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IPA001: US Patent Law and Patent Translation

Location   ibip Japan Head Office in Setagaya, Tokyo
Dates        January 13, 2016 to March 23, 2016 (This course has ended.)

The ibip Patent Academy course, IPA001: US Patent Law and Patent Translation, designed to help patent professionals and translators acquire the unique balance of linguistic skills, technical knowledge, and knowledge of patent law required to work more confidently and effectively in the field, successfully concluded in March of 2016.

The course, given in English, was attended by veteran (over ten years of experience) and novice patent translators/checkers, as well as by Japanese patent attorneys and other patent professionals.

Participant Feedback

Participants had the following to say about the course:

"Built my confidence regarding translating."
Native English speaking translator working at Japanese law firm
"The lectures themselves were very meaningful, and being able to hear the opinion of an examiner and the opinions of native English speaking translators was valuable. I am also thankful to have had a variety of questions answered. The opinions of other participants were also interesting and informative."
In-house patent translator at a law firm with 10+ years of experience
"It was nice that the lectures were given according to questions and requests from participants instead of being based on set content"
In-house patent translator at law firm
"It was good to be able to learn about how to draft claims and specifications in accordance with recent case law, and to learn about terminology usage from native English speakers."
C.H. – Japanese patent attorney and translator
"Very useful for patent attorneys as well as translators. Hearing the examiner's advice/comments and seeing native translations was useful."
D.K. – Japanese patent attorney with 6+ years of experience

Course Content

Over six sessions, participants were introduced to different facets of current US patent practice, the reasoning behind many patent "rules," such as why patent applicants or firms issue specific instructions to avoid particular terms or phrases in claims, and participants were able to ask questions they had long held about patent form or language.

Specific patent law topics included:

Patents - Introduction
An introduction to what a patent is, what protection is afforded by a patent, the basic legal requirements of a patent (utility, novelty, non-obviousness, etc.) and how these requirements are evaluated by examiners at the USPTO.

US Patent Specifications and Patent Eligible Subject Matter under 35 USC 101
A more detailed look at patent specification content and requirements and a discussion of what is eligible for patent protection in the US under 35 USC 101, noting recent changes to the eligibility of computer-implemented inventions.

Novelty, Prior Art, and Obviousness under 35 USC 102 and 35 USC 103
A further look at novelty, the availability of disclosures as prior art under 35 USC 102, and how obviousness is defined and determined under 35 USC 103.

Patent Claims
A discussion of the basics of patent claims and their relation to the rest of a patent document, the structure of claims, typical claim language, indefiniteness, what makes a "good" claim, and a look at claim interpretation standards.

Means Plus Function Limitations under 35 USC 112(f)
A look at means plus function limitations, the many forms they could take, and a discussion of how these types of claims commonly result in indefiniteness rejections under current USPTO practice and how this can be avoided.

For the translation segments of the course, participants were given a small amount of J>E translation homework, which was anonymized and compiled into a single document distributed back to participants. The combined homework was reviewed sentence-by-sentence as a group, discussing the advantages and disadvantages of the various submitted translations from both translation and US legal perspectives.

Course Instructors

James Split
James, a US patent agent who joined ibip Japan kk after previously working as a patent examiner for the USPTO, lead the patent law portion of the course. His specialism is in electrical engineering, and in particular in electric and magnetic measuring and testing.

Ian Blake
Ian, the Managing Director of ibip Japan, lead the patent translation portion of the course. Ian has a background in manufacturing and technical consulting and over ten years of patent translation and patent translation training experience.

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