Classroom tested, industry ready

Posted on January 28, 2015 by Catherine

A post from our student blogger Roberto

The first few weeks of the second semester have gone by fast. These new classes are refreshing and offer a whole new take on patent law. The most dramatic difference so far has been in our capstone class where we have been paired with industry mentors who will review all of our assignments. Their feedback will be instrumental as we craft our final patent application. It is helpful having someone who you can go to with complicated questions and needed advice along the way. As many of the bloggers mentioned, writing a good set of claims is a form of art. Having an industry mentor allows you to see a completely different artistic style as well pick up helpful tips they have learned through their careers.

In our other classes we have already covered several interesting topics. Claim interpretation, figuring out how a set of claims impacts the potential infringement of an article, so far has really interested me. Claim interpretation is almost entirely an exercise in argument between the two sides over the meaning of words and the use of punctuation. Patent Litigators, individuals with a law degree, argue before each other, judges and a jury about all of these things. In the end, millions of dollars have been spent (typically) and the entire landscape of an industry may change. For example, in recent years Samsung has had to pay out around $1.2B to Apple in patent disputes over their competing technologies, according to Forbes.

Last semester we spent a good amount of time working on claims for physical devices but not much time working on what are called “method” claims. Method claims protect a certain way of doing things to achieve a specific, new and useful result. This semester we have a whole series of assignments directed to constructing these special claims. This experience will be very useful for many students since their capstone projects require the use of this type of claim. When would a method claim be useful? Well, suppose that you decided to try to use engine degreaser to ward off the pesky ants persistently attempting to infiltrate the crack under your front door. Much to your amazement the ants, and all other insects for that matter, never came near your door again. Suppose you wanted to patent this newly found miracle ant repellant. Well, you couldn’t get a patent on the actual ant repellant since it was just some engine degreaser you had lying around. What you could attempt to do however, is obtain a method patent on the new and useful method of spraying engine degreaser on areas to repel ants. Writing claims to protect methods is very different and in many senses more difficult since you are not claiming a physical article and instead a process.

In general, this semester is geared towards getting us ready for the day-to-day life of being a patent agent. We are routinely turning in assignments simulating those we will have at our jobs in a few months. As an engineer, I really appreciate having the opportunity to practice the legal writing and formatting skills many take for granted. One last piece of exciting news is that being a patent agent was just rated the #4 on CNN’s “Best Jobs in America” list. This is great news for the MSPL students and only reaffirms our excitement to join the field.

The Packers lost. I will be the first to admit that they deserved to lose. And, in the end, I am glad they did. A few days after the loss the younger brother of our head coach died of a heart attack suddenly and without warning. I am thankful that we lost because it meant that our coach had the opportunity to speak with his brother during those final days; an opportunity that he otherwise may not have had. As the great Vince Lombardi once said, “In my life there are three things: God, Family and the Green Bay Packers. In that order.”

Interview with MSPL professor, Mike Wack

Posted on January 19, 2015 by Catherine

Professor Mike Wack

A post from our student blogger Megan

After a few weeks of winter break the Notre Dame MSPL students have returned to lovely South Bend, Indiana. Strike “lovely.” If you know anything about the Great Lakes region, where Notre Dame is located, you know that January is not the most pleasant month of the year for this area. In fact, it is quite snowy…and cold…and at times…miserable. But as we return, we have started to reflect on last semester and how far we’ve come. We have had some great opportunities and have created some lasting memories with one another. One particular conversation I had with another MSPL’er was about our Patent Law and Prosecution professor last semester. Professor Mike Wack—we both agreed—would have banished our January glums with his “aloha.” Aloha means “hello” and “goodbye,” but if you’ve ever visited Hawaii you know that aloha extends far beyond greetings—it is a way of life. The dictionary defines aloha as “friendly,” “hospitable,” and “welcoming.” These are three words that can certainly be applied to the environment that Professor Wack created for his students in his patent prosecution class.

Mike Wack epitomizeed aloha by wearing one of his forty-six Hawaiian shirts each week to class. Professor Wack’s spirit of aloha went far beyond his shirts, though. Each Monday afternoon the MSPL students were greeted with Professor Wack’s laid-back, conversational approach to learning how to prosecute patents. Professor Wack is an incredibly astute engineer and patent law professional; he is detail-oriented, grades tough but fair, and has high expectations for his students. Attending his class, though, was a lot of fun. He took time to answer every question thoroughly and concisely.

