Pedal to the Metal

A post from our student blogger Roberto

As you likely know by now students in the MSPL have been working long and hard all year on their individual capstone projects.  These projects are writing patent applications on various technologies for researchers at Notre Dame.  At the conclusion of first semester the students each gave a lengthy presentation to a panel comprised of their inventors, Dr. Deak who is the director of the MSPL, and the representative from the Office of Technology Transfer at Notre Dame who is assigned to their technology.  In this first presentation the students worked to explain and demonstrate their understanding of the technology as well as presenting a preliminary set of claims they had forged to protect this technology.  This semester, students have worked with professional mentors to perfect their claims and round out many of the sections of the patent application document.  This document served as the MSPL thesis and was recently submitted by all the students who intend to graduate this coming May.  After submitting their thesis, students also have to give a second presentation to the same panel.  This time the students present on the work they did this semester and explain the bulk of the patent application they have crafted.  The second presentation wraps up all the work the student has done and allows the Office of Technology Transfer to take the project on from that point.

A few months ago I sat down and looked at my schedule and decided that I was going to take the USPTO patent bar exam at the end of March.  At the time, I wrote off the effect of the compounding thesis requirements on top of studying for the bar exam using the PLI review materials.  A few short days after turning in my thesis and giving my thesis defense I took and passed the patent bar exam.  It was a crazy but extremely rewarding feeling knowing that I had attained my three main academic goals for the semester and that now I could focus on finishing out my year strong and getting ready for my next challenges.  The MSPL program put me in a fantastic position to succeed on exam day and prepared me well for the variety of questions that were asked.  Our work in the MSPL gave me real life experience that was invaluable and made the entire process much easier.  That being said, the MSPL’s focus is not solely on preparing students for the patent bar and therefore it was necessary to fully exploit the wealth of PLI study materials we have access to.  After taking many practice tests I was ready to go and hit the ground running.

Fisker Thunderbolt (top) and Aston Martin One-77 (Bottom) (Photo courtesy of Car and Driver)

Fisker Thunderbolt (top) and Aston Martin One-77 (Bottom) (Photo courtesy of Car and Driver)

Now, for the fun part of this post.  One thing you probably don’t know about me is that I love cars.  When I’m at home it’s hard to find a weekend where I don’t find myself tearing something apart or putting something back together.  For example, over Easter break my father and I replaced the radiator on a car and schemed as to the next parts we were going to buy and install.  This past week there were some major developments in the auto industry that had intellectual property undertones.  First, one of the most acclaimed contemporary automobile designers, Henrik Fisker, has been accused of copying a design of his former employer, Aston Martin.  Fisker, who now is a founding partner and executive chairman of Fisker Automobiles, recently debuted a “design study” named the Thunderbolt which shares a striking resemblance to the infamous Aston Martin One-77.  Initially, Fisker approached Aston Martin about producing the Thunderbolt and received staunch resistance but he decided to continue on his intended path regardless.  Aston has said that after this initial approach, the conversation had left them believing that Fisker would drop the Thunderbolt concept in an effort to avoid any potential issues.  That all changed when Fisker himself showed up at the Amelia Island Concours d’Elegance, which is the premier automobile charity event in the world, in the none other but the Thunderbolt.  The response from Aston was swift and a legal team soon filed a lawsuit against Fisker in California on multiple counts of trademark infringement.  In particular, Aston alleges that the Thunderbolt contains confusingly similar grille and side vent designs compared to its trademarked designs. Most people believe this to be an attempt by the fledgling Fisker to make off with the high class brand and image Aston Martin has worked so hard to establish.

Lincoln Continental Concept (Top) and Bentley Flying Spur (Bottom) (Photo courtesy of Autonews)

Lincoln Continental Concept (Top) and Bentley Flying Spur (Bottom) (Photo courtesy of Autonews)

In a strikingly similar case, Bentley finds itself contemplating potential legal action after the 2016 Lincoln Continental concept was unveiled at the New York auto show.  Much like the Aston-Fisker case, Bentley is upset because Lincoln is attempting to unfairly profit from the brand image Bentley has worked hard to attain.  As you can see from the images, several key aspects of the Bentley are present in the Lincoln and serve to confuse the buyer as to the product they are actually viewing.  By most estimates, the 2016 Lincoln Continental, should it become a production car, would retail in the $60,000 range which is only a fraction of the over $200,000 base price of the 2014 Bentley Flying Spur.  Perhaps the most fascinating aspect of this case is the reaction of Bentley head designer Luc Donckerwolke (who is also the man responsible for the stunning Lamborghini Murciélago) who said; “Somebody asked me if I wanted to sue. I said, ‘No! I don’t want to sue. I don’t care about that. My issue is about respect for the car-design process.’ If we start copying each other, then this is a negative for the design culture.”  In today’s global rip-off culture it is refreshing to hear such a prominent figure speaking out against acts which are all too often considered common place.  It will be interesting to see how Bentley proceeds and if they take notes during the pending legal case between Aston Martin and Fisker.  It is often said that imitation is the sincerest form of flattery but I’d be willing to bet that recent events have left Bentley and Aston Martin less than impressed.

