Tag Archives: patent

What do you want to be when you grow up?

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A post from our student blogger Josh

I last submitted to this blog two weeks ago, regarding how classes were progressing thus far and my first impressions of transitioning to life as a Notre Dame student. Since then, we’ve had a number of seminars through our Friday “lunch and learn” program that have enlightened us as to what we could be doing with our future in patent law. We’ve thus far seen presenters from boutique intellectual property law groups, our own legal career services center, and Notre Dame Alumni who work in IP. If your life vaguely resembles mine, then you’re at the point where everyone from your closest friends to your cousin’s dog is incapable of having a conversation with you without asking “what do you want to do with your degree?” Some of us have gotten used to this line of questioning (I had to answer it all the way through undergrad, explaining that not all astrophysicists work with telescopes and not all philosophers are unemployed), but having to decide what in patent law one wants to do involves a new layer of exploration. Thankfully, thus far MSPL has done an excellent job of showing us that there are a variety of ways that one can make use of a skillset involving the analysis, authorship, and prosecution of patents.

For instance, today we had a speaker who discussed what it means to work in the field of patent searching. While we have a class on searching that meets every Tuesday and hear many anecdotes about what it’s like to professionally perform searches, it’s always nice to hear about a given profession from multiple practitioners who work in different places. Patent searches are requisitioned by a variety of groups, from universities to law firms, and from private companies to the patent office itself. Searches are performed for a plethora of reasons, and each search has to be tailored based on the technology itself and what the client desires to do with the results. This may sounds crazy to some of you, but I personally dig the idea of being a professional searcher. Think about it; our generation has been using Google since we were kids. While Google certainly isn’t the only tool in a patent searcher’s arsenal (more of a helpful companion to the databases one would actually use in a professional setting), the basic premise of manipulating a series of search terms in order to produce a handful of useful results is essentially the same. Intellectual property searches are often a key part of the knowledge basis for many decisions in the business world, and the ability to be at the front end of acquiring and presenting such information makes a neat premise for a career.

I only have a limited amount of space here to expound upon the possibilities of what one can do with a MSPL, which is why I’m certain that a few of my future posts will contain other possible career paths for those of you who chose to enroll in this program. Today my mind is on searching (and tomorrow it will likely be on the football game), but future careers as a patent prosecutor, or a research analyst for mergers and acquisitions firms, or any number of other options cross my mind frequently. I have a bio on the website here, which says that I would be interested in being a patent agent focused on mechanical technologies. However, what that patent agent will do, who he will work for, and in what capacity he will work with said mechanical technologies is still quite a mystery. However, this program has continuously shown me that there are a number of possibilities for a professional with a background in intellectual property, and I’m certain I will be able to find one that satisfies my tastes.

Welcome MSPL class of 2016

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ND

A post from our (graduate) student blogger Megan

Wow, this is the twentieth blog I’ve written since August. This is it—the last blog I will ever write for the MSPL. I’m not going to tell you how sad I am because in reality, I’m not. The MSPL has set all of us up for success. I’m excited about the future, proud of my accomplishments, and ready to graduate. And on that note, I want to dispense a little advice to the class of 2016 (read this with a funky beat and some background music kind of like Baz Luhrmann’s “Wear Sunscreen”). So here we go, in no particular order are my top ten tips for success in the MSPL:

  1. Expand your horizons, do more, go the distance, get the total experience.

If you made it past the admissions gatekeeper at ND—whom I imagine is a larger-than-life bouncer that views lowly candidates with disdain and throws them to the side with a bellowing laugh—then you have reason to celebrate. You have the opportunity to come to Notre Dame. Wait, did you hear me? You’re at THE Notre Dame… Yeah, that school. The school that has movies made about it and filmed right on campus (ever seen Rudy? If you haven’t, you must watch it before you set foot on this campus, trust me, you will be inspired). Take advantage of the opportunities here and meet the standard—it’s high—but it is worth it.

  1. Get frustrated.

Yep. You will be. At some point during your time here in the MSPL you are going to hit a massive wall like taking an Olympic high dive into a pool, fifty feet deep, full of solid, hardened concrete. Whether it is a tough elective class or an inability to understand the technology that you have to draft a patent application on, you will find difficulty in this program. But difficulty doesn’t mean that it is impossible; on the contrary, it is possible and you will rise to the occasion. When you do hit your wall, stop, step back, take a breath, then resume the task the next day. It will work.

  1. When opportunity knocks, invite it in for dinner.

My mom wrote this quote in a cookbook she gave me one year. I never got past the cover page and this quote (sorry, I’m not much of a cook). But the quote speaks volumes. Everywhere you turn there is opportunity at this place and in this program. Almost every Friday we had guest lecturers that wanted to help us find jobs. We went to California and DC to network with potential employers. There is career counseling available to the MSPL through the law school and the grad school—we double up in this program—we’re pretty lucky. There is something going on all the time. Do you like sports, go to the football games. You will meet alumni there. Like uncovering a pearl inside a shell, there is some kind of opportunity for you, your career, and your life; just keep unearthing these opportunities— one will lead to the next.

