Author Archives: Catherine

Leahy-Smith America Invents Act

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A post from our student blogger Sarah Goodman

During the Fall semester our MSPL class has attended several presentations on the Leahy-Smith America Invents Act. This Act was signed into law by President Obama on September 16, 2011. The America Invents Act changes some aspects about patent law in the United States and also includes new material. Most of the changes have already been implemented, and the final modifications will be implemented on March 16, 2013. Presented in this blog post are a couple of the major changes.

One of the best-known adjustments to patent law is the shift from the current First-to-Invent system to a First-Inventor-to-File system. This change will come into effect on March 16, 2013. This adjustment is based on the change to 35 U.S.C. §102 which states that a U.S. patent will not be granted if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The filing date of the earliest patent application to which a U.S. patent application claims the benefit of priority is considered the effective filing date. This provision eliminates the legal concept of an “invention date.” It is important to remember that an individual cannot claim inventor status unless that individual actually invented the material claimed in the patent application.

Another important change was implemented on September 16, 2011 concerning the best mode requirement. The best mode is defined as the preferred mode for practicing the invention. The disclosure of the best mode ensures that the inventor fully enables the public to have access to the best method of using the invention. Previously, lack of disclosure of the best mode was a basis to invalidate or cancel an issued U.S. patent. The America Invents Act has modified 35 U.S.C. §282 by removing the lack of a best mode as a rationale for potential U.S. patent invalidity. However, 35 U.S.C. §112, which addresses the requirement for inclusion of the best mode has not been amended. Therefore, patent applicants must still comply with the requirement to disclose the best mode contemplated by the inventor for carrying out the invention.

The Leahy-Smith America Invents Act will affect U.S. patent applications that are filed on or after the dates of specific law implementation. Therefore U.S. patent practitioners will need to have a working knowledge of the laws before and after the new changes of the America Invents Act.

Student Profile – Catherine Zhang

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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

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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

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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

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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.

What is a … copyright? trademark? trade secret?

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A post from our student blogger Sarah Goodman

The main type of intellectual property the MSPL courses focus on is patent law. The program prepares individuals to pass the patent bar and work as patent agents. A patent agent is qualified to prepare, file, and prosecute patent applications. Although a patent agent is not qualified to work in the other areas of intellectual property law, it is important to understand the other types of intellectual property rights that are used in science.

Copyrights protect original works of authorship for a limited time. Included are literary, dramatic, artistic, and musical works. A copyright generally gives the owner the rights of reproduction, distribution, and performance. A work must exist in a tangible form of expression in order to qualify for copyright protection. In science, copyrights are often used to protect literary works such as books, articles, and website content. Genomic DNA sequences are not generally considered to be covered by copyright because they are not works of authorship.

A trademark is a distinctive mark that identifies the source of a good or service. Examples include words, phrases, logos, symbols, and designs. A trademark provides recognition protection to the owner by granting the exclusive right to use the trademark to identify goods or services. Trademarks are commonly used in science to identify company products. When a product or service is labeled with a trademark, a consumer can quickly identify the source and expect consistency. Rights to a trademark are acquired by either being the first to publically use the mark in commerce or by being the first to register the mark with the USPTO.

Trade secrets give a company a competitive advantage by keeping information confidential. Trade secrets are information with commercial value and are subject to steps to ensure secrecy, such as through confidentiality agreements. Sometimes, if an invention is patentable, a company needs to decide whether to make their invention a trade secret or to submit a patent application. Benefits to trade secrets include an unlimited time frame (as long as undisclosed to the public) and no costs for patent registration and maintenance. The disadvantages include that another entity could patent the trade secret independently and the owner of the trade secret does not have the right to exclude others from using the secret. Also, once the trade secret is revealed, there is no intellectual property protection for the original owner.

Patents are extremely important for the stimulation of innovation in science and are the primary focus in the MSPL courses, but it is necessary to also be familiar with other types of intellectual property.

Open Source Biotechnology + Patentability = ?

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A post from our student blogger Sarah Goodman

While completing an assignment for my capstone project I became interested to learn more about open source technology related to patentability.

Open source is a philosophy that promotes free redistribution and access to an end product’s design and implementation. One example of open source products is the Linux family of computer operating systems that are often available free of charge. Organizations such as Creative Commons and the Free Software Foundation have websites where individuals can file for alternative “licenses,” or levels of restriction, for their works. Open source resources most often refer to software and technology development. The concept of open source technology has existed for decades. There is a lot of available information concerning open source software. However, biological open source technologies have been recently emerging.

