Ethical Rules and Regulations

Posted on by

A post from our student blogger Sarah Goodman

Registered patent agents and attorneys must abide by the ethical rules enforced by the Office of Enrollment and Discipline of the USPTO. Attorneys must additionally abide by ethical regulations set by the state bar under which an attorney is licensed.  Since patent agents are registered with the USPTO on a federal basis, there is no state-specific ethics code for patent agents. The existing references for the ethical obligations of patent practitioners at the USPTO are 37 C.F.R 10 and 37 C.F.R. 11.

The Code of Federal Regulations includes the Canons and Disciplinary Rules of the Patent Office. A key point is the duty of disclosure to a client. A patent practitioner is required to disclose all necessary information and not to lie to a client. A duty of disclosure to the Patent Office is also included. Patent practitioners have a duty not to submit any documents to the Patent Office which are not true, submitted for an improper purpose, or which violate any applicable law. Patent practitioners are required to maintain confidentiality of information disclosed by the client. Confidentiality is an important aspect of protecting IP rights of clients, and this concept has been emphasized during the MSPL program especially in the capstone course because of the access to proprietary invention information. All registered patent practitioners have a duty to disclose to the Patent Office any non-confidential information which establishes a violation of the USPTO disciplinary rules by themselves or another.

The USPTO is currently proposing an update to the Code of Professional Responsibility to adopt more of the ethical standards set by the American Bar Association (ABA). The USPTO hopes that by adjusting their regulations to complement the state bar regulations, patent practitioners will have more consistent ethical obligations. The USPTO acknowledges that currently, patent practitioners are held to obligations not contained in the Code of Professional Responsibility that apply to practicing patent law and the addition of these stipulations would create a more clear and comprehensive set of regulations.

Proposed updates to the Code of Professional Responsibility and comments from established professionals, including Professor Dennis Crouch of the Patent Law Blog “Patently-O”, may be found online at: http://www.uspto.gov/ip/boards/oed/ethics.jsp

ND Law School IP Clinic Expands to Include MSPL Students

Posted on by

Notre Dame Law School’s Intellectual Property and Entrepreneurship Clinic (Clinic) will be the first law school clinic to include Master of Science in Patent Law (MSPL) students practicing in the United States Patent and Trademark Office (USPTO)  Law School Clinic Certification Pilot Program (Program).

Launched in January 2012, the Clinic provides students with valuable experience in applying substantive intellectual property law to client problems, and offers assistance to local businesses and entrepreneurs with counsel on intellectual property related issues.  Under the supervision of a licensed practitioner, law school students participating in the Clinic are able to practice both patent and trademark law at the USPTO, including preparing and filing applications, responding to Office Actions, and communicating with USPTO examiners.

In a first for non-law school students, the USPTO has now extended participation in the patent portion of the Program to University of Notre Dame MSPL students, through the Intellectual Property and Entrepreneurship Clinic.  In conjunction with the Law School’s Clinic, the USPTO has authorized a two-year trial enrollment for MSPL students, beginning in January 2014. MSPL students in the Clinic will work exclusively on patent matters, helping expand capacity in this high-demand area of intellectual property practice, and under the direct supervision of the Clinic’s Director.  By participating in the Clinic, MSPL students will gain first-hand, practical experience through assisting real clients.

A one-year, graduate-level program, the Master of Science in Patent Law prepares students with a technical background to pass the USPTO’s Patent Bar and to succeed in daily practice as a patent agent or patent examiner.

For MSPL Graduate, Patent Examiner is Career Option

Posted on by
Stroh River Place

Stroh River Place, Detroit, MI

A post from our student blogger Sarah Goodman

Some members of the MSPL class met with patent examiners at the Detroit USPTO satellite office over spring break. The educational requirements for a USPTO patent examiner are similar to the educational requirements to become a U.S. patent agent. A patent examiner must have a bachelor’s degree in science or engineering. Employment as a patent examiner is a potential short-term or long-term career opportunity for a graduate of the MSPL program.

Employment as a patent examiner could be short-term. A patent examiner job pays well and the starting salary is increased for a graduate of the MSPL program versus an individual with no intellectual property graduate education. Experience working as a patent examiner is beneficial for future job searching. Employers value a job candidate who has experience working for the USPTO as a patent examiner. A patent examiner has a very detailed understanding of the MPEP because the MPEP is the manual which contains the rules for the patent prosecution process. A patent examiner also gains a familiarity with the best strategies for writing a patent application for allowance which is extremely valuable knowledge. Working short-term as a patent examiner could be a good way for a graduate of the MSPL program to get experience that would be valued by any future employer.

Employment as a patent examiner could also be long-term. The field has the ability for promotion based on performance. For individuals who would like a lot of time with family or need job flexibility, a career as a patent agent is flexible in regards to the work schedule. Another appealing aspect of a patent examiner position is the ability to work from home after working at least two years and meeting certain performance standards.

