Pro tips for patent agents

A post from our student blogger Catie

A few weeks ago, we had the privilege of listening to a presentation by Louis Fogel, who is a patent litigator at Jenner and Block law firm. As a resident of the Evanston, IL area, Louis was our lunch-and-learn guest for the Notre Dame vs Northwestern football weekend. Louis did patent prosecution for a while between graduating from law school and strictly becoming a patent litigator, which means that he has experience from both sides of being a patent agent. Speaking with him was a great opportunity for the MSPL students because of his multi-faceted perspective and experience in patent law. During his presentation, he gave us a few ‘do’s and don’ts’ that he has come to know over his years in the field of intellectual property.


Perform a prior art search and disclose it. This point has been hammered into our heads all semester; we even take a class that solely teaches search strategies for patent prior art! Technically, the USPTO does not require a patent search prior to filing a patent application. However, a prior art search shows you what technology and inventions already exist, so that you are not wasting your time in trying to patent an existing idea! What you find in the prior art search may also be useful in proving how your invention is better. Whether good or bad, it is also pivotally important to disclose the prior art that you found. Trying to hide pertinent prior art from the USPTO in your patent application will only come back to haunt you in either prosecution or litigation, and could potentially prevent you from receiving a patent, or even cause revocation of your patent agent/attorney registration!

Include multiple claims in multiple scopes. This is a point that has been emphasized in our drafting course. It is important to present an invention in a patent application in both broad and narrow scopes. The narrow scope, also called the picture claim, often exactly describes the invention itself, more or less for clarity concerning the preferred embodiment. However, narrow claims will not be incredibly helpful when trying to prevent others from inventing a practically identical or analogous product or method. Presenting the claims in varying scope will provide a more thorough understanding of the invention and its boundary lines to be presented in the patent.


Refer to your invention simply as ‘the invention’. As a blogger’s note: Yes, I have said ‘the invention’ numerous times in this post, so let me provide an alibi for myself. We have been told over and over all semester that it is incredibly important not to refer to your invention as ‘the invention’ and to avoid using the term ‘invention’ at all! I use the term ‘invention’ in this post as a general term to convey the concept of the idea that is to be patented. However, in a patent application, it is best to simply state what the invention is, or say ‘an embodiment of the invention’. For example, if your invention is a motion-transmitting cable assembly, then say ‘an embodiment of the motion-transmitting cable assembly’. This promotes broader interpretation of the object or method to be patented and avoids limiting what you may claim!

Say what the prior art discloses in plain language. As Louis explained in the presentation, it is not in your best interest to directly make statements in the patent application such as ‘the reference teaches that’ and include the exact disclosures of the patent or publication. This is because such a statement will often be considered an admission that the prior art successfully executes that intended purpose, which may negate the supporting arguments for the granting of your patent. After the patent application has been submitted, statements such as those cannot be retracted, so it is best to stay on the safe side and avoid those kinds of admissions!

As evident of these patent law pro-tips, drafting a patent application is quite complex and requires plenty of attention to details. As the MSPL students have learned over this first semester, patent prosecution is no easy task, and the quality of work presented in patent prosecution will determine the level of difficulty of work left for a patent litigator. Learning the do’s and don’ts of patent law are exactly why we’re here earning a Master’s degree in the subject!


Ahead of the curve


A post from our student blogger Roberto

Classes are wrapping up as the snow starts to fall here at the Golden Dome.  As the semester draws to a close the work in the MSPL is doing just the opposite.  For example, the major component to this semester’s capstone course is a two hour long technical presentation which is given at the end of the semester.  This presentation includes a summary of your invention, descriptions of the prior art (which is material related to your invention that has previously been publically disclosed), what you see as potentially patentable, and what your proposed claims are.  Thankfully, we have done a large portion of this work through our classes already.

