Patent Search and Capacity Development Expert

Title of assignment: Patent Search and Capacity Development Expert 

Name of Unit/Sector: TISC Development Section, Technology and Innovation Support Division, IP for Innovators Department, IP and Innovation Ecosystems Sector 

Place of assignment: WIPO Headquarters, Geneva, Switzerland 

Expected duration of assignment: September 1, 2025 to December 31, 2025 (with possibility of extension) 

1. Objective of the assignment 
The World Intellectual Property Organization (WIPO) currently supports over 90 member states to establish and develop national networks of Technology and Innovation Support Centers (TISCs), located in host institutions including universities, research centers, and business support organizations. TISCs are expected to offer core services, namely access to patent databases and scientific and technical content and support in using these resources. TISCs may also offer additional services such as patent search (state of the art, novelty, and freedom to operate), patent analysis and landscaping, and advice on IP management (e.g. filing, licensing, and commercialization). The support provided by WIPO is coordinated through national focal points designated by the governments of participating member states and implemented according to structured project plans developed by the national focal points.

The support provided by WIPO to the establishment and development of national TISC networks includes technical assistance in project planning and management and capacity development in areas related to the services expected to be provided by TISCs. A TISC competency framework, aligned with the knowledge and skills required by TISC staff to effectively deliver core and additional services in line with the needs of local researchers, inventors, and entrepreneurs, guides the development of training activities and resources and provides the foundation for a TISC staff certification scheme.

The objective of the assignment will be to contribute to the design, development, and delivery of impactful training activities and resources in line with the TISC competency framework and to building the capacity of TISCs to deliver core and additional services in line with the needs of local researchers, inventors, and entrepreneurs, in particular in Latin America and the Caribbean. 

2. Services 
In the course of this assignment, the Expert will be required to: 
(i) Contribute to the continuous development of the TISC competency framework; 
(ii) Review existing TISC training activities and resources, in particular related to patent search, and propose new and improved TISC training activities and resources in line with the TISC competency framework and assessed TISC training needs; 
(iii) Act as national TISC network coordinator for selected countries in Latin America and the Caribbean, ensuring communications between WIPO and national TISC focal points and coordinating activities to meet defined priorities and needs in these countries. 

3. Deliverables 
In the course of this assignment, the Expert will be required to prepare: 
(i) Detailed inputs to the TISC competency framework, taking into account the services to be provided by TISCs and the context in which these services are expected to be provided; 
(ii) Presentations, exercises, and assessment questions covering all competencies included in the “novelty/patentability search” cluster in the TISC competency framework (see Annex 1 below); 
(iii) Analytical reports on TISC project documents for national TISC networks in Latin America and the Caribbean based on submissions made by these national TISC networks, including recommendations for activities to develop the capacities of TISCs in line with the objectives and expected outcomes specified by the national TISC focal points. 

4. Reporting 
The Expert will report to the Head of the TISC Development Section.  

5. Profile 
Essential

(i) At least university degree in science, engineering, management, business administration, law, or other related field; 
(ii) At least six years of experience in intellectual property; 
(iii) Experience in designing and delivering training; 
(iv) Knowledge of intellectual property, in particular patents and patent search; 
(v) Excellent analytical and communication skills; 
(vi) Excellent written and spoken English and Spanish. 

Desirable 
(i) Experience in innovation, technology transfer, and/or IP commercialization; 
(ii) Experience working with public sector organizations; 
(iii) Experience working with organizations in developing countries; 
(iv) Knowledge of other UN languages. 

6. Duration of the contract and payment 
The duration of the contract will run from September 1, 2025 to December 31, 2025 (with possibility of extension). 
Payment will be made on a monthly basis, subject to satisfactory completion of services and deliverables. 
Applicants are requested to provide an indication of their remuneration expectations in Swiss francs (daily rate). The daily remuneration is inclusive of travel consideration therefore, all related travel cost (including flights, accommodation, food) to/from Geneva are at the contractor’s own expense.

7. Other information  
ICS (Individual Contractor Services) fall outside the coverage of employment contracts for WIPO Staff members and are not subject to the WIPO Staff Regulations and Rules.  It is an independent contractor’s agreement. ICS are not entitled to payment for holiday and sick leave, medical insurance, or staff pension benefits. 

 
Annex 1: TISC Competency Framework (Novelty/patentability search) 
Learners will be able to… 
- describe the purpose of a novelty/patentability search. 
- describe the context in which novelty/patentability search is carried out by TISCs (i.e. pre-filing). 
- describe which subject matter is protected by patents (inventions) and which is not (exclusions from patentable subject matter). 
- identify novelty and inventive step as patentability criteria. 
- define the concept of “prior art” (according to PCT International Search and Preliminary Examination Guidelines), recognizing that this concept may not be limited to written disclosure in certain jurisdictions, and describe how it relates to novelty and inventive step. 
- identify different sources of prior art, including (but potentially not limited to) patent documents, scientific and technical content, and (documented) traditional knowledge. 
- define the concept of “person skilled in the art” (according to PCT International Search and Preliminary Examination Guidelines) and describe how it relates to inventive step. 
- identify national law/regional agreements and examination practice as providing the operational definitions for concepts related to novelty/patentability search, including patentable subject matter, “prior art”, “novelty”, “inventive step”, and “person skilled in the art”. 
- describe the significance of the concept of “right of priority” as it relates to patents. 
- identify grace periods as a flexibility available in certain IP jurisdictions and describe their benefit (i.e. disclosure not being considered as prior art) and limitations (e.g. duration, conditions, non-applicability in other jurisdictions that do not provide this flexibility). 
- define “independent claims” and “dependent claims” and describe how they relate to each other. 
- identify different patent claim types, including product claim (including apparatus claim, compound claim, composition claim), process/method claim (including use claim), product-by-process claim.  
- identify secondary medical use claims as an option available in certain IP jurisdictions. 
- describe how functional language can be used in patent claims. 
- identify elements of a (international) search report, including sources used, search strategy, and citations (including citation categories e.g. anticipating the invention when taken alone, anticipating the invention when combined with another cited document, defining the general state of the art). 
- describe means of identifying key concepts from an invention disclosure for the purpose of a patent search. 
- describe means of identifying analogous concepts to key concepts for the purpose of a patent search. 
- identify applicant and examiner citations as a means for identifying relevant prior art. 
- identify consultation with the inventor as a means for identifying relevant prior art or leads for identifying relevant prior art. 
- describe means of determining when to end a novelty/patentability search.