  1. Network like a rock star.

If you know me, you know that this is my specialty. I love to talk to people one-on-one. I love meeting new people, making connections, and telling everyone about what I am passionate about and hearing the same from them. But even if you don’t love doing this, have no fear. ND is your place if you like science, tech, law, or anything cerebral. And you will likely connect with the people that you have class with or simply sit next to at the next football game. Hang on to these connections; they are worth a lot in the long-run.

  1. Listen. Did you hear that?

Ok. So.Yeah. This seems simple, right? Well, it’s really not. See, if you’ve been selected to join the MSPL, chances are you are an expert in some field of science, engineering, or law. You must meet certain criteria to get in to this program so you already know a lot and are likely highly educated. However, wise one, you must remember to consider everyone else’s thoughts, emotions, and opinions. Everyone carries their own monologue. Be respectful. Let others talk. You just might learn even more, grasshopper.

  1. Stop studying. Tour the campus.

Do this for two reasons: first, you’re at Notre Dame—this place is iconic; second, you need to just take a break. There is a lot of work in this program. It is intense, I won’t lie. Do not let this truly awesome place just exist around you, though. Get into it. Go to the Basilica even if you’re not Catholic. They give tours there. It’s pretty. Take a pic of touchdown Jesus when you first arrive in the summer, then one during fall, one with copious amounts of snow, and finally, one when you graduate. Cut and paste all these photos together into one and marvel at how the seasons changed while you were busy building your life. You’ll thank me for that pic on your Instagram profile.

  1. Do it right or don’t bother.

If you come here thinking that you will put forth minimal effort and you will magically receive a sparkling degree from ND, think again. Patent law is tough, it requires determination. It will take time to learn the law and how to apply that to your technology. Unless you plan to put 100% effort in, it is not worth the time or cost.

  1. Be patient.

This flows directly from #7. If you want to do something the right way, you will have to be patient. Be patient with yourself and patient with others. Slow down. Ask questions, think before you speak, help those who need it. They will help you; be grateful for this opportunity. There will be times that you will not be patient, but remember, the tortoise wins the race, eventually.

  1. Make friends, they’re your future co-workers.

If you’ve read the blogs from this past year you know that Catie, Roberto, and I all refer to the MSPL as a “family.” We do this for a reason—we really are like a family. We disagree with one another, we laugh with each other, we spend lots of time together, we fight, we make up; ultimately, even with all our quirks and idiosyncrasies, we are a tight, cohesive group. This is a good thing. If there is one thing I learned from law school, it is to be nice to your classmates. I have contacted them on more than one occasion. Patent law is a small group around the world. At some point, you are going to run into the people that you go to school with here in the future. And most likely, you will work with them, too. Be nice; they know what you went through in the past and will be more willing to be there for you in the future.

  1. Live, it up. Enjoy it.

Soak up the ND experience! You’ve heard that old saying that “it’s only life after all.” Well, that’s right, it’s just life. But if you’re going to live it, you might as well live it like tomorrow is your last day. Good luck MSPL’ers of 2016. Stay in touch, tweet me: @patlawchick or email me: musovsky@nd.edu. We’re a family, remember that.

Wonderful, weird patents

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A (silly) post from our student blogger Megan

Hey, readers (aka mom and dad), let’s geek out and talk about strange patents! So it just occurred to me that there are about a bajillion weirdo patents out there and nobody gives them any love. Well, at least most of the big names in the patent world aren’t dedicating their coveted blog space to the outcasts of IP society. I’m here to change this, of course. Brown & Michaels, a nice intellectual property firm nestled in Ithaca, New York, clearly agrees with me because they have a page complete with links to wacky patents on their website (check it out at http://www.bpmlegal.com/weird.html). So sit back, enjoy a beer, bacon, or whatever you normally do when you read my blog, and let’s explore the goofy side of IP.

Hamster vestIf you’re like me, you’ve always dreamed of taking your pets everywhere with you. I know, you’re probably saying that with the pet friendly shopping centers and stores that not only allow dogs inside, but also hand out treats to them, you can already take your pets with you pretty much everywhere you go. But what about your hamster? And what about having your hamster really close, like on your body close, all the time, everywhere. Well, that’s what patent number 5,901,666 allows you to do. Aptly titled, “Pet Display Clothing,” this patented invention allows you to wear a vest with clear tubing attached to the clothing that your pet hamster, Hercules, can chill out in while you’re grocery shopping or catching a flight to Bemidji. Haven’t seen this for sale in stores yet? Well, neither have I. The world just isn’t fair.

