A post from our student blogger Megan

If you know me you know that I love law.  I love talking about it, studying it, and practicing it—and I especially love statutory law.  I know, that sounds riveting, right?  About now you’re probably saying, uh…no.  But trust me on this; the relationship between two United States Code sections that govern patent law is actually pretty cool.  Patent attorneys and agents rely on statutes, or laws, that are enacted by the legislature.  Specifically, Title 35 of the United States Code, provides the statutes that cover patent law.

35 USC §101 is a great starting point when drafting or examining a patent application.  This statute can be thought of as an initial hurdle to obtaining a patent because it controls what material can receive patent rights and what standard must be met in order for it to be considered patent eligible.  35 USC §101 states that a “process, machine, manufacture, or composition of matter … or any improvement thereof” may be patented.  In addition, besides meeting the statutory material criteria, section 101 also states that a patentable concept must be “new and useful” as well.  Therefore, 35 USC §101 tells us that there is a two-part analysis to examining whether an invention or method is patentable or not:  does it meet the statutory criteria of items that can be patented and does it have basic utility?

Through the MSPL Patent Law and Prosecution class, we have learned that once you fulfill the statutory obligations of 35 USC §101, you may now move to an analysis under 35 USC §112(a).  These two statutes weave together some very basic patent concepts.  While section 101 governs what inventions are patentable, section 112(a) administers what contents must be contained in the specification of a patent application.  If you think about the specification in terms of anatomy, it is the skeleton and muscle of the entire application:  it contains the description and claims which give life to the patent by making it legally operable.

Now let’s take a closer look at section 112(a).  While at first glance this section looks like a run-on sentence packed with too much legalese, it can actually be dissected into three fairly basic concepts.  First, the specification must have a “written description of the invention.”  Second, the written description must be enabling, or in other words, a “person skilled in the art” must be able to make and use the invention based on what is described in the specification.  Finally, 112(a) mandates that the specification of a patent application must contain the “best mode.”  This means that the specification must include, in the inventor’s opinion, the best way to carry out the invention at the time the application is filed.

So how do 35 USC §101 and §112 relate to one another?  Simply put, if you fail to state the utility of your invention in your specification then there is no way that you can enable anyone to practice it.  Several United States courts have interpreted this connection and reiterate that if the invention utility is not enumerated under 35 USC §101, then it is not possible to “enable one of ordinary skill in the art to use the invention under 35 USC §112.”  In re Kirk, 376 F.2d 936, 942, 153 USPQ 48, 53 (CCPA 967).

Patent laws are kind of like spiders’ webs:  alone, a single statute is a long string of words that seem to have no connection to anything else, but when you weave the statutes together they form an intricate, distinct and really neat body of law that’s quite fascinating to look at.  The interplay of statutes is only the beginning, though.  There are the Code of Federal Regulations and the Manual of Patent Examining Procedure sections that facilitate patent law as well.  We’ll delve into those at a later date so stay tuned.

A post from our student blogger Catie

To answer that question: no, completing the MSPL will not necessarily make me a lawyer (at least not in the sense in which the person is likely thinking!) I can’t keep count of how many times I was asked this and other similar questions in the months leading up to my start at Notre Dame. These questions mostly arise just because most people are unaware of what patent agents are and what they do. I, myself, was not really aware of these facts until I was introduced to the MSPL program during my last semester of undergrad. Therefore, I’m going to attempt to explain these differences!

Patent law and intellectual property are a smaller sub-category of employees that can be found at any given law firm. Currently, there are only about 42,500 active registered patent practitioners in the U.S. (http://patentlaw.nd.edu/patent-agent-and-program-faq/). Although there are currently not very many practicing patent practitioners, they are in high demand because they bring in plenty of good business for law firms, and the skill set that they possess are incredibly useful in the industry. Their usefulness is really a hidden gem, because inventors who even consider trying to patent their own invention are often in over their heads, and the U.S. Patent and Trademark Office (USPTO) are currently under about a two year backlog of reviewing patent applications (just to give you an idea of how many inventors are trying to obtain patents).

Patent practitioners can be divided into two main categories: patent agents and patent attorneys. Patent agents typically do what’s called patent prosecution; or drafting patent applications for filing. Referring to my previous statement, a patent agent would be the person who drafts the patent application for the inventor. Patent prosecution is what we are training for in the MSPL. This job includes working with inventors, understanding the technical details behind the inventor’s new idea, and doing tons of searching and writing to prepare the patent application. Prosecution still requires a strong understanding of the patent laws and codes found in the MPEP to ensure that the new idea is patentable and that no laws will be infringed upon in the patent drafting and filing process. Patent attorneys perform patent litigation, and they are the people who can stand in court and litigate in cases of patent infringement. Infringement can include breaking a code from the MPEP or situations where another company or individual attempts to make or sell an invention that is patent-protected. There is also a third category of people related to patent practitioners made up of patent examiners. These are the people who work for the USPTO and review patent applications with the power to either grant a patent or reject the application.

