School has been cancelled yesterday afternoon and today — we’re having an unusually cold and snowy winter.
Given that class was cancelled yesterday, but also taking into consideration that our professor for Patent Prosecution had driven all the way from Cleveland to teach, we held a virtual class meeting using Google hangouts. It was quite successful, actually! Cindy (the prof) did a great job, and I think it was a good exercise in conference-call and video-conference etiquette for our students. They learned that they need to be more responsive and demonstrative than they would normally be in class, since the prof is not able to read their comprehension as clearly as if in-person.
And, possibly the biggest upside of holding the class virtually is that we don’t have to hassle with scheduling a makeup!
We’ll be hosting two Open Houses in February, where we’ll talk about the MSPL, and our upcoming Chicago and online offerings.
Chicago Center Open House
Date: Feb. 13, 2014
Time: 5:30-7pm (Central)
Location: 224 S. Michigan Ave, Suite 250 (Mezzanine level)
Notre Dame Campus Open House
Date: Feb. 17, 2014
Time: 6-7pm (Eastern)
Location: Innovation Park, 1400 E. Angela Blvd., South Bend, IN
By definition, the MSPL focuses on teaching our students about patents. How to get them, how to talk to people about them, what they’re good for (or not). But sometimes it’s important to step back and get some perspective.
In our Ethics class, our students will spend the first three weeks of the semester learning about the other kinds of Intellectual Property that are common in the United States: trade/service marks, copyright, trade secrets, and trade dress. (In other countries, traditional knowledge is also considered a type of IP, but we don’t cover TK in our curriculum.)
The point of having our students learn about these other kinds of IP is quite practical: clients have problems; and most clients have more than one type of problem. So, it’s almost certain that, at some point, every patent agent is going to see a TM or (c) and need to know what that means. … and whether or not s/he can provide legal advice to the person who’s asking a question (hint: NO!).
I teach these classes, and even though they’re out of my area of specialty, I really enjoy them. This year the Robin Thicke/Marvin Gaye lawsuit over “Blurred Lines” is going to provide us with some fun subject matter when we talk about copyright. And, my favorite Diet Coke will make a special appearance as a teaching prop!
Read part I here.
Read part II here.
Patent prosecution, from the inventor or applicant’s perspective, can be scary. Their patent application, which they have probably spent a lot of money to have prepared, isn’t going to become a patent after all??!!
That’s not necessarily the case, though — as mentioned in Part I, it’s quite frequent that an applicant gets a rejection for a good reason!
Here’s where a good patent agent or attorney is invaluable. The rejection will be made in highly legal and technical terms — and the patent agent or attorney will know how to rebut the rejection appropriately. They’ll be able to throw the legal and technical jargon right back at the Examiner and blow his or her argument to bits (formally known as “overcoming the rejection”).
These skills aren’t something you just pick up — the MS in Patent Law teaches our students how to systematically approach rejections from the Patent Office, so they can help inventors get patents.
Read part I here.
After a patent application has been filed, a person at the US Patent Office has to review the application and decide whether the application deserves to become a patent. The person who does this review is called a Patent Examiner.
The Examiner looks to make sure the application fulfills all of the requirements that the US Code sets out for a patent (mainly, 35 USC 101, 102, 103 and 112). The Examiner will reject any application that does not fulfill these requirements — ie, s/he won’t allow the application to become a patent. As I mentioned in a previous post, it’s not unusual for the Examiner to make a rejection the first time s/he looks at an application.
Once an applicant gets a rejection, s/he gets to rebut it. In other words, the applicant gets to say why the Examiner is wrong. This process of rejection and rebuttal is known as “Patent Prosecution”. Sometimes people hear prosecution and think of going to court — but that’s not the case here at all! Patent Prosecution refers to the negotiation between the applicant and the Patent Office about whether a patent application should be allowed as a patent.
In future posts: What does patent prosecution look like from the inventor’s perspective? What do MSPL students learn about patent prosecution?
The MS in Patent Law’s spring semester starts on January 13 with the first class of Patent Prosecution taught by Cindy Murphy. This course is a very important component of the MSPL curriculum because patent agents spend so much time using the skills that this class teaches in the real world.
It turns out that filing a patent application is only the first half of getting a patent. If the application has been correctly drafted, the Patent Office’s first communication to the applicant will be to let them know that the application has been rejected. ‘What?! A well-drafted patent application will be rejected?! How is something that gets rejected well-drafted???’
Here’s the logic behind that statement: if your patent application gets allowed (ie, becomes a patent) right away, that means you didn’t ask for enough. It’s like selling your house — if your list price is too low, someone will just pay what you’ve asked without haggling over it. Patents are the same way: if the Patent Office lets you have one right out of the gate, you didn’t ask for enough.
In subsequent posts: What is patent prosecution? What does patent prosecution look like from the inventor’s perspective? What do MSPL students learn about patent prosecution?