As many of you may have already discovered, through your own research or other determinations, the MSPL program at Notre Dame is exceptional.  While I could sit here beat you over the head with a bunch of different reasons why I think it’s a great program, which I and other student bloggers have previous outlined, I think what you are really looking for is results.  Students that graduated from the MSPL in past years have enjoyed great success, but what about this year’s class?  Many of us have already been contacted by multiple high profile law firms and are accepting offers well before the semester is over.  For a new program still gaining traction and attention this is some great validation of what is going on at Notre Dame.  During interviews I have been through, much of my time has been spent explaining what exactly the MSPL is and what we have learned.  I love getting asked those kinds of questions because it’s great fun being in a cutting edge program like the MSPL.  I strongly believe that programs like the MSPL will continue to flourish and rapidly expand because of the demonstrated need in the workforce.  In a lot of ways I feel like I entered into this field at just the right time.  With the intellectually property field expanding like never before there will always be work to be done and opportunities to be had.  In addition, the MSPL puts you ahead of the curve and in position to hit the ground running from day one.

In other Notre Dame News, one of the many opportunities that has been made available students this semester is an upcoming business pitch competition.  The competition has a preliminary stage and then three teams are selected to give a final pitch to Kevin O’Leary from ABC’s hit television show, Shark Tank.  Another great thing that is going on here at Notre Dame is the McCloskey business plan competition that I mentioned in one of my previous posts.  For anyone interested in how small businesses are started and run I highly suggest visiting the competitions page and keeping tabs on it throughout the course of the year.

Independent inventors, this one is for you

Qualcomm, makers of mobile technology, display 1,395 of their patents on their headquarter walls.

Qualcomm, makers of mobile technology, display 1,395 of their patents on their headquarter walls.

A post from our student blogger Megan

“So I made this thing…and I was wondering,” or “I came up with this great idea, what should I do with it?”  When I tell people for the first time that I am a patent attorney, these are the kinds of curious inquiries I typically encounter.  These are great questions and the “lawyer answer” that I normally give is, “it depends.”  See, there are two types of inventors.  First, there are large-scale inventing entities such as corporations or research institutions that hire those who have skill in a particular art to create new ideas and ultimately obtain patent protection.  Second, there are independent inventors who think of new concepts and jot them down on a napkin or work on them inside their garage.  Both types of inventors are well-represented globally with respect to issued patents.  There are, however, some very important concepts that independent inventors need to understand before diving into the patent process.  We’ll briefly explore some of these ideas below but when in doubt it is always best to seek the assistance of a patent attorney or agent.

One of the first things to consider when filing a patent application is what a patent will provide an inventor.  A common misconception is that a patent will allow an inventor the right to make and sell the invention freely.  In fact, according to federal statutory law 35 United States Code § 154, a patent will not allow an inventor to do anything of the sort, but in reality it gives the “right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.”  Along the same lines, potential patent seekers must note that the grant of a patent does not guarantee automatic financial gain.  During his capacity as the director of the Office of Public Affairs for the U.S. Patent & Trademark Office, Richard Maulsby, stated that “[t]here are around 1.5 million patents in effect and in force in this country, and of those, maybe 3,000 are commercially viable.”  Besides merely applying for protection of an invention, marketing, licensing, and maintaining a patent are incredibly important decisions to plan out for anyone who wishes to seriously patent and then attempt to make a profit from an invention.

Another important thing for the independent inventor to consider when applying for a patent are the multitude of obstacles that he or she faces during patent prosecution.  Patent prosecution is the procedure of drafting an application, submitting it to the Patent & Trademark Office, going through a likely series of rejections, and possible appeal, all through a likely lengthy wait time.  At the time of filing a patent application, the applicant must certify that his or her application is enabling, or a person having ordinary skill in the art is capable of making the invention as it is described in the application.  The applicant must also show that the invention itself is novel, or new, and non-obvious.  Application reviewers, or examiners, at the Patent & Trademark Office will look over an application to make sure that all of the aforementioned criteria is met.  Normally, examiners reject applications on the basis that the applicant has not fulfilled his or her obligation of enablement, novelty, or non-obviousness, or for a variety of other rejections.  The applicant may respond to these rejections and thus a lengthy process of back-and-forth communication with the Patent & Trademark Office begins.  According to Patent & Trademark Office statistics in 2013, the average length of prosecution time was 18.2 months.  Many prosecutions, however, go well into several years in length.