You’re probably wondering how you make your way into one of these careers. In order to be a patent agent, you MUST have a technical background in either science or engineering (basically a Bachelor’s degree in one of the approved fields, check here: http://www.ipwatchdog.com/patent-bar-exam/patent-bar-qualifications/ ) and must pass the patent bar exam. A patent attorney must complete the same requirements and must additionally have a degree in law. Patent examiners are only required to have a minimum of a Bachelor’s degree in science or engineering, although passing the bar exam and holding a PhD in the desired technical background is helpful. So, if you ever find yourself in my place and people ask you “Isn’t that a far stretch from your degree?”, you can now politely correct them and inform them that it was the first step towards your patent law career! As a final note: if you are considering the MSPL program, the student bloggers can be a great resource for getting your questions answered! My technical background is in biology, but Megan would be great to talk to if you have a degree in law, and Roberto would be the person to talk to if you have a background in engineering!

A post from our student blogger Roberto

After all the anticipation and preparation our first week of studies is finally in the books.  After searching the beautiful campus we have found all of our classrooms and have met all of our instructors.  And after the first football game of the year we have all been unofficially initiated into the Irish family.  As students in the MSPL, most of us take courses in patent law and prosecution, patent application drafting, patent searching, as well as our capstone project and two science or engineering electives of our choice.  All of our MSPL courses are taught by current or retired patent professionals who have a wealth of experience in their fields and are preparing us to hit the ground running after graduation.

By far the largest pillar in the MSPL curriculum is the capstone project I mentioned earlier.  Throughout the course of the year each MSPL student will work directly with an inventor at Notre Dame to go through the entire process of patenting their work.  To do this we meet with our inventors regularly to work through the process with them.  Our meetings during the first week of classes consisted mainly of getting to know the inventor and the research.  As an engineer, this was a really enjoyable part of my week.  I loved getting to know the inventor, research, and invention.  My curiosity keeps me asking questions.  How does it work?  Why does it work this way, and why does it have this part?  Can it do this?  Why doesn’t it do this?  The answers to all of which, will greatly help me draft a patent that will protect every aspect of what the invention is and could be.

While the academic and professional activities I took part in during the first week of school were fun, I would be lying to say that the football game against Rice was not the best part.  My father, brother and I all got to go to the game and had amazing seats directly opposite of the student section.  From where we sat we could see everything.  We saw the crowd pour into the stadium and we saw the student body quake and move in unison, we saw the band draw out complicated patterns on the field, and we saw the Irish dominate on their new turf.  As I took it all in, I couldn’t help but feel like I was a part of something special.

A post from our student blogger Catie

The first days of attending a new school are always the hardest. We kicked off our year with what is endearingly referred to as the ‘MSPL Bootcamp’. This is the week before the start of official Notre Dame classes and consists of a crash course in patent law. The name is fairly intimidating, but the boot camp is incredibly helpful. The MSPL directors graciously assume that its candidates, coming from backgrounds of science and engineering, have no prior knowledge of the fundamentals of patent law, and therefore use that time to familiarize us with the basics of patenting a new invention. The week is also a wonderful time to get to know the other MSPL students and faculty, which helps make the first week of regular classes a little less daunting. Everyone in the program got along really well from day one, and it took a huge weight off of our shoulders knowing that we’ll be spending the next year amongst friends!

We took time away from our learning to take a campus tour, watch South Bend’s Silverhawks play, and go on lunch and dinner outings together. This is not to take away from the long hours of lectures, practicing how to search through the Manual of Patent Examining Procedure (MPEP), and taking the dreaded mock Patent Bar Exam. We emerged from Bootcamp exhausted, but well prepared for the subject content of our semester classes. The week was informative while also giving us a fantastic introduction to our new lives at Notre Dame! Here are some of the basic concepts of patent law that we learned during Bootcamp:

A patent does not give its owner the right to make or sell his or her idea. This might make the concept of obtaining a patent null and void, but patents are protective in a different manner. A patent gives the owner exclusionary rights; meaning it prevents others from being able to make or sell the patented idea. Instead of giving a person certain rights (positive rights), it takes away those rights from others (negative rights). Basically, patents prevent others from being able to claim one person’s idea as their own.

