She’s singing

A post from our student blogger Brittany

Well ladies and gentlemen we have come to the end of the program.  This has been nothing short of an amazing experience. I am elated that you followed me through the highs and lows of the past 10 months and I hope you were able to take away some invaluable information about the program from my point of view that can help you if you’re interested in transitioning into the field of patent law. My apprehension evident in my initial posts has subsided completely and I am ready to tackle my new position as a technical advisor immediately following graduation.

We have a dinner planned for the day before graduation and our families will be able to not only meet Karen and Cathi, but they will also be able to meet the Professors that have been providing words of wisdom throughout the year. I can’t speak for my classmates but I always told my mom about our Professors so she is definitely ready to put some faces to the stories I’ve been telling her all year. It will be bittersweet to say goodbye to everyone, but it’s nice to know that although we came in as students we will be walking away as colleagues and friends.

I can honestly say that I have built some relationships throughout this program that will last a lifetime. We had a very exciting group of students that are intelligent, hilarious and unfiltered (some more than others). I wish them all nothing but success on their next steps in life.

If you or someone you know is considering transitioning into the world of patent law I strongly suggest looking into this and similar programs because I feel much more prepared to start working than I would have had I not participated in the MSPL program. Although the cost of the program was initially a hard pill to swallow since I’d come from a fully paid doctoral program, it was worth every penny. From the relationships formed, the strength of the curriculum, and the extracurricular opportunities, I wouldn’t change a thing. Don’t be afraid to pivot professionally in a direction that better suits your interests and professional goals.  Remain true to yourself and you will not go wrong.


BrrrA post from student blogger Nicole

First off I just need to say how cold it is here.  It was six degrees the other day and my weather app said it felt like negative eleven.  Negative eleven degrees!  That’s crazy talk.  My skin can’t handle negative temperatures and riding my bike to class definitely makes it worse!  As you can see from the picture, that is what I wear on my way to class.  I probably look like I’m stealing my bike when I go to unlock it from the bike rack.  I use to think that twenty degrees was cold, but I was dead wrong.  But enough about me complaining about the weather.  Classes are going great so far.  I like my schedule this semester and the teachers are great, kudos to Karen for picking these teachers for the program this semester as well as last semester.

Nicole_BundledI decided to talk about our patent prosecution class today.  I find it very interesting.  So far we’ve had an assignment where we had to find information on a couple patents and another assignment where we had to find certain forms to fill out as well as write a response to a notice.  The forms will help us get acquainted with which ones are important to use and when to use them.  An example of one of the forms we use is a petition for extension of time.  This just allows you to request more time to submit a response to a notice, but be careful because you only get a certain amount of months of extension before it’s not possible anymore and you abandon the application.  Also there’s a fee every time you need to use one of these forms.  The patent office loves money.  A response to a notice is pretty much what it sounds like.  You receive a notice and it will tell you if there is something missing, needs to be added, etc., to the application and you reply to it with what you need to add or change.  There are many types of notices that can be given out, but it is best to try and avoid getting them because they take up unnecessary time if it’s something insignificant that you left out.  An example of that would be if the margins are the wrong size when you submit an application.  It seems a little silly if you ask me, but I’m very glad we have this class because it’ll be better to mess up here rather than in the real world.   I have a feeling that this prosecution class will be very helpful with my future job.

Do as I say not as I do

 A post from student blogger Brittany

So I’ve previous told you all that I am a graduate intern in the Office of Technology Transfer at ND. Part of my responsibilities include identifying possible licensees for technologies developed at the University and conducting patentability searches. Recently I was asked to review a final office action and draft a potential solution to overcome the rejection.

As I was sifting through all of the previous office actions trying to come up with an answer I realized that the patent examiner distinctly used a term of art in reference to the specifications which then found its way into the claims. Unfortunately, once the applicant used that exact same term of art in the claims they received a swift rejection.

Let me backtrack for a second and provide you with a little patent drafting 101. The claims of any patent application MUST BE FULLY SUPPORTED BY THE SPECIFICATIONS. The specifications include a detailed description of the new technology as to enable anyone to make, use or sale the new technology. In the case of the patent application in question, the examiner used a word, then the applicant amended the claims to include the word, and then the examiner rejected the claims because the word was not in the specifications… It seems absolutely ridiculous but that is how this patent thing works guys.

In the words of Professor Wack NO NEW MATTER, don’t add in anything in the claims that is not supported by the specifications even if the patent examiner tells you too. If the applicant had revised the specifications to include the term, then I believe that the patent examiner would have probably issued an allowance instead of a rejection. To top it all off, there were only four claims….FOUR CLAIMS…I would have expected so much back and forth for at least 10 claims but hey that’s the USPTO for ya.


dogA post from student blogger Nicole

Doesn’t the title look like a made up work?  Well believe it or not it’s actually real!  It’s pronounced [flok-suh-naw-suh-nahy-hil-uh-pil-uh-fi-key-shuh n] and it’s one of the longest words in the English language.  It means the estimation of something as valueless.  Well I sure can think of something that’s valueless and it’s this word.  Who would ever use this word in a sentence or write it down.  It’s definitely not worth the 3 minutes it even takes to say it, if you didn’t have the pronunciation already at hand, or the amount of spelling errors just to write it.