What’s a disclosure?

A post from our student blogger Catie

Maybe you have this fantastic idea in your head for a new invention, and you already did a little digging around on your own to see if your idea already exists. You scoured the internet and maybe did your own Google Patent search. From what you can tell, no one else has ever patented or sold your invention! You take your napkin sketches to a company that owns a bunch of patents in the field of your invention. You show them your sketches, explain the technology behind your invention, and give a great sales pitch on why this invention would benefit the public. Unfortunately, they look fairly unimpressed, and they quite distractedly tell you that they’ll get back to you when they can. Months go by, and you don’t hear back from them. You may have been putting in hours to reduce your invention to practice, meaning you work to create a real product out of your idea. You tell yourself that you’ll try again, but then you get distracted by school or work. A few years later, you see a commercial for your product, produced by the company to whom you originally showed your sketches. You go searching again and find that they patented YOUR idea! What can you do??

Unfortunately, there may not be anything that you can do about it. Situations like this one and ones that are more nuanced happen all the time, and this is why your patent agent or attorney may pester you with tons of questions regarding any “disclosure” you may have made. A disclosure is basically any description or demonstration of your idea to be patented that is discoverable to the public before you filed any patent application. Disclosure can be an elusive topic, as it is not always as blatant as running out to show your napkin drawings or lab data to a third party. Sometimes, it can be as simple as having a phone conversation about the technology when someone nearby overheard it, or presenting your data in the form of an oral presentation or poster to colleagues when a guest happened to stop by and overhear your idea. Public disclosure is not always a cut-and-dry event, which is all the more reason why the inventor should guard his or her idea carefully to prevent others from knowing about the technology until a patent application is filed.

The scenario described previously is a loss for the true first inventor of the technology because there is a ‘First Inventor to File’ (FITF) system in place. This means that whoever files a patent application on a certain invention first and can show that he or she has reasonable mastery over the technology of the invention will be granted the exclusive rights of a patent. In this case, the company definitely stole your invention, but they filed an application first and likely harnessed an understanding of how to make the invention function correctly. This is not to say that the FITF system is bad; it is just in the best interest of inventors to take certain precautions to protect their IP.

There are a few scenarios where you could have prevented this from happening. Firstly, it is important to keep thorough notes over your idea and always date them. That way, you possess proof that you had ownership of the idea first. Secondly, as suggested previously, avoid disclosing your technology as much as you can. No one can find out about your invention and steal it if you never tell anyone about it! Although, if you must make a disclosure, you may want to consider filing a provisional (similar to a placeholder) application or implementing a confidentiality agreement before disclosing. In this way, you are protecting your IP and claiming it as your own before others can experiment with it for themselves. Even if you don’t take this route, you can still claim rights to your idea as long as you file a provisional or non-provisional (actual patent application) within one year of your disclosure date. However, the clock will be ticking and you can never be sure who is trying to patent the same idea. Therefore: go forth, keep inventing, and don’t tell anyone about it until you have a provisional!

Patent trolls

Just your friendly neighborhood patent troll.  Beautiful image courtesy of WIPO illustrator, Bob MacNeil

Just your friendly neighborhood patent troll. Beautiful image courtesy of WIPO illustrator, Bob MacNeil

A post from our student blogger Roberto

Staying up to date on intellectual property news is tough.  In a field centered on the advancement of technology it’s no surprise that there are things always going on.  Doing a quick search on Google for “Intellectual Property” returned more than 15,500,000 results in the “news” category alone.  Lately, one of the most trendy and talked about topics is “patent trolls”, which are also known as “non-practicing entities” (NPEs) because of their tendency to never actually produce a product covered by the patent, and “patent assertion entities” (PAEs).  The term “troll” is pretty descriptive and, even without any further understanding of the concept, one immediately conjures up a negative image in their head.  For instance, some may imagine a mammoth forest green creature with warts the size of golf balls covering them from head to toe whom is wielding a massive sand barbaric wooden club.  Taken in a patent law context, that creature with warts is often a corporation swinging around the weight of its potentially damaging patent portfolio.  In many instances, patent trolls are corporations that acquire and own patents simply for the purpose of chasing down potential “infringers” and doing all they can to get the most money possible out of them.  At first, many of these trolls send the infringing entity a letter asking for a reasonable royalty to continue doing whatever it is the troll believes is infringing their patent.  Now, either the “infringing” company gives in to the troll’s demands or they do nothing and wait for the troll to potentially file a lawsuit against them.  Often times after not getting their royalty, the trolls file lawsuits which, in the end, cost companies on average around $2M.  While some large corporations can easily absorb that cost many small startups cannot and are permanently crippled as a result.

