A post from our student blogger Sarah Goodman
Registered patent agents and attorneys must abide by the ethical rules enforced by the Office of Enrollment and Discipline of the USPTO. Attorneys must additionally abide by ethical regulations set by the state bar under which an attorney is licensed. Since patent agents are registered with the USPTO on a federal basis, there is no state-specific ethics code for patent agents. The existing references for the ethical obligations of patent practitioners at the USPTO are 37 C.F.R 10 and 37 C.F.R. 11.
The Code of Federal Regulations includes the Canons and Disciplinary Rules of the Patent Office. A key point is the duty of disclosure to a client. A patent practitioner is required to disclose all necessary information and not to lie to a client. A duty of disclosure to the Patent Office is also included. Patent practitioners have a duty not to submit any documents to the Patent Office which are not true, submitted for an improper purpose, or which violate any applicable law. Patent practitioners are required to maintain confidentiality of information disclosed by the client. Confidentiality is an important aspect of protecting IP rights of clients, and this concept has been emphasized during the MSPL program especially in the capstone course because of the access to proprietary invention information. All registered patent practitioners have a duty to disclose to the Patent Office any non-confidential information which establishes a violation of the USPTO disciplinary rules by themselves or another.
The USPTO is currently proposing an update to the Code of Professional Responsibility to adopt more of the ethical standards set by the American Bar Association (ABA). The USPTO hopes that by adjusting their regulations to complement the state bar regulations, patent practitioners will have more consistent ethical obligations. The USPTO acknowledges that currently, patent practitioners are held to obligations not contained in the Code of Professional Responsibility that apply to practicing patent law and the addition of these stipulations would create a more clear and comprehensive set of regulations.
Proposed updates to the Code of Professional Responsibility and comments from established professionals, including Professor Dennis Crouch of the Patent Law Blog “Patently-O”, may be found online at: http://www.uspto.gov/ip/boards/oed/ethics.jsp
Notre Dame Law School’s Intellectual Property and Entrepreneurship Clinic (Clinic) will be the first law school clinic to include Master of Science in Patent Law (MSPL) students practicing in the United States Patent and Trademark Office (USPTO) Law School Clinic Certification Pilot Program (Program).
Launched in January 2012, the Clinic provides students with valuable experience in applying substantive intellectual property law to client problems, and offers assistance to local businesses and entrepreneurs with counsel on intellectual property related issues. Under the supervision of a licensed practitioner, law school students participating in the Clinic are able to practice both patent and trademark law at the USPTO, including preparing and filing applications, responding to Office Actions, and communicating with USPTO examiners.
In a first for non-law school students, the USPTO has now extended participation in the patent portion of the Program to University of Notre Dame MSPL students, through the Intellectual Property and Entrepreneurship Clinic. In conjunction with the Law School’s Clinic, the USPTO has authorized a two-year trial enrollment for MSPL students, beginning in January 2014. MSPL students in the Clinic will work exclusively on patent matters, helping expand capacity in this high-demand area of intellectual property practice, and under the direct supervision of the Clinic’s Director. By participating in the Clinic, MSPL students will gain first-hand, practical experience through assisting real clients.
A one-year, graduate-level program, the Master of Science in Patent Law prepares students with a technical background to pass the USPTO’s Patent Bar and to succeed in daily practice as a patent agent or patent examiner.
Stroh River Place, Detroit, MI
A post from our student blogger Sarah Goodman
Some members of the MSPL class met with patent examiners at the Detroit USPTO satellite office over spring break. The educational requirements for a USPTO patent examiner are similar to the educational requirements to become a U.S. patent agent. A patent examiner must have a bachelor’s degree in science or engineering. Employment as a patent examiner is a potential short-term or long-term career opportunity for a graduate of the MSPL program.
Employment as a patent examiner could be short-term. A patent examiner job pays well and the starting salary is increased for a graduate of the MSPL program versus an individual with no intellectual property graduate education. Experience working as a patent examiner is beneficial for future job searching. Employers value a job candidate who has experience working for the USPTO as a patent examiner. A patent examiner has a very detailed understanding of the MPEP because the MPEP is the manual which contains the rules for the patent prosecution process. A patent examiner also gains a familiarity with the best strategies for writing a patent application for allowance which is extremely valuable knowledge. Working short-term as a patent examiner could be a good way for a graduate of the MSPL program to get experience that would be valued by any future employer.
Employment as a patent examiner could also be long-term. The field has the ability for promotion based on performance. For individuals who would like a lot of time with family or need job flexibility, a career as a patent agent is flexible in regards to the work schedule. Another appealing aspect of a patent examiner position is the ability to work from home after working at least two years and meeting certain performance standards.
