Category Archives: Student blog posts

A Good Example

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A post from our student blogger Sarah Goodman

The latest blog emphasized the importance of incorporating alternatives and variations when drafting patent applications. The purpose of this practice is to produce a higher quality patent application and protect a client against competitors. An additional technique to strengthen a patent is the use of examples. Examples in a patent application are specific embodiments of the invention. Inclusion of examples is not always required by a patent examiner. However, it is good practice to describe different embodiments of the invention especially in the unpredictable scientific fields like chemistry and genetics.

An example is a detailed description of an embodiment of the invention. Examples may include a description of how to make the invention, how to use the invention, and specific details of an embodiment. Specific details such as the temperature at which a reaction was run or compositions from which a product was manufactured can assist in demonstrating enablement of the invention. Increasing the number of examples often broadens the scope of the claims by distinctly pointing out different features of the invention.

There are two types of invention embodiments that can be included in a patent application: prophetic examples and working examples. According to MPEP 2164.02, a working example is based on an experiment that was actually performed. A working example may include testing conditions, usability conditions, specific compositions, and experimental results. A prophetic example is based on predicted results when the experimental work was not yet actually conducted. Prophetic examples may include simulated test results, calculations, and theoretical experiments.

There is a correlation between the need for working examples and the complexity and unpredictability of the field of the invention. Descriptions of example embodiments may be the best way to demonstrate the utility and function of some inventions. Including examples in a patent application can be very helpful in fulfilling the requirements set forth in the MPEP for enablement under 35 U.S.C §112(1). In our MSPL program, we are currently drafting the examples for the patent application portion of our capstone projects.

Alternatives and Variations in Patent Applications

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A post from our student blogger Sarah Goodman

In the MSPL classes, we learn that well-drafted patent applications should contain the widest breath possible and appropriate to best protect the client against competitors. When more attention to detail is paid by the patent drafter, more coverage can be granted to the patent applicant. The claims should be written to cover more than just the minimal features of an invention. A good technique is the incorporation of alternatives and variation.

Alternatives are different methods of accomplishing a task. Alternatives can include additional ways an invention can be utilized. Variation is the addition of different configurations, materials, and compositions. Alternatives and variations can be added by the patent drafter which requires creativity and research into the technical field. At least one actual embodiment of the invention must be included in the patent application, but describing the invention usually involves a lot more than just describing one embodiment. Any possible alternatives and variations should be included when preparing and filing patent applications to reduce the ability for competitors to design around the claims.

Variations should be listed even if not the best mode of practicing the invention. If variations are not included in a patent, a competitor company could sell cheaper inferior products without infringing by using the less optimal materials. Variations should include everything that could reasonably work. Another reason to list alternatives and variations is to allow the patent owner to continue improving the invention. If alternatives are not listed that later are discovered by a competing company to be an improvement, that company could obtain competitive patents which block the innovation of the original patent owner.

Listing variations and alternatives is a much cheaper and simpler method of providing broad coverage for an invention than filing more patent applications. The difficulty and expense to list alternatives and variations is minimal when compared to the cost and amount of effort necessary to file additional patents on modifications of one basic idea.

By writing a nonprovisional patent application as our capstone project in the MSPL program, we learn how to use alternatives and variations to increase the broadness and enforceability of a patent application. A broad patent is more valuable to the patent owner and potential licensees. It is the responsibility of the patent drafter to provide a quality patent application.

Patent Profanity – It’s Not What You Think

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A post from our student blogger Sarah Goodman

When drafting patent applications, it is important to avoid the use of certain terminology. Some specific words should either never be used or be used with extreme caution. The use of these words is commonly called “patent profanity.” Patent profanity includes words and phrases that cause unnecessary complicated litigation and limit a patent’s scope. These terms should be avoided in the entire patent application, not just the claims. A limiting statement in the specification can be read into the claims resulting in a narrowed scope. Narrowed claims are more easily designed around by competitors causing the patent to be less valuable.

The term “invention” should be used sparingly if at all in a patent application. If the patent application refers to “the invention” as having certain properties or features, these aspects may be incorporated into the claims since the claims identify the boundary of protection for the invention. A statement that seems to describe the invention as a whole by using the term “the invention” is more likely to limit the scope than a statement that describes an embodiment.

Absolute terms are to be avoided in patent applications. Examples include: must, always, necessary, critical, needed, required, and only. These terms are limiting because they are very specific. Describing an aspect of the invention with an absolute term suggests that the invention is not complete without the aspect. Well drafted patent applications should instead include generic language, variations, alternatives, and examples to identify the broadest possible scope of the invention.