While patent trolls have existed for a long time, by some accounts since the turn of the 20th century, there has been a recent push to reform current laws to combat patent trolls.  On March 18, 2015, there was a Senate Judiciary Committee hearing on patent reform titled The Impact of Abusive Patent Litigation Practices on the American Economy.  At this hearing a large amount of focus was placed on finding ways to eliminate trolls from existence.  The troll destroyers, as I have termed them, argue that patent trolls have cost American businesses a lot of money.  Further, many fear that patent trolls could attack vulnerable small startups and force them out of business when they don’t have the funds to enter into a lawsuit or pay the royalties demanded by the trolls.  It is no surprise that over the past four years ten bills that attempt to combat patent trolls have appeared before Congress without any of them getting through.  These bills have not only met a tough audience, much of congress is not particularly well versed in patent law or related issues, but also has met a battalion of resilient and powerful patent troll lobbyists.  Many of these past reforms focused on increasing the penalties on trolls for losing patent infringement lawsuits and the same plan of attack is still being pursued by some Senators today.

Given all of the hatred on the patent trolls, by people like the troll destroyers, it makes sense to ask yourself how anyone could possibly be in favor of patent trolls.  Well take a journey with me as I transform you into just that, a patent troll abolitionist and war chief.  Imagine yourself coming up with a great idea for a brand new windshield for your car.  This windshield is amazing, it’s hydrophobic causing rain and water bead up and roll off it, it’s internally heated by invisible resistance heating elements that melt snow on contact and prevent ice from forming on it, it has an integrated and invisible photovoltaic cell array that charges the car’s battery, and it attaches to the cars computer to regulate the temperature of the glass so that it never gets fogged up.  After developing the product and working with your friendly neighborhood patent agent you are granted a patent on your awesome new windshield.  You call all your family members and friends and ask them to pitch in money to help you get a company started.  After investing all that time and money you finally get your first sale.  Sales over the next few months are slow, and you decide to approach Ford about licensing the windshield from you for use in future vehicles.  Much to your surprise, it is almost impossible to figure out who to talk to and how to get them to listen.  After pitching your idea to several “VPs” they tell you that they aren’t interested and send you on your way.  Discouraged, you decide to continue to try and sell it on your own, figuring that your awesome product would catch on and people would buy them once they saw how great they are.  One weekend you are sitting at home watching the commercials during the Packers game when you see it.  A commercial for the brand new Ford Raptor, a truck that has a never-before-seen windshield that has all the same features as your prized creation.  You are in an utter state of shock.  You run to the computer and do a quick online search.  You immediately notice that the windshield is identical to yours and it is getting all kinds of publicity causing orders for the new truck to go through the roof.

This is almost identical (minus the awesome windshield idea I came up with) to the stories of many inventors, including a U.S. veteran named Fred Sawyer, whose amazing story can be read here.

What do you do?  You could try to bring legal action, but that takes funding you simply don’t have. You would need to have the funding to compete with a mega-corporation that plans to simply out spend you.  What is most likely to happen is that you lose out and go out of business.  Today, inventors can turn to patent trolls to team up and go after that big corporation using the funding the patent trolls have.  Without someone like the patent trolls the small inventors would have no chance at competing in arena where the price of entry is north of $2M.   Without trolls there would be no way to practically enforce patent rights because of these financial realities.  Still, inventors pay a heavy price for partnering with the trolls, often forfeiting 95% of their patents value after winning a patent infringement case.  Even if the inventors decide to go to battle alone the act of waging war on an all-powerful corporation often earns them the title of “patent troll” as well.

So, now that you have seen both sides of the coin, what are we to make of patent trolls as a whole?  I believe the term “patent troll” is misleading and that the trolls are actually divided into two camps.  One camp that wants to pillage every possible piece of intellectual property and make as much money as possible through downright exploitation of the system, these are the trolls that (almost) everyone agrees we need to address in some way.  The other is the camp of trolls that exist to provide balance and security for the small inventors against the big corporations that they otherwise would have no chance against (included in this camp are the single inventor “trolls” going at it on their own).  Any potential patent reform needs to be wary of these two distinct camps and the effects any legislation would have on this precarious balance of power.  Take away too much of the troll’s power and with it goes the security of the single inventor.  Figuring out an answer that protects inventors while combating wasteful litigation will be difficult but is necessary to preserve the integrity of our patent system.

The MSPL takes on DC

A post from our student blogger Catie

MSPL students pose for a picture in front of the White House before going in for a tour

MSPL students pose for a picture in front of the White House before going in for a tour

To continue our whirlwind of a spring semester, a small group of MSPL students spent our spring break in D.C., exactly one month after our excursion to San Francisco. I know that it’s hard to believe that a trip anywhere could live up to a visit to sunny California, but D.C. was absolutely amazing! We were lucky enough to experience beautiful weather in the nation’s capital, as we mostly took the metro and traveled on foot to explore the area. The experience was four days packed with law firm and professional visits, informative and fun site seeing, and sampling of some of the area’s unique restaurants!