When it snowed twelve inches in one day last November, Mike Wack still wore a Hawaiian shirt to class. It’s nice to know that even though there may be a blizzard outside, we have professors like Mike Wack. Mike’s aloha has inspired us to learn. He has deep roots in the Notre Dame system and is part of a truly fascinating legacy with the University. The following is a brief discussion with Professor Wack, who you will see, is a pretty cool guy with aloha spirit that is quite contagious.

Please discuss your background. You are a teacher, engineer, and a licensed, practicing patent agent—why did you choose this particular career path?

I began a career in medical device product development as soon as I got out of graduate school, and did that for twenty-one years. It was a fantastic, rewarding occupation … I was able to design and develop devices and instruments used on many individuals. During that time, I became very interested in the intellectual property side of things and I took it as a challenge to design around competitive IP. I was able to take and pass the Patent Bar Exam, and then find a position in the same industry as a patent agent. I can still work with and mentor development engineers, while at the same time protecting our intellectual property. The best of both worlds!

Please discuss your associations with the University of Notre Dame and why you decided to teach patent prosecution at this university.

I have a very long association with ND! My great-uncle, Fr. Ed Keller, was a world-famous economist who taught there. My grandfather lived where Eddy Commons is now (at one time Knute Rockne lived across the street), and taught German there. My father graduated from there in 1950, along with a brother and several uncles, cousins, nieces and nephews. Two of my brothers are Holy Cross priests and attended the seminary there. And finally, two of my children currently are undergraduates there. I grew up in South Bend, and spent a lot of time on campus. True story: I came very close to being born in the stadium during a home game. Notre Dame is in my DNA!

My son saw a flyer about the MSPL program in his e-mail, and forwarded it to me. I immediately contacted Karen Deak, and we got it worked out. It is really a dream for me to be able to teach at Notre Dame and follow in my relatives’ footsteps.

What surprises you about patent law?

I guess the biggest surprise to me is how important every single word can be in a patent application. Each word’s meaning can be argued throughout the prosecution, and then again post-issuance. It makes me be really vigilant when I handle applications!

You often times stress to your students the importance of preparing for the USPTO Examination, commonly known as the “patent bar.” Please recount your personal experience with this test.

The first time I took the Examination, I was really confident and told my wife during the lunch break how well I thought I was doing. After I finished the afternoon session, I couldn’t believe I had scored a 64 and therefore did not pass! When I called my wife on the way home, at first she didn’t believe me. Then, she hurried outside to pick up the “Congratulation!” signs from the front yard and cancel her planned celebration (she told me this later). I was initially pretty discouraged, but I studied for several weeks and then re-took and passed the Exam. By the time I was finished studying, I’m pretty sure most of my children knew what a 102 rejection was!

What is the most important piece of advice that you would give to a newly licensed patent agent or attorney?

Look outside the art field of the invention! I have found a lot of relevant art in fields that on the surface appeared to have nothing to do with what I was searching. It is also a good way to help development engineers find ideas if they are stuck.

In your opinion, what is your greatest accomplishment in your career thus far?

Strangely enough, the first two years and my last two years. The first two years I developed custom implants for people with serious bone deficiencies or deformities, and it was extremely rewarding for me to be able to help them lead pain-free and functional lives. In my last two years I hope I have been able to not only teach students patent law, but also pass on some of my “life’s lessons” and help them become better people as well.

Please discuss your personal “fashion” choices.

I am well-known for my Aloha shirts … I have 46 of them! I wear a different shirt for each class, and I hope the students enjoy my brightening their day a little. Some of them wonder what I wear to work every day, and I tell them “Aloha shirt and jeans!”

What’s next for you; will you continue to teach as well as practice at Biomet, Inc.?

I hope to continue teaching the MSPL Patent law & Prosecution class. As far as my “other” life, I hope to continue to work as a patent agent for Biomet since I love working with medical devices. I am also starting a patent searching business (Blue Jay IP, LLC) with the eventual goal of doing that full-time. Finally, my wife and I want to be involved with as many philanthropic activities as possible: God has blessed us immeasurably, and we want to help others share in our fortunes!