DividerEven better than a hamster vest, here’s a fantastic invention that my parents would have been thrilled to have when their three children were much younger: “Portable Automobile Partition.” Patent number 6,260,903, in all its genius, allows mom and dad to place a divider inside the car between their kids. I can still remember a family vacation to Florida when my obnoxious younger brother woke both my older brother and me up from a double-dose of parent-approved-deep-car-sleep. He did this by discreetly yanking locks of our hair and laughing. The pandemonium that ensued after that was like none other: screaming, crying, kicking… You name it…we were that family. My poor parents, they still haven’t had more than five minutes of peace and quiet since Reagan was elected the first time. But man, I guarantee if this were on the market back in the 80’s my parents would not have thought that this was an odd patent, to the contrary, they would have thought this was an invention worth buying as many shares of stock in as they could have afforded.

deodorizerLast, but certainly not least, I’ll be me, you be you, just play along:  Me: knock knock!  You:  Who’s there? Me: Orange! You: Orange who? Me: Orange you glad I just set up a patent related to flatulence with a knock knock joke?! Insert laughing emoji. Yes, that just happened. Well, I had to break the ice somehow, or should I say I had to break the wind? Ha. Ha. But seriously, US 6313371 B1 is all about cutting the cheese. Ok, ok, I’ll stop but “Flatulence Deodorizer” consists of “a pad to be worn by a user for absorbing gas due to flatulence. The pad is constructed of activated charcoal cloth disposed between a pair of laminations or layers having multiple perforations therein. The method of use of the present invention is also simple. The pad is non-intrusively taped inside briefs or panties.” Now c’mon…we all know a person that we would give this to at some point…just sayin.’

ear protectorI think by now you get my point, patents are cool. Patent law is neat. Patents can save lives. Underlying technology can be incredibly useful, profitable, and practical. But there is another darker, more rogue side to intellectual property: the outsiders, the Slim Shadies and Pony-boy Curtises of patents, if you will. But don’t discount these bad boys, give them a chance. Read them, laugh at them, but whatever you do, don’t turn your back on them because it’s the pariahs like “Animal Ear Protectors” (US 4233942) that make patent law totally awesome, dude.

Victoria***This blog is dedicated to my friend and inspiration, Victoria R. Zellmer, PhD. Candidate at the University of Notre Dame, who is working tirelessly in the Harper Cancer Research Institute to cure cancer. Science and law are cool, yo!  Rock on girl!

Forever Irish

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MSPL at GSVA post from our student blogger Catie

So, here we are at the end of MSPL Boot Camp…

No, wait, I’ve completed the program and I’m graduating in less than a week! I know that it’s cliché, but where did the last 9 months go? Many of us came into the program without really knowing what we were getting ourselves into with this whole ‘patent law’ stuff, but now we’re prepared and excited for the beginning of our careers in a field that we have become engaged in. I came into the program with a weak understanding of what a patent practitioner does and I had a few misconceptions about what their day-to-day lifestyle is like in law firm and in-house settings. Although I still have plenty to learn, I feel like this program has prepared me for whatever tasks and circumstance my first few years will throw at me.

I’ve learned plenty about myself, too. That’s tacky, I know, but I really have. A year ago, as a brand-new college graduate, I enrolled into the MSPL with a vague, narrow-minded vision of what my future would be like. I was really anxious with the ambiguity of everything ahead of me, including the program itself. At this point, I still don’t necessarily know what I’ll be doing a few months from now. Believe it or not, I’m actually not too worried about it. I’ve learned that the potential of work that I could do within patent law is much broader than I expected. I’m not limited to my niche formed by my biology degree. As a matter of fact, this semester, I have been working at an internship where I have had the opportunity to work on technology in mechanical engineering, and it’s been fantastic! I’m really excited about the prospects of working with a broad array of novel technologies in my career. It was not what I had originally anticipated when I thought of myself as a patent agent, but my initial expectations have been exceeded!

I’m also excited about the possibilities of my future. There are many potential opportunities for employment, and I could still opt to further my education, whether that be law school or another higher degree. I still have hopes of someday getting a Master’s degree in genetic counseling, but for now, I want to focus on establishing myself in patent law. If I have learned anything from others in the program (from whom I’ve learned a lot), it’s that there is plenty of time to figure everything out. As one of the babies of the group, I was incredibly lucky to have my friends in the program talk to me about their backgrounds and experiences that have led to the knowledge that they have acquired along their paths. There is a lot of pressure as a soon-to-be or recent graduate to have a job and a rock-solid plan for your future. It’s almost assumed that you’re supposed to have the rest of your life paved out at 22 once you have a college diploma. Everyone in the program showed me that it’s okay to be a highly educated individual who is still trying to carve out a career, or someone who has already worked a professional job and wants to take a different path, or someone who still doesn’t know “what they want to do when they grow up”.