Similar to our agenda in California, we had the opportunity to visit a few law firms and D.C. area organizations that each houses at least a small cohort of IP professionals. With each visit, the MSPL’ers held candid conversations with these patent agents and attorneys to gain a solid understanding of what a career in patent law is like. We definitely learned something new at each location, and it was really awesome to be exposed to so many new concepts of intellectual property in such a short amount of time!

It was also fascinating to observe the personality dynamics of each firm or organization. A point that has frequently been reiterated to the MSPL is that as we begin our job search, it is important that we are not only determining where we would like to work, but also in what kind of environment we would like to work. It has been described that interviewing for a job is much like dating: it is critical to assess whether or not you like the given set of employers and would enjoy working with them just as much as they are assessing you in the same way. With such a small group of MSPL students, we also had the opportunity to speak with the IP professionals more casually and talk more about ourselves and our backstories. We made really great connections, and this helped to break down the serious and stiff demeanor that the East Coast was made out to have (prior to the trip, of course). This enhanced our experience all the more, to the point where the MSPL’ers had a really difficult time pinpointing our favorite visit by the end of the trip!

We also took the time to do some site-seeing. On the first day, we visited the USPTO and saw an examiner’s office up close as well as visited the patent drop-off window! Between professional visits on the first day, we stopped by the National Archives, where we saw the Magna Carta, the U.S. Constitution (including the clause of Article One that authorizes patent law!), and a few of the earliest granted U.S. patents. The next day, we had the privilege of touring the White House, the Capitol Building, and the Supreme Court, where we had the exciting opportunity to actually go inside the courtroom! On one stormy, foggy night, we took the opportunity to make the trek around the Lincoln Memorial, the National World War II Memorial, the Washington Monument, and then circled back around to walk past the White House before heading back to the hotel. On top of the magnificent site-seeing that we did, we also ate at some fantastic D.C. eateries, where we dined on specialty pizza and fresh seafood, and even had the experience of eating at the Old Ebbitt Grill!

My description of the trip is clearly incomplete without mentioning the wonderful family-bonding that we had on the trip! Although we only had a small sub-set of the MSPL in attendance, we still had tons of fun spending time together and exploring the area. From terrible direction-giving to cramming inside of taxis together, we had a great time and many laughs along the way. We even topped off our trip by passing the time on the drive home with an in-depth exploration of music and sharing of all of our favorite genres! If it isn’t already obvious, it was a truly fantastic trip. It was a spring break well spent, and I am incredibly happy that I made the decision to go!

The intellectual property story of Legos

Figure 1:  Comparison of Mega Bloks (Top) and Legos (Bottom). (Courtesy of Wikipedia)

Figure 1: Comparison of Mega Bloks (Top) and Legos (Bottom). (Courtesy of Wikipedia)

A post from our student blogger Roberto

As a kid, I could usually be found playing ball in the yard with my brother until the sun went down.  When we were forced to be inside, either by the lack of sunlight or good weather, my brother and I would always find something fun to do.  Many times I would find myself with screwdriver and hammer in hand, plotting how to take something apart in order to figure out how it worked.  As you may be able to guess, this led to the absolute destruction of many valuable items, including a watch which was my mother’s wedding gift to my father.  Shockingly, my parents were in desperate need of a new way for me to get my early engineering fix and began investing in Legos.  Like any aspiring engineer, I spent days on end constructing the coolest hydrogen-powered intergalactic star destroyers and subterranean exploratory vehicles.  Pretty soon I was bringing my creations to family gatherings showing them off like blue ribbon cattle at the state fair.  Before long my amazing family contributed to the cause by routinely giving me Legos on birthdays and at Christmases.  I remember one year getting a set of Mega Bloks and initially not even realizing the difference.  For those who do not know, Mega Bloks are a direct competitor to Lego’s interlocking brick platform and often times can even be used interchangeably with Legos.  After using these new Mega Bloks with my old Legos I soon realized the truth; the Mega Bloks were simply not as nice as the Legos I had come to know and love.  These Mega Bloks looked and worked like Legos but were not made to the same quality.  Rather than precisely locking together like Legos, Mega Bloks were flimsy and never really fit well together often leading to weak structures that fell apart.  In contrast, my Lego creations were so rigid that they needed to be pried apart and often doubled as formidable defense measures against an unexpected onslaught by my brother.

So why am I spending all this time talking about Legos?  Well, while reminiscing about my childhood over our recent spring break I remembered my love for the little plastic blocks.  After I thought about them for a while I asked myself two things.  First, where the heck were they, I needed to find them and relive all these awesome memories.  And second, I wondered what kind of crazy intellectual property issues Legos ran into.  After doing some research I found out that the Danish company started selling toys in 1932 and introduced the first of their famous bricks in 1958.  As you may be able to guess, many of Lego’s patents have since expired with the last major one expiring in 1978.

