Monthly Archives: December 2014

Argue everything

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It’s that time of year again: finals and the holidays.

It’s that time of year again: finals and the holidays.

A post from our student blogger Megan

See that title?  Yep.  That’s my philosophy.  Since I became a licensed attorney in 2011 my outlook on life in general changed.  Instead of accepting what life threw at me with little complaint— even if it made me uncomfortable or angry—I decided to radically change my reaction to how I dealt with the roller coaster we call life.  No more would I be a passive life participant, I decided I would argue my beliefs.  Patent law has reiterated my will to go to battle for what I want to passionately pursue.  While the title might seem arrogant, believe me, it is not.  There is a method to my madness.  Let me explain.

It’s December here at Notre Dame and while the world is suiting up in light-up reindeer sweaters and toasting with egg nog toddies, the MSPL students are preparing to present their projects to their mentors.  This activity is more commonly known to graduate students round the world as “defending your thesis”.  This single phrase can send shock waves of terror through any sleep-deprived grad student from Hong Kong to Bemidji.  But what do we have to fear?  Well, everything.  On a positive note, we have been preparing for this day for the last sixteen weeks.  The time has come to show off what we have learned.  The time has arrived.  It is time to dazzle our advisors with the evidence of how hard we have worked.

Our job is to convince our mentors that we understand the underlying technology that they have developed.  We are also charged with reconciling patent laws to the technology and then explaining this concept to them.  Patentability as a legal theory is far more complicated than merely filling out an application and sending it to the United States Patent and Trademark Office, though.  And explaining this concept to scientists and engineers can be daunting.

One of the biggest obstacles that we have all encountered in our patent application drafting journey is the fact that there are a lot of other related patents, publications, and information already existing on the inventions that we are trying to patent.  Basic patent laws dictate that if the invention already exists within the public domain, patent protection will not be granted.  The question becomes, how do you deal with this?  More importantly, how do you explain this to your mentors?  First things first, don’t give up.  It is easy to say that you have an invention that does not deserve legal protection when you find something that looks similar to what you are trying to patent.  When encountering this roadblock it is, in fact, a great time to really inspect the subject matter that you are trying to patent—it has to be new.  Take a step back, reexamine your position and add more evidence to see if you can form a better argument regarding novelty.  Even if you can show the slightest bit of inventive newness, then you are placing yourself in a much better position to earn a patent.

Life is full of rejection, though, and the patent prosecution process is no exception.  So even if you believe that your invention is patentable, and you have satisfied all the statutory requirements within the four corners of your patent application, you might still receive a rejection.  Once again, don’t give up.  Argue against that rejection, present evidence, or amend your claims:  whatever you choose to do, stand your ground and bolster your opinion.  When you base your application around well-written claims, a strong specification, and a thorough search, you can argue everything.

As can see, my “argue everything” mentality is not just for lawyers that are backed into a corner.  It’s also not just applicable to patent law, and it’s certainly not a blanket statement indicating that you should fight without merit.  It is a justification that shows you are confident in your preparations and understanding.  It’s a daily practice because “a great explanation can make our ideas come to life, invite people to care and be motivated to learn more.”[1]  So get out there and argue everything.

[1] Lefever, Lee,  The Art of Explanation:  Making your Ideas, Products, and Services Easier to Understand, (John Wiley & Sons, Inc.), preface xi.

The struggle is real

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A post from our student blogger Catie 

We’ve reached the end of the first semester; the half-way mark of our year in the MSPL program. Didn’t I just survive boot camp, maybe, two weeks ago? Time is flying and we have all learned so much in the span of four months. The half-way mark of the MSPL means that the time has come for us to give the ominous ‘Technical Presentation’ for each of our capstone projects. This is the time for each of the MSPL students to ‘flex some muscle’ and show how much we have learned over this first semester.

The technical presentation is a culmination of our understanding of the technology and science behind the invention, what we have found in our semester-long prior art search, and the accuracy and completeness of the claims that we have drafted, all to produce the final educated opinion of whether or not the invention is patentable. An entire semester’s worth of work must be crammed into a two-hour presentation, which explains why this endeavor to prove what we have learned and accomplished is so “ominous”. This two-hour presentation is formally presented to our inventors, the MSPL program director, and our advisor with the Technology Transfer Office at Notre Dame. As you could probably imagine, this little factor can be incredibly intimidating. Not only do we have to sufficiently prove that our work over the past semester is steering us in the right direction of a viable patent application, but we are demonstrating our knowledge to individuals who are experts on either the technology or patent law side of the presentation content. Therefore, it’s pivotal that we master a complete understanding of what we are talking about for both sides.

There is no sugar-coating it: all of the work that goes into this presentation is incredibly stressful. We are nascent patent agents who are suddenly thrown into the task of synthesizing, streamlining, and coherently teaching everything that there is to know about the patentability of our capstone project’s invention. Each of us has faced a road bump or two during this process and has struggled to either understand the technology of the project or to identify which patent laws may be likely to inhibit the inventor from obtaining a patent. This process is a struggle at times, but we are here in the MSPL program at Notre Dame to embrace that struggle and to learn from it.

