Classroom tested, industry ready

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 Ron Kaminecki

Ron KA 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!”

BIO International Convention

#BIO2014 was June 24-26 in San Diego. Cathi and I were both there, as well as Andy Bullock (from the Harper Cancer Institute), Gaylene Anderson (from Notre Dame’s Office of Technology Transfer), and Denny Willson (who is the CEO of a company spun out of Notre Dame research, which is called Hsiri Therapeutics). We had a very busy three days, meeting new partners and talking about the great research we’re doing in the biological sciences at Notre Dame.

I spent some time hanging out with patent attorneys and agents from MBHB, Foley & Lardner, Venable, VedderPrice and from BIO itself. Always on the lookout for good connections for jobs for my graduates!

Gaylene, Andy and Karen at the MBHB Irish Pub party

Gaylene, Andy and Karen at the MBHB Irish Pub party

Spring Break 2014

The MSPL hit Washington, DC, this year for our Spring Break trip. Rose, Elaine, Josh, Joseph and David came along, and we had a very busy week. We spent a whole day at the USPTO (and saw an Inter Partes Review), visited quite a few law firms to hear about their patent prosecution practices, went to BIO to learn about careers in science advocacy for IP specialists, and finished it off at the NIH / NIAID, where we talked about tech transfer.

One of the highlights of the week was a visit to our state Senator’s office, where we actually got to meet Senator Joe Donnelly. He told us about his own experience with the patent system — he received a letter from a patentee alleging infringement, and he had to pay them some money so they wouldn’t sue him.

If you don’t follow our Twitter or Facebook, it’s worth a glance to see what fun we had this week — the students took over the feed and thoroughly enjoyed keeping everyone up to date on their shenanigans.

Back: Elaine, Sen. Donnelly, Joseph, David Front: Karen, Rose, Josh

Back: Elaine, Sen. Donnelly, Joseph, David
Front: Karen, Rose, Josh


Last Football Friday for the Fall semester

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

Karen, MS in Patent Law student Josh, and Michael

M Sartori 1

Becoming a patent agent

One of the important credentials that the MS in Patent Law’s graduates want is to be able to call themselves “patent agents.” Do be able to use that title, one has to pass the US Patent Office’s Registration to Practice exam, colloquially known as the “patent bar.”

About midway through each fall semester, we provide our students with a study aid, so they are more likely to pass the exam. Like for the GRE or LSAT, there are companies that provide study guides for the patent bar. We partner with PLI (the Practicing Law Institute, a not-for-profit organization) to give our students a solid study guide. This year, we were thrilled to be able to host Mark Dighton from PLI, who came to campus to talk specifically to MS in Patent Law students about the PLI course that they’ve gotten and how to study for the patent bar.

Mark, Rose, Travis, Joseph and Elaine -- and the PLI courses in the boxes!

Mark, Rose, Travis, Joseph and Elaine — and the PLI courses in the boxes!

Mark’s talk was really fantastic, and a good reality check about how hard the patent bar exam is. Thanks for coming, Mark!

Notre Dame’s MS in Patent Law at Penn State

Notre Dame’s MS in Patent Law (MSPL) prepares scientists and engineers to help inventors get patents.

Representatives from the MSPL will be at The Pennsylvania State University on Nov. 15, 2013. Come learn about careers in patent law and the MSPL at an informal Lunch-and-Learn in 517 Thomas Building, 12:15-1pm.


The MSPL is a one-academic-year program, at Notre Dame’s campus in South Bend, IN. We prepare our students for practice as patent agents, through a curriculum of hands-on, practical learning. Candidates must be Patent Bar eligible, which means they have a science or engineering background.

Patent agents usually work at law firms and at R&D-based companies, where they help inventors protect their inventions by getting patents. Many of our graduates, like Kerisha Bowen, have gone on to work at law firms in major metropolitan areas. Our graduates are in high demand at law firms across the country.


If the MS in Patent Law is an option for you, make sure your completed application* is submitted by December 15, 2013! All students who submit complete applications by that date, and who then join the MSPL’s 2014-2015 cohort, will receive a $2000 discount on their tuition!

Also, if you like our Facebook page, or follow us on Twitter, we’ll waive the $75 application fee.


We are also excited to announce that we are expanding our offerings and our locations to better serve more students! Starting in the 2014-2015 academic year, Notre Dame will offer a Certificate in Patent Prosecution at our Chicago campus.


If you or someone you know is interested in learning more about the MSPL or the Chicago Certificate program, please contact the program Director, Prof. Karen Deak.

USC game day

Today Notre Dame plays USC, in one of the few home night games of our football season. As I’ve written about in earlier posts (here, here, and here), football weekends are great times for networking with alums who are interested in what we’re doing with the MSPL, and in meeting our students.

Yesterday we hosted another of our Friday Lunch-and-Learns, in which Stephen Smith, a patent litigator from Quinn Emmanuel (ND ’07), talked about what patent prosecutors can do to make his job as a patent litigator easier (or harder, depending which side he’s on). Stephen’s talk was really engaging, and he included a bunch of practical tips that the MSPL students hopefully will take with them as they write their capstone patent applications. This is Stephen’s second visit to the MSPL – he came last year and was so well-received that we invited him back!

I have been working hard today, too. I started the day with a breakfast with someone who I hope will be a new friend to the MSPL. Over lunch, I met with Peter McHugh (ND ??, I wouldn’t want to say), who is an attorney for the biotech trade group called BIO. Last year was Notre Dame’s first time participating in BIO in awhile, and we had a really good reception among the biotech community. We are planning an AWESOME event this coming convention, which is June 23, 2014 – June 26, 2014. Stay tuned for details.

After that, I was invited to the GE tent. GE has been a strong partner to Notre Dame generally, hiring more than 500 ND grads in the past 10 years or so. GE has also been a strong friend to the MSPL, hosting us at several of their sites last year over spring break (posts here and here).

It’s been a great day, and now I’m ready to watch some football. GO IRISH!

Game Day - a view out the office window

Game Day – a view out the office window

The Chicago patent bar

I’ve had a busy week this week! On Monday, we had the Open House, which kicked off our recruiting season for our next class. On Wednesday, Travis, one of this year’s MSPL students; Gaylene, from our Office of Technology Transfer; and I met with a faculty inventor to learn about his technology (which Travis will be working on as his Capstone project).

Thursday was quite full. I was on the South Shore Line train into Chicago at 6AM, and arrived at 8AM. I love riding the train in because I get so much done without the distractions of email! I met Ron Kaminecki there, along with Janet Laybold from our Law School. We spent the day talking to Chicago patent prosecutors and litigators about the MSPL. They had some really good ideas about ways that we can promote the program in the Chicago area; both to find students and to help our graduates get great jobs.

Thursday ended with an invitation to attend the Linn Inn of Court. Inns of Court (I learned on Thursday) are a way for the legal bar within a particular field of law to share knowledge and mentor the next generation of lawyers in that field. I’m not sure if I, as a patent agent, would be eligible to participate. Hopefully I’ll continue to be invited and can learn more about what happens!

Friday we hosted the professionals from our Office of Technology Transfer, so that the MSPL students could get to know them. Because our students’ Capstone projects are delivered to OTT at the end of the year, it is important to me that everyone can put a name with a face well before the final work is handed in. We kept it pretty informal, simply doing introductions all around (students and OTT folks) and then doing a Q&A. I think our students asked some great questions!

And, of course, Saturday was the MSU game. I spent my pre-game time working hard, making sure that I met a couple of patent professionals who were tailgating!

Chicago skyline at night

Chicago skyline at night