Speaking of the other MSPL’ers, I’m really going to miss the patent law family! We all hit it off from day one, and it led to wonderful friendships over our short year together. As much as I’m excited for the next chapter of my life, I’m sad to be leaving our little circle of friends and Notre Dame. I have to say: Notre Dame most definitely lives up to the hype! It really is a special place, and I consider myself so blessed to have had the experience of becoming part of the Fighting Irish! For that, I have my parents to thank! Attending Notre Dame and being part of the MSPL has majorly exceeded any expectations I had a year ago, and I will be forever grateful for this experience and those who made it happen.

I am now ready and excited for what my future holds, and I am reciprocally so excited to see my patent law family succeed! We have a great bond in a close-knit field, and we will from here on out be part of the great Notre Dame community. Thank you if you have taken the time to read up on any of the knowledge and experiences acquired by the MSPL bloggers; they are representative of our unique journeys through the program, and we appreciate any time that you took to read our thoughts! I am genuinely so happy and thankful to have been a member of this group of MSPL students. Within a short 9 months, Notre Dame became a new home to me, and I can easily say that enrolling in the MSPL was the best decision I could’ve made. “And our hearts forever, love thee Notre Dame!”

Catie Stevens
cmstevens8@outlook.com
LinkedIn

Being a woman in patent law

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USPTO Director Michelle K. Lee, the first female to be elected for the position, was appointed by President Barack Obama in 2014

USPTO Director Michelle K. Lee, the first female to be elected for the position, was appointed by President Barack Obama in 2014

A post from our student blogger Catie

As a starting note: this blog post is more of an opinion piece, and reflects my experiences and the summation of what I’ve learned from the perspective of a woman entering the field of patent law. While mostly positive, my experiences may not be identical to those of other women. This is simply one perspective.

Many people, both men and women, cringe at the mention of ‘feminism’. However, equality between the sexes is an important topic to contemplate in all aspects of life. I’m not writing this article to put down or offend men in patent law, or in general. I would just like to point out that, for the time being, patent law is a field dominated by men. It’s a simple fact. In the last few years, only about 1 in 4 newly admitted practitioners to practice patent law before the USPTO were female (Kahler, 2013). This is highly influenced by the imbalanced ratio of men to women who have the technical background to sit the patent bar. If you would like to read more about this, please read the following Law 360 article and Intellectual Asset Management article. As a biologist, nothing makes me happier than to see a growing number of young women enter the STEM fields, of which I consider patent law to be included. Although a change is occurring, patent law is still basically a “boys’ club”.

This year’s MSPL cohort consisted of ten students, seven of whom are female. Although we experience different perspectives due to our diverse backgrounds, we noted several times this year that there has been a distinct shortage of women patent practitioners amongst the many guest speakers and hosts that we had the pleasure of meeting. When we did have female guests, they would often marvel at how many women were in the program, and they would speak with excitement and encouragement in telling us that we have made a great choice in entering the field. As much as we appreciated and enjoyed ALL of our guest speakers and hosts throughout the year, we were always really excited to speak with other women practitioners and hear their stories.

However, going beyond the smaller numbers of women in patent law, mindset is very important. As discussed in the above referenced Intellectual Asset Management article, Howrey Women’s Leadership Initiative associate Alyson Barker made a statement about how making sure women are treated as equals is more important than having equal numbers (2008). I feel as though this is the bigger challenge for women in IP careers. I once spoke with a female guest speaker after one of the MSPL lunch and learns, and she verified that being female in the field of IP will bring some challenges. She also touched on the idea that the struggle is not necessarily finding a job as much as being viewed as an equal and making your way up the ladder to the point where you get to call some of the shots.

This is exactly why it is important for new female patent agents and those considering the field to meet and be in contact with other female patent agents and attorneys. With solidarity, women in patent law can support each other and achieve higher. At least for myself and a few of the other women currently in the program, interacting with other women in the field that we’re entering not only gave us realistic insight into what it’s like to be a woman in patent law, but it quells some of the internal questions of “Can I attain a successful career?” and “Will I be taken seriously?”. In establishing a bigger presence of women in the field and forming a larger network of women in patent law, I believe that women will begin to fill more of the higher job positions and break through some of the barriers that are holding them back.

As a feminist, of course I plan on advocating for more girls and young women to pursue degrees in the STEM fields and join the realm of patent law, as well as promote equality between the sexes in the existing IP workforce. I believe that the field will benefit from both an increased presence of women and the equal influence of men and women in the future of IP. I think that together, we can work towards resolving some of the caveats that exist in the patenting system. I also believe that USPTO Director Michelle Lee will make a huge impact on patent law during her career, as she works to better the quality of issued patents to assist in stifling patent trolls. Not to mention, right here at Notre Dame, all MSPL students and alumni have been lucky enough to have Karen Deak direct the program and support us throughout the nascence of our careers. The MSPL is a great program that would not exist without Karen, and I have her to thank for enthusiastically encouraging me to join the program from first introduction.