The second half

Posted on January 16, 2015 by Catherine

A post from our student blogger Roberto

After a few short weeks off, winter break is finally over in the MSPL. My break largely consisted of working around the house, installing countless car parts in the frigid Wisconsin weather and enjoying time with my friends and family. Of course, I spent some time studying for the patent bar but largely this break was about focusing on what really matters to me. I learned recently that we often forget to take time for the little things in life and I knew there wouldn’t be much time for them this semester. That’s because the final semester in the MSPL is jam packed with patented filled fun by featuring a follow-on class in patent law and prosecution, a specialized patent prosecution class, an ethics class, the second half of the capstone project and an elective class. Just like last semester a major theme of the coursework in the MSPL is preparation for success in the real world. In addition to coursework, students in the MSPL are diligently working through the PLI patent bar study kits provided by Notre Dame. These kits include both physical literature and access to a multitude of comprehensive video lectures by PLI professionals. The kits even include practice patent bar questions that students can work through once they feel confident in a particular area.

The second semester will also include trips for the students to both California and to Washington D.C. These trips are focused on exposing the students to different types of careers and work environments that they may be interested in pursuing after graduation. As has been mentioned in a few past posts there are many different career options that MSPL graduates can pursue. Like last semester there will be many guest lectures hosted by prominent patent professionals in which they will give us practical insight into these career options as well. These guest lectures also serve to compliment the coursework of the MSPL by delving further into specific topics than would otherwise be possible. For example, a patent practitioner from the intellectual property merchant bank Ocean Tomo will be giving a lecture on intellectual property valuation, a topic that we simply don’t have the time to expand upon within the framework of the MSPL.

As you may have heard, my Green Bay Packers, and I say mine because I am an owner, have advanced in glorious fashion to the NFC Championship game in Seattle. For those who saw the Divisional game against the Dallas Cowboys you undoubtedly noticed the controversy over the potential game turning catch by Cowboys’ wide receiver Dez Bryant with around four minutes left in the game. While it was initially ruled a catch on the field, a challenge by the Packers forced the referees to enforce a rule that nullified the play. While many agree that the call was correct according to the current rules, few agree on whether the rules are proper to begin with. This is where the analogy to patent law comes in. Many familiar with patent law dislike many of the rules and standards they are held to. However, these individuals will be held to the rules whether they like them or not. If you aren’t a sports fan I apologize for always mentioning sports in my posts. I mainly do this because want readers to know I am a normal guy with a normal life outside of the MSPL (and because I love the Packers).

GO PACK GO!

Interview with MSPL professor Ron Kaminecki

Posted on January 14, 2015 by Catherine

A post from our student blogger Catie

As the bloggers have discussed numerous times, a thorough prior art search is pivotal to drafting a worthwhile patent application. During the fall semester, patent searcher Ron Kaminecki instructed the MSPL students in a course that focused solely on patent searching. Ron is a wealth of knowledge and experience, and he uses that knowledge and his own personal connections to provide his students with the broadest possible exposure to the realm of patent databases. Ron also uses his experiences to provide real-life examples of what he teaches, which hold the attention of his students.

After graduating from the Illinois Institute of Technology with a Bachelor’s degree in Chemistry, Ron began his career as a technical assistant chemist at the IIT Research Institute in Chicago where he did chemical information work, mostly concerning contract research. One of his first big jobs was to prove that trains can spontaneously catch fire; a task in which he succeeded and gained a passion for information searching. He transitioned into performing patent searches, and decided on a whim to get a Masters in Computer Science and then later take the patent bar exam. By the suggestion of his wife, he decided to take the LSAT and was later accepted into DePaul Law School, which he attended while also working as Manager of Patent Information at a drug company. Because of the law school’s newly formed department of intellectual property, Ron was one of the first graduates to receive a Certificate in Patent Law at the same time as a JD. Ron has spent his career as an independent Patent Information Researcher, assisting clients and leading courses in patent searching in all parts of the world. I asked Ron to answer a few questions for the blog, and the following is a brief overview of the fantastic stories and experiences that he shared with me.

What do you like about patent searching?

