Education & Training

The Education & Training Working Group has written a paper on the required skills and knowledge for QPIPs with recommendations for education and training. The paper can be downloaded from this page and comments can be provided by scrolling to the bottom of the page. Open for comments until Thursday, 22 June 2017.

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1. Define the difference in strategy used between a patentability search and a freedom to operate search from both the type of databases searches (ie patent, nonpatent, global, geographic specific). What importance do claim elements and play in devising each strategy? (A "professional searcher" published an article in a national magazine Entrepreneur stating that professional NEVER use class codes to search because it results in too many patents- only keyword are used by those in the know!!!)

2. How and when is a validity search performed? In the US, define the strategy you would use to formulate a patentability and validity search? What databases would you use for each? How do you identify 103 art combinations and report the results to the client without stating a legal opinion in your report?

3. What are the drawbacks of semantic searching in FTO searching? What is the theoretical basis for this?

4. Is there a lower standard for searching the prior art if a provisional application is filed rather than a non-provisional application? Searchers should know if a provisional is being filed to establish a priority date, the issued patent is only entitled to the priority date of the earlier filed provisional if that provisional enables and describes at least one claim in the issued patent. (Yes, that is US case law). So the provisional must be written and claims drafted with the same standard of care in the prior art search.
I strongly recommend that a patent searcher is required to be a certified USPTO agent. In this way, you can petition the USPTO to inļude a listing of certified patent information professionals online. This would be a strong impetus for searchers to become certified and begin to eliminate the negative connotation associated with inconsistent search results as the reason attorneys do not obtain patentability and prior art searches during preparation and throughout prosecution.

I am not a PIUG member any more but there are a group of former attorneys/agents who recognize the importance of patent intelligence who want to be recognized by the USPTO through certification of some kind. It is possible we can work with you.

Andrea Walsh Ph.D. JD


S1.5.3: remove last bullet and insert a new sub-section S1.5.4 (existing S1.5.4 would become S1.5.5) referencing the same footnote 4 as S1.5.3:

S1.5.4 How do you find biological data4?
- Nucleic acid and protein searches within sequence databases (e.g., Registry, USGENE, GeneSeq, GeneSeq FASTAlert, GQ-Pat)
- Sequence search strategies, when to use which algorithm (e.g. Motif, subsequence, similarity)
- Information on terminology, taxonomy, genome, mapping, protein structure and domains
- Antibody numbering: IMGT, Eu and Kabat

Chapter 3, under “Freedom-to-operate”, recommendation b)

“recommend further steps in case of infringement” seems to include giving legal advice, which only a QPIP shall provide who is also a registered patent attorney (see #5, Example B of the Code of Conduct). This recommendation should, therefore, be amended or removed.

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