The MSPL curriculum prepares students for the option of a career as a patent examiner at the USPTO. Currently, applicants with bachelor’s degrees in Mechanical Engineering, Computer Engineering, or Electrical Engineering are needed by the USPTO to assist with the backlog of unexamined patent applications. In the future, these postings may remain and other backgrounds may also be needed.

Power and Water

Posted on by

We spent today (our last day!) at GE’s Power and Water facility in Schenectady, NY. This facility was started by Thomas Edison himself – check out the signature on the visitor’s pass we found!

 

 

 

GE visitor pass

 

 

 

 

 

Also in the picture is Buddy Cusick, one of the IP counsel who supports some of the R&D that happens at the Schenectady campus. Buddy is second from the right.

In addition to hearing from quite a few GE representatives today, we toured two plants. We got to see where they make their HUMONGOUS steam and gas generators, and also where they make a cool new type of battery.

After the tours, we chatted with Mike Gregory (a ND alum, and GC for the business unit), three technologists who develop new products at the facility, Buddy and Frank Landgraff (chief IP counsel for the business unit) and Mike Gnibus, who heads GE’s Global Patent Organization in Shelton, CT. Each speaker gave us their perceptions of the importance of patents to the business unit and to the company overall, and our students got some excellent advice that they can take with them into their practice careers.

 

It’s our last day, so sadly we will be headed home tomorrow. It’s been an amazing trip, and I am looking forward to next year already!!

 

GE’s GRC

Posted on by

We spent yesterday at GE Transportation in Erie, PA. They make locomotives there. Who knew how much innovation is going on in that space – it’s a 150 year old technology in some ways, but in other ways, entirely new. The below photo was taken in the building in which we had a learning session with Shawn McClintick (Senior IP Counsel for the Transportation group). Shawn is second from the right – after Thomas Edison and one of our students.

GE transportation

 

 

 

 

 

 

Today we spent the day at the Global Research Corporation. We got an up-close view of a couple of very cool new GE technologies, met a few ND alums, and got to talk to a part of the IP team which manages GE’s patent portfolio. The students learned alot about what options are available for patent agents and patent practitioners generally at corporations like GE.

 

We’ve been lucky enough to be invited to stay at the GE Lodge on campus, and the view is beautiful!

GE view from lodge

 

A visit to Detriot

Posted on by

Detroit GM buildingWe spent today in Detroit, MI. Most of the day was spent learning about the new Detroit regional USPTO. They only do patent work there, and concentrate heavily in the mechanical and electrical engineering fields. They’ve hired and trained around 70 new patent examiners since they opened, and are aiming to have about 100 new examiners in their first year of operations.
The folks at the PTO were very gracious hosts. We learned about the mission of the PTO and of the Detroit office, had lunch with some current examiners, learned alot more about the job of an examiner, and also got to share a bit about the MSPL.
After a tour of the office, we traveled to Dickinson Wright to mingle with some of the folks we know through our adjunct faculty member Hal Milton. Kim Slaven, a ND alumna, is a patent associate in the Troy, MI office of Dickinson Wright, and arranged for the MSPL students to meet some of their patent interns (trainee patent prosecutors). We spent some time in their 40th floor office, which has a great view of the GM building. Unfortunately it was rainy today, so the photo isn’t great, but you can still get the idea of how amazing the view is (Canada is in the background!).

MS in Patent Law accepting applications

Posted on by

Notre Dame’s one-year MS in Patent Law is accepting applications for the 2013-2014 academic year.

Our students learn hands-on skills that prepare them for a career as a patent agent – helping people prepare and obtain patents. Patent agents work at the cutting edge of their technical area, and also at the cutting edge of the law.

Applicants must have a background in science or engineering. Strong applicants have good oral and written communication skills. Applicants with EE and advanced degrees are especially encouraged to apply.

We expect our class of twenty to fill soon. Apply early for best consideration!

 

 

Students Apply IP Knowledge

Posted on by

This post is part of an article appearing in the Winter edition of Notre Dame Science magazine.

Three students in the Master of Science in Patent Law program are working with Notre Dame alumnus Shane Fimbel, chief operating officer at Union Station Technology Center in South Bend, on a project to help Nationwide Children’s Hospital of Columbus, Ohio, accelerate the commercialization of the hospital’s innovations.

Kerisha Bowen, Ashley Ferraro and Ke Min are involved in the pilot study by Intellectual Analytics, whose innovative methodology, TechnoFlow, uses large data sets to identify and predict the innovative output of research laboratories. They expect to publish a peer-reviewed article on Nationwide’s technologies and create a series of dashboards for key metrics for Nationwide’s technology transfer office as well as measure the hospital’s innovative output.

Fimbel, who earned a Ph.D. in Biological Sciences at Notre Dame in 2007, worked for three years at the Purdue Research Foundation’s Office of Technology Commercialization before returning to South Bend.

A Good Example

Posted on by

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

Posted on by

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.