Category Archives: patent agent

Announcing two new Certificates in Patent Prosecution

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Great news! We’ll be adding two new Certificates to our portfolio, starting in the Fall of 2014.

Certificate students will be learning the same content as students in the MSPL — the fundamentals of patent law and patent prosecution practice. The Certificates are geared to serve a population which wouldn’t be able to move to Notre Dame for an academic year, or which, due to professional responsibilities, might not be able to take more than one course at a time.

Our Chicago certificate courses will be held in the Notre Dame classroom space at 224 S. Michigan Ave., right across from the Art Institute. Our Online Certificate courses will be held, well, wherever our students are!

Learn more about the Curriculum for the Certificates, or if you’re thinking of enrolling, request more information.

 

April 15 is the application deadline for scholarship consideration

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Just a quick reminder that, if the MSPL is an option for you next year, April 15 is an important deadline.

Completed applications received before or on April 15 will be considered for all of the MSPL’s scholarships. We have two $5000 blogging scholarships (so you could be writing these awesome blog posts next year instead of me!); and two $5000 scholarships for engineers (financed by ND alum Matt Connors).

Click here to start your application!

And please feel free to contact Program Coordinator Cathi Kennedy (ckenned7@nd.edu) or Program Director Karen Deak (kdeak@nd.edu) with any questions.

Spring Break 2014

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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

 

Volunteering at the Food Bank

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Last week, two MSPL students and Cathi and I spent a couple of hours volunteering at the Northern Indiana food bank. That place is MASSIVE — I had no idea how big it is, or how many people and agencies it services. It’s two floors of a gigantic warehouse, all dedicated to storing and distributing food to those in need.

Our job was to prepare meals for students to take home over the weekend so they don’t go hungry. As you can see in the picture below, the Food Bank has a great system set up — you go down one side, where Rose and Travis are, putting one of each item into a bag, and then tie the bag up and drop it in the bin at the end. Repeat on the other side (demonstrated by Cathi).

A genius two-sided assembly system

A genius two-sided assembly system

Markman hearings

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This year, for the first time, MSPL students are going to participate in a mock Markman hearing. What is a Markman hearing, you ask?

When a patent is litigated (think Apple v. Samsung [smart phones], Association of Molecular Pathologists v. Myriad [breast cancer genes and diagnostics]), one of the important steps of the pre-trial process is the Markman Hearing. This hearing is named for a case from 1996 in which the Supreme Court decided that a patent’s claim language is a matter of law (to be decided by a judge) instead of a matter of fact (to be decided by a jury). The outcome of that case is that now, before a patent infringement case goes to a jury, a judge will “construe” the claims via a Markman hearing.

In the Markman, the two sides decide jointly which claim terms need to be clarified, and then each side briefs and then argues their positions before a judge. Cases can be won or lost at the Markman stage, since an unfavorable claim construction (ie, interpretation) can completely undermine one party’s legal position. In fact, many cases settle immediately after the Markman hearing.

It’s important for a patent agent to understand how litigation works, since the patents which they write may eventually be litigated. The Markman is the most direct part of that process — why did the patent agent or patent attorney choose a particular word for a claim, and what did that word mean when it was chosen?

Our students will be taking claims and terms that were litigated in the recent Apple v. Samsung case, and briefing/arguing a couple of the more interesting claim terms. Our judges will be two practicing patent litigators — Rick McCaulley from Ropes & Gray in Chicago, and Tony Dowell from Taft, Stettnius in Indianapolis. Next Friday we’ll meet to learn about Markman hearings and identify the claim terms to brief, and then the following Friday the students will present oral arguments. Check back to learn how it goes!

 

 

Snow day!

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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!

 

 

Other kinds of Intellectual Property?!

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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!

Patent Prosecution Part III

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Part II:

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.

Patent Prosecution part II

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Part II:

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?