Tag Archives: patent agent

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.

Priority application deadline is approaching!

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If the MS in Patent Law is an option for you, make sure your completed application* is submitted by April 30, 2013! All applications submitted by that date will be considered for one of four scholarships next year.

We have two $5000 scholarships made available by the gift of agenerous Notre Dame alumnus. These scholarships are available to EE or ME graduates, and will be awarded to students with demonstrated financial need.

We have two additional $5000 scholarships available to students who are interested in blogging for the MSPL. These scholarships are open to any applicant.

All completed applications* will be considered for these scholarships. If you are one of the finalists, we’ll notify you directly.

We look forward to seeing your application soon!

*Completed applications include informal transcripts, GRE/LSAT scores, and all required personal statements. Letters of reference are NOT required for consideration for these scholarships, although they are required for the final application to the program.

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patent 3 small

 

 

 

 

We’re winding down the year here at the MSPL, and have some exciting news to share: two of our students have already taken and passed the patent bar exam! They are on their way to becoming registered patent agents!! Congratulations!

The job outlook is also bright for our graduates: two of our students already have jobs, and everyone else has had at least one interview for a job as a patent agent or a technical specialist! I couldn’t be more proud.

It’s been a great first year, and I’m so excited to have been a part of it. I wish all of our graduates the best of luck as they start their careers in the patent world!

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

Power and Water

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We spent today (our last day!) at GE’s Power and Water facility in Schenectady, NY. This facility was started by Thomas Edison himself – check out the signature on the visitor’s pass we found!

 

 

 

GE visitor pass

 

 

 

 

 

Also in the picture is Buddy Cusick, one of the IP counsel who supports some of the R&D that happens at the Schenectady campus. Buddy is second from the right.

In addition to hearing from quite a few GE representatives today, we toured two plants. We got to see where they make their HUMONGOUS steam and gas generators, and also where they make a cool new type of battery.

After the tours, we chatted with Mike Gregory (a ND alum, and GC for the business unit), three technologists who develop new products at the facility, Buddy and Frank Landgraff (chief IP counsel for the business unit) and Mike Gnibus, who heads GE’s Global Patent Organization in Shelton, CT. Each speaker gave us their perceptions of the importance of patents to the business unit and to the company overall, and our students got some excellent advice that they can take with them into their practice careers.

 

It’s our last day, so sadly we will be headed home tomorrow. It’s been an amazing trip, and I am looking forward to next year already!!

 

GE’s GRC

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We spent yesterday at GE Transportation in Erie, PA. They make locomotives there. Who knew how much innovation is going on in that space – it’s a 150 year old technology in some ways, but in other ways, entirely new. The below photo was taken in the building in which we had a learning session with Shawn McClintick (Senior IP Counsel for the Transportation group). Shawn is second from the right – after Thomas Edison and one of our students.

GE transportation

 

 

 

 

 

 

Today we spent the day at the Global Research Corporation. We got an up-close view of a couple of very cool new GE technologies, met a few ND alums, and got to talk to a part of the IP team which manages GE’s patent portfolio. The students learned alot about what options are available for patent agents and patent practitioners generally at corporations like GE.

 

We’ve been lucky enough to be invited to stay at the GE Lodge on campus, and the view is beautiful!

GE view from lodge

 

A visit to Detriot

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Detroit GM buildingWe spent today in Detroit, MI. Most of the day was spent learning about the new Detroit regional USPTO. They only do patent work there, and concentrate heavily in the mechanical and electrical engineering fields. They’ve hired and trained around 70 new patent examiners since they opened, and are aiming to have about 100 new examiners in their first year of operations.
The folks at the PTO were very gracious hosts. We learned about the mission of the PTO and of the Detroit office, had lunch with some current examiners, learned alot more about the job of an examiner, and also got to share a bit about the MSPL.
After a tour of the office, we traveled to Dickinson Wright to mingle with some of the folks we know through our adjunct faculty member Hal Milton. Kim Slaven, a ND alumna, is a patent associate in the Troy, MI office of Dickinson Wright, and arranged for the MSPL students to meet some of their patent interns (trainee patent prosecutors). We spent some time in their 40th floor office, which has a great view of the GM building. Unfortunately it was rainy today, so the photo isn’t great, but you can still get the idea of how amazing the view is (Canada is in the background!).