Mega Bloks first entered direct competition with Legos in 1991 and has been involved in about a dozen lawsuits with Lego since then, many of which are still active.  The natural question now is, how did Mega Bloks’ activity after Lego’s patent expirations result in a lawsuit?  Well, after running out of patent protection Lego’s savvy legal team turned to copyright and trademark protection.  In particular, Lego has tried to protect the visual appearance of its standard brick with eight studs through trademark protection.  In 2005, Lego sued Mega Bloks for trademark violation in Canada and lost and after that, Lego brought a similar suit against Mega Bloks in Europe and lost again.  As it stands right now, Lego is currently grasping at straws to protect its intellectual property and facing the possibility of little real protection.

Figure 2:  Image of "Lego Friends" Comparison (Courtesy of Cato).

Figure 2: Image of “Lego Friends” Comparison (Courtesy of Cato).

While many of the cases surrounding Lego’s trademark of a block with studs have been settled Lego is now going after competitors for making products similar to their new “Lego Friends” products.  Lego has recently filed a complaint to the U.S. International Trade Commission (ITC) against several companies to bar importation of several products similar to their “Lego Friends” products on the basis of copyright infringement.  The ITC’s intellectual property powers originate from their responsibility to protect domestic industries from “unfair competition”.  The key issue here is that Lego is a Danish company which manufactures its products in Europe and Mexico.  This may disqualify them from standing as a “domestic industry” and therefore they may not subject to the ITC’s protection.

What presents an even more interesting situation for Lego is the advent of 3D-printing technology.  As you may know, 3D-printers are becoming less expensive and are beginning to offer more capabilities.  In the coming years as 3D-printers become common place it will be impossible for Lego to prevent others from printing their own bricks.  In fact, a professor at Carnegie Mellon University recently created an online library of pieces which can be printed by anyone with a 3D-printer.  It is not out of the realm of possibility that 3D printers will dramatically impact sales of products like Legos which are largely uniform and easy to print.  As the cost of 3D-printers and supplies continue to decrease, at what point will Legos become simply too costly?  These issues are surely being considered by the company and it will be exciting to see how they adapt.  Before long Legos may no longer be bought at the store, but downloaded online and printed at your desk.

Trademark tactics

The WalletHub logo is being opposed by Major League Baseball on behalf of the Washington Nationals and Chicago Cubs. (Courtesy of Evolution Finance) (All Courtesy of Washington Post)

The WalletHub logo is being opposed by Major League Baseball on behalf of the Washington Nationals and Chicago Cubs. (Courtesy of Evolution Finance) (All Courtesy of Washington Post)

A post from our student blogger Roberto

When many hear the words “intellectual property” they think only of patents.  In fact, there are many other forms of protection that are available depending on the subject matter.  For example, a trademark can be filed to protect any word, name, symbol, or design, or any combination of the proceeding, to be used in commerce.  This identifies and distinguishes the goods of one from the goods of another and serves as indication of the source of goods.  Not surprisingly, most of the work of patent agents relates to patents.  However, it is important to understand the other types of protect that exists and how they may fit in with your client’s needs.

For me, it has always been easiest to learn through examples.  Better still, it is more fun to learn through examples that peak my interest.  As you will likely find out in the coming months (through subsequent posts) I am an avid baseball fan and even play on a team back in Milwaukee.  With spring training starting just a few days ago, and a torturous ending to the Packers’ season, I admittedly have a bad case of baseball fever.  Out of the blue, I decided to do an online search for “baseball intellectual property”.  Oddly enough, there were a few news outlets covering a trademark dispute between the Chicago Cubs (Booooo!!), the Washington Nationals, and a small Washington D.C. startup called Evolution Finance.  Evolution Finance uses the trademark to represent WalletHub, a Web site they run where consumers can compare credit cards and find personal finance advice.  The dispute is over Evolution’s application for a trademark, the white W on the green background, which Major League Baseball (MLB) is opposing because of the trademarks owned by their clubs, the Cubs and Nationals.  While I have watched baseball my entire life, well since I can remember, I have watched baseball.  One of my first memories was hitting baseballs off a tee in my backyard and I can’t tell you how many summer hours I have put in on the diamond.  Even with my knowledge of baseball, I had absolutely no idea what the Cubs’ trademark was from.  While I had never seen the Washington trademark because it was from their early Senators years (1912-1927), I was shocked to hear that the Cubs trademark had been used at least 38 times each season since the 1940’s.  In fact, the Cubs trademark is actually depicted on a flag that is hoisted at their home stadium, Wrigley Field, after each home victory.  After learning this, it made sense to me why I had not seen the flag before.

MLB is arguing that consumers may be confused by the Evolution Finance trademark and mistakenly associate it with baseball or believe that it is endorsed or partnered with MLB.  Conversely, Evolution Finance is arguing that their uses are substantially different than those of MLB and that the uber-powerful baseball conglomerate is attempting to hijack the letter W and all its potential uses.  Currently the two sides are awaiting a trial before the Trademark Trial and Appeals Board which will decide the fate of Evolution Finance’s trademark.