The term “prior art” should never be used in a patent application. Characterizing a reference as prior art is an assertion by the applicant that the reference contains comparative material to the invention. References that seem to be related to the invention are required to be cited in the patent application but when referring to the documents, it is best to simply call them references.

A patent practitioner has the job of drafting high quality patent applications and therefore must choose wording that entitles the inventor to the broadest allowable scope of the invention. The right to an invention should not be decreased by poor wording choices in the application. A patent drafter has a responsibility to the client to draft the best application possible. Our MSPL class is learning about the assortment of patent profanities and strategies of avoiding their use while drafting patent applications.

MPEP – Everything You Wanted to Know About Patents (But Were Afraid to Ask)

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A post from our student blogger Sarah Goodman

The Manual of Patent Examining Procedure (MPEP) is published by the United States Patent and Trademark Office. The MPEP contains the patent laws and rules. Patent examiners use the MPEP to evaluate patent applications. The MPEP is continually revised as the regulations change and important case law is established. The first edition of the MPEP was published in 1949.

The MPEP is used by both patent examiners and patent practitioners. Patent examiners use the MPEP by following the guidelines to decide whether to grant or reject a patent application. Patent agents and attorneys can use the MPEP as a handbook for rules of drafting a patent application. The MPEP contains examples of scenarios pertaining to the rules. The information in the MPEP is crucial because a patent application needs to follow the USPTO regulations.

The MPEP is divided into 27 chapters and 7 appendixes. The material covers more than 2,000 pages. Each chapter addresses a different aspect of patent law. For example, chapter 600 contains the guidelines for the parts, form, and content of a patent application. Chapter 2100 provides the guidelines on patentability. Appendix L contains patent laws and Appendix R describes patent rules.

In the MSPL program at the University of Notre Dame, we are reading and studying sections of the MPEP. To become a certified patent agent, it is necessary to pass the patent bar. This examination tests the material contained in the MPEP. The examination includes an electronic version of the MPEP that is searchable within chapters. The patent bar exam is difficult and has approximately a 50% pass rate. The classes in the MSPL program at the University of Notre Dame help us to prepare for this examination which we will all take this Spring.

An American Patent in Paris

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A post from our student blogger Sarah Goodman

Over winter break I was in Paris, France. During my trip, I visited research institutes and decided to learn more about patent law in Europe. The European Patent Organisation currently includes 38 member states, and European patents are granted by the European Patent Office.  There are several important differences between European and American patent law.

According to Article 54 EPC (European Patent Convention), if an invention was made publicly available by an inventor or a third party before the filing date of a patent application, the application will be rejected. In the United States according to 35 U.S.C. § 102, there is a one-year grace period beginning with the disclosure of an invention before losing patent rights. However, an inventor in the United States would lose any potential patent rights in Europe even if the invention is publicly available only in the United States.

U.S. patent law requires inclusion of the best mode of practicing the invention according to 35 U.S.C. § 112.  The disclosure of the best mode ensures that the public has access to the best method of practicing the invention. The lack of a best mode cannot be used to invalidate a patent but still must be included in the patent application. European patent law does not require inclusion of the best mode in a patent application. Article 83 EPC only requires the inclusion of at least one method of practicing the invention.

European patent applications usually contain two-part claims. A two-part claim includes features of the invention that are well-known, then a phrase such as “characterized by,” followed by features that constitute the invention. American patent applications usually contain only one part claims with no separating phrase between the well-known features and the inventive features. In the U.S., this type of two-part claim is known as a Jepson Claim. A disadvantage of using Jepson Claims in the U.S. is that anything before the characterizing portion is regarded by definition of the claim structure as previously known even if a novel feature is accidently included which can negatively affect patentability. In European patent law, if an applicant puts an inventive feature in the pre-characterization portion, the applicant will be asked to move the feature to the correct location.

The MSPL program at the University of Notre Dame prepares us for the U.S. Patent Office’s patent bar exam. Successful certification will permit an individual to file in the United States only. However, it is common for American law firms to work with international legal counsel, so it is important for patent agents in the U.S. to understand the major differences.

Leahy-Smith America Invents Act

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A post from our student blogger Sarah Goodman

During the Fall semester our MSPL class has attended several presentations on the Leahy-Smith America Invents Act. This Act was signed into law by President Obama on September 16, 2011. The America Invents Act changes some aspects about patent law in the United States and also includes new material. Most of the changes have already been implemented, and the final modifications will be implemented on March 16, 2013. Presented in this blog post are a couple of the major changes.

