answers on any Patent Issues; Global perspective.
About the Faculty
Mr. Michael K. Mutter Michael Mutter personally works in all aspects of domestic and international patent prosecution, particularly in complex electronics, telecommunication, image processing, network computing and computer art areas. He is also personally involved in client counselling and portfolio management including licensing, as well as the preparation of infringement, validity, and general advisory opinions. Mr. Mutter has also been personally involved in the development of the current state of the law of patentability of algorithmic inventions and business methods in the United States and in Europe. Mr. Mutter started his practice in 1981 before U.S. District Court, Eastern District of Virginia and U.S. Court of Appeals, Fourth Circuit; 1982, U.S. Court of Appeals for the Federal Circuit; registered to practice before the U.S. Patent and Trademark Office. Michael Mutter did his masters in electronics in, 1976 from Purdue University and JD in 1981 from University National Law Center. Presentely he is a member of American Bar Association, FICPI, and merican Intellectual Property Law Association.
Mr. John Brunner John is a Chartered UK Patent Attorney and European Patent Attorney and specialises in protecting computer- and telecommunications-related technology, software and business methods in the UK and throughout Europe. He has been successful in obtaining valuable patents for a variety of software and IT businesses for whom patent protection in Europe is increasingly desirable, but an area fraught with difficulty. John also has considerable experience in advising a range of companies from start-ups to multi-nationals on more general IP issues including infringement and enforcement of patents and design rights, and licensing issues. He is a council member of the UK Group of the International Association for the Protection of Intellectual Property (AIPPI). John is a renowned speaker on software patentability issues, and has participated in various international seminars.
Dr. Viswanathan Seshan Dr. Viswanathan Seshan heads IP&S India, the Intellectual Property division of Philips in India, and is on the Management Team of Philips Innovation Campus, Bangalore. He also heads the Technology Innovation Management function, which focuses on fostering and celebrating innovation at PIC He is a member of the Board of Directors of the Licensing Executives Society, India. Dr. Seshan holds a Ph. D. degree in Biomedical Engineering from the University of Texas Southwestern Medical Center, Dallas, Texas, USA, with a specialization in Magnetic Resonance Spectroscopy & Imaging, and a B. Tech. degree in Instrumentation & Control Engineering from the University of Calicut, Kerala, India. He is a certified Patent Information Specialist (GO/WON, The Hague, The Netherlands) as well as a registered Indian patent agent.
Mr. Tarun Khurana Mr. Khurana focuses on Patent Preparation, Prosecution, Litigation, and Valuation related issues and represents an IP portfolio of over 750 Indian and Global Corporates. Tarun brings a practice of over 9 years in the IP domain and has helped numerous US and European Patent Attorneys in providing Patent Support Services including Patentability Searches, Invalidation Searches, FTO, Infringement Analysis, Patent Preparation and Responding to Office Actions. Tarun represents a number of Fortune 500 Corporates and is involved in significant infringement and nullity proceedings. Tarun has a Bachelors in Engineering from Pune University, Masters in Software Systems from BITS Pilani, Bachelors's in Law, and MBA from IIM Lucknow. Tarun is a member of AIPPI, APAA, INTA, TIE, and LES.

Registration Fees

Indian Delegates : INR 7,721/- Per Delegate (Rs. 7000/- + Rs. 721 Service Tax) Foreign Delegates : USD 226/- Per Delegate Service Tax: AABF16363FST001

Nomination Form

Please Forward the Delegate Fees with the following details: Name, Organization, Designation, Address and Contact Details along with the cheque drawn in favour of " M/S IIPRD " to Mr. Vinod KhuranaInstitute of Intellectual Property Research & Development(IIPRD) IFAIA Centre, S/20-22, Greater Noida Shopping Plaza, Opp. Radisson Blu UPSIDC Site-IV, Kasna Road, Greater Noida-201308, UP, India.

for any query contact

Contact Person: Ms. P Suman Mobile: +91-9650843536 Email: Ms. Meenakshi Khurana Mobile: +91-9910307992 Email: Ph : +91-120-2342010/4296878, Fax: +91-120-2342011