“I would be given the name of a company or a patent number and was expected to do a full legal briefing to my boss and the rest of the team (a techie and a financial person) usually within the next day or two! Then, we would all fly onsite, armed with a blank check and would have to decide whether or not to buy the company/patent from the client. I did deep dives into the literature and would love finding “embarrassing” facts, like one company in which the president’s spouse had owned a trademark for the company. When I name dropped this, the room went silent and they asked how I knew this! Just did my homework. I did several of these and really enjoyed doing this work.”

What brought you to be an adjunct professor at the University of Notre Dame?

“I was out of a job after 32 years at one company and was consulting when an old friend told me about the new program that Karen Deak was setting up. I contacted Karen and proposed a patent analysis course. Just a few days before we met to discuss this possibility in person, I fell off my bicycle (I’m a big bicyclist) and ended up in the ER with my entire left side abraded, a crack in my pelvis and other painful injuries. I could barely walk and could not sit and didn’t think I made a good impression on Karen; she was gracious as always. She contacted me a few weeks later to say that she could not use a patent analysis course. However, during the first school year, she contacted me because she noticed the students were struggling with finding patent information for their capstones. I did a two hour quick overview with the students, along with the same goofy examples that you saw, and showed them how to search. I agreed to consult over the semester, and Karen asked me to put together a syllabus for the next year of patent law students. Since then I have done a similar class at DePaul Law last summer and have since put together another class for New Hampshire Law. Luckily, this class is all online (which, while I am typing this, I am staring at my recording apparatus as I am recording my classes now).”

What do you like most about teaching a patent law course at the University of Notre Dame?

“I really like meeting the students because I like to meet people face to face. I learn from students, too, and I do change my syllabus, my teaching methods, and my presentations based on feedback. Yes, I do notice people almost dozing off when I am going through one of my hundred slide presentations. So, I add ridiculous inventions, or I try to find a really memorable example (like the black pills made by heating a mole for a week) to make people remember that a drug can involve a product and a method patent. Or, I will introduce something colorful, like the Mars lander that I worked on. I try to teach while entertaining, never the other way around, because I have found that all this technical stuff goes in and out and no one remembers it, but show them a tea bag and how to do a patent search on it, and they tend to remember it.”

You often spoke about your experiences in China. How did that shape your career in patent law? Do you get to travel outside of the country for your job?

“At one point I traveled about 80% of my time, though that was mostly in the US. I’ve been to many countries in Asia and Europe several times per year for many years and have even been to South Africa a few times. Based on my work in Asia, I have been asked to speak at legal meetings in which people paid to hear about the latest cases. My background in law and public speaking has taken me around the world many times. I once had a million miles on American and an a million and a half on United. I also learned that you have to be able to say a few words in the native language. Nothing special, just “Thanks; yes, no; bathroom?” and such essentials.”

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

“I would be a judge in the Court of Appeals for the Federal Circuit; the court that decides patent cases. Nothing like having everyone stand up when you walk into a room! Just kidding. I would love to dig into the depths of really technical cases and then argue with others.”

What is the greatest piece of advice that you would give to a beginning patent agent or attorney?

“Meet as many people as you can and remember them. Get to know their spouse’s name, their kid’s names, their dog’s name, their favorite food and better yet, the food they hate. People really like it when you recall such details years later. Also, I encourage everyone to get as educated as possible! I would love to further my education in a different field or learn something fun instead of something technical/legal. I learned how to cook for very large groups (hundreds) when younger, and I have an award winning chili recipe that made it into a cookbook! I’ve finally hit upon the almost right recipe…I’m always improving on my recipes!”

We are family

Posted on January 7, 2015 by Catherine

Members of the MSPL at Wine and Canvas for a fun holiday party!

A post from our student blogger Megan

The European Patent Office (EPO) defines a patent family as “a set of either patent applications or publications taken in multiple countries to protect a single invention by a common inventor(s) and then patented in more than one country. A first application is made in one country – the priority – and is then extended to other offices.” This simply means that you can apply for a patent on one invention in one country and receive patents for the same invention in many countries. You can research patent families and tracespecific publications to the original patent application document. All the patent documents are related, hence the name “family.” The Master of Science in Patent Law program is a lot like one of these patent families.

Each student in the program fulfills a certain niche. There are four doctoral degree students, two doctorates of law, and each MSPL member has an undergraduate degree in either the hard sciences or engineering. While we are all different, we also share quite a bit in common. We struggled to write claims during the first semester. We laughed at each other’s outlandish comments in class. We shared our worries and our frustrations. We became a family over the first semester of the program.

