The business of patents

A post from our student blogger Brittany

So if you all remember from last semester I stated that I am a member of the business team sponsored by the Office of Technology Transfer. Although the team met several times last semester to hash out the outline for the business plan and pitch deck, things have gotten real this semester or as our mentor likes to say “forealzies”.

Initially I didn’t know if I should join the team because I was unsure of the time committed and how it would affect my MSPL responsibilities but I sure am glad I decided in favor of the team. I’ve been exposed to numerous opportunities that although may not seem directly related to my studies in the MSPL program have significantly enhanced my understanding of the technology. Learning how an idea develops from conception to becoming the foundational technology for a startup company is absolutely amazing.

Despite the long hours….very long hours….required to draft a thorough business plan that is not only accurate but comprehensible for the judges, it has been a rewarding process. Working with my peers that are experts in the areas of business development, finance and accounting, has given me the privilege to learn about things well beyond my scientific bubble. We were all so excited when our team was accepted to the finals for the Cardinal Challenge in Louisville and it definitely gave us that boost of confidence we needed to start this competition season off strong.

If you’re interested in joining the MSPL program definitely ask if any of your research faculty is interested in using their technology to start a company and if so I would highly suggest jumping into the business plan competition circuit. It is an invaluable learning process that would definitely be helpful if you decide to start your patent career at a startup company.


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.

Patent bar exam

A post from student blogger Nicole

First off I would like to say what a pain in the butt applying for the patent bar exam is.  But don’t stress out because I am here to help you!  To start off you have to read the General Requirements Bulletin and fill out a form provided by the Office of Enrollment and Discipline (OED).  But that’s not all.  You have to make sure you send in your transcript, UNOPENED.  For some reason I thought I could open my transcript and still be able to send it in, but I was wrong.  So I had to have my transcript sent to me again.  You also have to fall under one of the three categories in order to take the exam.  The three categories include Category A: bachelor’s degree in a recognized technical subject, Category B: bachelor’s degree in another subject but for this one you have to explain courses you’ve taken that make you qualify (for this category you are allowed to have an opened transcript to highlight specific courses), and Category C: practical engineering or scientific experience which means you have passed the Fundamentals of Engineering (FE) test.  One more thing is that there is a couple of questions on the form where you have to say yes or no.  One of the questions is about having any kind of traffic violations.  It is important to list any violations that were under $100.  It is also important to explain the traffic violation in full detail.  Another thing is the certificate of mailing form that should be filled out.  All of the appropriate forms are located at the end of the General Requirements Bulletin document.

If the forms, transcript, or descriptions of the traffic violations are not included in the information sent to the USPTO, then they will deny you from being able to take the exam.  But on the bright side they will let you submit the missing things in order to be allowed to take the exam.  This will all take a couple weeks so make sure you plan accordingly.  Also it is very important to read the General Requirements Bulletin because I read that you can be denied if you put your middle initial instead of your full middle name.  It’s kind of a silly thing to be denied for but it can happen.  The USPTO really just wants you to have a good moral character and reputation.

Stayed tuned for one of my future blogs to find out how I did!


A post from student blogger Brittany

According to the ever so popular Myers-Briggs Type Indicator, I classify as an introvert although my friends would probably tell you otherwise. The idea of introducing myself, public speaking, and large crowds has always made me feel uneasy and although a career as a patent agent aligns exceptionally well with my sentiments, GETTING THE JOB DOES NOT! I knew upon enrolling into the program I would have to network, ask questions, and partake in other aspects of “putting myself out there”.

At every Lunch and Learn last semester I introduced myself to the speaker and told him or her a little about myself and to be honest it wasn’t too bad. After a few times it became second nature, it was important for me to tell the speaker about me in a sense. Now that I’m “actively seeking employment” I’ve been able to reach out to some of those same speakers for advice ranging from ways to strengthen my resume to potential interview questions.

I can’t say enough to go beyond your comfort zone, I know you’ve probably grown accustomed to your labmates or undergrad buddies but you have to take the next step for your career development. The relationships I’ve established extend beyond the scope of “can you help me find a job”, but these connections are with people I know I could contact even after I get my dream job (speak it into existence) to encourage me and act as mentors. One thing I’ve learned is becoming a great patent agent doesn’t happen overnight and having skilled people in one’s corner drastically increases the chances of him or her having a long and successful career.