The possessions that patents protect are called intellectual property (IP). Intellectual property can be described as a person’s ideas, creations, or inventions. IP is huge in the sciences and engineering, considering that inventors and researchers are constantly developing new, useful ideas for the benefit of the public. All of this work that we are putting into learning how to protect intellectual property is a big deal because it’s a difficult task: we are protecting non-physical property. Think about it this way: if I am trying to profit from selling a product, such as one-of-a-kind Notre Dame sweater, I can give half of my supply to a friend. We can both sell our shares and profit equally because the shares are quantifiable and in limited supply. On the other hand, let’s say that I want to profit from my idea of making Notre Dame sweaters that are manufactured in a way that makes them breathable, but retain 40% more body heat (perfect for fall football). If I tell my friend about this new way to manufacture the sweaters, then there is nothing stopping her from taking my idea and profiting from it on her own. An idea in itself is intangible and cannot be physically contained. Therefore, patents are incredibly important to ‘give credit where credit is due’ for new ideas and inventions.

 

A post from our student blogger Megan

Last week as the summer wound down, a dozen or so of my fellow Master of Science in Patent Law cohorts and I peeled ourselves away from our jobs back at home and our sun-soaked weekends to begin a fresh start at the University of Notre Dame.  On Monday August 18, we were greeted by Dr. Karen Deak who catapulted us into the fascinating and fast-paced world that is patent law.  From a few quick introductions, we discovered that we were amongst incredibly accomplished scientific and legally inclined professionals, all eager to learn the depths of patent preparation.  Dr. Deak wasted no time immersing us in patent terminology by splitting us into groups and assigned us the task of writing a single claim for the chair that we were each sitting on.  Claims are the legally enforceable part of a patent that define the patentee’s exclusive right.  A patent is a negative right—it prevents others from making, using, selling or importing what the claims define.  But we quickly learned that what seemed an easy job of describing a basic chair became quite an undertaking.  Every nuance of the chair’s design and function was mulled over and over by the four members of my group.  We wrote and re-wrote claims like mad scientists searching for the correct formula to build a simple formula.  I am safe in saying that claims drafting is an art and a science that takes time and finesse.

The following day, Dr. Deak continued the inauguration into patent law by administering to her students a practice United States Patent and Trademark Office (USPTO) exam, also known as the “patent bar.”  The patent bar is a six-hour examination that upon passage allows one to practice as a patent agent or patent attorney if you are a member of a state bar.  The test is rigorous but once you have passed you are authorized to practice in front of the USPTO—a worthwhile endeavor according to Thursday’s guest speaker, Dr. Art Moss.  The MSPL students got valuable patent practice advice as well as an inclusive summation of patent law from Dr. Moss, a retired DuPont patent agent.  During his full day presentation, Dr. Moss explained that patent prosecution is the preparation of a patent application and its review by the patent office.  Dr. Moss provided us with a mountain of incredible practical knowledge that we can safeguard and use while practicing as agents and attorneys.

By Friday we were beginning to understand why the MSPL week-long program was called “bootcamp.”  Our minds were packed full of new facts and knowledge, primed for what the master’s program had in store for us in the year to come.  Bootcamp wasn’t without its share of fun, though, as we went to dinner as a group one night and on another got to attend a South Bend Silverhawks baseball game.  During the game we were able to eat, drink, and meet all of our MSPL professors.  Bootcamp proved to be a success: we got a jump start on learning patent law and quickly got plugged into Notre Dame campus life.  This is going be a challenging and exciting year in the MSPL program!

A post from our student blogger Roberto

The week before classes start at Notre Dame, students in the Master of Science in Patent Law program attend a week long orientation fondly known as “bootcamp”.  This week serves as an intensely focused time of reprograming your brain from your undergraduate mode of thinking to a new perspective that is necessary for success in the program.

I, for one, am extraordinarily thankful for bootcamp.  While my engineering background has many positives benefits that I am sure will serve me well in the future, the type of thinking required in this program is quite different from anything I have had before.  Bootcamp allowed me to slow down and digest this new way of attacking problems and prepare myself for the many challenges and opportunities that will come my way in the next year.

One of the many highlights from bootcamp was that we as students got to take a mock Patent Bar exam.  While I had never seen anything like it before, I am sure glad I got to sit down and have that experience before I ever set foot in one of my classes.  This gave me the chance to see first-hand what type of knowledge would be required of me upon graduation.

We also did plenty of fun activities during bootcamp including campus tours and a South Bend Silverhawks baseball game.  As a group we have diverse backgrounds and come from all walks of life.  We have PhD students, international students, as well as chemistry and biology majors just to name a few.

As you can see, it is not necessary to have an engineering background to study patent law; what is required is a natural curiosity that will drive you to understand how an invention works.

This picture was the first thing I saw when I set foot on campus for the first time as an actual Notre Dame student.

Even though it’s not bright and sunny out I love this picture.  To me, it signals the difficult times ahead and warns that the road will not be easy.  However, at the end of that journey lies the ultimate prize.  I am excited and ready to begin my first week in the MSPL and look forward to every step of that journey.