Don’t get me wrong: I still expect to face some adversity in my career. Although I’ve been pleasantly surprised so far with the respect that my opinions have generally been given, I’ve still experienced a few bumps. Sometimes my opinion is dismissed, and many times I have been cut off while speaking. I’m not always treated as though I know what I’m talking about. Maybe this is because I’m a woman, or because of my lack of hard experience in the field, or because of my educational background. Regardless, I expect to have to fight to be respected going forward. I fully intend on being myself and unabashedly standing by my opinions. Although remaining a humble person and learning from those both above and below you are important skills, I plan on respectfully asserting my intelligence and will push to be treated as an equal. As a final note, I want to share that ‘feminism’ is listed as a personal interest on my resume. I most definitely encourage other feminists (both male and female) to do the same. It’s definitely a point for conservation, as a few recruiters and employers have told me that it caught their eye while looking over my background. Not to mention: it’s an opportunity to support the equality of men and women in the IP workforce!

 

Adams, Sara-Jayne. “Women in Patents: Breaking Through the Glass Ceiling”. Intellectual Asset Management Magazine 2008.

Kahler, Annette. “Women Joining the Patent Workforce”. LANDSLIDE 2013, American Bar Association: Vol. 5, No. 4.

Stefanini, Sara. “Female Lawyers Say IP Still Male-Dominated World”. Law360 2008.

The Markman Hearing

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A post from our student blogger Megan

The MSPL just participated in a mock Markman Hearing last week. The shorthand term “Markman Hearing” refers to a United States Supreme Court case, Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). This case hinged on whether claim construction was a job for a judge or a jury. The holding decidedly provided that claim construction is to be determined by the finder of law, or a judge. Finders of fact, or juries, however, are guaranteed through the 7th Amendment in patent infringement cases which are totally separate proceedings.

Markman Hearings differ from infringement trials, though. The purpose of a Markman Hearing is to decipher what the claim terms of a patent mean. If you recall from some of my earlier blogs I discussed that claims are the legally enforceable portion of a patent. Claims essentially describe the invention that is to receive patent protection. And just because you receive a patent doesn’t mean that you are finished with the legal system with regard to that invention. Depending on the patent and the parties involved, your patent may become the subject of heavy litigation at some point. This litigation will likely stem back to the claims of your patent. If your claims are unclear another party may infringe, or unlawfully make, use, sell, or import your invention. This gives you reason to sue for infringement.

For our Markman Hearing the MSPL was given a set of children’s connector toys. If you were born in the eighties or nineties you remember Tinkertoys and K’nex®. We were given a larger version of these as the subject products in question for our hearing. This brought back some great memories for me because my grandmother had a set of giant Tinkertoys that she hid in obscure places in her home in Iowa. She hated to clean the mess we made after playing with these toys and knew that my brothers and I would never clean up after ourselves, so we had to sneak the set out of her basement when she wasn’t looking. This got a lot of nervous giggles out of us but when she’d discovered what we’d done, she would laugh, too. Who knew that years later I would be trying to interpret the claim construction of the patent drafted to protect this childhood memory of mine?!

During the hearing, the MSPL was split into two groups: one group became the plaintiffs and the other group became the defendants. The plaintiffs accused my group—the defendants—of infringing their product by making some connector toys almost identical to their toys. Just as in a real Markman Hearing, both sides met to discuss what claim terms they agreed were ambiguous and needed to be argued. Both groups met outside class to formulate arguments and draft briefs to the Court. A hearing was scheduled to argue the meaning of the ambiguous claim terms and the briefs were submitted to the judges—our professors.

The day of the hearing the defendants knew that they were in trouble as soon as one of our judges/professors, Tom Mauch, saw the infringing product and proclaimed, “defendants, you’re toast.” As you can see, this mock Markman Hearing was more laidback than an official courtroom setting; however, it was conducted very close to the procedure of an actual hearing. Both sides were given time to present their arguments as well as ten minutes of rebuttal.

This mock experience taught us a lot of valuable, practical information. First, we need to be careful how we initially draft claims—if your claims are unclear you put your client at risk for litigation at a later time. Second, develop your argument but also think about what your opponent’s argument is going to be so you can anticipate and craft a formidable rebuttal. Finally, claim drafting and claim interpretation are learned skills. It takes effort and practice to become proficient at these things, allow time to develop this ability.

The Markman Hearing symbolizes the endpoint with respect to the obligations that we had to meet for our capstone requirement in the MSPL. It is with bittersweet excitement that I write this blog on a rainy Saturday afternoon in late April. Our time in the MSPL has almost come to an end but as I finish this eighteenth blog I am reminded of a quote that I will leave you with: “every end is a new beginning.”

The end of a chapter

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Friends and family tailgating before watching the Milwaukee Brewers on Opening Day, 2015.

