Tag Archives: MSPL student

Trademark tactics

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The WalletHub logo is being opposed by Major League Baseball on behalf of the Washington Nationals and Chicago Cubs. (Courtesy of Evolution Finance) (All Courtesy of Washington Post)

The WalletHub logo is being opposed by Major League Baseball on behalf of the Washington Nationals and Chicago Cubs. (Courtesy of Evolution Finance) (All Courtesy of Washington Post)

A post from our student blogger Roberto

When many hear the words “intellectual property” they think only of patents.  In fact, there are many other forms of protection that are available depending on the subject matter.  For example, a trademark can be filed to protect any word, name, symbol, or design, or any combination of the proceeding, to be used in commerce.  This identifies and distinguishes the goods of one from the goods of another and serves as indication of the source of goods.  Not surprisingly, most of the work of patent agents relates to patents.  However, it is important to understand the other types of protect that exists and how they may fit in with your client’s needs.

For me, it has always been easiest to learn through examples.  Better still, it is more fun to learn through examples that peak my interest.  As you will likely find out in the coming months (through subsequent posts) I am an avid baseball fan and even play on a team back in Milwaukee.  With spring training starting just a few days ago, and a torturous ending to the Packers’ season, I admittedly have a bad case of baseball fever.  Out of the blue, I decided to do an online search for “baseball intellectual property”.  Oddly enough, there were a few news outlets covering a trademark dispute between the Chicago Cubs (Booooo!!), the Washington Nationals, and a small Washington D.C. startup called Evolution Finance.  Evolution Finance uses the trademark to represent WalletHub, a Web site they run where consumers can compare credit cards and find personal finance advice.  The dispute is over Evolution’s application for a trademark, the white W on the green background, which Major League Baseball (MLB) is opposing because of the trademarks owned by their clubs, the Cubs and Nationals.  While I have watched baseball my entire life, well since I can remember, I have watched baseball.  One of my first memories was hitting baseballs off a tee in my backyard and I can’t tell you how many summer hours I have put in on the diamond.  Even with my knowledge of baseball, I had absolutely no idea what the Cubs’ trademark was from.  While I had never seen the Washington trademark because it was from their early Senators years (1912-1927), I was shocked to hear that the Cubs trademark had been used at least 38 times each season since the 1940’s.  In fact, the Cubs trademark is actually depicted on a flag that is hoisted at their home stadium, Wrigley Field, after each home victory.  After learning this, it made sense to me why I had not seen the flag before.

MLB is arguing that consumers may be confused by the Evolution Finance trademark and mistakenly associate it with baseball or believe that it is endorsed or partnered with MLB.  Conversely, Evolution Finance is arguing that their uses are substantially different than those of MLB and that the uber-powerful baseball conglomerate is attempting to hijack the letter W and all its potential uses.  Currently the two sides are awaiting a trial before the Trademark Trial and Appeals Board which will decide the fate of Evolution Finance’s trademark.

In a follow up to my last post, it looks like football player has followed in Marshawn Lynch’s footsteps and filed their own trademark application.  Jameis Winston, the highly touted and potential first overall selection in this year’s draft, has filed a trademark application on his nickname “Famous Jameis”.  In addition to the contract he will sign, last year’s number one pick Jadeveon Clowney signed for $23M guaranteed, Winston will look to cash in on branding much like Lynch aims to do.  The trend of sports players seeking trademark protection for nicknames or catch phrases definitely seems to be heating up.  In recent years Johnny Manziel, Roberto Griffin III, Jared Allen, Darrelle Revis and former players John Elway, Bart Scott, Michael Strahan, and Terrell Owens all have filed trademarks.  Given the cash cow that sports marketing is, it is not surprising that athletes are looking to capitalize.

