Patent bar exam

A post from student blogger Nicole

First off I would like to say what a pain in the butt applying for the patent bar exam is.  But don’t stress out because I am here to help you!  To start off you have to read the General Requirements Bulletin and fill out a form provided by the Office of Enrollment and Discipline (OED).  But that’s not all.  You have to make sure you send in your transcript, UNOPENED.  For some reason I thought I could open my transcript and still be able to send it in, but I was wrong.  So I had to have my transcript sent to me again.  You also have to fall under one of the three categories in order to take the exam.  The three categories include Category A: bachelor’s degree in a recognized technical subject, Category B: bachelor’s degree in another subject but for this one you have to explain courses you’ve taken that make you qualify (for this category you are allowed to have an opened transcript to highlight specific courses), and Category C: practical engineering or scientific experience which means you have passed the Fundamentals of Engineering (FE) test.  One more thing is that there is a couple of questions on the form where you have to say yes or no.  One of the questions is about having any kind of traffic violations.  It is important to list any violations that were under $100.  It is also important to explain the traffic violation in full detail.  Another thing is the certificate of mailing form that should be filled out.  All of the appropriate forms are located at the end of the General Requirements Bulletin document.

If the forms, transcript, or descriptions of the traffic violations are not included in the information sent to the USPTO, then they will deny you from being able to take the exam.  But on the bright side they will let you submit the missing things in order to be allowed to take the exam.  This will all take a couple weeks so make sure you plan accordingly.  Also it is very important to read the General Requirements Bulletin because I read that you can be denied if you put your middle initial instead of your full middle name.  It’s kind of a silly thing to be denied for but it can happen.  The USPTO really just wants you to have a good moral character and reputation.

Stayed tuned for one of my future blogs to find out how I did!


A post from student blogger Brittany

touchdownI finally touchdown at Notre Dame and I am absolutely in love with the campus. It is breathtaking and despite living in Florida for the last couple of years I am excited about the first snowfall although from speaking to current students and faculty that feeling will be short-lived due to unforgiving temps.

Our first week consisted of a getting familiar with fellow cohort members. I must say we all have very diverse educational backgrounds but have already found commonalities and I feel this will be a great group. We all showed up ON TIME for our headshot which Karen said was a first so I think we’re off to a record setting start. We attended a South Bend Cubs game and of course we had to let everyone know that the 2015 MSPL cohort was in the house. Two classmates decided to partake in some half time shenanigans by racing on the field…on bouncy balls. It’s safe to say that neither of them will be living that down.

Outside of our “getting to know you” activities we were also thrust into the world of patent law by an outstanding presenter. Because of his 20+ years in the field he was so insightful, thorough and most of all honest about life as a patent agent. I’m not going to lie, it was a lot of material to take in especially for someone that had just completed her dissertation less than a month prior. I had to get right back into student mode, feverishly taking notes making sure not to miss a thing. The week ended with a mock Patent Bar Exam. Let’s just say that I walked home feeling completely defeated questioning what the heck I had gotten myself into. That practice test made me quickly realize that if I thought these 9 months would be a walk in the park compared to 5 years of research that I was DEAD WRONG.

Meeting all the professors who were a combination of patent agents and attorneys was quite interesting. I was pleased that we were learning from people that had YEARS of hands-on experience in the field. It was already refreshing that Karen was so down to earth and witty, but each of our professors have comical personalities as well.

All in all, being at Notre Dame these last two weeks have subsided the apprehension I had about making a career transition and made me realize how many doors this program could open for me. Being in the program is already getting me out of my comfort zone and I look forward to sharing my ups and downs throughout the next 9 months.

Team players

A post from our student blogger Roberto

This year students in the MSPL will have the amazing opportunity to travel to California.  On the trip students will visit many different companies with in-house counsel, such as E-Bay and Qualcomm, as well as distinguished law firms.  A large focus will be on exposing students to different working environments, different working team styles and various career paths.  As a patent agent it is crucial to be a team player and to understand the dynamic of the team you are working for as well.  Visiting companies and firms in California will give MSPL students their first experiences in some of these different team styles.  This will help them understand what to look for and the types of questions to ask as they are deciding where they would like to start their careers after graduation.

In anticipation of the trip MSPL students attended an emotional intelligence workshop.  Don’t worry, when I first heard that I had no idea what it was either.  Essentially, students participated in various team building activities aimed at helping them develop their interpersonal and team oriented skills.  Though often overlooked, these skills will be utilized just as often as any technical skills in the real world.  In fact, one of the major components of typical interviews is an evaluation of how a candidate would fit in with the current team structure and environment.

The past weeks assignments have continued the focus on preparation for life after graduation.  In our prosecution class we recently worked through an assignment where several changes to the claims of a patent application and abstract needed to be formally submitted to the United States Patent and Trademark Office (USTPO).  What you may not realize is that there is an entire standard for how to submit these changes that includes underlining, strikethroughs and status identifiers that must be used by patent practitioners.  While at first glance these standards, which are outlined in the lengthy manual of patent examining procedure (MPEP), may seem unnecessarily complicated they actually are quite practical.  Just like any standard, these rules ensure that patent examiners only have to learn one editing convention.  This increases the efficiency of the examiner and speeds up the entire patent process.  Which is important considering the patent system is currently backlogged by about 590,000 applications.

One of the many benefits of becoming a patent agent is just how closely knit the relatively small community is.  The patent law community is also pretty active, producing many blogs and forums for sharing news on relevant court decisions as well as educational pieces and other interesting stories.  By far the biggest news of this past week was the Super Bowl between the Seahawks and Patriots.  To my surprise, one of the intellectual property news sources I follow, IPWatchdog, published an article entitled “Seattle Football and the Twelfth Man Trademark”.  The title of the article interested me not only because of the sports nature of the content, but also because we have recently spent some time learning about trademarks in our classes.  While I won’t give away the entire article I will say it is an awesome read.  For those who do not know, the Seattle Seahawks stadium is shaped in a way that funnels the noise from its 67,000 fans as efficiently as possible to the players on the field.  This design creates the illusion that opposing teams are facing a “12th man” in the fans noise.  As such, Seattle has launched new marketing strategies exploiting the“12th man” moniker.  Unfortunately for Seattle, the “12th man” was trademarked by Texas A&M University back in the 1980s.  As one may guess, litigation and subsequent settlement has occurred and now Seattle pays regular licensing fees to Texas A&M to use their trademark.  For a complete and much better written story please read the article via the link above.

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.”

The second half

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).


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!”

We are family

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

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.

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

Graduation 2014!

We just finished up Graduation Weekend 2014. I am so happy to celebrate with all of our new graduates!

On Friday night, we hosted students and their families at an intimate dinner at a local restaurant. I got to meet parents, siblings, and other loved ones in a celebration of what our students have accomplished, and the great things which they are heading to next.

Then Saturday morning was the Graduate School ceremony. Nobody tripped, and everyone received their diploma. Saturday afternoon was the commencement Mass, and we had a beautiful homily from Fr. Jenkins. The whole-University Graduation Ceremony was on Sunday, and the weather was, against all odds, beautiful!

A couple of our students (Elaine and Marcy) made their way into the official ND graduation video. See them here, they’re at 0:40.

It’s been a great year and I wish the best for all of our students! Congratulations!!!

Rose, Joseph and Marcy

Rose, Joseph and Marcy