Independent inventors must be aware of the obstacles that they face when endeavoring toward a patent.  However, they must also consider the great benefits of doing so as well.  There are thousands of inventors who happily report their successes that originally stemmed from a patented invention.  Just ask Qualcomm company leaders.  Qualcomm is a technology innovator that boasts claim to over 13,000 patents.  Qualcomm treats patents like prizes and proudly displays them for the entire world to see on their famous wall of patents located at their headquarters in San Diego, California.  Patenting may be a long and arduous process but it is worth it for many.  And remember, “he who doesn’t take risks, doesn’t drink champagne. –Russian proverb.

An MSPL weekend

A post from our student blogger Catie

This past weekend was full of excitement for the MSPL students! It was a bit of an anomaly, as we usually don’t have as many events taking place in one weekend, but our MSPL group always manages to make our time together fun!

We started out on Friday, November 7th with a road trip to Chicago to attend the USPTO Roadshow at the Chicago Public Library. All of the attending MSPL students traveled together and had quite the adventure making our way through the city. We arrived at the Roadshow, which was a forum that was traveling through multiple locations in the Midwest. Although the bulk of the forum concerned the Patent Trial and Appeal Board (PTAB) and the responsibilities of PTAB judges, we were lucky to have one of the visiting judges who was mediating the forum sit with our group and provide background information on PTAB procedures and regulations. In the MSPL, we really focus on learning patent prosecution (drafting patent applications) and the patent laws from the MPEP that greatly concern the drafting and prosecution process, so having someone explain what was going on was incredibly helpful while the rest of the forum debated decisions of action in a mock appeals trial. Our trip to Chicago provided insight into a different facet of patent law and was an opportunity to consider our prospects of pursuing a career with the PTAB.

On Saturday, we took turns doing shifts at South Bend’s annual Stuff-A-Bus event. This is a fundraiser that takes place at all of the local supermarkets, and each store sets a goal to fill an entire school bus with canned goods for the local food bank. We were paired up and spent our shifts encouraging shoppers to donate food or loose change, organizing the donations received, and thanking all of the contributors for their support to the cause. Although it was not directly patent law related, it’s great to have a chance to interact with the community outside of Notre Dame and give back to the city that houses our school. Not to mention, the other volunteers made it incredibly entertaining as well! On top of volunteering, we also had to submit our first drafts of the claimset for our individual capstone projects by the end of the day. It’s exciting to finally be putting what we have learned into action, but claim writing is pretty difficult, so turning in our first drafts was an experience that we all shared as being a little scary. Remember: there’s solidarity in numbers!

Finally, I capped off my weekend by ice skating at Notre Dame’s Compton Ice Arena. On Sunday, the university held an event offering free admission and skate rental for graduate students; and they even had free cookies and hot chocolate! Compton Ice Arena is a beautiful facility that is home to the Fighting Irish hockey team. It was a good ending to my weekend to have some fun on the same ice on which the collegiate players compete! Also, as an avid Blackhawks fan, I couldn’t pass up the opportunity to skate on the same ice that my favorite players graced during their training camp. All-in-all, it was a tremendously busy weekend, but it was time well spent with the MSPL cohort!

The fork(s) in the road

RFpostA post from our student blogger Roberto

As some of the other student bloggers have written, there are many different career paths available to patent agents.  When I first was researching patent law these options were not as clear to me as they are today and I figured this would be a great venue to shed some light on them for perspective students.  The following are a few of the limitless options a patent agent may consider during their careers.

