Category Archives: MSPL news and notes

MSPL’s second year

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We’re already halfway through our orientation week, and as I write this post, our students are taking a “mock” patent bar. They’re answering 50 questions — half of the “real” exam –to get a sense of what they’ve gotten themselves into. They’ll take a similar exam at the end of their year here, so they can see how very much they’ve learned.

The money shot!

The money shot!

Yesterday evening we went on a little group outing to a South Bend Silverhawks game (AAA baseball). We had a great time, as you can see from these photos! Many of our faculty members were able to join us.

We even got our name on the jumbotron!

We even got our name on the jumbotron!

 

 

We had great seats on the third base line!

We had great seats on the third base line!

 

 

 

 

AUTM Days 2 and 3

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On Wednesday I attended a very interesting session: “Not the Usual Suspects: Non-traditional IP from Non-traditional Sources.” The panel presenters from the OTT from the University of Illinois shared how they realized one day that they were only interacting with a very small part of their campus. To kick start communication with the rest of the campus, they held an open meeting with the deans of the humanities and social science departments to discuss what the OTT does and what types of resources they could offer.

They have since partnered with foreign language department, industrial design, music, sociology, psychology and architecture. The OTT has made the commitment to the entire campus to listen and learn, and to adapt existing processes and tools (within reason) in order to meet non-traditional IP needs.

One presenter from a consulting company mentioned something important to think about when opening up OTT resources to departments other than STEM – impact is not always proportional to dollars. These projects are still important.

The consultant also talked about licensing opportunities for university collections of art, music, artifacts, antique maps, and books. These licensing agreements are often very different from tech agreements in that they are limited term, payout minimum royalties in advance and often specify how the work is to be used (replicated on t-shirts, used as a logo for software, etc.). This type of licensing protects the university’s investment in the collection.

Today on the closing day of the conference, I attended a session which was essentially an open discussion about faculty expectations of tech transfer offices. Many topics were brought up in this session both from faculty representatives and OTT representatives such as faculty motivation for disclosing their IP (money, altruism), the need for consistent clear expectations and communication from both parties, and showing the value of what the OTT can bring to the inventor.

One university representative talked about having a faculty liaison act as a bridge between OTT and the inventor. When OTT has to say no to a technology or invention, the inventor might doubt that the OTT office has done its due diligence, but if a colleague explains why it can’t move forward, they are often more accepting of the news.

One panel presenter who has been on both the university and the corporate side of IP, suggested that the OTT be more involved with the brainstorming around how ideas and technology could be used. He gave the example of a chemist who is very interested in how certain molecules are bonding, but is unsure of how this would be applicable commercially. The OTT staff could bring an outside perspective on ways the technology could be used.

Another suggestion from the audience is using a third-party patentability and licensing analyst. This negates any perception of the tech transfer office being biased toward individual faculty or departments.

 

 

 

Tech Transfer and Patents: Observations at AUTM

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My name is Cathi Kennedy and I am the program coordinator for the MSc in Patent Law. This week I’m attending the Association of University Technology Managers’ (AUTM) Central Regional Meeting in Indianapolis. Representatives from universities, law firms, and industry are here to exchange ideas, network, and learn about new trends and practices in the field.

Having neither a technical nor legal background, I am here to observe and absorb information and meet nice, very smart people who are interested in hearing about the MSc in Patent Law program.

Today’s first session was about the America Invents Act, which went into effect on March 16th. Two people on the panel were from the USPTO. They spoke to the new procedures and requirements surrounding the new act, and also about the AIA training and resources available for both new and seasoned patent examiners.

The other presenters were from law firms and a tech transfer office. They spoke about how the new act is changing the way patent applications are being written and prosecuted and took questions from the audience.

I also attended an interactive session on “Negotiating the Basics.” In this session, we broke out into groups in which half the took the side of the university and the other half played the role of the industry. Each side then had to go through the terms of negotiation on the technology for the Horseless Carriage from their perspective. The terms that were considered were scope, term, joint development, reps and warranties, consideration (payments), improvements, and enforcement of patent rights.

My half of the group represented the company side of the negotiation (although all the members of the group work for tech transfer departments). Panel representatives from a university tech transfer office and from a large biotech company then talked through each of the terms of negotiation from their viewpoint. It was interesting to see how each side ranked the terms’ importance and which areas were more contentious (consideration and reps and warranties for instance).

