Author Archives: Catherine

Time is Money

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A post from our student blogger Sarah Goodman

Legal professionals are often required to bill their time in the form of timesheets. The particular minute increments for billing are dictated by employer policies. Some common time increments are 6, 10, or 15 minutes. Each independent activity should be separately itemized with a corresponding time. Timekeeping is necessary for accurate client invoices.

Time may be recorded on a spreadsheet for convenience. Complete sentences should be used with sentence case and periods. The sentences should be written actively, distinctly demonstrating the work that was performed for the client. Examples of action verbs for billing time include researching, analyzing, drafting, and revising. The tasks should be described and supplemented with specific details. However, the description should not be so long that the task seems ambiguous. Although the tasks should be described in a legal and knowledgeable manner, the descriptions should be understandable to the average client.

It is important to bill time because clients may examine the legal bills with scrutiny. Every minute billed to a client must be must be clear to avoid dispute. The task descriptions should be specific to the individual client to aid in comprehension. For example, instead of describing a task as “drafting amendment”, the description could be improved by identifying the patent application number and including details about the type and nature of the amendment. Slang and abbreviations should be avoided because the timesheets may be reviewed by individuals unfamiliar with a particular terminology.

In the MSPL program, we bill time for every assignment to practice legal billing. We learned that is beneficial to bill time while working on a project or as soon as possible after completion to avoid mistakes and errors. The ability to produce detailed and accurate timesheets is a fundamentally essential skill for a successful career in the legal field.

Ethical Rules and Regulations

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A post from our student blogger Sarah Goodman

Registered patent agents and attorneys must abide by the ethical rules enforced by the Office of Enrollment and Discipline of the USPTO. Attorneys must additionally abide by ethical regulations set by the state bar under which an attorney is licensed.  Since patent agents are registered with the USPTO on a federal basis, there is no state-specific ethics code for patent agents. The existing references for the ethical obligations of patent practitioners at the USPTO are 37 C.F.R 10 and 37 C.F.R. 11.

The Code of Federal Regulations includes the Canons and Disciplinary Rules of the Patent Office. A key point is the duty of disclosure to a client. A patent practitioner is required to disclose all necessary information and not to lie to a client. A duty of disclosure to the Patent Office is also included. Patent practitioners have a duty not to submit any documents to the Patent Office which are not true, submitted for an improper purpose, or which violate any applicable law. Patent practitioners are required to maintain confidentiality of information disclosed by the client. Confidentiality is an important aspect of protecting IP rights of clients, and this concept has been emphasized during the MSPL program especially in the capstone course because of the access to proprietary invention information. All registered patent practitioners have a duty to disclose to the Patent Office any non-confidential information which establishes a violation of the USPTO disciplinary rules by themselves or another.

The USPTO is currently proposing an update to the Code of Professional Responsibility to adopt more of the ethical standards set by the American Bar Association (ABA). The USPTO hopes that by adjusting their regulations to complement the state bar regulations, patent practitioners will have more consistent ethical obligations. The USPTO acknowledges that currently, patent practitioners are held to obligations not contained in the Code of Professional Responsibility that apply to practicing patent law and the addition of these stipulations would create a more clear and comprehensive set of regulations.

Proposed updates to the Code of Professional Responsibility and comments from established professionals, including Professor Dennis Crouch of the Patent Law Blog “Patently-O”, may be found online at: http://www.uspto.gov/ip/boards/oed/ethics.jsp

ND Law School IP Clinic Expands to Include MSPL Students

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Notre Dame Law School’s Intellectual Property and Entrepreneurship Clinic (Clinic) will be the first law school clinic to include Master of Science in Patent Law (MSPL) students practicing in the United States Patent and Trademark Office (USPTO)  Law School Clinic Certification Pilot Program (Program).

Launched in January 2012, the Clinic provides students with valuable experience in applying substantive intellectual property law to client problems, and offers assistance to local businesses and entrepreneurs with counsel on intellectual property related issues.  Under the supervision of a licensed practitioner, law school students participating in the Clinic are able to practice both patent and trademark law at the USPTO, including preparing and filing applications, responding to Office Actions, and communicating with USPTO examiners.

