School has been cancelled yesterday afternoon and today — we’re having an unusually cold and snowy winter.
Given that class was cancelled yesterday, but also taking into consideration that our professor for Patent Prosecution had driven all the way from Cleveland to teach, we held a virtual class meeting using Google hangouts. It was quite successful, actually! Cindy (the prof) did a great job, and I think it was a good exercise in conference-call and video-conference etiquette for our students. They learned that they need to be more responsive and demonstrative than they would normally be in class, since the prof is not able to read their comprehension as clearly as if in-person.
And, possibly the biggest upside of holding the class virtually is that we don’t have to hassle with scheduling a makeup!
By definition, the MSPL focuses on teaching our students about patents. How to get them, how to talk to people about them, what they’re good for (or not). But sometimes it’s important to step back and get some perspective.
In our Ethics class, our students will spend the first three weeks of the semester learning about the other kinds of Intellectual Property that are common in the United States: trade/service marks, copyright, trade secrets, and trade dress. (In other countries, traditional knowledge is also considered a type of IP, but we don’t cover TK in our curriculum.)
The point of having our students learn about these other kinds of IP is quite practical: clients have problems; and most clients have more than one type of problem. So, it’s almost certain that, at some point, every patent agent is going to see a TM or (c) and need to know what that means. … and whether or not s/he can provide legal advice to the person who’s asking a question (hint: NO!).
I teach these classes, and even though they’re out of my area of specialty, I really enjoy them. This year the Robin Thicke/Marvin Gaye lawsuit over “Blurred Lines” is going to provide us with some fun subject matter when we talk about copyright. And, my favorite Diet Coke will make a special appearance as a teaching prop!
Read part I here.
Read part II here.
Patent prosecution, from the inventor or applicant’s perspective, can be scary. Their patent application, which they have probably spent a lot of money to have prepared, isn’t going to become a patent after all??!!
That’s not necessarily the case, though — as mentioned in Part I, it’s quite frequent that an applicant gets a rejection for a good reason!
Here’s where a good patent agent or attorney is invaluable. The rejection will be made in highly legal and technical terms — and the patent agent or attorney will know how to rebut the rejection appropriately. They’ll be able to throw the legal and technical jargon right back at the Examiner and blow his or her argument to bits (formally known as “overcoming the rejection”).
These skills aren’t something you just pick up — the MS in Patent Law teaches our students how to systematically approach rejections from the Patent Office, so they can help inventors get patents.
Read part I here.
After a patent application has been filed, a person at the US Patent Office has to review the application and decide whether the application deserves to become a patent. The person who does this review is called a Patent Examiner.
The Examiner looks to make sure the application fulfills all of the requirements that the US Code sets out for a patent (mainly, 35 USC 101, 102, 103 and 112). The Examiner will reject any application that does not fulfill these requirements — ie, s/he won’t allow the application to become a patent. As I mentioned in a previous post, it’s not unusual for the Examiner to make a rejection the first time s/he looks at an application.
Once an applicant gets a rejection, s/he gets to rebut it. In other words, the applicant gets to say why the Examiner is wrong. This process of rejection and rebuttal is known as “Patent Prosecution”. Sometimes people hear prosecution and think of going to court — but that’s not the case here at all! Patent Prosecution refers to the negotiation between the applicant and the Patent Office about whether a patent application should be allowed as a patent.
In future posts: What does patent prosecution look like from the inventor’s perspective? What do MSPL students learn about patent prosecution?
The MS in Patent Law’s spring semester starts on January 13 with the first class of Patent Prosecution taught by Cindy Murphy. This course is a very important component of the MSPL curriculum because patent agents spend so much time using the skills that this class teaches in the real world.
It turns out that filing a patent application is only the first half of getting a patent. If the application has been correctly drafted, the Patent Office’s first communication to the applicant will be to let them know that the application has been rejected. ‘What?! A well-drafted patent application will be rejected?! How is something that gets rejected well-drafted???’