But enough about this unnecessarily long word.  I just figured it would be a perfect transition into talking about patent law and made up words (in a good way).  Surprisingly there are many made up words when it comes to writing patent applications.  When it comes to describing something, sometimes all of the real words in the dictionary just don’t cut it.  Because of this, the made up words were born.  Here are a few examples that I could come up with off the top of my head.  Therebetween, slidably, hingedly, releasably, removably.  They’re real words but not used correctly as real words.  Regular adverbs just don’t cut it.  Obviously describing a wall locking mechanism that can lock two walls together but also release the lock of the walls, doesn’t work.  So instead it becomes a wall locking mechanism for releasbly locking the walls.  Also describing a member that can slide against a mechanism could be described as the member is slidably movable against a mechanism.  This helps get to the point easier and describe the object in a shorter way that still makes sense.  There are very few times, while reading patent applications that I can remember where the made up words didn’t work.  I have to admit though, I am not a fan of therebetween.  That was why it was one of the few words I could think of.  To me it just sounds awkward and bulky.  But it works for enough people for me to have come across it.  So if you’re good at making up adverbs, or are okay with using them, then patent application drafting is for you!

Trick or treat

halloweenA post from student blogger Nicole

We all love this time of year.  The temperature is dropping but it’s not too cold yet, and our favorite holiday is approaching.  Halloween.  How many of you out there love haunted houses?  The excitement, anxiety, fear.  Who doesn’t love a good scare!  And don’t get me started on trick or treating!  This holiday makes me a kid again.  But this is also the time of year when you realize it’s pretty much November already!  When did this happen? I feel like we just started!

So let me slow things down a bit to compare this great holiday with patent law.  I imagine being a patent agent will be like trick or treating.  You will be working on all kinds of inventions and every now and then you will hit the jackpot and write a patent for a very interesting invention.  Similar to trick or treating you go from house to house looking for candy and you hit the mother lode.  A house giving out the big sized candy bar.  That was the jackpot house.  But I also assume that as a patent agent you will work on inventions and other tasks that you enjoy.  Similar to that one piece of candy that you find way better than any other kind and you love to get it.  But I don’t really know what to expect when I finally start working in the real world.  It will be unpredictable just like a haunted house.

I also see being a patent agent as a type of costume.  When you tell people you’re going to grad school for Patent Law they usually ask how long is the program and you say it’s only a year.  They look at you in disbelief.  “How can you get a law degree in one year?”  And my response is “Well you see, I have an engineering background and the program is a master of science so technically it’s not the usual law degree, and I will become a patent agent verses a patent lawyer.”  They still really have no clue what I’m talking about until I say I will help people get patents without a law degree.  As simple as that.  I receive the more understanding “Ohh, okay” after I tell them that simple sentence.  So this leads me to believe that as a future patent agent I am really just a patent lawyer in disguise; I am a patent lawyer without the law degree.

But back to this time flying by!  I didn’t think about it as much in the beginning of the semester because I was still settling in, but now I know what the teachers were saying.  They called it from the beginning of the semester and now I believe them.  Soon I’ll be writing my last blog and be heading out into the real world before I know it!

Chill out bro, and feel free to skip to the last paragraph

A post from student blogger Josh

My favorite aspect of MSPL is the Capstone project. I’m aware that this may not be a popular opinion, but actually getting a chance to prepare a full patent application in a low-stress, academic environment is a unique opportunity. Despite how enamored I am with the idea of the project itself, there are certain pitfalls. For instance, one can interview inventors and conduct searches, only to eventually find that the project itself may not work out. Unfortunately, this does not mean that you get an “A for effort” and the accompanying plastic trophy, but rather that you have to go back to the drawing board (literally) and start over. After all, you can’t actually get a M.S. without writing a thesis, even if the reason for scrapping said thesis is out of your control.

It’s Oct. 28, which means I’m more than a quarter of the way through the M.S. in Patent Law program. This is about the time when I should be seriously hitting the throttle on my Capstone project. After months of searching, interviewing, and just generally learning, I should be ready to put some serious pen to paper, draft claims, and protect some intellectual property. But alas, poor Yorick, that’s just not happening. Instead, I’m staring down the barrel of soon receiving a new disclosure, and beginning the entire process again.