California dreamin’

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The Notre Dame Patent Law family at Half Moon Bay

The Notre Dame Patent Law family at Half Moon Bay

A post from our student blogger Megan

“California Love,” “California Dreamin,’” “California Girls,” “Like a California King,” and “Californ-I-Ay.” These are just a few of the dozens of songs that have been written about the thirty-first state admitted to the union. With so many songs written about it, there must be something special about California, and in fact, there is. Sure, there’s the beautiful topography, the pristine beaches, and the endless drops of sun all year round, but what else? The MSPL received an invitation from Notre Dame’s William K. Warren Foundation Dean of the College of Science, Gregory P. Crawford, to visit Silicon Valley for a full week to find out what really makes California unique. We learned that the Golden State is more than just a pretty place—it’s all about hard work, passion for what you do, and an effortless vibe of excitement.

Dean Crawford is relocating to California to launch a strong Notre Dame presence on the West Coast. After all, California boasts the second highest number of Notre Dame Alumni in the entire United States. But in addition to this fact, Notre Dame has solidly established itself as a competitive science, technology, and business university—three qualities that fit like a glove with NorCal’s high-tech atmosphere (think Google, Facebook, and a whole host of start-ups that have hit the area like a spontaneous meteor shower within the past decade and a half). Dean Crawford serves as a charismatic ambassador between the halls of gold and blue in Indiana and the glistening sunshine soaked techie industry in San Francisco. During a brief November, 2014 meeting with the MSPL, Dean Crawford shared his plans for the ND-CA alliance. A casual comment was thrown out suggesting that Dean Crawford host the class in California during the second semester of the program. Dean Crawford immediately jumped on board. Ten weeks later we boarded a plane and watched the frigid snow of South Bend disappear, touching down a few hours later in beautiful San Francisco on a warm Sunday afternoon.

The MSPL cohort visited multiple private law firms including Morrison Foerster, and companies such as Qualcomm and eBay. MSPL’ers also got to spend time with Notre Dame alums that are now living and working in NorCal. Tim Connors informally lectured to the group on the basics of venture capitalism and John McNelis discussed the life of a patent attorney. The week-long Cali trip included some fun events like a visit to Half Moon Bay and some of the best ice cream sandwiches we’d ever tasted in the Valley.

The California trip was fun, but perhaps the most surprising thing about Silicon Valley was the immediate rush of intoxicating intellectual satisfaction that the people of NorCal emanated. Everyone that we were introduced to from IP lawyers to tech-savvy engineers loved what they did, loved where they lived, and exuded an air of confidence and happiness. Silicon Valley, you see, is the land of the start-up. Some new businesses rise up and some don’t make it off the ground. But regardless of whether your venture makes it in this area, at least you tried. And you don’t stop there. You keep going until you do succeed.

I once had an undergrad geography professor who hailed from California and he told us time and time again, “everything you hear about California is true.” He was right. California is one of those rare places that not only looks beautiful on its surface, but is truly filled with inspiring people who have big dreams. It might sound cliché, but the exposure to such a unique area of the country has changed the way that I think. If you have an idea, chase it. If you succeed, great; if you fail, try again. But whatever you do, have the courage to do it, not just dream about it.

Decoding the matrix

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A post from our student blogger Roberto

As an undergraduate I remember waking up one morning and everything changed.  Before that day I remember straining my brain each second trying to memorize every piece of information my teachers went over in class.  When the time came to prepare for the test I would work through the notes and redo all the practice problems hoping to just re-learn all those examples from class.  Then exam day would come and the questions would be different. As a result, I would be forced to exercise my creative knowledge on test day.  As if those tests weren’t hard enough I would later learn that this method of studying made them far more difficult than they had to be.

As I said, there was a day when this all changed.  Maybe it was a result of staying up all night in computer lab trying to figure out which sign change I needed to make in order for my code to work but one morning I woke up and everything was different.  It was almost a matrix-like moment, for all of my Keanu Reeves fans out there.  Rather than furiously copying down everything I saw on the chalk board I was found myself taking very few notes.  I had finally connected the dots, I had begun to piece the concepts together.  I actually began to look at problems and see the numbers and underlying concepts behind what was going on.  I would take pieces from my other classes and use them to predict what the teacher would say next.  Before long I had unlocked a whole new level of learning and understanding.