Here’s the logic behind that statement: if your patent application gets allowed (ie, becomes a patent) right away, that means you didn’t ask for enough. It’s like selling your house — if your list price is too low, someone will just pay what you’ve asked without haggling over it. Patents are the same way: if the Patent Office lets you have one right out of the gate, you didn’t ask for enough.
In subsequent posts: What is patent prosecution? What does patent prosecution look like from the inventor’s perspective? What do MSPL students learn about patent prosecution?
We had our annual Christmas party a couple of days ago. True to the holiday spirit, we had dinner at a local Mexican restaurant (yum!) and then went bowling. Cathi won the first round of bowling, and Karen won the second. Lest you think that we chose bowling because we’re both ringers, I’ll let you know that neither winning score was higher than 110. Maybe next year we’ll have some stiffer competition from our students!
From left to right:
Back row: Josh Lee, Travis Howell, Karen Deak, David Kleycinger, Joseph Handen
Front row: Rose Moller-Jacobs, Cathi Kennedy, Marcy Kreimier, Elaine Seasley
On Friday, the MSPL went to Chicago. We spent the afternoon in the city — the students had a couple of hours to explore, and then we heard from Chris Moreno about patent prosecution.
Chris is a shareholder at VedderPrice in Chicago, where his practice focuses on patent prosecution. He gave our students an overview of the process and also provided lots of tips he’s learned from about 20 years on the job. It’s always a delight to have Chris provide this lecture at this time of the year! Thanks Chris!
photo by MSPL student Beau Horner
It’s now exam week, and our MSPL students are mostly done with their end-of-semester presentations. These presentations are a major checkpoint in the program, in which MSPL students defend what they’ve accomplished so far.
For fall semester, our students’ end goal is to write a set of patentable claims. To do that, they learn about a completely new technology from a faculty inventor here at Notre Dame. Then they perform a patentability search in PATL 60111 (taught by Ron Kaminecki this year). Finally, they craft a claimset in their Capstone classes (PATL 60301, which I teach). These tasks are all things patent agents do on a daily basis — and are not easy tasks, for sure!
Our students turn in the results of all of this work in a single document, and then put together a set of slides that they use to give a talk describing their findings. The students present to me, the faculty inventor, and the representative from Notre Dame’s Office of Technology Transfer who handles that technology.
As I said at the top, almost everyone has finished their presentations by now — and everyone has done a fantastic job! It’s been very exciting to watch everyone grow and learn SO MUCH over the course of a single semester. Congratulations to everyone!
At the end of November, the Law School officially launched the new Chicago space. We hosted about 200 Chicago-area legal professionals. Of especial interest to the MSPL, several of last year’s patent attorney mentors joined us, as well as some new friends.
Keith Jarosik and Mark Galis from Greenberg Traurig were there. Keith mentored a MSPL student. Also, Tom Donovan — another of our mentors– was there, pictured below with David Murphy (director of the ESTEEM program here at Notre Dame) and Sunny Shah (also from ESTEEM).
A more recent acquaintance who was in attendance was Brian Goddard, who is at Cardinal IP. Also Barry Irwin, who is a patent litigator, and an old friend, was at the Launch Party, with his wife Ursula.
Our last guest for the MS in Patent Law’s Football Friday lecture series this semester was Michael Sartori, PhD – chair of the patent prosecution practice at Venable LLP. Michael is a triple domer (BS, MS and PhD)… although he decided to go elsewhere for his JD.
Michael talked to MS in Patent Law students about things to consider to create a successful career in patent prosecution. Among the pointers he provided: as a new patent agent, make sure you get to work on all of patent application drafting, patent prosecution and patent litigation; and make sure that your firm has processes in place for providing a quality product to its clients — which requires knowing how to serve the clients you work for.
Michael has been a big supporter of the MS in Patent Law, from before it was ever officially created, in fact. Thanks for coming to visit and talk to our prospective patent agents, Michael!
Karen, MS in Patent Law student Josh, and Michael