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Clock Gears

Claiming Inventions: Philosophies, Principles and Practices



The 3 day course includes guest presentations from practicing IP lawyers, judges and IP experts. and workshops. The course provides many skills building exercises concerned with patent application creation and defense and provides valuable information on ethics and professionalism, client services, ethical advocacy, importance of confidentiality, managing conflicts, best practices and equity diversity and inclusion and analyzing ethical dilemmas.


This course has been approved for 3 Professionalism hours of CPD. 



  • Determining who the client is (criteria 2.2)

  • Timely and effective client communication, including theory and practical application (criteria 2.7)

  • Drafting reporting letters, legal opinions and legal memoranda in plain language, including theory and practical application (criteria 2.8)

  • Technology in a law or legal services practice, including considerations related to security of information, productivity and efficiency (criteria 3.17)

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Ethical responsibility, dealing with multiple inventors, subject matter disclosure, invention disclosure, novel and non-obvious subject matter, ethical implications of the "lawyer as invention" scenario.


Types of searches, structure vs. function, novelty vs. obviousness keyword determination, locating classifications, reverse/forward citation search, search tools (Google Patents, Lexis Total, Patent One.


How to evaluate search results in order to formulate a patentability opinion , how to properly report a patentability opinion- novel, non-obvious and useful subject matter, how to properly qualify your patentability opinion


Claim drafting, drafting the specifications, naming claim elements, method claims, dependent claims, supporting the claims in the specification, preparing illustrations and supporting claims with illustrations, preparing an enabling disclosure, the concept of invention embodiments, language use in claims, and preparing, background, summary and abstract section.


Preparing for prosecution, using search results, independent and dependent claims, what an Office Action is, types of Office Actions, distinguish prior art, prosecution strategies, concept of "file wrapper estoppel."

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