In a follow up to my last post, it looks like football player has followed in Marshawn Lynch’s footsteps and filed their own trademark application.  Jameis Winston, the highly touted and potential first overall selection in this year’s draft, has filed a trademark application on his nickname “Famous Jameis”.  In addition to the contract he will sign, last year’s number one pick Jadeveon Clowney signed for $23M guaranteed, Winston will look to cash in on branding much like Lynch aims to do.  The trend of sports players seeking trademark protection for nicknames or catch phrases definitely seems to be heating up.  In recent years Johnny Manziel, Roberto Griffin III, Jared Allen, Darrelle Revis and former players John Elway, Bart Scott, Michael Strahan, and Terrell Owens all have filed trademarks.  Given the cash cow that sports marketing is, it is not surprising that athletes are looking to capitalize.

Any questions?

A post from our student blogger Catie

If I have learned anything from the MSPL, that lesson would be to always ask questions. Whether we’re in class, speaking to an inventor, or listening to a presentation from a guest speaker, we are individually expected to have at least one question to ask. It may on a surface level seem irritating or may feel like you’re only doing it for the participation points, but it really does serve good purpose. Asking questions shows your professor, inventor, or guest that you are attentively listening to what he or she is saying. It shows that you are invested and interested in the overall message of their speech and would like to know more. A question can enhance the knowledge gained by the audience or may clarify a foggy understanding of part of the content that perhaps other people were wondering as well.

Those are all good purposes for any individual to frequently ask questions, but those of us in patent law know that we have to become pros at mastering it like an art form. For a patent agent, asking questions is not just courtesy; it is our job. In order to do his or her job effectively, a patent agent must ask the right questions of inventors in order to fully understand the invention in all aspects. This is way more difficult than it sounds, as we are pushed to not only ask all the right guiding questions, but we are encouraged to avoid “yes” or “no” questions in order to elicit the most honest and complete responses. Also, regarding interactions with both inventors and the USPTO, patent agents should always pose questions so that they may refrain from accepting everything at face value. Part of the job of a patent agent is to argue, so learning to constantly have questions provides great training for the career.

To some, this may seem like an easy task. However, the MSPL has made me push myself to break out of my own mold. I have always been the kind of person to never ask questions, unless I REALLY had a burning question. I’m a “head nodder”, so I figured that my body language and silence were signs to the person speaking that I understood what was going on. It was somewhat of an annoyance to me to be so strongly encouraged to speak more, and it still takes a lot for me to compose thoughtful, genuine questions to ask on such a frequent basis. That being said, I think that I’ve learned from it, and I am seeing changes in myself. I think it was most obvious to me while I was at mass in Notre Dame’s beautiful Basilica for Ash Wednesday service, and I had to stop myself from raising my hand to ask a question during the homily! Clearly, the habit of asking questions is slowly becoming instilled in me as a subconscious act.

To conclude, the students of the MSPL are learning an incredibly important skill of persistently asking questions, but are also training to master what questions to ask and when to ask them. I am seeing myself develop these skills, and I am subsequently gaining an understanding of how these skills will make me a better patent professional when I am working in the field!

Decoding the matrix

A post from our student blogger Roberto

As an undergraduate I remember waking up one morning and everything changed.  Before that day I remember straining my brain each second trying to memorize every piece of information my teachers went over in class.  When the time came to prepare for the test I would work through the notes and redo all the practice problems hoping to just re-learn all those examples from class.  Then exam day would come and the questions would be different. As a result, I would be forced to exercise my creative knowledge on test day.  As if those tests weren’t hard enough I would later learn that this method of studying made them far more difficult than they had to be.

As I said, there was a day when this all changed.  Maybe it was a result of staying up all night in computer lab trying to figure out which sign change I needed to make in order for my code to work but one morning I woke up and everything was different.  It was almost a matrix-like moment, for all of my Keanu Reeves fans out there.  Rather than furiously copying down everything I saw on the chalk board I was found myself taking very few notes.  I had finally connected the dots, I had begun to piece the concepts together.  I actually began to look at problems and see the numbers and underlying concepts behind what was going on.  I would take pieces from my other classes and use them to predict what the teacher would say next.  Before long I had unlocked a whole new level of learning and understanding.

When I was going through bootcamp here in the MSPL I realized that I had to become a student of something entirely different than the engineering coursework I was used too.  My reset button had been pressed and back again were the days of tirelessly scribbling notes I would probably never make sense of.  Initially, it was a bit of transition for me going from engineering to law.  I was not used to analyzing words so carefully nor was I accustomed to memorizing statutes and laws.  While I knew all of our classes had been carefully interwoven together it was hard for me to see the common thread at first.  Each time our professors lectured or we listened to guest speakers I was amazed at the level of knowledge they possessed of the law.  They spoke about the law so fluently and eloquently it was as if I was in a foreign country.