Tomorrow’s agenda: licensing opportunities from non-traditional sources, and trends and strategies for working with academia from the industry leader perspective.

Priority application deadline is approaching!

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If the MS in Patent Law is an option for you, make sure your completed application* is submitted by April 30, 2013! All applications submitted by that date will be considered for one of four scholarships next year.

We have two $5000 scholarships made available by the gift of agenerous Notre Dame alumnus. These scholarships are available to EE or ME graduates, and will be awarded to students with demonstrated financial need.

We have two additional $5000 scholarships available to students who are interested in blogging for the MSPL. These scholarships are open to any applicant.

All completed applications* will be considered for these scholarships. If you are one of the finalists, we’ll notify you directly.

We look forward to seeing your application soon!

*Completed applications include informal transcripts, GRE/LSAT scores, and all required personal statements. Letters of reference are NOT required for consideration for these scholarships, although they are required for the final application to the program.

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patent 3 small

 

 

 

 

We’re winding down the year here at the MSPL, and have some exciting news to share: two of our students have already taken and passed the patent bar exam! They are on their way to becoming registered patent agents!! Congratulations!

The job outlook is also bright for our graduates: two of our students already have jobs, and everyone else has had at least one interview for a job as a patent agent or a technical specialist! I couldn’t be more proud.

It’s been a great first year, and I’m so excited to have been a part of it. I wish all of our graduates the best of luck as they start their careers in the patent world!

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.

Power and Water

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We spent today (our last day!) at GE’s Power and Water facility in Schenectady, NY. This facility was started by Thomas Edison himself – check out the signature on the visitor’s pass we found!

 

 

 

GE visitor pass

 

 

 

 

 

Also in the picture is Buddy Cusick, one of the IP counsel who supports some of the R&D that happens at the Schenectady campus. Buddy is second from the right.

In addition to hearing from quite a few GE representatives today, we toured two plants. We got to see where they make their HUMONGOUS steam and gas generators, and also where they make a cool new type of battery.

After the tours, we chatted with Mike Gregory (a ND alum, and GC for the business unit), three technologists who develop new products at the facility, Buddy and Frank Landgraff (chief IP counsel for the business unit) and Mike Gnibus, who heads GE’s Global Patent Organization in Shelton, CT. Each speaker gave us their perceptions of the importance of patents to the business unit and to the company overall, and our students got some excellent advice that they can take with them into their practice careers.

 

It’s our last day, so sadly we will be headed home tomorrow. It’s been an amazing trip, and I am looking forward to next year already!!

 

GE’s GRC

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We spent yesterday at GE Transportation in Erie, PA. They make locomotives there. Who knew how much innovation is going on in that space – it’s a 150 year old technology in some ways, but in other ways, entirely new. The below photo was taken in the building in which we had a learning session with Shawn McClintick (Senior IP Counsel for the Transportation group). Shawn is second from the right – after Thomas Edison and one of our students.

GE transportation

 

 

 

 

 

 

Today we spent the day at the Global Research Corporation. We got an up-close view of a couple of very cool new GE technologies, met a few ND alums, and got to talk to a part of the IP team which manages GE’s patent portfolio. The students learned alot about what options are available for patent agents and patent practitioners generally at corporations like GE.

 

We’ve been lucky enough to be invited to stay at the GE Lodge on campus, and the view is beautiful!

GE view from lodge

 

A visit to Detriot

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Detroit GM buildingWe spent today in Detroit, MI. Most of the day was spent learning about the new Detroit regional USPTO. They only do patent work there, and concentrate heavily in the mechanical and electrical engineering fields. They’ve hired and trained around 70 new patent examiners since they opened, and are aiming to have about 100 new examiners in their first year of operations.
The folks at the PTO were very gracious hosts. We learned about the mission of the PTO and of the Detroit office, had lunch with some current examiners, learned alot more about the job of an examiner, and also got to share a bit about the MSPL.
After a tour of the office, we traveled to Dickinson Wright to mingle with some of the folks we know through our adjunct faculty member Hal Milton. Kim Slaven, a ND alumna, is a patent associate in the Troy, MI office of Dickinson Wright, and arranged for the MSPL students to meet some of their patent interns (trainee patent prosecutors). We spent some time in their 40th floor office, which has a great view of the GM building. Unfortunately it was rainy today, so the photo isn’t great, but you can still get the idea of how amazing the view is (Canada is in the background!).

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.