What is perhaps most common is for a patent agent to practice in a typical law firm.  In this capacity, a patent agent would likely spend most of their time prosecuting patents.  The prosecution of patents involves all the activities that are involved as a patent moves from the initial disclosure from the inventor all the way through all of the various filings with the USPTO.  It is easiest to think of patent prosecution as everything but patent litigation, which is where there is some sort of legal altercation between parties involving the patent.  Patent agents can always be involved in the litigation process as advisors or assistants but patent agents are not permitted to argue before court since they are not registered attorneys.

Patent agents can also get involved in intellectual property valuation.  This is a particularly interesting career path that involves knowledge of the technology, the strength of the patent, as well as complex valuation techniques that are combinations of economic and financial theory as well as applied mathematics.  Patent agents can be great valuation assets because they understand what makes a great, defensible patent.  Intellectual property valuation is important in a number of instances such as when a company is trying to purchase a patent from another company or when evaluating a company’s total assets which often include various pieces of IP.

As I am sure you know by now patent examiners and patent agents get to know each other quite well during their careers.  What you may not know is that a patent agent can also become a patent examiner with the USPTO or even the World Intellectual Property Organization (WIPO), European Patent Office (EPO), or other international patent office. A career as a patent examiner is fast paced and you are constantly seeing new things.  It is rewarding because you work with patent practitioners to protect all sorts of inventions.  A career as an examiner with the USPTO is of interest to many young patent agents because there are many unique benefits.  For one, the USPTO is committed to expanding its offices from its original location in Alexandria, Virginia to new locations in Dallas, Denver, Detroit, and Silicon Valley.  This will allow for examiners to live in many different locations rather than being tied to one particular geographical area.  Another benefit is that examiners typically have the opportunity to work from home after a certain point in their careers which is uncommon in this line of work.

No matter what career path you choose a career as a patent agent promises to be interesting and rewarding.  As to which path I am leaning towards at this time I will say this:  I am not quite sure.  True to my nature, I plan on charting my own course and combining my interests and values into something uniquely rewarding.  I hope this short blog post on career paths was informative and has shed light on the many possibilities that come with being a patent agent.

Interview with MSPL student Lauren Berenato


Members of the 2014-2015 MSPL program: Megan Usovsky (L) and Lauren Berenato (R)

A post from our student blogger Megan

The Master of Science in Patent Law program at the University of Notre Dame du lac is a dynamic group of science and engineering majors: each MSPL member brings his or her own unique background to the group.  It has been a fun and interesting three months getting to know each one of these individuals.  I sat down with one MSPL student to discuss her background, progress in the program, and her goals afterward.  MSPL candidates are fortunate because this year will not only be filled with learning about patents, it will also be filled with new friendships and life-long bonds forged within the cohort.  Read on to learn about one of the members of Notre Dame’s MSPL program, Lauren Berenato:

How did you find out about the MSPL program?

“My aunt, who is a Saint Mary’s alum, forwarded me an email from the Notre Dame Alumni network which mentioned a certificate program in patent law.  After reviewing the website I decided to go for the Master of Science in Patent Law as opposed to the certificate because I felt it was a great investment both financially and educationally.” 

What is your favorite class in the program and why?

“It is hard to choose my favorite class.  I would have to say it is a tie between patent application drafting and patent prosecution.  Patent application drafting is a great setting to learn the daily ins and outs of patent application drafting within a law firm scenario.  The professor is a very experienced attorney who has an endless amount of wisdom for drafting patent applications.  The learning curve in this class is steep but the assignments really challenge every student to perform their best.  Patent prosecution is a great class for understanding and learning the rules of the MPEP.  This class will be very useful when it comes to taking the patent bar.”

Give a brief overview of your capstone project.

“My capstone project is developing a paper analytical device for iodine level testing with the Sandell-Koltoff reaction reduced to parts per billion analysis.” 

What do you hope to learn from the program?

“I hope to learn enough during this one year master’s program to put me on the same level with a patent attorney who has two or three years of experience within a patent law firm.”

