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.

Open Source Biotechnology + Patentability = ?

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A post from our student blogger Sarah Goodman

While completing an assignment for my capstone project I became interested to learn more about open source technology related to patentability.

Open source is a philosophy that promotes free redistribution and access to an end product’s design and implementation. One example of open source products is the Linux family of computer operating systems that are often available free of charge. Organizations such as Creative Commons and the Free Software Foundation have websites where individuals can file for alternative “licenses,” or levels of restriction, for their works. Open source resources most often refer to software and technology development. The concept of open source technology has existed for decades. There is a lot of available information concerning open source software. However, biological open source technologies have been recently emerging.

Biological open source technologies extend the principles of open source software development to the development of research tools in medical and agricultural biotechnology. One of the leading organizations aimed at open source biotechnology development is the Biological Innovation for Open Society, or BIOS. This new technology-sharing initiative was developed at Cambia, a nonprofit Australian research institute supported by the Rockefeller foundation.

In one example, open source methods have been used to distribute a technique for creating a genetically modified crop.  This technique is available free to others to use and improve, as long as any improvements are also available free. BIOS states that while users of the technology are required to put any improvements they make into the open source pool of knowledge, companies and universities are allowed to patent any products they make using the technology, like a genetically modified crop. Patents are integral for innovation in biotechnology, so it is important that the products developed from using open source technological tools and methods can be patented. However, all licensees are required to share some aspects of the improvements, making them available for use to other licensees, even though they may be patented.

Open source licenses do not necessarily bar inventors from obtaining patent protection on inventive aspects of their technology. However, there may be some constraints on the inventors’ patent rights if some of the integral pieces of the invention were distributed through the open source method.

There are many difficulties in translating the current open source regulations to the biomedical field. The primary licensing system in software is copyright, whereas in biotechnology it is patents. The cost of patent protection can be substantial, but patent fees can be recovered from licensees. Due to the complexity of biotechnological innovations it can be difficult to determine what constitutes an improvement to a technology that uses open source materials or methods.

The current question is whether the open source model will work in the biological research field and how patent rights will be determined in court cases. A large determinant of the acceptance of the open source method in the commercial market will be whether or not it is appealing to IP owners. Open source biotechnology is an interesting emerging topic that will play a role in future biological patents.

Need a Job? Make a Plan. (For Free)

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Students in Notre Dame’s Patent Law Program already have a clear idea of how they want to use their education and are on direct path to a booming career field. But what about others, who need help learning how to apply their science skills to the workforce? Turns out—there’s an app for that.

In the magazine Science,Jim Austin and Bruce Alberts note patent law among the “career options that Ph.D. scientists haven’t trained for directly—but for which they have useful knowledge, skills, and experience.” But as Martin Rosenberg points out, there is still “a huge disconnect between how we currently train scientists and the actual employment opportunities available for them.”

Which brings us to the IDP, or, Individual Development Plan. While the concept has been used mostly by corporations and governmental agencies to encourage employee introspection and outlined goal-setting, now academia seems to be catching on. Perhaps due to bleak job market in education and more graduates turning to alternative careers, many degree programs have inserted IDP’s in their curriculum to get students thinking about life after graduation.

Sound good like a good idea? It’s about to sound better—a free web app called myIDP has just been released. This self-assessment tool was designed by career professionals in science to help users indentify key career goals and outline the steps to be taken toward their achievement.  The app even has an option to send you email reminders and updates, in case your focus needs an extra kick every now and then.

Check out myIDP here and report back on what you find!

Office of Tech Transfer a Valuable Resource for Students

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A post from our student blogger Sarah Goodman

An important resource to the students in the MSPL program at the University of Notre Dame is the Office of Technology Transfer (OTT). This office is available to assist university faculty, research staff, and students in bringing new technologies to commercialization. The OTT has the resources to patent, market, and license products of university research. This office secures legal protection in the form of patents for technologies invented at Notre Dame and markets the technologies to companies suited to develop the inventions. When appropriate companies are identified, the OTT is capable of negotiating licensing agreements and distributing the proceeds in accordance with the University’s intellectual property policies. The MSPL program prepares us for job opportunities in the field of academic technology transfer as a possible career option.