So guess what I’m not doing? Stressing. This program has so many helpful mentors who want to see its members succeed, and I’m not the first person to run into a serious snag on his Capstone. This means it’s time for me to sit in a hammock, take some chill pills, read a leather bound book, and do what I do best: nothing. I can’t start anew on my thesis until I have a subject, which will not be for another few days. I’m still going to graduate, nobody is going to let me fail (unless I help them), and I get to treat the whole thing as a learning experience. Plus, as a professional I won’t get the luxury of filing one patent application every 9 months, so I may as well learn to write them more quickly now.

To those of you who are having troublesome Capstones: every year, someone runs into an issue with the Capstone project. Patent applications and the ideas behind them are complex. It would be insane to expect the process of writing your first one to be seamless. At least one of the people who reads this will run into a snag of some sort. When you do hit said snag, just keep in contact with your mentors and relax. If you’re here, you’re in good hands. Your stress won’t solve any problems, so just do what you can and let the rest go. You’re here to learn, not to be perfect (and even if you were supposed to be perfect, all you can do is your best, and freaking out won’t help that either). So give it your all. If that doesn’t work out, talk to Karen, have a drink on me, watch some Amy Schumer standup, and try again tomorrow (preferably in that order).

What is this patent pending you speak of?


A post from student blogger Nicole

Patent pending.  A term that many people have heard before, especially for all the Shark Tank lovers out there.  For those of you that don’t know what it is I will be happy to explain.  Patent pending is the period of time from filing a provisional patent application to the allowance of your nonprovisional patent application.  In the case that you didn’t file a provisional patent application it would be the time from filing a nonprovisional patent application to the allowance of the nonprovisional patent application.  Phew! I think I said patent application too many times!  Let me clear that up even more.  A provisional patent application is an application you can file before the nonprovisional that contains an informal general idea of the invention to get your foot in the door at the patent office.  For example, when you go to file your nonprovisional you are able to say that you had this idea at the time of your provisional filing.  This is important because if someone else goes to patent a similar idea, then you have proof that you had the idea before them.  Also for you Shark Tank lovers, those people file a provisional patent application on their idea just to say that it is patent pending on the show.  An added bonus would be that you are able to say patent pending for the full year of the provisional patent along with the time it takes for the nonprovisional to be granted.  One thing you should know about the provisional patent is that it does not contain any legal status instead it is just a place holder for a future nonprovisional patent.  This nonprovisional that I’ve been mentioning is the formal legal application for obtaining patent rights on a particular invention.

Okay so enough about all this definition mumbo-jumbo.  I wanted to talk about patent pending because I see it everywhere!  It’s on the bottom of drink containers, on cooking utensils, and even on disposable tupperware containers.  I believe it was this MSPL program that opened my eyes to another world. The patent world.  Ever since starting this program I see patent pending on a lot of different items.  It’s funny to think about because now I actually look for patent pending and patent numbers on things that I buy or use.  I get excited to see if something is patent pending or already has a patent.  I actually try to guess what it is that’s unique or separates it from similar items.  Just be ready for this to happen to you when you become a member of the MSPL program.

Speaking of patents, I have a warning for those of you with new ideas.  Don’t listen to those commercials that say they can help you with your invention.  It’s a scam! All they do is get a design patent which only protects the look of your invention and not the invention itself!  I was shocked when I found out about this.  Can people really be that shady?  Well now that you know not to listen to those commercials, just give me a call when I become a patent agent, and I’ll do it the right way.

Forever Irish

MSPL at GSVA post from our student blogger Catie

So, here we are at the end of MSPL Boot Camp…

No, wait, I’ve completed the program and I’m graduating in less than a week! I know that it’s cliché, but where did the last 9 months go? Many of us came into the program without really knowing what we were getting ourselves into with this whole ‘patent law’ stuff, but now we’re prepared and excited for the beginning of our careers in a field that we have become engaged in. I came into the program with a weak understanding of what a patent practitioner does and I had a few misconceptions about what their day-to-day lifestyle is like in law firm and in-house settings. Although I still have plenty to learn, I feel like this program has prepared me for whatever tasks and circumstance my first few years will throw at me.

I’ve learned plenty about myself, too. That’s tacky, I know, but I really have. A year ago, as a brand-new college graduate, I enrolled into the MSPL with a vague, narrow-minded vision of what my future would be like. I was really anxious with the ambiguity of everything ahead of me, including the program itself. At this point, I still don’t necessarily know what I’ll be doing a few months from now. Believe it or not, I’m actually not too worried about it. I’ve learned that the potential of work that I could do within patent law is much broader than I expected. I’m not limited to my niche formed by my biology degree. As a matter of fact, this semester, I have been working at an internship where I have had the opportunity to work on technology in mechanical engineering, and it’s been fantastic! I’m really excited about the prospects of working with a broad array of novel technologies in my career. It was not what I had originally anticipated when I thought of myself as a patent agent, but my initial expectations have been exceeded!