This post may have been really discouraging to prospective students or patent agents up to this point, but I want to be clear that although this process has been difficult, I can’t think of anything that I would have wanted to change about it. Although getting up and giving such a formal presentation in front of so many professionals is daunting, I am bursting with the excitement of sharing what I have found regarding this invention and its future!

I have invested so much time and effort into my capstone project that it has basically become like my baby. I find myself getting defensive of the technology whenever I receive criticism of my presentation and findings, even when the target of the criticism is out of my hands.  I often have to catch myself from saying ‘our invention’ instead of ‘the invention’, because quite frankly, I had nothing to do with the conception of the idea. Nonetheless, I take a lot of pride in the research that I’ve done regarding the comprehension and patentability of the invention, to the point where I care about it like an inventor would. Not to mention, I am working with wonderful inventors who have been nothing but patient and courteous when I’ve asked to meet with them on short notice, asked them to describe for me the same concept for the third time, and pulled them away from their research to ask a few questions. At this point, I want nothing more than to see their invention thrive as a patent, regardless of the fact that my name won’t be on it. To conclude: Yes, this process has been difficult and anxiety-inducing at times, but I am so glad to be part of this project and to be playing this role in its development and future!

 

What we do

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A post from our student blogger Roberto

As I read through my older posts I realized just how much my time at Notre Dame and in the MSPL has shaped me as a person and as a professional.  This starts with the courses in the MSPL which have been extremely informative and practical.  The homework we are assigned mirrors assignments we will be given once we graduate in May.  For example, the final project in our Patent Searching class is a search report and competitive analysis document that is similar to documents we will be constructing routinely in our careers.  In our patent law and prosecution class we are studying for our second exam which is strongly representative of the Patent Bar exam many of us will take in the coming months.  Our electives are all winding down as well with many of us working feverishly on projects in those classes as well.  Looking back, last August seems a long time ago.

While we are far from finished with our training we already show signs of immense progress.  This progress has been obvious on a few occasions.  For example, in our technical presentations we are now able to talk our inventors through sections of the United States patent code and help them understand what all goes into a patent application.  As I talked to my inventors it really hit me how far we’ve come.  Not so long ago I would have been in their shoes and I would be just as perplexed by the long winded sentences found all too often in legal writing.  The technical presentation was great practice for our future careers as our inventors will often not have any understanding of the law and will want an in-depth analysis and explanation before they commit to pursuing a patent.

As you may be able to tell, there are many unspoken roles and jobs of the patent practitioner aside from what is listed under the typical job description.  As a practitioner it is important to remember that your job is to decode and simplify the laws, codes, and regulations to the client.  Typically, clients will not have the knowledge necessary to understand these things but they will need to understand them in order to make crucial decisions.  Another job that a practitioner must always fulfil is that of an engineer or scientist.  The reason why the USPTO requires that all patent practitioners have a background in these fields is because that knowledge and skillset is needed on a daily basis.  For instance, my capstone project is focused on highly advanced electrical engineering technology and my background is in mechanical engineering.  Even though I am not an EE my previous education has helped get me to the point where I can understand enough of what is going on to write a patent application on the technology.  The thing about patent practitioners is that we must never stop learning.  There will always be new technology to be understood and therefore new content that must be learned.  In a lot of ways this job exposes one to more technological advancement than what may be seen in a typical research capacity.

Regardless of the job, the patent practitioner derives meaning and personal enjoyment from helping the inventor protect his work while promoting and fostering the advancement of technology.  However, patent practitioners only exist because of the patent system.  Without patents there would be less of an incentive to invent and innovation would likely be left to large corporations.  Without patents small inventors like my father would be discouraged from investing everything they have into a dream only to have it taken away by someone with more resources.  The necessarily complex patent system requires the patent practitioner for the reasons above.  As a result, patent practitioners play a vital role in the intellectual property ecosystem by fighting for their inventor’s protection at home and abroad.

A visit by the Dean

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A guest post by Greg Crawford, Dean of the College of Science

I enjoy visiting classroom lectures with students because I always learn something new from the leading experts who instruct our students. Recently, I sat with the Patent Agent Masters students for a two-hour lecture from Mr. Howard Milton Jr., author of Patent Architecture, and I learned something much bigger than patent law. Mr. Milton was a model of great leadership with intellectual virtues and emotional intelligence for our students.

Mr. Milton, who has been teaching the students for several weeks, clearly exhibited wisdom– not just the vast accumulation of knowledge and data he has from long experience, ­but the thoughtful analysis and good judgment to discover meaning in the facts. Time after time, he demonstrated this wisdom in response to the students’ questions, often asking another question to encourage deeper reflection. Our Patent Law students are bright, engaged, and interactive, and this Socratic approach provided them not only deep understanding of patent law but also an inspiration and example to strive for great things in their careers based on vision and mission. They learned how to be good human beings as well as good at their jobs.

