Consultant – Patent Policy Review in Genf

Title of Assignment : Consultant – Patent Policy Review

Name of unit/sector : Legislative and Policy Advice Section, Patent and Technology Law Division, Patents and Technology Sector

Place of Assignment: WIPO Headquarters, Geneva, Switzerland (remote work possible, subject to operational requirements and applicable arrangements)

Expected places of travel (if applicable) : No travel is anticipated.

Expected duration of assignment : Nine (9) months, with a possibility of extension, depending on the business needs

1. Objective of the assignment

The objective of the assignment is to support the Legislative and Policy Advice Section (LPAS) of the Patent and Technology Law Division (PTLD) in reviewing, completing and streamlining a series of advisory papers and policy briefs on selected issues of substantive patent law and related areas of technology law. These materials will support the provision of clear, practical and evidence-based legislative and policy advice to WIPO Member States.

The Consultant will undertake legal and comparative research and analysis, as necessary, to complete or update the materials and to identify relevant international obligations, available policy choices and their legal, institutional and practical implications. Existing advisory papers should be substantially reduced in length, in order to make them more concise and practical for use in legislative and policy advice. Ideally, they should be limited to 15 to 20 pages, excluding references and annexes. Policy briefs should provide a concise synthesis of the principal issues and policy choices and should be about five pages, excluding questionnaires and illustrative legislative provisions. Where appropriate, the Consultant will also prepare or revise questionnaires and, where required, prepare sample legislative provisions.

(a) The Consultant will conduct the legal, policy and comparative research necessary to review, complete and streamline the following materials in accordance with the scope and indicative delivery dates set out below:

The materials will address the principal exhaustion models, relevant international flexibility and implications for trade, access and parallel imports. The completed materials will be submitted by the end of Month 1.

The materials will address the principal patent examination models and relevant institutional and procedural considerations. The completed materials will be submitted by the end of Month 2.

3) Review Mechanisms

The materials will address administrative and judicial review of patent office decisions and patent validity, including procedural safeguards and institutional arrangements. The completed materials will be submitted by the end of Month 3.

4) Utility Model Regimes

The materials will address the principal policy and design choices for utility model systems, including eligibility, examination, term, procedures and safeguards. The completed materials will be submitted by the end of Month 3.

5) Grace Period

The materials will address pre-filing disclosures, scope and duration, conditions, evidentiary requirements, legal certainty and prior users' rights. The completed materials will be submitted by the end of Month 4.

6) Employee Inventions

The materials will address the allocation of rights in employee inventions and the principal employer-based, employee-based and hybrid approaches. The completed materials will be submitted by the end of Month 5.

7) Paris Convention

The materials will address the principal Paris Convention obligations relevant to national patent legislation and available implementation choices. The completed materials will be submitted by the end of Month 5.

8) Conflicting Applications

The materials will address competing applications, including earlier-filed but later-published applications, prior rights and secret prior art. The completed materials will be submitted by the end of Month 6.

9) Ownership

The materials will address entitlement to patent rights, inventorship and ownership, successors in title, contractual modification and evidentiary requirements. The completed materials will be submitted by the end of Month 7.

10) Patent Right Transfers, Encumbrances and Recordal Systems

The materials will address transfers, licenses, encumbrances and recordal systems, including legal effects, publication, transparency and third-party reliance. The completed materials will be submitted by the end of Month 8.

11) Budapest Treaty and Patent Law Treaty

The materials will address the principal obligations and implementation choices under the Budapest Treaty and Patent Law Treaty. The completed materials will be submitted by the end of Month 9.

(b) The Consultant will contribute throughout the assignment to the development and continuous improvement of LPAS’s legislative advice procedures and methodology, including relevant templates, checklists, sample provisions and other practical tools.

More details on the deliverables are available in the Terms of Reference uploaded to the WIPO e-Sourcing tool.

3. Reporting

The Consultant will work under the supervision of the Head of the Legislative and Policy Advice Section and in close consultation with designated colleagues in the Patent and Technology Law Division. The Consultant will agree with the supervisor on a workplan, sequencing of topics and delivery schedule at the outset of the assignment. The indicative delivery dates may be adjusted by the supervisor in light of operational priorities and the stage of development of each paper.

Drafts will be submitted in accordance with agreed milestones. The Consultant will respond promptly to comments, maintain regular communication on progress and risks, and revise each deliverable until it is accepted by the supervisor. All work and supporting materials shall be treated in accordance with applicable confidentiality requirements.

4. Profile

(a) Education

An advanced university degree in law, public policy or a related field, with a strong academic record and specialization in intellectual property, patent law or a closely related area, is required. A doctorate or a demonstrated record of high-quality academic or policy publications in relevant fields would be an advantage.

(b) Experience

The Consultant should have at least seven (7) years of relevant professional experience in patent law and policy, including demonstrated experience in legal and policy research and in providing policy or legislative advice at the national, regional or international level. Experience in related technology-law fields, including utility models, trade secrets or layout designs of integrated circuits, would be an advantage.

The Consultant should have a proven record of producing high-quality academic, legal or policy publications, including analytical papers, policy briefs, legal opinions or comparable outputs. The ability to translate complex legal analysis into clear, practical and accessible advice for policymakers is essential.

(c) Skills and competencies

The Consultant should have excellent research, analytical and drafting skills, a strong command of substantive patent law and relevant international treaties, sound comparative-law methodology, careful source evaluation and citation practices, and excellent written English.

The Consultant should be able to work independently, manage several topics and deadlines, exercise sound judgment, respond constructively to substantive feedback, and collaborate effectively in a multicultural professional environment. Familiarity with the work of WIPO, national or regional intellectual property offices, or other international organizations would be an advantage.

5. Duration of contract and payment

The contract is expected to run for nine months, with a possibility for extension depending on performance, business needs and availability of funds. The detailed workplan, allocation of topics, delivery sequence and milestones will be agreed at the start of the assignment and may be adjusted by the supervisor in light of priorities and the stage of development of each paper.

Payment will be linked to the satisfactory completion and acceptance of deliverables in accordance with the agreed schedule and the applicable contractual terms. A deliverable will be considered complete only after requested revisions have been incorporated and written acceptance has been provided by the supervisor.

The applicants shall provide an indication of their remuneration expectations per each deliverable in Swiss Francs (daily rate). The remuneration will be based on an agreed daily rate. Payment will be made monthly upon submission of invoices by the consultant, subject to the satisfactory delivery of the agreed services and acceptance by the supervisor.

6. Other information

ICS contractors fall outside the coverage of employment contracts for WIPO Staff members and are not subject to the WIPO Staff Regulations and Rules. The contractor has no entitlement to vacation or sick leave, except for WIPO official holidays, or to medical insurance or staff pension. The duration of an ICs contract, or a series of ICs contracts by the same Individual Contractor, is not to exceed the full-time equivalent of a total of 24 months over a 36-month period.

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