Friends and family tailgating before watching the Milwaukee Brewers on Opening Day, 2015.

A post from our student blogger Roberto

Well this is it, my final blog post to you as a member of the 2015 MSPL class at Notre Dame.  When I first started writing these posts I knew very little about patent law.  I knew very little about Notre Dame and I knew very little about what the future had in store for me.  As the year has gone on, we have learned an incredible amount about a very specific field and we have learned just as much about ourselves.  For me, the unique training at Notre Dame has been extremely rewarding given my background in mechanical engineering which is, for the most part, a broad ranging education.  It is a pretty cool thing to be a part of an important and growing field that very few people fully understand.

Whenever I tell someone what I have been studying this past year I always get asked something along the lines of, “Why do you like it?”  The first few months of this program I don’t think I was ever able to truly vocalize my thoughts.  As a result, I gave them a response along the lines of “I think it’s really interesting and that my skill set puts me a great position to take full advantage of this career.”  Looking back, I think my answer today would be a bit different.

As you may remember from my first post, my inspiration for becoming a mechanical engineer has been, and always will be, my dad, who is a self-taught inventor, businessman and everything in between.  After coming up with an incredible idea he needed help protecting his work so that he could build his company.  Throughout the year I have been brought back to those meetings with my dad and the patent attorney so many times.  This year I have had the pleasure of working with some of the brightest and most talented minds at Notre Dame through my capstone project.  Each time I worked with these men I brought myself back to that time.  As I explain complicated patent issues and concerns to my inventors I have had moments where I have seen the proverbial “light bulb” go on.  After a few of these moments, I realized that, in a sense, patent practitioners are just as much translators as they are practitioners.  Very few inventors understand patent law and, as a result, they are completely entrusted to the knowledge and judgement of the practitioner in protecting their ideas.  One skill that is extremely important, and developed over years of practice, is doing a good job explaining all of the options available to the inventors and helping the inventors achieve their goals.  The practical experience that the MSPL offers in this department will go a long way in preparing us for the countless conversations we will have with inventors throughout our careers.

So what’s next for me?  An awful lot, and I am going to love every second of it.  I am excited to begin working for Foley & Lardner LLP at their headquarters in Milwaukee after graduation.  I am thrilled to serve within the electromechanical group and I look forward to bringing everything I have to a fantastic team.  It is also an incredible blessing being able to start my career in the area I grew up in which will allow me to stay near my parents, girlfriend, and close friends.  I have three younger sisters still at home and being able to be there for them as they grow up and go through high school is an amazing opportunity.  Another fun fact about me is that I play on an amateur baseball team near Milwaukee so it will be amazing to be able to continue playing a game I love.  I have played the game since I was old enough to hold a bat.  In high school I had a few key injuries that derailed my career.  After forgoing the sport in college in order to focus on my education it has been revitalizing to pick it up again and I look forward to another great season.  I hope to get to a few Brewers games this summer, and to a few Packers and Notre Dame games in the fall.  This next year holds a lot in store for me.  I will watch my girlfriend graduate with a double major from an incredibly challenging university.  I will enjoy the moment with her knowing that she has made the most out of an incredible life that has taken her from an orphan in India’s largest and most impoverished city to an inspirational leader and life changing mentor for children in the classroom.  I will travel down to Chicago to watch my younger brother continue to light up the stage as he plays a lead role in a major theatre production this summer.  I will watch him wherever he goes and I am excited to continue to witness his transformation from high school theatre standout to movie star.  I will help my oldest younger sister (wow that was difficult to put into a sentence) as she prepares to begin her own college odyssey.  I will watch both of my oldest younger sisters continue to tear up the softball diamonds of Wisconsin this summer.  I will run to the store to pick up baking ingredients for my youngest sister who is an aspiring chef and baker and I will enthusiastically serve as the taste tester for countless of her concoctions.   To put it simply, I look forward to the many memories and good times ahead.

Now I also begin another chapter of my life.  No longer am I a student, I am now a contributing member of my community.  I take my responsibility to give back seriously and I am excited to have the opportunity to go back and improve my community.  Throughout college I was able to volunteer through various organizations and look forward to working hard to make a difference in as many lives as possible.  I have been blessed to have had the assistance of many generous people in my journey to get to this point in my life.  All along I have believed that my life mission is to use my talents to improve the lives of others.  Now that I am done with school that chapter officially begins.

