Student Profile – Catherine Zhang

A post from our student blogger Sarah Goodman

I recently interviewed Catherine (Shu) Zhang, a current MSPL student, about her capstone thesis project.

  1. 1. In general terms, what is your capstone project about?

My capstone project is about using a novel chemical reaction to find a treatment option for Niemann-Pick Type C disease. The resulting treatment option may have broader applications in alleviating illness caused by cholesterol build-up. Niemann-Pick Type C disease is a severe illness, and there are a lot of research efforts at the University of Notre Dame focusing on this disease.

2. What have you completed so far on your capstone project?

I have completed a synopsis of the project and drafted a set of potential claims. I also performed a patentability search covering domestic and international patents and patent applications. I researched a wide range of non-patent literature which broadened my technical perspective regarding chemistry and pharmacology. I will present all of this information in my technical presentation in December.

3.  What have you learned this semester through working on this project?

I learned more about lysosomal storage diseases like Niemann-Pick Type C disease and other categories of disease related to cholesterol trafficking. Having a capstone project with an actual invention gives me a real world experience of how a patent application is prepared before I enter the workforce.

4. What major challenges did you face? How did you solve them?

The most difficult challenge for me was learning new complicated scientific material quickly in a new field. I handled this challenge by reading a lot of scientific literature in the field. I also researched published patents to study the proper form of a chemical patent.

5. How has your project prepared you for a career as a patent agent?

My capstone project has prepared me in two major ways. The first is that I have learned how to communicate effectively with an inventor to get an accurate understanding of an invention. I also have broadened my technical field by learning the chemical background of a technology.

6. Which of your abilities do you think have helped you succeed with your project?

My persistence has been an important quality when researching different technologies as well as my interest in the science field. My writing ability has also been crucial for rephrasing complex chemical procedures into legal terms for IP protection.

7. What are your career plans for the future?

I think that obtaining a Master of Science in Patent Law from the University of Notre Dame will open many doors for my future career. I am currently considering the career options of a patent agent at a technology transfer office or a law firm.

Contract Agreements in the Intellectual Property (IP) Field

A post from our student blogger Sarah Goodman

Mr. Todd A. Dawson, J.D., the owner and president of Todd Dawson Consulting LLC in Warsaw, Indiana, recently visited our MSPL class and presented a guest lecture on intellectual property contracts and other licensing matters. A contract is a legal document that establishes an agreement that is enforceable by law. I learned about some different forms of patent agreements and types of responsibilities a patent agent might have concerning these agreements when working with patent attorneys.

An assignment contract is used for the complete and permanent transfer of all rights to specifically identified intellectual property from the inventor(s) to an assignee. The assignee can be an individual but is often an organization such as a company or university. This form of contract is analogous to a sale of property. An assignment does not contain limitations on how long or under what conditions the assignee can use the intellectual property rights. After assignment, the inventor does not retain any rights to the intellectual property.

A license contract is used to allow another entity to use or develop specific intellectual property. This form of contract is analogous to renting property. A license contract includes specified conditions of use of the intellectual property for a defined period of time. A license may be exclusive, meaning no other party can obtain a license to the intellectual property, non-exclusive, meaning more than one party can obtain a license, or co-exclusive, identifying that only certain specific parties can obtain a license. During the licensing period, the inventor retains ownership of the patent.

Patent agents may have responsibilities concerning contracts especially when working with patent attorneys. These responsibilities can include ensuring that the identified parties are accurate, ensuring that the assignor is the registered owner of the intellectual property, checking employment agreements, and ensuring that the contract language is clear and understandable.

Inventors usually decide to assign or license intellectual property for financial reasons. Employers usually own the rights by assignment to inventions created by an employee during employment. Patents can be licensed for royalty payments by individuals or organizations. The topic of contract agreements in the intellectual property law field was important for our MSPL class to learn and understand so that we can be more prepared in the future for any involvement with contracts.

Giving Back

Today our MSPL students had the opportunity to participate in the Stuff a Bus food drive for the Center for the Homeless. This annual event is sponsored by local radio station, 103.9 The Bear, along with Martin’s Supermarkets. The food collected today will feed the Center’s residents for the next 6 months. It was a great way to spend such a beautiful Fall day and the generosity from our community was overwhelming!


1, 2, 3 Types of Patents

A post from our student blogger Sarah Goodman

In the MSPL program at the University of Notre Dame I learned that there are three different types of patents granted by the USPTO.

A utility patent is issued for a new and useful invention or improvement to an existing invention. An invention qualifying for a utility patent must be a process, machine, manufacture, or composition of matter. A granted utility patent gives the owner the right to exclude others from making, using, or selling the invention for up to twenty years with the payment of maintenance fees. This is the most common type of patent issued by the USPTO.

A design patent is issued for a new, original, and ornamental design. This design must be used for an article of manufacture. A design is inseparable from the article of manufacture and cannot exist alone. A granted design patent gives the owner the right to exclude others from making, using, or selling the design for fourteen years with no maintenance fees required. Both a utility and a design patent may be obtained if the invented article possesses functional utility as well as an inventive ornamental design.

A plant patent is issued for a new and distinct asexually reproduced plant. This plant can be either invented or discovered and includes mutants, hybrids, and new seedlings not found in nature. If a natural plant mutant is discovered, it must have been discovered in a cultivated area to qualify for a plant patent. The USPTO considers algae and macro fungi eligible for plant patents. A granted plant patent gives the owner the right to exclude others from making, using, or selling the plant for up to twenty years with no maintenance fees required. A utility patent application can be additionally filed having claims to a plant and plant components including seeds and genes. Inventors who develop reproducing plants such as corn and wheat tend to file an additional utility patent application which may be granted if the plant fulfills the useful, novel, and nonobvious requirements.

For our capstone projects, we are learning how to write a utility patent for an invention disclosure from a Notre Dame faculty member.