After a while the hard work in the classes started to pay off.  I began to put the pieces together and I started to truly understand, rather than memorize, concepts.  While I was studying for the patent bar I began to realize the true intent of the system and that answers to questions would always flow from that understanding.  It was a really great to feel like I understood what patent law was about and what the goal of it was.  The closest comparison I can make is that when you were young your parents instilled in you a sense of right and wrong, a moral compass.  At first, it was difficult to differentiate right from wrong and we would often pay for the price for it.  After a while though we began to trust our moral compass and simply ask ourselves what would be the right thing to do.  Rather than memorizing rules we relied upon our understanding of much larger concepts.

For my news tidbit of the week I (regrettably) once again turn our attention to the Seattle Seahawks and their running back Marshawn Lynch.  As many who follow the NFL know, star NFL players are required to be available for public media interviews after games or at league scheduled events.  Many stars, including Aaron Rodgers, Jordy Nelson, Eddie Lacy and Randall Cobb, rarely make headlines for these interviews.  Some players however have utilized the venue to air grievances with coaches, opposing players or teammates.  Lynch made headlines this season not for what he said, but what he did not say.  After refusing to answer questions from the media during the majority of the season, and being subsequently fined by the NFL, Lynch decided to answer all media questions with the simple word “yeah”.    The next week Lynch answered all questions with “Nope” and over the next few weeks all questions were answered with “Thank you for asking”, “I appreciate it” or “I’m thankful”.  Many wondered what Lynch would say during “media week”, which is the week before the Superbowl.  Rather than answering questions with one of his already coined responses or not answering at all, this time Lynch responded to every single question with a variant of “I’m just here so I won’t get fined”.  Now, a few weeks after that now famous interview, Lynch is attempting to file a U.S. trademark on the phrase.  Presumably, Lynch intends on reproducing his famous line on his own personal brand of clothing.  As you may know, this trademark would allow him to stop others from reproducing that phrase. While Lynch’s series of interviews will go down in sports lore it is awesome to see intellectual property coming into play and I am excited to see what he does with the phrase.

Legalese, please

A post from our student blogger Megan

For the last several weeks during class it has been brought to my attention that lawyers speak their own language.  At some point, halfway through law school, I became submerged into what a layperson would call “legalese.” Sidepoint:  I never knew what a “layperson” (someone who is not a member of a given profession, such as law or medicine) was until law school.  Res ipsa loquitur, injunction, arbitration, certiorari, intestate, sanction, estoppel, and venue are just a few of the words that lawyers tend to use without much thought.  Patent law is even more specialized. The word “patent” itself is derived from Latin and literally means open, evident or exposed. I am guilty of throwing these words into things I write and, worst of all, things I say on an everyday basis. I have peppered more than one phrase with a “summons and complaint” and added a generous helping of “damages” to other conversations without thinking whether my readers and listeners even know what I’m talking about. But is this necessary?  Why don’t lawyers just write and speak simply without using legalese?

We have to consider the origins of law in order to properly answer this question.  While we do not know exactly when laws were developed and where, there is evidence of legal doctrines popping up around China in approximately 2500 B.C. during the rule of Baron Yu. Apparently, Yu drew a line on some sort of grid and criminals were deported to one side while everyone else lived on the other.  Fast forward to 399 B.C. to when a vote by 501 people sentenced a well-known philosopher to death: the trial of Socrates. And most everyone knows that each continent, country, province and state creates, implements, and punishes under its own laws. The notion of specific language that denotes the use of legal terms is likely as old as law itself.  As society continued to develop, new laws were created which in turn became more and more complex, reflecting the advancement of civilization. During the 1600’s it was a known fact that attorneys had to speak French, Latin, and English. Most places have their own words and meanings ascribed to their legal systems—this is likely where much of our legalese stems from.

So is there any problem with throwing a few legalese terms like “shall” and “heretowith” into writing and speaking as a way to honor our long legal heritage?  Well, no, unless you are one of the thousands of plain English proponents out there.  I recently joined the Plain Language Advocates forum on LinkedIn. There are a lot of interesting posts on this site including one article that talks about how using big words reduces credibility.  One person in the group also suggested a “death row” for words that are no longer a part of common usage. There is another side to this argument, though. Contracts and License Agreements are packed with heavy legalese. Any corporate law attorney will tell you that the End User License Agreement on that new program you just installed is set up to protect “somebody.”  That “somebody” is the person or company that developed the software. Legal language in this case can be a powerful warning to would-be copiers and people who intend to misuse.

To sum it all up, language is a living, breathing, evolving creature. Legalese, if it still exists, will likely look radically different 100 years from now. So go ahead, throw some bailment or some bylaws into your word soup when you are writing and talking. Just be prepared to flat out explain why you are using them in the first place and get ready to define these terms to your audience

Interview with MSPL professor Ron Kaminecki

Ron KA post from our student blogger Catie

As the bloggers have discussed numerous times, a thorough prior art search is pivotal to drafting a worthwhile patent application. During the fall semester, patent searcher Ron Kaminecki instructed the MSPL students in a course that focused solely on patent searching. Ron is a wealth of knowledge and experience, and he uses that knowledge and his own personal connections to provide his students with the broadest possible exposure to the realm of patent databases. Ron also uses his experiences to provide real-life examples of what he teaches, which hold the attention of his students.