The last part of this post is directed to the question I’m sure many of the prospective students reading this will want answered: now that I am through the program, what do I think about the MSPL as a whole?  I think it has been incredible and prepared me very well for life after graduation.  The real world experience the program has provided will serve us all well as we begin our careers in a few short weeks.  The capstone project in the MSPL is a unique and extremely rewarding challenge for students that ties in the topics taught in all the classes into one continuous project.  I think more engineers and scientists need to consider careers in patent law and that they should consider starting down that path through the MSPL.  The MSPL gives students incredible training that would be difficult for students to duplicate in any other setting.  In addition to the training, there are many opportunities to immerse yourself in the patent law community.  From guest lectures to office visits in San Francisco and Washington, D.C., students are brought into this community through the many experiences available through the MSPL.  Another advantage of the MSPL is that students are trail blazers, forging a new path on their journey from engineers and scientists to the patent practitioners of tomorrow.  It is rewarding to be on the cutting edge of such an important field and to be a part of an educational revolution.  The final benefit is that students are welcomed into the Notre Dame family.  At first, I thought this was a fluffy benefit people just talked about but that in reality meant very little.  I was very wrong.  Being on campus and talking to plenty of alumni I have realized that there truly is a Notre Dame family and that it is a special thing to be a part of.  It will be special to belong to a group as close knit as Notre Dame’s and I look forward to interacting with more and more alumni in the coming years.

Well, I guess it’s about that time.  This is it, my final MSPL goodbye!  Thank you for reading my posts and the posts of my fellow MSPL bloggers, Megan and Catie this year.  It has been an honor to share my experiences and I hope that they have shed some light on what life is like being a member of the MSPL at Notre Dame.  I would be more than happy to talk in more detail with anyone about my experiences and can be reached at the below correspondence or through my LinkedIn profile.

Go Irish!
-Roberto
Email: fernandezr519@gmail.com
LinkedIn

What’s my motivation

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A post from our student blogger Catie

After the patent application has been drafted and filed, the patent agent or attorney is still tasked with the prosecution of that application. This requires responding to Office actions regarding the application, and making arguments against any claim rejections. Basically, the patent practitioner is convincing the examiner that the patent application is complete and worthy of issuance.

In the MSPL, we are taking a course this semester that focuses on filing these responses. The process is extremely detail-oriented, and the document must be at least double or triple-checked to be sure that it meets all the meticulous formatting requirements called for by the USPTO. That’s only half of the battle. The other half is writing a response to rebut the examiner’s rejections. Some of the arguments against rejections may be simply stating and pointing out specific clauses of the patent laws that cause the rejection to be moot. That may sound pretty boring, but in some ways, these are the easiest of the rejections to which a patent practitioner may have to respond.

Other arguments may require the practitioner to argue more subjective matter. A common rejection to receive alleges that two or more earlier patents create the technology of the current application to have been an obvious improvement or combination of elements. In such a case, the practitioner has the option of formulating an argument that no motivation existed to create the invention prior to its conception and patent application filing. This kind of response to a rejection may seem more interesting than simply utilizing the law, but it is much more strategic than it sounds.

Firstly, it’s important to carefully read through the rejection to understand what components or aspects are involved in the examiner’s reasoning for the obviousness rejection. This almost always involves two or more patents or articles that the examiner cited as containing all of the elements in the technology of the current patent application. The patent practitioner must then carefully evaluate the language of the current patent application and the cited sources to determine if the examiner is correct in his or her assertion maintained by the rejection. If the examiner happened to forget an element, or possibly misinterpreted the art of the cited references, then the practitioner should (politely) point out those mistakes and assert that the technology of the current application is therefore not obvious.  It is important for the patent practitioner to formulate arguments against the rejection that are based upon the specific language and components utilized in the examiner’s rejection. This may include arguments against any motivation to combine elements from earlier patents to create the invention at any point prior to its filing.

Generally, when making an argument that no motivation existed to combine elements to create the current invention, the Teaching, Suggestion, Motivation (TSM) standard is used. This is a strategy to argue against the rejection that asserts that prior references did NOT explicitly teach that the particular elements may be combined, suggest that such a combination could be considered, or provide motivation to combine the particular elements  due to the functioning of the separate inventions. Making these arguments calls for plenty of research and focus regarding small aspects of your invention, but it definitely makes for an exciting challenge; especially considering that you get to ‘nerd-out’ on the intricacies of your technology! So, keep on searching for your motivation (or lack thereof)!

The patent process from start to finish

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Patent ProcessA post from our student blogger Megan

I get a lot of questions about how the patent process works. Because I think the patent process can seem a little daunting, I thought I’d give you a quick rundown of how it works from start to finish. Please note that this is just a general view of the process and how it works—each patent application is different and therefore the process is unique for each as well. In addition, while you may proceed pro se (without the help of a patent attorney or agent), it is highly recommended that you enlist the guidance of a patent practitioner when seeking patent protection.

Where do you begin when you want a patent? Well, first, you’ll want to know that this is not an extremely fast process. So how long does it take to get a patent? In true lawyer fashion, I have to tell you that it just depends. If you have a complex underlying technology then it could take years. Some dates that you will want to remember are that your application will publish eighteen months from filing and if you file a placeholder application, you will need to replace this with a real application within twelve months. Ok, so you can kind of see where this is going… patent law is complicated so you’ve got to know your dates and prepare accordingly.