I’m also excited about the possibilities of my future. There are many potential opportunities for employment, and I could still opt to further my education, whether that be law school or another higher degree. I still have hopes of someday getting a Master’s degree in genetic counseling, but for now, I want to focus on establishing myself in patent law. If I have learned anything from others in the program (from whom I’ve learned a lot), it’s that there is plenty of time to figure everything out. As one of the babies of the group, I was incredibly lucky to have my friends in the program talk to me about their backgrounds and experiences that have led to the knowledge that they have acquired along their paths. There is a lot of pressure as a soon-to-be or recent graduate to have a job and a rock-solid plan for your future. It’s almost assumed that you’re supposed to have the rest of your life paved out at 22 once you have a college diploma. Everyone in the program showed me that it’s okay to be a highly educated individual who is still trying to carve out a career, or someone who has already worked a professional job and wants to take a different path, or someone who still doesn’t know “what they want to do when they grow up”.

Speaking of the other MSPL’ers, I’m really going to miss the patent law family! We all hit it off from day one, and it led to wonderful friendships over our short year together. As much as I’m excited for the next chapter of my life, I’m sad to be leaving our little circle of friends and Notre Dame. I have to say: Notre Dame most definitely lives up to the hype! It really is a special place, and I consider myself so blessed to have had the experience of becoming part of the Fighting Irish! For that, I have my parents to thank! Attending Notre Dame and being part of the MSPL has majorly exceeded any expectations I had a year ago, and I will be forever grateful for this experience and those who made it happen.

I am now ready and excited for what my future holds, and I am reciprocally so excited to see my patent law family succeed! We have a great bond in a close-knit field, and we will from here on out be part of the great Notre Dame community. Thank you if you have taken the time to read up on any of the knowledge and experiences acquired by the MSPL bloggers; they are representative of our unique journeys through the program, and we appreciate any time that you took to read our thoughts! I am genuinely so happy and thankful to have been a member of this group of MSPL students. Within a short 9 months, Notre Dame became a new home to me, and I can easily say that enrolling in the MSPL was the best decision I could’ve made. “And our hearts forever, love thee Notre Dame!”

Catie Stevens

The patent process from start to finish

Patent ProcessA post from our student blogger Megan

I get a lot of questions about how the patent process works. Because I think the patent process can seem a little daunting, I thought I’d give you a quick rundown of how it works from start to finish. Please note that this is just a general view of the process and how it works—each patent application is different and therefore the process is unique for each as well. In addition, while you may proceed pro se (without the help of a patent attorney or agent), it is highly recommended that you enlist the guidance of a patent practitioner when seeking patent protection.

Where do you begin when you want a patent? Well, first, you’ll want to know that this is not an extremely fast process. So how long does it take to get a patent? In true lawyer fashion, I have to tell you that it just depends. If you have a complex underlying technology then it could take years. Some dates that you will want to remember are that your application will publish eighteen months from filing and if you file a placeholder application, you will need to replace this with a real application within twelve months. Ok, so you can kind of see where this is going… patent law is complicated so you’ve got to know your dates and prepare accordingly.

Let’s swing back to the original question, though: where do you start when you want to get a patent. You need to figure out if your idea has already been acted on. In other words, you need to do a patentability search to determine if there are other patents, offers for sale, publications, patent applications, or anything else that has already discloses your idea. You will want to do this because if your idea is already within the public domain you will likely be prevented from receiving a patent. Remember, you cannot patent something that isn’t original.

Once you’ve performed a patentability search you will want to draft a patent application. Your application will have to comply with various statutes. For instance, the concept that you reveal in your application will need to be new and non-obvious. You will have to describe how to make and use your technology so a person who works in your technology area will be able to reproduce it. Careful planning and drafting are a must at this stage in the game. It is essential that you understand how to draft an application if you want the process to proceed as smoothly as possible. Drafting a patent application is both an art and a science. Patent agents and attorneys are trained to specialize in this.

If you choose to submit your application to the United State Patent and Trademark Office (USPTO), you will enter a phase called “prosecution.” Remember that this is patent prosecution, not a criminal prosecution—these two things are different. Patent prosecution involves sending your patent application to a person who reviews applications in a specified area of technology at the USPTO. You will likely encounter what are called “rejections” from your examiner. Don’t stress, this is a common occurrence. Patent prosecution involves going back and forth with the examiner until you get the application drafted in a proper form that the examiner accepts.

If the examiner sends you a “notice of allowance,” congratulations, you just snagged a patent on your inventive idea. If your examiner denies you at least two times through rejections, you have the option to appeal this decision. Appeal is an interesting court procedure that I won’t delve into it in this blog, but know that it is an alternative if you are struggling to get a patent grant.

This was a quick look at the patent process. Please note that it is far more complicated in real life. But as the saying goes, it may not be easy but it will be worth it. So, happy patenting!