I am a current student employee in the OTT. My job duties include researching current Notre Dame technologies and completing Patentability and Marketability Reports. To investigate the patentability of an invention, I search patent and literature databases to identify publications that could prevent a patent from issuing on the technology.  To investigate the marketability of an invention, I complete market research to see if anything similar is commercially available, investigate the target customers, and determine whether or not the technology has commercial value.

The other student employee at the OTT is Vini Melo, a current student in the graduate ESTEEM program. He also evaluates inventions and is currently coordinating databases that will be used to market technologies invented at Notre Dame.

The Office of Technology Transfer is a valuable asset on campus and will aid in the success of the MSPL program. The University’s Intellectual Property Policy and information concerning the Office of Technology Transfer is available online at ott.nd.edu.

MSPL Boot Camp

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A post from our student blogger Sarah Goodman

During the orientation Boot Camp, the MSPL class had the opportunity to learn from three different speakers in the patent law field. The first guest, Dr. Art Moss, is a Sr. Patent Associate at DuPont. He gave a full-day presentation, “Patent Law for Researchers,” to the MSPL class and some members of the Notre Dame community at Innovation Park. Dr. Moss explained the different parts of a patent and techniques for writing a patent application. He also gave an introduction to the United States Code Title 35, which addresses the patentability of inventions.

Our second speaker was Dr. David Burns, a patent agent and employee of Qualcomm Incorporated. Qualcomm is a California-based corporation that is a leading patent licensor of wireless technology and innovation. Dr. Burns lectured to our class for three days. Some highlights included an extensive introduction to conducting inventor interviews and working with invention disclosure forms. We also learned more about the Code of Federal Regulations Title 37 which contains the rules concerning the format and filing of patent applications. As one of the most efficient patent writers in his field, he gave our class tips on drafting patents and creating invention illustrations.

We met the final guest speaker of the Boot Camp on a tour of the Union Station Technology Center in South Bend. The facility is a state-of-the-art technology center which offers computing space and power services while operating fiber optic networks for the Midwest. Dr. Shane Fimbel, chief operating officer of Union Station, gave us a presentation about the history and function of this data center as well as a tour of the facilities. He emphasized the essential role of innovation and creativity in the success of this business.

Visiting Biomet

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Guest post by MSPL student Kary Yergler

Before touring the Biomet manufacturing facility, a select few of us had the pleasure of touring a lesser known building at the Biomet Headquarters.  Dr. Dane Miller, one of the founders of Biomet, houses his personal car collection in a two-story facility right next to the manufacturing plant.  The collection includes a wide variety of classic cars from the mid to late 1900s, including the gems seen in the following photos.  Mr. Miller has a phenomenal collection of vehicles, and we appreciated the opportunity to tour this collection.

 

Meet Sarah Goodman

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My name is Sarah Goodman and I am currently a student in the Master of Science in Patent Law Class of 2013.

The MSPL program at the University of Notre Dame will give me opportunities to learn about intellectual property law, as well as practice field-related skills for employment as a patent agent following graduation.

I have a B.S. in Medical Biotechnology from Upstate Medical University in Syracuse, NY.  While at Upstate, I worked on two research projects in the department of Neuroscience and Physiology. Both of these projects focused on the isolation and characterization of mutations in subjects with Parkinson`s disease or schizophrenia.

This past summer, I conducted research in the biology laboratory of the Centre Hospitalier Intercommunal; the hospital of Saint Germain en Laye and Poissy in France. For two months I designed and conducted a research project investigating genetic mutations in subjects with Factor XII deficiency. I am currently analyzing the sequencing files from this project for any novel variations.

My capstone project will be to research an invention and write the patent application. The project I chose is in the molecular biology field and will concern genetically engineered yeast for use as an analytical tool.

I enrolled in this program because patent law is a growing field with technologies constantly evolving. This is a good career to combine a passion for science with an interest in law.  The University of Notre Dame is a great place to begin this career because of the dedication of the professors and researchers on campus. The resources available for this program far exceed my expectations.  As I begin classes, this upcoming school year promises to be very exciting!

