Tag Archives: patent agent

Patent Profanity – It’s Not What You Think

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A post from our student blogger Sarah Goodman

When drafting patent applications, it is important to avoid the use of certain terminology. Some specific words should either never be used or be used with extreme caution. The use of these words is commonly called “patent profanity.” Patent profanity includes words and phrases that cause unnecessary complicated litigation and limit a patent’s scope. These terms should be avoided in the entire patent application, not just the claims. A limiting statement in the specification can be read into the claims resulting in a narrowed scope. Narrowed claims are more easily designed around by competitors causing the patent to be less valuable.

The term “invention” should be used sparingly if at all in a patent application. If the patent application refers to “the invention” as having certain properties or features, these aspects may be incorporated into the claims since the claims identify the boundary of protection for the invention. A statement that seems to describe the invention as a whole by using the term “the invention” is more likely to limit the scope than a statement that describes an embodiment.

Absolute terms are to be avoided in patent applications. Examples include: must, always, necessary, critical, needed, required, and only. These terms are limiting because they are very specific. Describing an aspect of the invention with an absolute term suggests that the invention is not complete without the aspect. Well drafted patent applications should instead include generic language, variations, alternatives, and examples to identify the broadest possible scope of the invention.

The term “prior art” should never be used in a patent application. Characterizing a reference as prior art is an assertion by the applicant that the reference contains comparative material to the invention. References that seem to be related to the invention are required to be cited in the patent application but when referring to the documents, it is best to simply call them references.

A patent practitioner has the job of drafting high quality patent applications and therefore must choose wording that entitles the inventor to the broadest allowable scope of the invention. The right to an invention should not be decreased by poor wording choices in the application. A patent drafter has a responsibility to the client to draft the best application possible. Our MSPL class is learning about the assortment of patent profanities and strategies of avoiding their use while drafting patent applications.

MPEP – Everything You Wanted to Know About Patents (But Were Afraid to Ask)

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A post from our student blogger Sarah Goodman

The Manual of Patent Examining Procedure (MPEP) is published by the United States Patent and Trademark Office. The MPEP contains the patent laws and rules. Patent examiners use the MPEP to evaluate patent applications. The MPEP is continually revised as the regulations change and important case law is established. The first edition of the MPEP was published in 1949.

The MPEP is used by both patent examiners and patent practitioners. Patent examiners use the MPEP by following the guidelines to decide whether to grant or reject a patent application. Patent agents and attorneys can use the MPEP as a handbook for rules of drafting a patent application. The MPEP contains examples of scenarios pertaining to the rules. The information in the MPEP is crucial because a patent application needs to follow the USPTO regulations.

The MPEP is divided into 27 chapters and 7 appendixes. The material covers more than 2,000 pages. Each chapter addresses a different aspect of patent law. For example, chapter 600 contains the guidelines for the parts, form, and content of a patent application. Chapter 2100 provides the guidelines on patentability. Appendix L contains patent laws and Appendix R describes patent rules.

In the MSPL program at the University of Notre Dame, we are reading and studying sections of the MPEP. To become a certified patent agent, it is necessary to pass the patent bar. This examination tests the material contained in the MPEP. The examination includes an electronic version of the MPEP that is searchable within chapters. The patent bar exam is difficult and has approximately a 50% pass rate. The classes in the MSPL program at the University of Notre Dame help us to prepare for this examination which we will all take this Spring.

Student Profile – Catherine Zhang

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A post from our student blogger Sarah Goodman

I recently interviewed Catherine (Shu) Zhang, a current MSPL student, about her capstone thesis project.

  1. 1. In general terms, what is your capstone project about?

My capstone project is about using a novel chemical reaction to find a treatment option for Niemann-Pick Type C disease. The resulting treatment option may have broader applications in alleviating illness caused by cholesterol build-up. Niemann-Pick Type C disease is a severe illness, and there are a lot of research efforts at the University of Notre Dame focusing on this disease.

2. What have you completed so far on your capstone project?

I have completed a synopsis of the project and drafted a set of potential claims. I also performed a patentability search covering domestic and international patents and patent applications. I researched a wide range of non-patent literature which broadened my technical perspective regarding chemistry and pharmacology. I will present all of this information in my technical presentation in December.

3.  What have you learned this semester through working on this project?

I learned more about lysosomal storage diseases like Niemann-Pick Type C disease and other categories of disease related to cholesterol trafficking. Having a capstone project with an actual invention gives me a real world experience of how a patent application is prepared before I enter the workforce.

4. What major challenges did you face? How did you solve them?

The most difficult challenge for me was learning new complicated scientific material quickly in a new field. I handled this challenge by reading a lot of scientific literature in the field. I also researched published patents to study the proper form of a chemical patent.

5. How has your project prepared you for a career as a patent agent?

My capstone project has prepared me in two major ways. The first is that I have learned how to communicate effectively with an inventor to get an accurate understanding of an invention. I also have broadened my technical field by learning the chemical background of a technology.

6. Which of your abilities do you think have helped you succeed with your project?

My persistence has been an important quality when researching different technologies as well as my interest in the science field. My writing ability has also been crucial for rephrasing complex chemical procedures into legal terms for IP protection.

7. What are your career plans for the future?

I think that obtaining a Master of Science in Patent Law from the University of Notre Dame will open many doors for my future career. I am currently considering the career options of a patent agent at a technology transfer office or a law firm.

