2013 BIO International Convention

A post from our student blogIMG_4962_Ager Sarah Goodman

I attended the BIO International Convention April 21-25, 2013 at McCormick Place in Chicago, Illinois. The University of Notre Dame is a BIO member company and a 2013 exhibitor. I volunteered for two days and received two day passes for the convention. During my volunteer sessions on Monday and Tuesday, I worked in the Sponsor Lounge where I was able to interact with members of large international biotech companies. I was able to participate in the convention on Wednesday and Thursday. It was a great opportunity to visit the exhibits and speak with professionals in the biotech and law fields.

Some of the exhibitors were representatives of law firms that practice in the field of intellectual property law. I spoke with patent attorneys and agents from many law firms including Thompson Coburn LLP, Barnes & Thornburg LLP, Frommer, Lawrence & Haug LLP, Foley Hoag LLP, and McDonnell Boehnen Hulbert & Berghoff LLP. The convention also featured major biotechnology companies. Participants included Astellas, Janssen Pharmaceutical Companies of Johnson & Johnson, AstraZeneca, Genentech, Merck, and GlaxoSmithKline. I really enjoyed meeting domestic and international professionals in my field.

Besides the individual exhibitors, there were separate pavilions for each country and some states of the US. Each country pavilion had details about the particular country and business information. During a reception on Tuesday, each pavilion contributed to the festivities. The Switzerland pavilion provided a chocolate fondue with fresh fruit and cookies. The Belgium pavilion provided fancy coffee served by a barista. My favorite pavilion was the France pavilion which provided cheese and wine to attendees and where French was spoken almost solely.

The BIO International Convention was a great opportunity both professionally and academically. Attendance significantly impacted the drafting of my thesis and my professional development. The BIO International Convention was an exciting event that provided a lot of valuable information and insight into intellectual property law, pharmaceutical development, and marketing strategies.


ND Law School IP Clinic Expands to Include MSPL Students

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

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.

An American Patent in Paris

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.

Contract Agreements in the Intellectual Property (IP) Field

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.

What is a … copyright? trademark? trade secret?

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.

Office of Tech Transfer a Valuable Resource for Students

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.

Patent Litigation Abuzz in Silicon Valley

It is no exaggeration to say that what’s stirring the pot in Silicon Valley right now isn’t the latest i-Gadget—it’s tech patents. Licensing intellectual property is a big money-maker out there, where something as intangible as an algorithm is often the hottest commodity. Protection of IP is the sign of the technological times—consider that a majority of the half-million patents applied for each year are tech-related.

And a behemoth tech-company like Google, which has quickly become a part of our everyday lives, (and profits very well from that fact), is not surprisingly taking the lion’s share of patent-related lawsuits.  Fresh from litigation with Oracle, a software company that claimed Android devices infringed on its Java programming, Google is now back in court with IP Engine, concerning the very web search algorithm that made Google, well, Google.

Because the 14-year history of this particular algorithm is perhaps more complex than how it works, here’s the IP Engine/Google fiasco in a nutshell according to Fast Company: in 1998 engineers Andrew Lang and Donald Kosak patented an algorithm that allowed search engines to scour the web and filter the results. While the patent was bought and sold since, it is now owned by IP Engine, who claims Google and other companies like AOL have used the algorithm and therefore owe a royalty. Given that Google alone makes 38 billion annually, a mere fraction of that would be a tidy sum.

As is common with many patent lawsuits, the devil is in the details, or in this case, the definitions. “Scanning” is the term in question—whether it refers to the traditional hand-visor surveying to pick out a particular thing, or the more technical method of “spidering” that is the M.O. of many a search engine.

This is, of course, just the groundwork being laid out as the case goes to trial. We’ll have more for you as the drama unfolds.

The Value of American Ideas

What comes to mind when you think of American exports? Cadillacs? Doritos? Those are easy, but you may not consider services like finance and education, and you probably don’t think of American ideas either. But as shown on the chart below, intellectual property falls under the “Royalties and Licensing” bubble, and makes up a big chunk of American GDP.

Source: Bureau of Economic Analysis Credit: Lam Thuy Vo / NPR

According to NPR’s Planet Money, American ideas bring in about $105.6 billion from overseas. And as illustrated in the next breakdown, the lion’s share of these monies comes from “Software” and “Industrial Processes”—both of which depend on patent protection to ensure the intellectual property is not being abused, and the developer is getting their fair share of compensation from use.

Source: Bureau of Economic Analysis Credit: Lam Thuy Vo / NPR

“Industrial processes” comprise anything from medicine and drug formulas to trade secrets and technology in manufacturing. It all goes to show that intellectual property, while it may be as intangible as a thought, idea, or simple moment of inspiration, is a big, global business—a business that needs individuals like you to be a part of!