This engagement succeeded because of Mr. Milton’s humility, his self-awareness, and his openness to self-improvement. Despite his decades of experience and expertise in the field, he recognized the students’ talent and valued their opinions. He even solicited their advice, accepted the feedback seriously, and in some cases mentioned how it would help him change is approach in the future. He exhibited a high degree of emotional intelligence that benefited both himself and the students.  This was an important learning experience for our students.

I wanted to share this experience because of the powerful impact it had on our students, and me personally. First, I am so grateful that such a wise and authentic patent practitioner will spend time to train and mentor our terrific students here at Notre Dame. Second, I am excited that our students’  education goes beyond information and provides a mentoring in virtues and emotional intelligence – the “soft skills” that are so important for success. Finally, I personally benefited from the opportunity to step back, reflect, and recall the vital human dimension of all of our work that makes it significant and satisfying. For all of us engaged in Mr. Milton’s presentation, the lecture was a beautiful experience of educating the heart as well as the mind, of inspiring passion for your profession, prudence to act effectively, and courage to embrace great goals and achieve them.

Thank you, Mr. Milton, for sharing your great mind and your great heart, your wisdom and your courage, and your skills in patent law while lifting our vision to become virtuous leaders who will have a positive impact on society in our careers and in our lives.

Interview with MSPL professor, Hal Milton, Esq.

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Hal Milton, right. Trying our best at a glamour shot on a cold, snowy November day at the University of Notre Dame.

Hal Milton, right. Trying our best at a glamour shot on a cold, snowy November day at the University of Notre Dame.

A post by our student blogger Megan

We often encounter a teacher at least once in our lives that challenges our way of thinking and pushes us past our comfort zone that ultimately helps us transform into better people.  Often times, we recall these educators years down the road when our minds drift to a defining moment or a distinct phrase of encouragement that this professor once provided us.  The MSPL is fortunate to have a group of inspiring and incredibly intelligent professors teaching patent law curriculum.  Harold W. Milton, Jr., is one of these select few.  Mr. Milton, or “Hal,” as the students call him, has had a long, storied career in the patent world.  Hal began his journey at Purdue University, where he received his undergraduate degree in aeronautical engineering.  He then worked in the private sector testing rocket engines.  Hal was later an Air Force pilot, missile instructor and soon after attended law school at Georgetown University.  He has practiced patent law since 1964 and continues to work at a Michigan law firm, as well as teach patent drafting at the University of Notre Dame, where he has continued authoring the book for his class which is currently on sale at Amazon.com.

Hal’s weekly classes are packed with two hours of lively discussion that dares his students to think without limits.  He encourages them to speak their minds, argue effectively, and, most importantly, find a new result that can be patented.  Hal has supplied his class with a wealth of knowledge and pushed them to be their best.  The following is a brief interview with Hal Milton, an attorney with a legendary patent career who has a mission to properly build the patent system from its roots starting with each and every one of his students.

Why did you decide to become an engineer and then ultimately become a patent attorney?

“Life is a series of choices.  However, the first hurdle is to recognize that a choice exists. Once you recognize a choice, you must go with your gut. At the age of thirteen, I wanted to be an Air Force fighter pilot. A high school counselor made me aware of aeronautical engineering at Purdue, coupled with Air Force ROTC. My roommate in pilot training made me aware of the possibility of law school.  A second fellow Air Force officer made me aware of the possibility of working for the government in Washington D.C. to support my family of three daughters while attending law classes in the evening. When I asked him where in the government, he replied with the USPTO. That was the first time I had ever heard of U.S. Patents. After law school in 1964, we moved back to our home in metro-Detroit and I entered private practice.”

Why did you come to Notre Dame to teach in the MSPL program?

“I began training interns who had science degrees and were attending evening law school classes while they worked during the day in our law firm.  This led to teaching in law schools in the late 1990’s. One of those interns, now an associate at my present law firm, told the Director of this program, Karen Deak, about my course. Karen invited me to teach the course at Notre Dame. It was an offer that I could not refuse.”

What surprises you about your students?

“How intelligent they all are and how they use it to understand—they stay engaged in class.”

You often times tell your students that they are ahead of other new patent agents and attorneys; explain what you mean by this.

“My book is full of litigated patents which failed because of claim structure and intrinsic content. Each student, by performing the exercises for this course, prepares a higher quality patent application than these failed litigated patents—even though most of the litigated patents were prepared by persons with years of experience.”

What is the most important piece of advice you could give a brand new patent agent or attorney?

“Draft six to ten patent applications under a good mentor as soon as possible!”

What is the greatest highlight of your career so far?

“Writing the course book; I could not have done it without the long career and the feedback from my students and interns.”

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

“An Air Force pilot or a mediocre engineer.”

What’s next for you—will you continue to teach, as well as practice at Dickinson Wright?

“I plan on training patent agents and attorneys and perfecting my training tools until I die. In the remaining time, I plan to finish writing a book focusing on the human interest side of patent stories entitled ‘Patent Paradise Found by Milton’.”