What is the most surprising thing about the program?

“The most surprising thing about the program is the challenge of the technical electives.  Taking six credits outside the patent law core classes is challenging to stay on top of along with the requirements of the core classes.  I have learned so much in my electives, though, and they are very interesting especially my epidemiology class.”

What is your educational and work background?

“I have an undergraduate degree in industrial engineering with a minor in engineering leadership from Lehigh University and I have a Juris Doctorate from Widener University.  Upon graduation from law school I worked in a small law firm specializing in bankruptcy law.”

How does the MSPL program differ from your law school experience?

“The MSPL program differs in many ways, which were a bit of a shock at first.  In law school you typically only have one exam per semester, and that exam is your final, which is one hundred percent of your grade.  Therefore, law school is very laid back in the beginning of the semester and very intense starting around Halloween because most students begin preparing for their finals at that time.  The MSPL cohort has homework, quizzes, and reading for every class each week; therefore, there is a constant business with academics in this program.  Having in-class quizzes on reading assignments is not something that I have done since high school because in undergraduate all of my quizzes were math or science quizzes.  I have had to adjust my study habits to go along with the ebb and flow of the MSPL program.  I do feel that I have a bit of an advantage since I have attended law school in regards to multiple choice questions and understanding the legalese in certain classes.”

What are your goals when the program ends?

“My personal goals are to obtain a job within a firm on the East Coast.  I am originally from the Philadelphia suburbs and I would love to be back in the Philadelphia area after graduation.”

The end of the beginning


A post from our student blogger Roberto

It has been a fast couple of weeks studying at Notre Dame but now fall break is finally upon us. While many of my classmates in the MSPL are returning home this break to warmer climates than Indiana I ventured north.  I wanted to share a video with you that may shed a little light on where I’m from.  The video captures the spirit of many Wisconsinites and it seemed fitting for this time of year.  While I was home I had the chance to spend some quality time with my family and friends.  Seemingly everyone I saw over break seemed to ask me about Notre Dame and how I was liking patent law.  Many of my friends are engineers and were curious as to how I felt about my decision, to pass on a highly sought after job opportunity last May and instead continue my education, in retrospect.  I told them I could not be happier that I took that chance and that I was excited to see where this new chapter in my life would take me.

After a while I realized just how little most people understand about patent law.  The problem seems to be due to the fact that patent law is such a specialized area and that it is not something you can easily describe or understand in its entirety.  While there are countless television shows and movies glorifying the day-to-day lives of attorneys, the field of patent law is largely ignored.  This is one reason why I am excited to say that I will be a part of an upcoming presentation on patent law at my alma mater given by Dr. Deak, the Director of the MSPL program here at Notre Dame.  I am really looking forward to providing students with some insight into what the career path and transition looks like for an engineer considering patent law.  When I applied to the MSPL I had very little exposure to patent law and there were plenty of unknowns.  Many of my friends said they would have been hesitant to go into patent law because they saw it as a completely different field.  I want to help show students that there are so many similarities and just how special the program at Notre Dame is.  In particular, the Bootcamp offered at Notre Dame does a great job of getting everyone on the same page and ready for the year ahead.

Even though we have been on break there is a ton of work to do.  For our patent application drafting class we worked through the entire process of writing a patent application once and now we are working on our second application starting first with the search report.  In our patent searching class we are working on an assignment using complex searching strategies to find elusive search results in patent databases such as Patentscope and Espacenet.  In my elective I am working on a computer face detection program that uses a laptop’s webcam to identify a student from a pre-loaded database.  All the while I am working closely with the inventor for my capstone project to craft a patent that will stand the test of time.  There is never a dull moment in the MSPL and break has been no different.  In the next few weeks we will start working through our PLI study kits to prepare for the patent bar exam and our first term of classes will finally be wrapping up.  Taking some time away from the classroom was reinvigorating and now I am recharged and ready to finish this term at full speed.