Private in-house PCT and DAS Training

In a recent blog post I listed the remarkable number of opportunities in the next few months for public PCT and DAS training programs.  What readers might not know about is that in addition to the many PCT and DAS training programs that are provided to the general public, many PCT and DAS training programs take place privately at law firms and corporations, as I will describe.

Private PCT and DAS training permits a law firm or a corporation to get intensive in-house training for attorneys and paralegals within the organization.  The training is closely tailored to the exact needs of the organization, and can be as basic or as advanced as desired.  Unneeded topics can be skipped and topics of particular interest can be covered in detail and at length.  Attendees can ask as many questions as they wish.

Where can a law firm or corporation go to get private PCT or DAS training?  An organization seeking private training can contact WIPO directly, as WIPO may be able to provide a presenter for such training.  Another option is to contact any of several training providers that have carried out many in-house training programs on PCT and other IP topics, for example:

Here are some examples of recent actual in-house trainings:

  • A “virtual patent firm” with headquarters in Austin, Texas has attorneys and staff who are located at multiple locations across the US.  The firm organized a two-day get-together in Austin which served not only the goal of bringing everyone up-to-date on Best Practices for PCT filing, but also offered an opportunity for face-to-face team building for its attorneys and staff.  The firm says “We use everything we learned on a regular basis now.”  (OPLF)
  • A very large general-practice law firm with offices in many cities has a patent department that is also spread among many cities.  The firm organized a one-day session, attended in-person by people in Boston and via videoconference by people in the other offices, to introduce paralegals to the WIPO DAS system and to launch the firm-wide use of ePCT for management of the firm’s portfolio of pending PCT applications.  (PCTLC)
  • A prominent Washington firm with a large patent department has planned a multi-day offsite training program for all of its paralegals and support staff, with one day dedicated to international patent practice, Patent Cooperation Treaty, and WIPO DAS services.  (PRG)
  • A Fortune 200 corporation launched an initiative in which it will make aggressive use of PCT Preliminary Examination (Demand and Article 34 amendments) and will leverage the results with the Patent Prosecution Highway.  The corporation, which entrusts work to several outside patent firms, brought together patent attorneys from those firms to an offsite location in Arizona.  An industry trainer in the corporation’s technology area gave technical training to the patent attorneys, and a PCT trainer focused on the use of Chapter II of the PCT (demanding preliminary examination and prosecuting the PCT application before the international preliminary examining authority).  (OPLF)
  • A very well known patent boutique in Minneapolis that had previously made very little use of ePCT and WIPO DAS arranged a one-day intensive training program for its paralegals.  The firm now achieves Best Practices for management of its portfolio of pending PCT and Paris-based international patent filings.  (OPLF)
  • The second-largest filer of PCT applications in the world in 2016 (a Chinese firm) arranged a series of webinars on Best Practices for drafting and prosecution of PCT applications.  The webinars included ways to structure the PCT applications try to minimize the risk of Section 101 and Alice problems during US prosecution.  (OPLF)

Yours truly served on the faculty of each of these programs.

Training programs such as those described above can offer many benefits:

  • Of course every corporate patent department tells their outside counsel that they want the outside firm to do high quality patent work.  But actions speak louder than words;  by bringing together patent attorneys from the outside firms, and providing technical training and focused PCT training, the Fortune 200 corporation gave an unmistakable and clear message to the outside firms about the quality of work that is expected of them.
  • The Texas-based virtual patent firm accomplished not only training on state-of-the-art Best Practices for use of ePCT to manage the firm’s patent docket, but helped its geographically dispersed people to work together better with face-to-face team building.  They identified several ways to leverage ePCT for collaborative workflows among people located in different locations.
  • The Minneapolis-based patent boutique firm accomplished in a single day a set of business process reorganization goals that in any other setting would likely have required weeks or months of deliberation and multiple planning meetings.

Although the success stories described above are in the particular context of PCT and WIPO DAS training, other in-house trainings take place for such IP topics as international trademark practice, international industrial design practice, and drafting of patent applications for international filing.

In-house training offers an opportunity to tailor a training program to the exact needs of a particular group of people.  During such a program, the people can ask as many questions as they like and can speak more freely, in the private setting, than they might in a conventional public seminar or class.  Firms and corporations tell me that they feel the time and resources that they invested in such in-house training programs were well spent.

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