In a first for non-law school students, the USPTO has now extended participation in the patent portion of the Program to University of Notre Dame MSPL students, through the Intellectual Property and Entrepreneurship Clinic.  In conjunction with the Law School’s Clinic, the USPTO has authorized a two-year trial enrollment for MSPL students, beginning in January 2014. MSPL students in the Clinic will work exclusively on patent matters, helping expand capacity in this high-demand area of intellectual property practice, and under the direct supervision of the Clinic’s Director.  By participating in the Clinic, MSPL students will gain first-hand, practical experience through assisting real clients.

A one-year, graduate-level program, the Master of Science in Patent Law prepares students with a technical background to pass the USPTO’s Patent Bar and to succeed in daily practice as a patent agent or patent examiner.

For MSPL Graduate, Patent Examiner is Career Option

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Stroh River Place

Stroh River Place, Detroit, MI

A post from our student blogger Sarah Goodman

Some members of the MSPL class met with patent examiners at the Detroit USPTO satellite office over spring break. The educational requirements for a USPTO patent examiner are similar to the educational requirements to become a U.S. patent agent. A patent examiner must have a bachelor’s degree in science or engineering. Employment as a patent examiner is a potential short-term or long-term career opportunity for a graduate of the MSPL program.

Employment as a patent examiner could be short-term. A patent examiner job pays well and the starting salary is increased for a graduate of the MSPL program versus an individual with no intellectual property graduate education. Experience working as a patent examiner is beneficial for future job searching. Employers value a job candidate who has experience working for the USPTO as a patent examiner. A patent examiner has a very detailed understanding of the MPEP because the MPEP is the manual which contains the rules for the patent prosecution process. A patent examiner also gains a familiarity with the best strategies for writing a patent application for allowance which is extremely valuable knowledge. Working short-term as a patent examiner could be a good way for a graduate of the MSPL program to get experience that would be valued by any future employer.

Employment as a patent examiner could also be long-term. The field has the ability for promotion based on performance. For individuals who would like a lot of time with family or need job flexibility, a career as a patent agent is flexible in regards to the work schedule. Another appealing aspect of a patent examiner position is the ability to work from home after working at least two years and meeting certain performance standards.

The MSPL curriculum prepares students for the option of a career as a patent examiner at the USPTO. Currently, applicants with bachelor’s degrees in Mechanical Engineering, Computer Engineering, or Electrical Engineering are needed by the USPTO to assist with the backlog of unexamined patent applications. In the future, these postings may remain and other backgrounds may also be needed.

Students Apply IP Knowledge

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This post is part of an article appearing in the Winter edition of Notre Dame Science magazine.

Three students in the Master of Science in Patent Law program are working with Notre Dame alumnus Shane Fimbel, chief operating officer at Union Station Technology Center in South Bend, on a project to help Nationwide Children’s Hospital of Columbus, Ohio, accelerate the commercialization of the hospital’s innovations.

Kerisha Bowen, Ashley Ferraro and Ke Min are involved in the pilot study by Intellectual Analytics, whose innovative methodology, TechnoFlow, uses large data sets to identify and predict the innovative output of research laboratories. They expect to publish a peer-reviewed article on Nationwide’s technologies and create a series of dashboards for key metrics for Nationwide’s technology transfer office as well as measure the hospital’s innovative output.

Fimbel, who earned a Ph.D. in Biological Sciences at Notre Dame in 2007, worked for three years at the Purdue Research Foundation’s Office of Technology Commercialization before returning to South Bend.

A Good Example

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A post from our student blogger Sarah Goodman

The latest blog emphasized the importance of incorporating alternatives and variations when drafting patent applications. The purpose of this practice is to produce a higher quality patent application and protect a client against competitors. An additional technique to strengthen a patent is the use of examples. Examples in a patent application are specific embodiments of the invention. Inclusion of examples is not always required by a patent examiner. However, it is good practice to describe different embodiments of the invention especially in the unpredictable scientific fields like chemistry and genetics.