MS in Patent Law accepting applications

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Notre Dame’s one-year MS in Patent Law is accepting applications for the 2013-2014 academic year.

Our students learn hands-on skills that prepare them for a career as a patent agent – helping people prepare and obtain patents. Patent agents work at the cutting edge of their technical area, and also at the cutting edge of the law.

Applicants must have a background in science or engineering. Strong applicants have good oral and written communication skills. Applicants with EE and advanced degrees are especially encouraged to apply.

We expect our class of twenty to fill soon. Apply early for best consideration!

 

 

A Good Example

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A post from our student blogger Sarah Goodman

The latest blog emphasized the importance of incorporating alternatives and variations when drafting patent applications. The purpose of this practice is to produce a higher quality patent application and protect a client against competitors. An additional technique to strengthen a patent is the use of examples. Examples in a patent application are specific embodiments of the invention. Inclusion of examples is not always required by a patent examiner. However, it is good practice to describe different embodiments of the invention especially in the unpredictable scientific fields like chemistry and genetics.

An example is a detailed description of an embodiment of the invention. Examples may include a description of how to make the invention, how to use the invention, and specific details of an embodiment. Specific details such as the temperature at which a reaction was run or compositions from which a product was manufactured can assist in demonstrating enablement of the invention. Increasing the number of examples often broadens the scope of the claims by distinctly pointing out different features of the invention.

There are two types of invention embodiments that can be included in a patent application: prophetic examples and working examples. According to MPEP 2164.02, a working example is based on an experiment that was actually performed. A working example may include testing conditions, usability conditions, specific compositions, and experimental results. A prophetic example is based on predicted results when the experimental work was not yet actually conducted. Prophetic examples may include simulated test results, calculations, and theoretical experiments.

There is a correlation between the need for working examples and the complexity and unpredictability of the field of the invention. Descriptions of example embodiments may be the best way to demonstrate the utility and function of some inventions. Including examples in a patent application can be very helpful in fulfilling the requirements set forth in the MPEP for enablement under 35 U.S.C §112(1). In our MSPL program, we are currently drafting the examples for the patent application portion of our capstone projects.

Alternatives and Variations in Patent Applications

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A post from our student blogger Sarah Goodman

In the MSPL classes, we learn that well-drafted patent applications should contain the widest breath possible and appropriate to best protect the client against competitors. When more attention to detail is paid by the patent drafter, more coverage can be granted to the patent applicant. The claims should be written to cover more than just the minimal features of an invention. A good technique is the incorporation of alternatives and variation.

Alternatives are different methods of accomplishing a task. Alternatives can include additional ways an invention can be utilized. Variation is the addition of different configurations, materials, and compositions. Alternatives and variations can be added by the patent drafter which requires creativity and research into the technical field. At least one actual embodiment of the invention must be included in the patent application, but describing the invention usually involves a lot more than just describing one embodiment. Any possible alternatives and variations should be included when preparing and filing patent applications to reduce the ability for competitors to design around the claims.

Variations should be listed even if not the best mode of practicing the invention. If variations are not included in a patent, a competitor company could sell cheaper inferior products without infringing by using the less optimal materials. Variations should include everything that could reasonably work. Another reason to list alternatives and variations is to allow the patent owner to continue improving the invention. If alternatives are not listed that later are discovered by a competing company to be an improvement, that company could obtain competitive patents which block the innovation of the original patent owner.

Listing variations and alternatives is a much cheaper and simpler method of providing broad coverage for an invention than filing more patent applications. The difficulty and expense to list alternatives and variations is minimal when compared to the cost and amount of effort necessary to file additional patents on modifications of one basic idea.

By writing a nonprovisional patent application as our capstone project in the MSPL program, we learn how to use alternatives and variations to increase the broadness and enforceability of a patent application. A broad patent is more valuable to the patent owner and potential licensees. It is the responsibility of the patent drafter to provide a quality patent application.