When I was going through bootcamp here in the MSPL I realized that I had to become a student of something entirely different than the engineering coursework I was used too.  My reset button had been pressed and back again were the days of tirelessly scribbling notes I would probably never make sense of.  Initially, it was a bit of transition for me going from engineering to law.  I was not used to analyzing words so carefully nor was I accustomed to memorizing statutes and laws.  While I knew all of our classes had been carefully interwoven together it was hard for me to see the common thread at first.  Each time our professors lectured or we listened to guest speakers I was amazed at the level of knowledge they possessed of the law.  They spoke about the law so fluently and eloquently it was as if I was in a foreign country.

After a while the hard work in the classes started to pay off.  I began to put the pieces together and I started to truly understand, rather than memorize, concepts.  While I was studying for the patent bar I began to realize the true intent of the system and that answers to questions would always flow from that understanding.  It was a really great to feel like I understood what patent law was about and what the goal of it was.  The closest comparison I can make is that when you were young your parents instilled in you a sense of right and wrong, a moral compass.  At first, it was difficult to differentiate right from wrong and we would often pay for the price for it.  After a while though we began to trust our moral compass and simply ask ourselves what would be the right thing to do.  Rather than memorizing rules we relied upon our understanding of much larger concepts.

For my news tidbit of the week I (regrettably) once again turn our attention to the Seattle Seahawks and their running back Marshawn Lynch.  As many who follow the NFL know, star NFL players are required to be available for public media interviews after games or at league scheduled events.  Many stars, including Aaron Rodgers, Jordy Nelson, Eddie Lacy and Randall Cobb, rarely make headlines for these interviews.  Some players however have utilized the venue to air grievances with coaches, opposing players or teammates.  Lynch made headlines this season not for what he said, but what he did not say.  After refusing to answer questions from the media during the majority of the season, and being subsequently fined by the NFL, Lynch decided to answer all media questions with the simple word “yeah”.    The next week Lynch answered all questions with “Nope” and over the next few weeks all questions were answered with “Thank you for asking”, “I appreciate it” or “I’m thankful”.  Many wondered what Lynch would say during “media week”, which is the week before the Superbowl.  Rather than answering questions with one of his already coined responses or not answering at all, this time Lynch responded to every single question with a variant of “I’m just here so I won’t get fined”.  Now, a few weeks after that now famous interview, Lynch is attempting to file a U.S. trademark on the phrase.  Presumably, Lynch intends on reproducing his famous line on his own personal brand of clothing.  As you may know, this trademark would allow him to stop others from reproducing that phrase. While Lynch’s series of interviews will go down in sports lore it is awesome to see intellectual property coming into play and I am excited to see what he does with the phrase.

2013 BIO International Convention

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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.

 

Time is Money

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A post from our student blogger Sarah Goodman

Legal professionals are often required to bill their time in the form of timesheets. The particular minute increments for billing are dictated by employer policies. Some common time increments are 6, 10, or 15 minutes. Each independent activity should be separately itemized with a corresponding time. Timekeeping is necessary for accurate client invoices.

Time may be recorded on a spreadsheet for convenience. Complete sentences should be used with sentence case and periods. The sentences should be written actively, distinctly demonstrating the work that was performed for the client. Examples of action verbs for billing time include researching, analyzing, drafting, and revising. The tasks should be described and supplemented with specific details. However, the description should not be so long that the task seems ambiguous. Although the tasks should be described in a legal and knowledgeable manner, the descriptions should be understandable to the average client.

It is important to bill time because clients may examine the legal bills with scrutiny. Every minute billed to a client must be must be clear to avoid dispute. The task descriptions should be specific to the individual client to aid in comprehension. For example, instead of describing a task as “drafting amendment”, the description could be improved by identifying the patent application number and including details about the type and nature of the amendment. Slang and abbreviations should be avoided because the timesheets may be reviewed by individuals unfamiliar with a particular terminology.

In the MSPL program, we bill time for every assignment to practice legal billing. We learned that is beneficial to bill time while working on a project or as soon as possible after completion to avoid mistakes and errors. The ability to produce detailed and accurate timesheets is a fundamentally essential skill for a successful career in the legal field.

Ethical Rules and Regulations

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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

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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

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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.

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!