An example is a detailed description of an embodiment of the invention. Examples may include a description of how to make the invention, how to use the invention, and specific details of an embodiment. Specific details such as the temperature at which a reaction was run or compositions from which a product was manufactured can assist in demonstrating enablement of the invention. Increasing the number of examples often broadens the scope of the claims by distinctly pointing out different features of the invention.

There are two types of invention embodiments that can be included in a patent application: prophetic examples and working examples. According to MPEP 2164.02, a working example is based on an experiment that was actually performed. A working example may include testing conditions, usability conditions, specific compositions, and experimental results. A prophetic example is based on predicted results when the experimental work was not yet actually conducted. Prophetic examples may include simulated test results, calculations, and theoretical experiments.

There is a correlation between the need for working examples and the complexity and unpredictability of the field of the invention. Descriptions of example embodiments may be the best way to demonstrate the utility and function of some inventions. Including examples in a patent application can be very helpful in fulfilling the requirements set forth in the MPEP for enablement under 35 U.S.C §112(1). In our MSPL program, we are currently drafting the examples for the patent application portion of our capstone projects.

Alternatives and Variations in Patent Applications

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A post from our student blogger Sarah Goodman

In the MSPL classes, we learn that well-drafted patent applications should contain the widest breath possible and appropriate to best protect the client against competitors. When more attention to detail is paid by the patent drafter, more coverage can be granted to the patent applicant. The claims should be written to cover more than just the minimal features of an invention. A good technique is the incorporation of alternatives and variation.

Alternatives are different methods of accomplishing a task. Alternatives can include additional ways an invention can be utilized. Variation is the addition of different configurations, materials, and compositions. Alternatives and variations can be added by the patent drafter which requires creativity and research into the technical field. At least one actual embodiment of the invention must be included in the patent application, but describing the invention usually involves a lot more than just describing one embodiment. Any possible alternatives and variations should be included when preparing and filing patent applications to reduce the ability for competitors to design around the claims.

Variations should be listed even if not the best mode of practicing the invention. If variations are not included in a patent, a competitor company could sell cheaper inferior products without infringing by using the less optimal materials. Variations should include everything that could reasonably work. Another reason to list alternatives and variations is to allow the patent owner to continue improving the invention. If alternatives are not listed that later are discovered by a competing company to be an improvement, that company could obtain competitive patents which block the innovation of the original patent owner.

Listing variations and alternatives is a much cheaper and simpler method of providing broad coverage for an invention than filing more patent applications. The difficulty and expense to list alternatives and variations is minimal when compared to the cost and amount of effort necessary to file additional patents on modifications of one basic idea.

By writing a nonprovisional patent application as our capstone project in the MSPL program, we learn how to use alternatives and variations to increase the broadness and enforceability of a patent application. A broad patent is more valuable to the patent owner and potential licensees. It is the responsibility of the patent drafter to provide a quality patent application.

Patent Profanity – It’s Not What You Think

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A post from our student blogger Sarah Goodman

When drafting patent applications, it is important to avoid the use of certain terminology. Some specific words should either never be used or be used with extreme caution. The use of these words is commonly called “patent profanity.” Patent profanity includes words and phrases that cause unnecessary complicated litigation and limit a patent’s scope. These terms should be avoided in the entire patent application, not just the claims. A limiting statement in the specification can be read into the claims resulting in a narrowed scope. Narrowed claims are more easily designed around by competitors causing the patent to be less valuable.

The term “invention” should be used sparingly if at all in a patent application. If the patent application refers to “the invention” as having certain properties or features, these aspects may be incorporated into the claims since the claims identify the boundary of protection for the invention. A statement that seems to describe the invention as a whole by using the term “the invention” is more likely to limit the scope than a statement that describes an embodiment.

Absolute terms are to be avoided in patent applications. Examples include: must, always, necessary, critical, needed, required, and only. These terms are limiting because they are very specific. Describing an aspect of the invention with an absolute term suggests that the invention is not complete without the aspect. Well drafted patent applications should instead include generic language, variations, alternatives, and examples to identify the broadest possible scope of the invention.