One of the best-known adjustments to patent law is the shift from the current First-to-Invent system to a First-Inventor-to-File system. This change will come into effect on March 16, 2013. This adjustment is based on the change to 35 U.S.C. §102 which states that a U.S. patent will not be granted if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The filing date of the earliest patent application to which a U.S. patent application claims the benefit of priority is considered the effective filing date. This provision eliminates the legal concept of an “invention date.” It is important to remember that an individual cannot claim inventor status unless that individual actually invented the material claimed in the patent application.

Another important change was implemented on September 16, 2011 concerning the best mode requirement. The best mode is defined as the preferred mode for practicing the invention. The disclosure of the best mode ensures that the inventor fully enables the public to have access to the best method of using the invention. Previously, lack of disclosure of the best mode was a basis to invalidate or cancel an issued U.S. patent. The America Invents Act has modified 35 U.S.C. §282 by removing the lack of a best mode as a rationale for potential U.S. patent invalidity. However, 35 U.S.C. §112, which addresses the requirement for inclusion of the best mode has not been amended. Therefore, patent applicants must still comply with the requirement to disclose the best mode contemplated by the inventor for carrying out the invention.

The Leahy-Smith America Invents Act will affect U.S. patent applications that are filed on or after the dates of specific law implementation. Therefore U.S. patent practitioners will need to have a working knowledge of the laws before and after the new changes of the America Invents Act.

Student Profile – Catherine Zhang

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A post from our student blogger Sarah Goodman

I recently interviewed Catherine (Shu) Zhang, a current MSPL student, about her capstone thesis project.

  1. 1. In general terms, what is your capstone project about?

My capstone project is about using a novel chemical reaction to find a treatment option for Niemann-Pick Type C disease. The resulting treatment option may have broader applications in alleviating illness caused by cholesterol build-up. Niemann-Pick Type C disease is a severe illness, and there are a lot of research efforts at the University of Notre Dame focusing on this disease.

2. What have you completed so far on your capstone project?

I have completed a synopsis of the project and drafted a set of potential claims. I also performed a patentability search covering domestic and international patents and patent applications. I researched a wide range of non-patent literature which broadened my technical perspective regarding chemistry and pharmacology. I will present all of this information in my technical presentation in December.

3.  What have you learned this semester through working on this project?

I learned more about lysosomal storage diseases like Niemann-Pick Type C disease and other categories of disease related to cholesterol trafficking. Having a capstone project with an actual invention gives me a real world experience of how a patent application is prepared before I enter the workforce.

4. What major challenges did you face? How did you solve them?

The most difficult challenge for me was learning new complicated scientific material quickly in a new field. I handled this challenge by reading a lot of scientific literature in the field. I also researched published patents to study the proper form of a chemical patent.

5. How has your project prepared you for a career as a patent agent?

My capstone project has prepared me in two major ways. The first is that I have learned how to communicate effectively with an inventor to get an accurate understanding of an invention. I also have broadened my technical field by learning the chemical background of a technology.

6. Which of your abilities do you think have helped you succeed with your project?

My persistence has been an important quality when researching different technologies as well as my interest in the science field. My writing ability has also been crucial for rephrasing complex chemical procedures into legal terms for IP protection.

7. What are your career plans for the future?

I think that obtaining a Master of Science in Patent Law from the University of Notre Dame will open many doors for my future career. I am currently considering the career options of a patent agent at a technology transfer office or a law firm.

Contract Agreements in the Intellectual Property (IP) Field

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A post from our student blogger Sarah Goodman

Mr. Todd A. Dawson, J.D., the owner and president of Todd Dawson Consulting LLC in Warsaw, Indiana, recently visited our MSPL class and presented a guest lecture on intellectual property contracts and other licensing matters. A contract is a legal document that establishes an agreement that is enforceable by law. I learned about some different forms of patent agreements and types of responsibilities a patent agent might have concerning these agreements when working with patent attorneys.

An assignment contract is used for the complete and permanent transfer of all rights to specifically identified intellectual property from the inventor(s) to an assignee. The assignee can be an individual but is often an organization such as a company or university. This form of contract is analogous to a sale of property. An assignment does not contain limitations on how long or under what conditions the assignee can use the intellectual property rights. After assignment, the inventor does not retain any rights to the intellectual property.