The MSPL curriculum prepares students for the option of a career as a patent examiner at the USPTO. Currently, applicants with bachelor’s degrees in Mechanical Engineering, Computer Engineering, or Electrical Engineering are needed by the USPTO to assist with the backlog of unexamined patent applications. In the future, these postings may remain and other backgrounds may also be needed.
We spent today (our last day!) at GE’s Power and Water facility in Schenectady, NY. This facility was started by Thomas Edison himself – check out the signature on the visitor’s pass we found!
Also in the picture is Buddy Cusick, one of the IP counsel who supports some of the R&D that happens at the Schenectady campus. Buddy is second from the right.
In addition to hearing from quite a few GE representatives today, we toured two plants. We got to see where they make their HUMONGOUS steam and gas generators, and also where they make a cool new type of battery.
After the tours, we chatted with Mike Gregory (a ND alum, and GC for the business unit), three technologists who develop new products at the facility, Buddy and Frank Landgraff (chief IP counsel for the business unit) and Mike Gnibus, who heads GE’s Global Patent Organization in Shelton, CT. Each speaker gave us their perceptions of the importance of patents to the business unit and to the company overall, and our students got some excellent advice that they can take with them into their practice careers.
It’s our last day, so sadly we will be headed home tomorrow. It’s been an amazing trip, and I am looking forward to next year already!!
We spent yesterday at GE Transportation in Erie, PA. They make locomotives there. Who knew how much innovation is going on in that space – it’s a 150 year old technology in some ways, but in other ways, entirely new. The below photo was taken in the building in which we had a learning session with Shawn McClintick (Senior IP Counsel for the Transportation group). Shawn is second from the right – after Thomas Edison and one of our students.
Today we spent the day at the Global Research Corporation. We got an up-close view of a couple of very cool new GE technologies, met a few ND alums, and got to talk to a part of the IP team which manages GE’s patent portfolio. The students learned alot about what options are available for patent agents and patent practitioners generally at corporations like GE.
We’ve been lucky enough to be invited to stay at the GE Lodge on campus, and the view is beautiful!
We spent today in Detroit, MI. Most of the day was spent learning about the new Detroit regional USPTO. They only do patent work there, and concentrate heavily in the mechanical and electrical engineering fields. They’ve hired and trained around 70 new patent examiners since they opened, and are aiming to have about 100 new examiners in their first year of operations.
The folks at the PTO were very gracious hosts. We learned about the mission of the PTO and of the Detroit office, had lunch with some current examiners, learned alot more about the job of an examiner, and also got to share a bit about the MSPL.
After a tour of the office, we traveled to Dickinson Wright to mingle with some of the folks we know through our adjunct faculty member Hal Milton. Kim Slaven, a ND alumna, is a patent associate in the Troy, MI office of Dickinson Wright, and arranged for the MSPL students to meet some of their patent interns (trainee patent prosecutors). We spent some time in their 40th floor office, which has a great view of the GM building. Unfortunately it was rainy today, so the photo isn’t great, but you can still get the idea of how amazing the view is (Canada is in the background!).
Notre Dame’s one-year MS in Patent Law is accepting applications for the 2013-2014 academic year.
Our students learn hands-on skills that prepare them for a career as a patent agent – helping people prepare and obtain patents. Patent agents work at the cutting edge of their technical area, and also at the cutting edge of the law.
Applicants must have a background in science or engineering. Strong applicants have good oral and written communication skills. Applicants with EE and advanced degrees are especially encouraged to apply.
We expect our class of twenty to fill soon. Apply early for best consideration!
This post is part of an article appearing in the Winter edition of Notre Dame Science magazine.
Three students in the Master of Science in Patent Law program are working with Notre Dame alumnus Shane Fimbel, chief operating officer at Union Station Technology Center in South Bend, on a project to help Nationwide Children’s Hospital of Columbus, Ohio, accelerate the commercialization of the hospital’s innovations.
Kerisha Bowen, Ashley Ferraro and Ke Min are involved in the pilot study by Intellectual Analytics, whose innovative methodology, TechnoFlow, uses large data sets to identify and predict the innovative output of research laboratories. They expect to publish a peer-reviewed article on Nationwide’s technologies and create a series of dashboards for key metrics for Nationwide’s technology transfer office as well as measure the hospital’s innovative output.
Fimbel, who earned a Ph.D. in Biological Sciences at Notre Dame in 2007, worked for three years at the Purdue Research Foundation’s Office of Technology Commercialization before returning to South Bend.