Back in the hot seat

A post from student blogger Brittany

If you’ve been following my blogs from the beginning you know that I just completed my doctorate degree before coming to the MSPL program. To close out the first semester everyone had to present their capstone projects to the director of the program and their respective research faculty member. I was slightly nervous about the presentations due to the fact that I still hadn’t recovered from my dissertation defense from months back.

The day of my first capstone presentation I felt prepared until someone told me minutes before walking over to set up that “oh he’s tough”. The nerves immediately sat in and they were quite evident during the first few minutes of the presentation. I definitely felt as though I was right back in front of my committee members without the benefit of having worked on the project for the last 5 years.

Overall I think that both capstone presentations went well for a variety of reasons. Importantly, it gave the inventors an opportunity to see their invention through the eyes of someone else.  Although the capstone presentation was supposed to be a test of my knowledge regarding the technology and patent law, I saw it as a test for the inventor as well. This was a test for the inventor to ensure that they provided all the necessary information for someone other than themselves to successfully “make, use or sale” their invention.

While discussing patent laws and how the results of the prior art search may influence the patentability of their invention, I could see a slight bit of fear in the eyes of the inventors. I had to simultaneously ease the concerns of the inventors while being honest about the patent prosecution process. Despite the butterflies, the dialog between Karen, the inventors and myself was extremely helpful in determining, which claims needed to be revised, and the most effective way to communicate patent law to my client.

No one expects the Spanish Inquisition!

A post from student blogger Josh

Well actually, we tend to go into our first round interviews expecting the worst. For your first time, it actually would be excusable to expect the Spanish Inquisition (I’m sure that the university is less than proud of that particular piece of Catholic heritage). But having just lost my brief phone interview virginity to a lovely firm who promised to call again, I can tell you that the process is not as excruciating as you might imagine.

The main purpose of a half – hour phone interview is to determine whether or not you are an individual selected from the group consisting of axe murderers, criminal masterminds, bumbling idiots, republican congressmen, and garden variety unemployable psychopaths. Side note to you future patent nerds, the prior sentence is the appropriate language for a special type of claim called a Markush claim, wherein you are trying to state that a component of an invention can be formulated from anything within a defined category of “stuff”. The proper format recites alternatives for a component of a claim by saying that the component is “selected from the group consisting of A, B, and C” (this is from section  803.02 of the Manual of Patent Examining Procedure, and if you quote it to Karen she will give you a gold star and some brownie points, or at least glare at you with slightly less than her ordinary level of scary yet loving disapproval).

Back to the topic of interviews, the process is one containing multiple steps. You send in a resume that basically says “look at how qualified I am to do exactly what you want to hire somebody for”, and this document gets you in the door. While I would advise against committing any form of fraud here, it is expected that your resume will highlight your skills in such a way that you appear fit for the specific position you want. Tell the truth; just make sure it’s the right truth. Since people belonging to the above category of undesirables are occasionally capable of concocting decent resumes (I’d definitely at least talk to a guy who claimed to have hollowed out a volcano to create a laboratory for quasi ethical science experiments), you will then have to speak to someone. I always find it slightly irritating when people spend time completing activities to pad a resume, and yet are unable to string a proper sentence together (looking your way, 50% of every high school honors society and anyone who paid to be part of a non –field specific collegiate Greek organization that hangs cords around your freshly graduated neck). My academic career has certainly been checkered, and many of you reading this are probably higher achievers on paper than myself. In no way does this guarantee you a job. The processes of interviewing and networking, like practicing law, require the ability to effectively communicate with people.

Once you’ve convinced the individuals in human resources that you can write like Hemmingway and interview like a late night host, this is where you get into the more serious discussions and negotiations with partners. Meanwhile, the H.R. folks return to the wanton stack of sexual harassment complaints against that congressman they mistakenly hired last year (sometimes one slips through the cracks, though that’s what you get for hiring someone named Weiner). By now you should already have asked a number of questions of the firm, and have a decent idea of what you’re walking into. You should know what would be expected of someone in your position in terms of time commitment, what the structure of the firm is like, who their big clients are and what type of work they actually want you to do. I have no advice for this phase yet, because as I mentioned earlier, I’m just beginning this process myself. The good news is that the lovely people at the law school career center can help you along every step of the way, from resume reviews to mock interviews, and coach you on what topics to highlight vs. those to avoid. We’re so used to focusing on school that we often forget the entire point of our education is to enter the workplace in a desirable position. While there are many great things about higher education which I wholeheartedly support, let’s not kid ourselves and pretend that it’s magically made us into well – rounded and fully functioning human beings. I would bet that most of you reading this could tell me Newton’s Laws of Motion, but have never changed your own oil (and if you cannot do either of those things, no excuses, you have Google). By making use of the many tools available to students at Notre Dame, you too can eventually make actual money and feel like an adult. If you anticipate this process, as opposed to the Spanish Inquisition, and work to succeed at it (like you have everything else thus far), I can assure you that your odds of being homeless will dramatically decrease.