The most important thing we each shared over the last four months is perhaps our friendships. Through our common experience of going through the program together we bonded in a very unique way. Just like your real family, sometimes you get impatient with your family members and sometimes you even get a little annoyed with them. But in the end, you are family and you stick together. Sure, we’ve gotten to do fun activities together like go to a baseball game and have a painting party. But it is the day to day experience of becoming patent practitioners that has strengthened our bond and brought us together. We are fortunate to have each other and have made a point to celebrate each MSPL member’s birthday outside the classroom. We are a family—a patent family.

Argue everything

Posted on December 16, 2014 by Catherine

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

Posted on December 9, 2014 by Catherine

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

Posted on December 5, 2014 by Catherine

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.

Interview with MSPL professor, Hal Milton, Esq.

Posted on December 1, 2014 by Catherine

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’.”

Pro tips for patent agents

Posted on November 25, 2014 by Catherine

A post from our student blogger Catie

A few weeks ago, we had the privilege of listening to a presentation by Louis Fogel, who is a patent litigator at Jenner and Block law firm. As a resident of the Evanston, IL area, Louis was our lunch-and-learn guest for the Notre Dame vs Northwestern football weekend. Louis did patent prosecution for a while between graduating from law school and strictly becoming a patent litigator, which means that he has experience from both sides of being a patent agent. Speaking with him was a great opportunity for the MSPL students because of his multi-faceted perspective and experience in patent law. During his presentation, he gave us a few ‘do’s and don’ts’ that he has come to know over his years in the field of intellectual property.

DO:

Perform a prior art search and disclose it. This point has been hammered into our heads all semester; we even take a class that solely teaches search strategies for patent prior art! Technically, the USPTO does not require a patent search prior to filing a patent application. However, a prior art search shows you what technology and inventions already exist, so that you are not wasting your time in trying to patent an existing idea! What you find in the prior art search may also be useful in proving how your invention is better. Whether good or bad, it is also pivotally important to disclose the prior art that you found. Trying to hide pertinent prior art from the USPTO in your patent application will only come back to haunt you in either prosecution or litigation, and could potentially prevent you from receiving a patent, or even cause revocation of your patent agent/attorney registration!

Include multiple claims in multiple scopes. This is a point that has been emphasized in our drafting course. It is important to present an invention in a patent application in both broad and narrow scopes. The narrow scope, also called the picture claim, often exactly describes the invention itself, more or less for clarity concerning the preferred embodiment. However, narrow claims will not be incredibly helpful when trying to prevent others from inventing a practically identical or analogous product or method. Presenting the claims in varying scope will provide a more thorough understanding of the invention and its boundary lines to be presented in the patent.

DON’T:

Refer to your invention simply as ‘the invention’. As a blogger’s note: Yes, I have said ‘the invention’ numerous times in this post, so let me provide an alibi for myself. We have been told over and over all semester that it is incredibly important not to refer to your invention as ‘the invention’ and to avoid using the term ‘invention’ at all! I use the term ‘invention’ in this post as a general term to convey the concept of the idea that is to be patented. However, in a patent application, it is best to simply state what the invention is, or say ‘an embodiment of the invention’. For example, if your invention is a motion-transmitting cable assembly, then say ‘an embodiment of the motion-transmitting cable assembly’. This promotes broader interpretation of the object or method to be patented and avoids limiting what you may claim!

Say what the prior art discloses in plain language. As Louis explained in the presentation, it is not in your best interest to directly make statements in the patent application such as ‘the reference teaches that’ and include the exact disclosures of the patent or publication. This is because such a statement will often be considered an admission that the prior art successfully executes that intended purpose, which may negate the supporting arguments for the granting of your patent. After the patent application has been submitted, statements such as those cannot be retracted, so it is best to stay on the safe side and avoid those kinds of admissions!

As evident of these patent law pro-tips, drafting a patent application is quite complex and requires plenty of attention to details. As the MSPL students have learned over this first semester, patent prosecution is no easy task, and the quality of work presented in patent prosecution will determine the level of difficulty of work left for a patent litigator. Learning the do’s and don’ts of patent law are exactly why we’re here earning a Master’s degree in the subject!