 

A post from our student blogger Catie Stevens

Hello, my name is Catie Stevens, and I am a student in the Patent Law Master’s program at the University of Notre Dame for the 2014-2015 school year. I am a native of Indianapolis, IN and a recent graduate of Ball State University in Muncie, IN where I earned my Bachelors of Science in Biology with a concentration in Genetics. Patent Law stood out as a viable option for me because it is a specialized career path that suits my interests. In the field of Biology, it can be difficult to find a job after college without having experience or a higher degree. In my undergraduate career, it was nearly impossible to even find an internship, because most companies do not want you there unless you already have a degree. Notre Dame’s program prepares its students to be Patent Law Agents in one year. Patent Law piques my interests because I enjoy writing and I love biology, so I can use both of my passions in this career to help others understand science while helping scientists receive patents for their ideas.

I have also chosen to pursue a Master’s in Patent Law in hopes of connecting to the field of genetics in a unique way. In addition to my biology coursework, I also took psychology courses and volunteered at a local domestic violence shelter and crisis center. Therefore, I have more of an orientation for working with people and conveying ideas to them as opposed to performing laboratory work. I would like to work as a Patent Law agent mainly to work alongside of other geneticists and lab researchers in the genetics field who are making strides in the detection and prevention of genetically inherited diseases and in cancer genetics. I also hope to pursue a Master’s in genetic counseling after receiving my degree in Patent Law. As a Patent Law Agent, I would have the option to work independently or with a law firm. I liked that I would have the flexibility of working independently as a Patent Law Agent while also working a very different job. Overall, I am incredibly excited to be part of the Patent Law program and I hope that it leads me to play a vital role in making positive changes in medicine!

 

A post from our student blogger Megan Usovsky

I can remember the exact moment when I discovered what I wanted to do when I grew up…It was a stifling afternoon in late May during a high school anatomy class.  Without air conditioning the atmosphere was thick as syrup in the mid-afternoon Missouri humidity.  The anatomy lab was no exception:  it began to reek of preservation fluid in early spring just as students began to dissect fetal pigs.  Most students, and even some faculty, regarded the second floor science wing as an abysmal pit that needed to be avoided altogether starting in March.  The strong scent of this occurrence never bothered me, though, and in fact, I felt at home in this section of the building because it was where half of my favorite classes were located.  The other half of my favorite classes were held in the English department wing.  It may have been the heat, but during this stuffy 6^th period anatomy class I was struck with revelation:  someday I would combine my love for science with my love for writing.

I pursued both science and writing after high school and I went on to receive my B.S. in Biological Sciences at the University of Missouri.  Following undergrad, I received my Juris Doctor from the Thomas M. Cooley Law School.  During law school I was privileged to be selected to serve on two scholarly writing publications:  the Thomas M. Cooley Law Review and the Thomas M. Cooley Journal of Practical and Clinical Law.  Following law school, I co-authored two legal articles on workers’ compensation and negotiation.  Currently, I have been a practicing attorney for over three years and have had the great fortune of learning some incredibly valuable legal skills.  The ability to persuade judges and opposing counsel with words, especially in writing, can mean the difference between a client’s favorable or detrimental outcome.

I have reached a point in my professional career that I am truly ready to merge my scientific interests with my love of writing and my legal abilities—this is what attracted me to Notre Dame’s MSPL program.  The 10 month curriculum trains matriculated candidates with science and engineering backgrounds to become patent agents or patent attorneys.  A patent agent is a person who has met specific technical and educational criteria, has passed the USPTO Exam, and is licensed to draft and prosecute patent applications.  A patent attorney must have the same qualifications as an agent, and additionally, is a licensed attorney who may conduct patent trials and practice in trademark cases.  Both patent agents and attorneys work closely with persons and entities seeking protection of innovative ideas.

Patent law clients are very special:  they are inventors.  The ability to communicate with technological innovators cannot be learned from mere passage of the patent bar, though.  Practical experience is crucial to translating the details of an invention into a well-crafted patent application.  The Master of Science in Patent Law program at Notre Dame will prepare me to effectively and efficiently converse with inventors to understand and then draft their ideas onto paper.  The MSPL program at Notre Dame possesses incredible opportunities for prospective patent attorneys and agents, especially through hands on education.  Matriculates will draft a faculty inventor’s application and then submit it for patent, get the opportunity to work with leaders in technology and science, and sharpen technical skills through class work and patent research.

It is an honor to join Notre Dame’s esteemed Master of Science in Patent Law Program in an exciting field where science and innovation collide.  In essence, patent law is a Big Bang of technological thought process and physical construction of an idea—the point where science discovery and law crash together to create a formidable result:  a patent protecting an invention.  Each member of Notre Dame’s MSPL program approaches the curriculum with unique education and work backgrounds, I am thrilled to share my practical legal perspective with the program and look forward to gaining a greater depth of knowledge from the other MSPL candidates, professors, and innovation professionals we will be privileged to work with.