Jury’s Out, and the Future of Technology Awaits

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The nine jurors who will convene this week in the Apple vs. Samsung patent lawsuit may not know it, but their decision will likely have a profound impact on the shape (and many other features) of mobile technology to come.

According to the New York Times, if Samsung comes out on top, we should expect to see a lot more devices on the market with an unabashed likeness to the iPhone and iPad. Without any retribution handed down in a landmark case like this, it may be open season for imitators of Apple’s signature sleek, minimalist design.

As for the other outcome, the Times cites Christopher V. Carani, an intellectual property lawyer in Chicago: “I think what we’ll see is a diversification of designs in the marketplace if Apple wins.” Rather than face similar lawsuits, the burden will be on mobile manufacturers to make products of distinct design and functionality.

But experts say the verdict will likely be a mixed bag. The Times reports that Apple’s case for infringement of design patents—regarding the look of the devices—is weaker than that of their utility patents, which protect functional features. Experts say Apple will likely win-some, lose-some, and ultimately won’t come close to the 2.5 billion in damages they were seeking.

But how’s this for some juicy courtroom tidbits—evidence was presented in which a top-level Samsung executive expressed that the iPhone’s release gave their company “a crisis of design” and that using the iPhone compared to Samsung’s products was a difference like “that of Heaven and Earth.”

Ouch! How will it all shake down? We should know this week!

Introducing Hal Milton, Jr.

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I’m thrilled to introduce Hal Milton, who will be teaching our Fall Semester 60201 (Legal Writing and Analysis) class. Hal’s bio is below, and he’ll be visiting the MSPL during the second week of BootCamp.

 

Harold (Hal) W. Milton, Jr.

Hal received a B.S. degree in aeronautical engineering from Purdue University in 1957 and worked for the Rocketdyne Division of North American Aviation test firing rocket engines for the Thor and Atlas missiles. Having been commissioned a 2nd Lt. upon graduation from ROTC at Purdue, he then attended pilot training in the U.S. Air Force. Because of his experience in the development of rocket engines, he was one of the first officers assigned to and for development of the missile training school for the USAF. As a missile maintenance officer, Hal monitored the building of a training launch pad for training the first crews of the Atlas ICBM missile sites, for which he received the Air Force Commendation Medal. Following the military tour, Hal enrolled at the Georgetown University Law Center, where he was a member of the Law Journal. Hal passed and was admitted to the Virginia Bar prior to graduating from law school in 1964. Later that same year, he was admitted to the Michigan Bar. During law school, Hal worked as an Examiner in the U.S. Patent and Trademark Office (USPTO) and then as a Patent Advisor in the Office of Naval Research, U.S. Navy.
Hal entered the private practice of law in 1964 in metropolitan Detroit, Michigan, the area where he grew up. In the years since, he has engaged in all phases of patent, trademark and copyright practice, including prosecution of patent applications and licensing.
Hal’s practice also included serving as lead trial counsel and successfully litigating various patented technologies; assisting new enterprises in protecting their technology to entice investment or the sale of the enterprise; and overseeing the creation of patent, trade secret and trademark portfolios during periods of significant growth for several large corporations. As one example, he represented an automotive supplier to develop a dominant patent portfolio over forty years from start-up to maintain a major portion of their relevant market. In another success story, Hal helped catapult a start-up company by obtaining a patent for them, which they immediately used to sue an established competitor to obtain both monetary damages and an injunction. Hal successfully argued before the Court of Customs and Patent Appeals to force the USPTO to curtail the rejection known as “undue multiplicity.” During the last forty-five years, Hal has mentored approximately 100 new attorneys in the practice of patent prosecution and, as a result, developed an organized and focused training program. The training program serves as the basis for a law school course in patent preparation taught by Hal. In addition and as an adjunct to this book, Hal has developed a word processing computer program (patentarchitect.com) to render more efficient and focus the preparation of a patent application. He has been added to America’s Best Lawyers list published by Woodward/White, Inc.