Biological open source technologies extend the principles of open source software development to the development of research tools in medical and agricultural biotechnology. One of the leading organizations aimed at open source biotechnology development is the Biological Innovation for Open Society, or BIOS. This new technology-sharing initiative was developed at Cambia, a nonprofit Australian research institute supported by the Rockefeller foundation.

In one example, open source methods have been used to distribute a technique for creating a genetically modified crop.  This technique is available free to others to use and improve, as long as any improvements are also available free. BIOS states that while users of the technology are required to put any improvements they make into the open source pool of knowledge, companies and universities are allowed to patent any products they make using the technology, like a genetically modified crop. Patents are integral for innovation in biotechnology, so it is important that the products developed from using open source technological tools and methods can be patented. However, all licensees are required to share some aspects of the improvements, making them available for use to other licensees, even though they may be patented.

Open source licenses do not necessarily bar inventors from obtaining patent protection on inventive aspects of their technology. However, there may be some constraints on the inventors’ patent rights if some of the integral pieces of the invention were distributed through the open source method.

There are many difficulties in translating the current open source regulations to the biomedical field. The primary licensing system in software is copyright, whereas in biotechnology it is patents. The cost of patent protection can be substantial, but patent fees can be recovered from licensees. Due to the complexity of biotechnological innovations it can be difficult to determine what constitutes an improvement to a technology that uses open source materials or methods.

The current question is whether the open source model will work in the biological research field and how patent rights will be determined in court cases. A large determinant of the acceptance of the open source method in the commercial market will be whether or not it is appealing to IP owners. Open source biotechnology is an interesting emerging topic that will play a role in future biological patents.

Office of Tech Transfer a Valuable Resource for Students

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A post from our student blogger Sarah Goodman

An important resource to the students in the MSPL program at the University of Notre Dame is the Office of Technology Transfer (OTT). This office is available to assist university faculty, research staff, and students in bringing new technologies to commercialization. The OTT has the resources to patent, market, and license products of university research. This office secures legal protection in the form of patents for technologies invented at Notre Dame and markets the technologies to companies suited to develop the inventions. When appropriate companies are identified, the OTT is capable of negotiating licensing agreements and distributing the proceeds in accordance with the University’s intellectual property policies. The MSPL program prepares us for job opportunities in the field of academic technology transfer as a possible career option.

I am a current student employee in the OTT. My job duties include researching current Notre Dame technologies and completing Patentability and Marketability Reports. To investigate the patentability of an invention, I search patent and literature databases to identify publications that could prevent a patent from issuing on the technology.  To investigate the marketability of an invention, I complete market research to see if anything similar is commercially available, investigate the target customers, and determine whether or not the technology has commercial value.

The other student employee at the OTT is Vini Melo, a current student in the graduate ESTEEM program. He also evaluates inventions and is currently coordinating databases that will be used to market technologies invented at Notre Dame.

The Office of Technology Transfer is a valuable asset on campus and will aid in the success of the MSPL program. The University’s Intellectual Property Policy and information concerning the Office of Technology Transfer is available online at ott.nd.edu.

MSPL Boot Camp

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A post from our student blogger Sarah Goodman

During the orientation Boot Camp, the MSPL class had the opportunity to learn from three different speakers in the patent law field. The first guest, Dr. Art Moss, is a Sr. Patent Associate at DuPont. He gave a full-day presentation, “Patent Law for Researchers,” to the MSPL class and some members of the Notre Dame community at Innovation Park. Dr. Moss explained the different parts of a patent and techniques for writing a patent application. He also gave an introduction to the United States Code Title 35, which addresses the patentability of inventions.

Our second speaker was Dr. David Burns, a patent agent and employee of Qualcomm Incorporated. Qualcomm is a California-based corporation that is a leading patent licensor of wireless technology and innovation. Dr. Burns lectured to our class for three days. Some highlights included an extensive introduction to conducting inventor interviews and working with invention disclosure forms. We also learned more about the Code of Federal Regulations Title 37 which contains the rules concerning the format and filing of patent applications. As one of the most efficient patent writers in his field, he gave our class tips on drafting patents and creating invention illustrations.

We met the final guest speaker of the Boot Camp on a tour of the Union Station Technology Center in South Bend. The facility is a state-of-the-art technology center which offers computing space and power services while operating fiber optic networks for the Midwest. Dr. Shane Fimbel, chief operating officer of Union Station, gave us a presentation about the history and function of this data center as well as a tour of the facilities. He emphasized the essential role of innovation and creativity in the success of this business.