Let’s swing back to the original question, though: where do you start when you want to get a patent. You need to figure out if your idea has already been acted on. In other words, you need to do a patentability search to determine if there are other patents, offers for sale, publications, patent applications, or anything else that has already discloses your idea. You will want to do this because if your idea is already within the public domain you will likely be prevented from receiving a patent. Remember, you cannot patent something that isn’t original.

Once you’ve performed a patentability search you will want to draft a patent application. Your application will have to comply with various statutes. For instance, the concept that you reveal in your application will need to be new and non-obvious. You will have to describe how to make and use your technology so a person who works in your technology area will be able to reproduce it. Careful planning and drafting are a must at this stage in the game. It is essential that you understand how to draft an application if you want the process to proceed as smoothly as possible. Drafting a patent application is both an art and a science. Patent agents and attorneys are trained to specialize in this.

If you choose to submit your application to the United State Patent and Trademark Office (USPTO), you will enter a phase called “prosecution.” Remember that this is patent prosecution, not a criminal prosecution—these two things are different. Patent prosecution involves sending your patent application to a person who reviews applications in a specified area of technology at the USPTO. You will likely encounter what are called “rejections” from your examiner. Don’t stress, this is a common occurrence. Patent prosecution involves going back and forth with the examiner until you get the application drafted in a proper form that the examiner accepts.

If the examiner sends you a “notice of allowance,” congratulations, you just snagged a patent on your inventive idea. If your examiner denies you at least two times through rejections, you have the option to appeal this decision. Appeal is an interesting court procedure that I won’t delve into it in this blog, but know that it is an alternative if you are struggling to get a patent grant.

This was a quick look at the patent process. Please note that it is far more complicated in real life. But as the saying goes, it may not be easy but it will be worth it. So, happy patenting!

Can you handle grad school?

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A post from our student blogger Catie

What everyone tells you is true: grad school is difficult. Is anyone really surprised by that? I somewhat addressed this topic in a post from last semester, but I would like to talk about it more in-depth, incorporating reflections from my experiences from the current semester. As I have mentioned before, I was a graduating genetics senior this time last year. As recent as it seems, it was only a year ago when I myself had so many questions in my mind about what grad school would be like. Of course it’s going to be difficult: I’m entering graduate school at Notre Dame! My real question was: can I do it? Can I handle the work of graduate school? Will I be any good at this patent law stuff?

Grad school is hard; otherwise, everyone would go! I knew this, and I initially had fears that I wouldn’t be able to keep up, which is quite an ominous fear when you’re paying Notre Dame tuition! Another note of advice that you’re likely hearing is that grad school requires a lot of time management. This is also true. However, you had to master time management in undergrad, too, right? This is not something that is ever going away: the program’s visits to San Francisco and D.C. have indisputably taught us that time management will be a major theme during your career, as well.

To connect these two points of advice: have faith that you CAN survive grad school, as long as you are fully aware that you will be tasked with a new world of time management. Grad school is a whole new world. Throughout the year, during casual conversations about how school is going for me, plenty of people had made comments along the line of “you’re in college”. I have been pretty adamant in gently reminding those individuals that I am in grad school, which is most definitely different from undergrad. I am no longer simply going to school, where I am taking an array of classes; I am training for a career and doing class work that is going to prepare me for that upcoming career!

To put this into perspective: I just recently completed my final presentation for my capstone project. I survived drafting my first complete patent application! Seven months ago, I had no idea how I was going to reach this point! The thought of drafting a complete patent application on my own (with plenty of wise guidance from mentors, of course) was simply not something that I could see myself accomplishing. Here I am now, with my capstone completed, and yet I am still taking one day at a time balancing the work from my patent law classes, a group presentation for my elective, work for my internship, correspondence with potential employers, study materials for the patent bar, as well as my miscellaneous day-to-day tasks. The point that I’m trying to make is that I have already completed what I expected to be an insurmountable task, and yet I’m still trucking along and successfully balancing more than I ever thought I could. This is incredible: someone tell this to Catie from one year ago!

What I really want to get across to any prospective student is that you should not be fearful of being able to handle the work load of the MSPL. As long as you put forth the effort and are willing to learn, you will find your balance and discover yourself keeping up with the work. Grad school is a different world, but the adjustment just takes time to master, just like any other change in life. I mentioned how much I have on my plate right now, and it definitely keeps me busy. However, make no mistake: I still absolutely make time for myself. You have to make time to wind down; it’s how you’re going to draft a patent application without going insane! I allow myself to make time for the run that I wanted to go on, the trip to the Grotto that I told myself that I would make, the weekend trip home to see loved ones, and of course: the night out with classmates to watch some Notre Dame March Madness! It’s all about time management, but also making sure that you are taking breaks to take care of yourself.