Category Archives: patent agent

Spring semester is starting soon – Patent Prosecution part I

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Part I:

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?

MS in Patent Law’s Holiday Party

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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!

Merry Christmas!

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

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

The MSPL takes Chicago!

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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

photo by MSPL student Beau Horner

End-of-semester presentations

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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!

Chicago space launch party!

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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.

Chicago launch 2Chicago launch 1Chicago launch 3

Last Football Friday for the Fall semester

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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

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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!

Stuff-a-Bus

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As I have written about before, the MSPL provides our students with opportunities to give back to the community (see here and here). This weekend we were at Stuff-a-Bus, which is the major annual food drive for South Bend’s Center for the Homeless. We were in three shifts, taking donations along with students from IU-South Bend. Luckily we got some great weather and LOTS of donations for such a great cause!

Elaine, Connor (from ESTEEM), Cathi and Marcy

Elaine, Connor (from ESTEEM), Cathi and Marcy

Near the end of the day, the bus was indeed pretty well stuffed!!

Near the end of the day, the bus was indeed pretty well stuffed!!

 

 

 

Notre Dame’s MS in Patent Law at Penn State

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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.