A license contract is used to allow another entity to use or develop specific intellectual property. This form of contract is analogous to renting property. A license contract includes specified conditions of use of the intellectual property for a defined period of time. A license may be exclusive, meaning no other party can obtain a license to the intellectual property, non-exclusive, meaning more than one party can obtain a license, or co-exclusive, identifying that only certain specific parties can obtain a license. During the licensing period, the inventor retains ownership of the patent.

Patent agents may have responsibilities concerning contracts especially when working with patent attorneys. These responsibilities can include ensuring that the identified parties are accurate, ensuring that the assignor is the registered owner of the intellectual property, checking employment agreements, and ensuring that the contract language is clear and understandable.

Inventors usually decide to assign or license intellectual property for financial reasons. Employers usually own the rights by assignment to inventions created by an employee during employment. Patents can be licensed for royalty payments by individuals or organizations. The topic of contract agreements in the intellectual property law field was important for our MSPL class to learn and understand so that we can be more prepared in the future for any involvement with contracts.

1, 2, 3 Types of Patents

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A post from our student blogger Sarah Goodman

In the MSPL program at the University of Notre Dame I learned that there are three different types of patents granted by the USPTO.

A utility patent is issued for a new and useful invention or improvement to an existing invention. An invention qualifying for a utility patent must be a process, machine, manufacture, or composition of matter. A granted utility patent gives the owner the right to exclude others from making, using, or selling the invention for up to twenty years with the payment of maintenance fees. This is the most common type of patent issued by the USPTO.

A design patent is issued for a new, original, and ornamental design. This design must be used for an article of manufacture. A design is inseparable from the article of manufacture and cannot exist alone. A granted design patent gives the owner the right to exclude others from making, using, or selling the design for fourteen years with no maintenance fees required. Both a utility and a design patent may be obtained if the invented article possesses functional utility as well as an inventive ornamental design.

A plant patent is issued for a new and distinct asexually reproduced plant. This plant can be either invented or discovered and includes mutants, hybrids, and new seedlings not found in nature. If a natural plant mutant is discovered, it must have been discovered in a cultivated area to qualify for a plant patent. The USPTO considers algae and macro fungi eligible for plant patents. A granted plant patent gives the owner the right to exclude others from making, using, or selling the plant for up to twenty years with no maintenance fees required. A utility patent application can be additionally filed having claims to a plant and plant components including seeds and genes. Inventors who develop reproducing plants such as corn and wheat tend to file an additional utility patent application which may be granted if the plant fulfills the useful, novel, and nonobvious requirements.

For our capstone projects, we are learning how to write a utility patent for an invention disclosure from a Notre Dame faculty member.

What is a … copyright? trademark? trade secret?

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A post from our student blogger Sarah Goodman

The main type of intellectual property the MSPL courses focus on is patent law. The program prepares individuals to pass the patent bar and work as patent agents. A patent agent is qualified to prepare, file, and prosecute patent applications. Although a patent agent is not qualified to work in the other areas of intellectual property law, it is important to understand the other types of intellectual property rights that are used in science.

Copyrights protect original works of authorship for a limited time. Included are literary, dramatic, artistic, and musical works. A copyright generally gives the owner the rights of reproduction, distribution, and performance. A work must exist in a tangible form of expression in order to qualify for copyright protection. In science, copyrights are often used to protect literary works such as books, articles, and website content. Genomic DNA sequences are not generally considered to be covered by copyright because they are not works of authorship.

A trademark is a distinctive mark that identifies the source of a good or service. Examples include words, phrases, logos, symbols, and designs. A trademark provides recognition protection to the owner by granting the exclusive right to use the trademark to identify goods or services. Trademarks are commonly used in science to identify company products. When a product or service is labeled with a trademark, a consumer can quickly identify the source and expect consistency. Rights to a trademark are acquired by either being the first to publically use the mark in commerce or by being the first to register the mark with the USPTO.

Trade secrets give a company a competitive advantage by keeping information confidential. Trade secrets are information with commercial value and are subject to steps to ensure secrecy, such as through confidentiality agreements. Sometimes, if an invention is patentable, a company needs to decide whether to make their invention a trade secret or to submit a patent application. Benefits to trade secrets include an unlimited time frame (as long as undisclosed to the public) and no costs for patent registration and maintenance. The disadvantages include that another entity could patent the trade secret independently and the owner of the trade secret does not have the right to exclude others from using the secret. Also, once the trade secret is revealed, there is no intellectual property protection for the original owner.

Patents are extremely important for the stimulation of innovation in science and are the primary focus in the MSPL courses, but it is necessary to also be familiar with other types of intellectual property.