Learning from the mistakes and triumphs of other patent agents/attorneys is invaluable. In addition to all the extremely beneficial courses in the MSPL curriculum, extend yourself to guest speakers and connect with people on LinkedIn. You know you’re really growing up when LinkedIn is the preferred app over Twitter and Instagram but it provides you with an opportunity to broaden your network and not to mention connecting with ND/MSPL alumni makes a world of difference.

Catch Up and Wrap Up

A post from student blogger Brittany

Thank you such much guys and gals for reading my blog throughout this first semester of the MSPL program. My goal coming into the program was to write this blog from a place of transparency with a pinch of humor. In a way I was hoping this program would be the magic cure for all of the career frustrations I had while in grad school. Don’t get me wrong, I enjoyed the research I was conducting and the relationships I was building but I didn’t want to continue on that career path.

The MSPL program has forced me out of my comfort zone and at some moments made me question myself as a trained scientist, but it has all been for the better. I sucked at claim writing…..SUCKED, but Karen was patient enough to work with me and we’ve both noticed improvements. For the life of me I can’t figure out why I thought I was going to come into the program writing claims like I had been doing this for 20+ years. Learning to write claims is a very humbling experience to say the least.

For people that are interested in the MSPL program that are transitioning from grad school, it will be tough in the beginning and you’ll realize just how comfortable you were at the bench, but eventually you’ll get better at this patent law thing. I’m closing out this semester on a high note and preparing for next year which is already setting up to be extremely busy with interning, IP Clinic and competing with my business team peeps. I look forward to seeing what next semester brings and I will be sure to share all the juicy details with you all. Happy Holidays!

Back in the hot seat

A post from student blogger Brittany

If you’ve been following my blogs from the beginning you know that I just completed my doctorate degree before coming to the MSPL program. To close out the first semester everyone had to present their capstone projects to the director of the program and their respective research faculty member. I was slightly nervous about the presentations due to the fact that I still hadn’t recovered from my dissertation defense from months back.

The day of my first capstone presentation I felt prepared until someone told me minutes before walking over to set up that “oh he’s tough”. The nerves immediately sat in and they were quite evident during the first few minutes of the presentation. I definitely felt as though I was right back in front of my committee members without the benefit of having worked on the project for the last 5 years.

Overall I think that both capstone presentations went well for a variety of reasons. Importantly, it gave the inventors an opportunity to see their invention through the eyes of someone else.  Although the capstone presentation was supposed to be a test of my knowledge regarding the technology and patent law, I saw it as a test for the inventor as well. This was a test for the inventor to ensure that they provided all the necessary information for someone other than themselves to successfully “make, use or sale” their invention.

While discussing patent laws and how the results of the prior art search may influence the patentability of their invention, I could see a slight bit of fear in the eyes of the inventors. I had to simultaneously ease the concerns of the inventors while being honest about the patent prosecution process. Despite the butterflies, the dialog between Karen, the inventors and myself was extremely helpful in determining, which claims needed to be revised, and the most effective way to communicate patent law to my client.

No one expects the Spanish Inquisition!

A post from student blogger Josh

Well actually, we tend to go into our first round interviews expecting the worst. For your first time, it actually would be excusable to expect the Spanish Inquisition (I’m sure that the university is less than proud of that particular piece of Catholic heritage). But having just lost my brief phone interview virginity to a lovely firm who promised to call again, I can tell you that the process is not as excruciating as you might imagine.

The main purpose of a half – hour phone interview is to determine whether or not you are an individual selected from the group consisting of axe murderers, criminal masterminds, bumbling idiots, republican congressmen, and garden variety unemployable psychopaths. Side note to you future patent nerds, the prior sentence is the appropriate language for a special type of claim called a Markush claim, wherein you are trying to state that a component of an invention can be formulated from anything within a defined category of “stuff”. The proper format recites alternatives for a component of a claim by saying that the component is “selected from the group consisting of A, B, and C” (this is from section  803.02 of the Manual of Patent Examining Procedure, and if you quote it to Karen she will give you a gold star and some brownie points, or at least glare at you with slightly less than her ordinary level of scary yet loving disapproval).