After graduating from the Illinois Institute of Technology with a Bachelor’s degree in Chemistry, Ron began his career as a technical assistant chemist at the IIT Research Institute in Chicago where he did chemical information work, mostly concerning contract research. One of his first big jobs was to prove that trains can spontaneously catch fire; a task in which he succeeded and gained a passion for information searching. He transitioned into performing patent searches, and decided on a whim to get a Masters in Computer Science and then later take the patent bar exam. By the suggestion of his wife, he decided to take the LSAT and was later accepted into DePaul Law School, which he attended while also working as Manager of Patent Information at a drug company. Because of the law school’s newly formed department of intellectual property, Ron was one of the first graduates to receive a Certificate in Patent Law at the same time as a JD. Ron has spent his career as an independent Patent Information Researcher, assisting clients and leading courses in patent searching in all parts of the world. I asked Ron to answer a few questions for the blog, and the following is a brief overview of the fantastic stories and experiences that he shared with me.

What do you like about patent searching?

“I would be given the name of a company or a patent number and was expected to do a full legal briefing to my boss and the rest of the team (a techie and a financial person) usually within the next day or two!  Then, we would all fly onsite, armed with a blank check and would have to decide whether or not to buy the company/patent from the client. I did deep dives into the literature and would love finding “embarrassing” facts, like one company in which the president’s spouse had owned a trademark for the company.  When I name dropped this, the room went silent and they asked how I knew this!  Just did my homework.  I did several of these and really enjoyed doing this work.”

What brought you to be an adjunct professor at the University of Notre Dame?

“I was out of a job after 32 years at one company and was consulting when an old friend told me about the new program that Karen Deak was setting up. I contacted Karen and proposed a patent analysis course. Just a few days before we met to discuss this possibility in person, I fell off my bicycle (I’m a big bicyclist) and ended up in the ER with my entire left side abraded, a crack in my pelvis and other painful injuries.  I could barely walk and could not sit and didn’t think I made a good impression on Karen; she was gracious as always.  She contacted me a few weeks later to say that she could not use a patent analysis course.  However, during the first school year, she contacted me because she noticed the students were struggling with finding patent information for their capstones. I did a two hour quick overview with the students, along with the same goofy examples that you saw, and showed them how to search.  I agreed to consult over the semester, and Karen asked me to put together a syllabus for the next year of patent law students. Since then I have done a similar class at DePaul Law last summer and have since put together another class for New Hampshire Law. Luckily, this class is all online (which, while I am typing this, I am staring at my recording apparatus as I am recording my classes now).”

What do you like most about teaching a patent law course at the University of Notre Dame?

“I really like meeting the students because I like to meet people face to face.  I learn from students, too, and I do change my syllabus, my teaching methods, and my presentations based on feedback.  Yes, I do notice people almost dozing off when I am going through one of my hundred slide presentations. So, I add ridiculous inventions, or I try to find a really memorable example (like the black pills made by heating a mole for a week) to make people remember that a drug can involve a product and a method patent.  Or, I will introduce something colorful, like the Mars lander that I worked on.  I try to teach while entertaining, never the other way around, because I have found that all this technical stuff goes in and out and no one remembers it, but show them a tea bag and how to do a patent search on it, and they tend to remember it.”

You often spoke about your experiences in China. How did that shape your career in patent law? Do you get to travel outside of the country for your job?

“At one point I traveled about 80% of my time, though that was mostly in the US.  I’ve been to many countries in Asia and Europe several times per year for many years and have even been to South Africa a few times. Based on my work in Asia, I have been asked to speak at legal meetings in which people paid to hear about the latest cases.  My background in law and public speaking has taken me around the world many times.  I once had a million miles on American and an a million and a half on United. I also learned that you have to be able to say a few words in the native language.  Nothing special, just “Thanks; yes, no; bathroom?” and such essentials.”

If you weren’t a patent searcher, what would you be?

“I would be a judge in the Court of Appeals for the Federal Circuit; the court that decides patent cases.  Nothing like having everyone stand up when you walk into a room!  Just kidding.  I would love to dig into the depths of really technical cases and then argue with others.”

What is the greatest piece of advice that you would give to a beginning patent agent or attorney?

“Meet as many people as you can and remember them.  Get to know their spouse’s name, their kid’s names, their dog’s name, their favorite food and better yet, the food they hate.  People really like it when you recall such details years later. Also, I encourage everyone to get as educated as possible!  I would love to further my education in a different field or learn something fun instead of something technical/legal.  I learned how to cook for very large groups (hundreds) when younger, and I have an award winning chili recipe that made it into a cookbook! I’ve finally hit upon the almost right recipe…I’m always improving on my recipes!”