The term “prior art” should never be used in a patent application. Characterizing a reference as prior art is an assertion by the applicant that the reference contains comparative material to the invention. References that seem to be related to the invention are required to be cited in the patent application but when referring to the documents, it is best to simply call them references.

A patent practitioner has the job of drafting high quality patent applications and therefore must choose wording that entitles the inventor to the broadest allowable scope of the invention. The right to an invention should not be decreased by poor wording choices in the application. A patent drafter has a responsibility to the client to draft the best application possible. Our MSPL class is learning about the assortment of patent profanities and strategies of avoiding their use while drafting patent applications.

MPEP – Everything You Wanted to Know About Patents (But Were Afraid to Ask)

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A post from our student blogger Sarah Goodman

The Manual of Patent Examining Procedure (MPEP) is published by the United States Patent and Trademark Office. The MPEP contains the patent laws and rules. Patent examiners use the MPEP to evaluate patent applications. The MPEP is continually revised as the regulations change and important case law is established. The first edition of the MPEP was published in 1949.

The MPEP is used by both patent examiners and patent practitioners. Patent examiners use the MPEP by following the guidelines to decide whether to grant or reject a patent application. Patent agents and attorneys can use the MPEP as a handbook for rules of drafting a patent application. The MPEP contains examples of scenarios pertaining to the rules. The information in the MPEP is crucial because a patent application needs to follow the USPTO regulations.

The MPEP is divided into 27 chapters and 7 appendixes. The material covers more than 2,000 pages. Each chapter addresses a different aspect of patent law. For example, chapter 600 contains the guidelines for the parts, form, and content of a patent application. Chapter 2100 provides the guidelines on patentability. Appendix L contains patent laws and Appendix R describes patent rules.

In the MSPL program at the University of Notre Dame, we are reading and studying sections of the MPEP. To become a certified patent agent, it is necessary to pass the patent bar. This examination tests the material contained in the MPEP. The examination includes an electronic version of the MPEP that is searchable within chapters. The patent bar exam is difficult and has approximately a 50% pass rate. The classes in the MSPL program at the University of Notre Dame help us to prepare for this examination which we will all take this Spring.

An American Patent in Paris

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A post from our student blogger Sarah Goodman

Over winter break I was in Paris, France. During my trip, I visited research institutes and decided to learn more about patent law in Europe. The European Patent Organisation currently includes 38 member states, and European patents are granted by the European Patent Office.  There are several important differences between European and American patent law.

According to Article 54 EPC (European Patent Convention), if an invention was made publicly available by an inventor or a third party before the filing date of a patent application, the application will be rejected. In the United States according to 35 U.S.C. § 102, there is a one-year grace period beginning with the disclosure of an invention before losing patent rights. However, an inventor in the United States would lose any potential patent rights in Europe even if the invention is publicly available only in the United States.

U.S. patent law requires inclusion of the best mode of practicing the invention according to 35 U.S.C. § 112.  The disclosure of the best mode ensures that the public has access to the best method of practicing the invention. The lack of a best mode cannot be used to invalidate a patent but still must be included in the patent application. European patent law does not require inclusion of the best mode in a patent application. Article 83 EPC only requires the inclusion of at least one method of practicing the invention.

European patent applications usually contain two-part claims. A two-part claim includes features of the invention that are well-known, then a phrase such as “characterized by,” followed by features that constitute the invention. American patent applications usually contain only one part claims with no separating phrase between the well-known features and the inventive features. In the U.S., this type of two-part claim is known as a Jepson Claim. A disadvantage of using Jepson Claims in the U.S. is that anything before the characterizing portion is regarded by definition of the claim structure as previously known even if a novel feature is accidently included which can negatively affect patentability. In European patent law, if an applicant puts an inventive feature in the pre-characterization portion, the applicant will be asked to move the feature to the correct location.

The MSPL program at the University of Notre Dame prepares us for the U.S. Patent Office’s patent bar exam. Successful certification will permit an individual to file in the United States only. However, it is common for American law firms to work with international legal counsel, so it is important for patent agents in the U.S. to understand the major differences.