Back to the topic of interviews, the process is one containing multiple steps. You send in a resume that basically says “look at how qualified I am to do exactly what you want to hire somebody for”, and this document gets you in the door. While I would advise against committing any form of fraud here, it is expected that your resume will highlight your skills in such a way that you appear fit for the specific position you want. Tell the truth; just make sure it’s the right truth. Since people belonging to the above category of undesirables are occasionally capable of concocting decent resumes (I’d definitely at least talk to a guy who claimed to have hollowed out a volcano to create a laboratory for quasi ethical science experiments), you will then have to speak to someone. I always find it slightly irritating when people spend time completing activities to pad a resume, and yet are unable to string a proper sentence together (looking your way, 50% of every high school honors society and anyone who paid to be part of a non –field specific collegiate Greek organization that hangs cords around your freshly graduated neck). My academic career has certainly been checkered, and many of you reading this are probably higher achievers on paper than myself. In no way does this guarantee you a job. The processes of interviewing and networking, like practicing law, require the ability to effectively communicate with people.

Once you’ve convinced the individuals in human resources that you can write like Hemmingway and interview like a late night host, this is where you get into the more serious discussions and negotiations with partners. Meanwhile, the H.R. folks return to the wanton stack of sexual harassment complaints against that congressman they mistakenly hired last year (sometimes one slips through the cracks, though that’s what you get for hiring someone named Weiner). By now you should already have asked a number of questions of the firm, and have a decent idea of what you’re walking into. You should know what would be expected of someone in your position in terms of time commitment, what the structure of the firm is like, who their big clients are and what type of work they actually want you to do. I have no advice for this phase yet, because as I mentioned earlier, I’m just beginning this process myself. The good news is that the lovely people at the law school career center can help you along every step of the way, from resume reviews to mock interviews, and coach you on what topics to highlight vs. those to avoid. We’re so used to focusing on school that we often forget the entire point of our education is to enter the workplace in a desirable position. While there are many great things about higher education which I wholeheartedly support, let’s not kid ourselves and pretend that it’s magically made us into well – rounded and fully functioning human beings. I would bet that most of you reading this could tell me Newton’s Laws of Motion, but have never changed your own oil (and if you cannot do either of those things, no excuses, you have Google). By making use of the many tools available to students at Notre Dame, you too can eventually make actual money and feel like an adult. If you anticipate this process, as opposed to the Spanish Inquisition, and work to succeed at it (like you have everything else thus far), I can assure you that your odds of being homeless will dramatically decrease.

Coming to an end

A post from student blogger Nicole

The date for my final presentation is creeping up.  I am both excited and a little nervous, but I’m leaning toward being more excited than nervous.  I think this is the first time I’m actually excited to give a presentation.  I know everything about my capstone project, and I’ve learned so much during the semester so there’s nothing to be nervous about.  When we were first told to start putting our presentation together I thought to myself, wow it’s way too early to start preparing, but then I really thought about it and realized there weren’t even that many days left in the semester.  Like I said before in one of my other blogs, time really does fly during this program, especially the last month of this semester.

The tricky thing about our final presentation is the audience.  We have to present to both Karen (the director of the patent law program) and our inventor.  We have to prove what we learned throughout the semester to Karen but at the same time we have to teach our inventor the things we learned.  Chances are your inventor doesn’t actually know much about patent law.  Not every student will work with a faculty member that has worked with a past student for the program so it is important to help them understand what is going on for their invention.  Also from what I’ve heard from students that have presented already, I have to be ready for a lot of questions.  I think this is what makes me nervous, but I’m not going to let it take me down!

So for all you newbies coming into this program or deciding to become part of the program, I’ll let you know what has to go into your final presentation.  First off let me terrify you by telling you it has to be 45-60 minutes long.  Yes you read that right, 45-60 minutes.  I remember reading that in an old blog by one of the past students and thinking to myself, how the heck will I be able to talk for 45-60 minutes.  The longest I ever had to present was 10 minutes, and I thought that was asking a lot from me!  But after preparing my slides and reading through them, I realized 45 minutes might not be so bad.  There is a lot of information you have to talk about like describing your project, the search you did to see if anything else out there is similar, patent laws, and your claims.  Explaining the search conducted and anything you found that could be closely related will take up a good chunk.  Also once you find out how long your claims end up being and explaining them to your inventor, you will have plenty of things to talk about for 45 minutes.  So don’t let me terrify you too much and hopefully I didn’t scare anyone away from this program! Wish me luck on my presentation!

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.