Coming to an end

A post from student blogger Nicole

The date for my final presentation is creeping up.  I am both excited and a little nervous, but I’m leaning toward being more excited than nervous.  I think this is the first time I’m actually excited to give a presentation.  I know everything about my capstone project, and I’ve learned so much during the semester so there’s nothing to be nervous about.  When we were first told to start putting our presentation together I thought to myself, wow it’s way too early to start preparing, but then I really thought about it and realized there weren’t even that many days left in the semester.  Like I said before in one of my other blogs, time really does fly during this program, especially the last month of this semester.

The tricky thing about our final presentation is the audience.  We have to present to both Karen (the director of the patent law program) and our inventor.  We have to prove what we learned throughout the semester to Karen but at the same time we have to teach our inventor the things we learned.  Chances are your inventor doesn’t actually know much about patent law.  Not every student will work with a faculty member that has worked with a past student for the program so it is important to help them understand what is going on for their invention.  Also from what I’ve heard from students that have presented already, I have to be ready for a lot of questions.  I think this is what makes me nervous, but I’m not going to let it take me down!

So for all you newbies coming into this program or deciding to become part of the program, I’ll let you know what has to go into your final presentation.  First off let me terrify you by telling you it has to be 45-60 minutes long.  Yes you read that right, 45-60 minutes.  I remember reading that in an old blog by one of the past students and thinking to myself, how the heck will I be able to talk for 45-60 minutes.  The longest I ever had to present was 10 minutes, and I thought that was asking a lot from me!  But after preparing my slides and reading through them, I realized 45 minutes might not be so bad.  There is a lot of information you have to talk about like describing your project, the search you did to see if anything else out there is similar, patent laws, and your claims.  Explaining the search conducted and anything you found that could be closely related will take up a good chunk.  Also once you find out how long your claims end up being and explaining them to your inventor, you will have plenty of things to talk about for 45 minutes.  So don’t let me terrify you too much and hopefully I didn’t scare anyone away from this program! Wish me luck on my presentation!

Do as I say not as I do

 A post from student blogger Brittany

So I’ve previous told you all that I am a graduate intern in the Office of Technology Transfer at ND. Part of my responsibilities include identifying possible licensees for technologies developed at the University and conducting patentability searches. Recently I was asked to review a final office action and draft a potential solution to overcome the rejection.

As I was sifting through all of the previous office actions trying to come up with an answer I realized that the patent examiner distinctly used a term of art in reference to the specifications which then found its way into the claims. Unfortunately, once the applicant used that exact same term of art in the claims they received a swift rejection.

Let me backtrack for a second and provide you with a little patent drafting 101. The claims of any patent application MUST BE FULLY SUPPORTED BY THE SPECIFICATIONS. The specifications include a detailed description of the new technology as to enable anyone to make, use or sale the new technology. In the case of the patent application in question, the examiner used a word, then the applicant amended the claims to include the word, and then the examiner rejected the claims because the word was not in the specifications… It seems absolutely ridiculous but that is how this patent thing works guys.

In the words of Professor Wack NO NEW MATTER, don’t add in anything in the claims that is not supported by the specifications even if the patent examiner tells you too. If the applicant had revised the specifications to include the term, then I believe that the patent examiner would have probably issued an allowance instead of a rejection. To top it all off, there were only four claims….FOUR CLAIMS…I would have expected so much back and forth for at least 10 claims but hey that’s the USPTO for ya.

“I have a very particular set of skills…”

A post from student blogger Josh

Who doesn’t love final exams? Everyone! Yay! Your professors hate grading them, you dislike studying for them, and they loom in everyone’s mind from the moment Thanksgiving is finished until you finally put your pen down on the last day of the semester. By the time you start MSPL you’ve had at least 8 rounds of finals, and yet they’re still as annoying and stressful as ever. You certainly don’t want my advice on studying for finals, nor do you want to imitate my study habits. What you do want is to finish those papers, give those talks, take the tests, and then go home and sleep until Christmas rolls around.

So how does one look on the bright side and enjoy life for these next couple of weeks? Well it may sound nerdy, but hearing about my MSPL classmates and their respective capstone projects as they near the completion of a semester’s worth of work is exciting. Seeing everyone in the program come from being unable to claim the chairs we sat in to defending a complex piece of intellectual property for a real inventor is actually extremely cool. It’s a constant reminder of how far we’ve come in just 4 months. I’ve had semesters where I learned new forms of mathematics, or learned to think of mechanical processes in new ways; but I’ve never come so far in learning a whole new skillset in such a short period of time. The fact that we can reasonably be expected to perform at this level may be somewhat stressful, but it’s also a testament to our work ethic and the quality of education we have received at the hands of our mentors.

The fact that we’ve made it this far is worth celebrating; unfortunately, we can’t actually do that until the semester is over. But there is that light at the end of the tunnel to look forward to, and we’ll all make it out just fine. To those of you who read this and aren’t members of MSPL, good luck on your finals. Stay tuned for the mental breakdown I will inevitably have on this page next week, because today instead of doing more work I will be pigging out on leftovers and watching the Seahawks blow a 4th quarter lead.