Contract Agreements in the Intellectual Property (IP) Field

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A post from our student blogger Sarah Goodman

Mr. Todd A. Dawson, J.D., the owner and president of Todd Dawson Consulting LLC in Warsaw, Indiana, recently visited our MSPL class and presented a guest lecture on intellectual property contracts and other licensing matters. A contract is a legal document that establishes an agreement that is enforceable by law. I learned about some different forms of patent agreements and types of responsibilities a patent agent might have concerning these agreements when working with patent attorneys.

An assignment contract is used for the complete and permanent transfer of all rights to specifically identified intellectual property from the inventor(s) to an assignee. The assignee can be an individual but is often an organization such as a company or university. This form of contract is analogous to a sale of property. An assignment does not contain limitations on how long or under what conditions the assignee can use the intellectual property rights. After assignment, the inventor does not retain any rights to the intellectual property.

A license contract is used to allow another entity to use or develop specific intellectual property. This form of contract is analogous to renting property. A license contract includes specified conditions of use of the intellectual property for a defined period of time. A license may be exclusive, meaning no other party can obtain a license to the intellectual property, non-exclusive, meaning more than one party can obtain a license, or co-exclusive, identifying that only certain specific parties can obtain a license. During the licensing period, the inventor retains ownership of the patent.

Patent agents may have responsibilities concerning contracts especially when working with patent attorneys. These responsibilities can include ensuring that the identified parties are accurate, ensuring that the assignor is the registered owner of the intellectual property, checking employment agreements, and ensuring that the contract language is clear and understandable.

Inventors usually decide to assign or license intellectual property for financial reasons. Employers usually own the rights by assignment to inventions created by an employee during employment. Patents can be licensed for royalty payments by individuals or organizations. The topic of contract agreements in the intellectual property law field was important for our MSPL class to learn and understand so that we can be more prepared in the future for any involvement with contracts.

1, 2, 3 Types of Patents

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A post from our student blogger Sarah Goodman

In the MSPL program at the University of Notre Dame I learned that there are three different types of patents granted by the USPTO.

A utility patent is issued for a new and useful invention or improvement to an existing invention. An invention qualifying for a utility patent must be a process, machine, manufacture, or composition of matter. A granted utility patent gives the owner the right to exclude others from making, using, or selling the invention for up to twenty years with the payment of maintenance fees. This is the most common type of patent issued by the USPTO.

A design patent is issued for a new, original, and ornamental design. This design must be used for an article of manufacture. A design is inseparable from the article of manufacture and cannot exist alone. A granted design patent gives the owner the right to exclude others from making, using, or selling the design for fourteen years with no maintenance fees required. Both a utility and a design patent may be obtained if the invented article possesses functional utility as well as an inventive ornamental design.

A plant patent is issued for a new and distinct asexually reproduced plant. This plant can be either invented or discovered and includes mutants, hybrids, and new seedlings not found in nature. If a natural plant mutant is discovered, it must have been discovered in a cultivated area to qualify for a plant patent. The USPTO considers algae and macro fungi eligible for plant patents. A granted plant patent gives the owner the right to exclude others from making, using, or selling the plant for up to twenty years with no maintenance fees required. A utility patent application can be additionally filed having claims to a plant and plant components including seeds and genes. Inventors who develop reproducing plants such as corn and wheat tend to file an additional utility patent application which may be granted if the plant fulfills the useful, novel, and nonobvious requirements.

For our capstone projects, we are learning how to write a utility patent for an invention disclosure from a Notre Dame faculty member.

Open House!

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The MSPL will be cohosting an Open House in two weeks!

I’ll give a short overview of the program, and several of our current students will be there so you can get their inside perspective on what they’re learning.

Important details:

Wednesday, November 14 at 6:00 p.m.*

Innovation Park at Notre Dame
1400 E. Angela Blvd.
South Bend, IN 46617

 

Food and beverages will be served.
Please RSVP.

We are cohosting the Open House with two other one-year MS programs here at Notre Dame: ESTEEM,  and Global Health. If you have friends who you think would be interested in either of these programs, feel free to bring them along!

I hope I will see you there!

Go Irish!
Karen

*Notre Dame is in the Eastern time zone.

Chicago, Chicago – it’s a wonderful town!!

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On Friday, October 26, 2012, the MS in Patent Law students went to Chicago to hear from Wade Green and Ashley Romano about what it’s like to work in a University’s Office of Technology Transfer.

We arrived a bit early, so the students could have an opportunity to explore the city. They saw the Bean (properly, “Cloudgate”).

photo by MSPL student Beau Horner

Students also went exploring the culinary scene, and found a great pastry shop.

photo by MSPL student Sarah Goodman

photo by MSPL student Sarah Goodman

After the careers presentation, we headed to Chinatown for dinner. We shared hot-pot, and everyone had bubble tea! The floor of the restaurant had a “river” built into it, with real koi.

photo by MSPL student Sarah Goodman

 

Look for a post soon about what the students learned about careers for patent agents in Universities!

Open Source Biotechnology + Patentability = ?

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A post from our student blogger Sarah Goodman

While completing an assignment for my capstone project I became interested to learn more about open source technology related to patentability.

Open source is a philosophy that promotes free redistribution and access to an end product’s design and implementation. One example of open source products is the Linux family of computer operating systems that are often available free of charge. Organizations such as Creative Commons and the Free Software Foundation have websites where individuals can file for alternative “licenses,” or levels of restriction, for their works. Open source resources most often refer to software and technology development. The concept of open source technology has existed for decades. There is a lot of available information concerning open source software. However, biological open source technologies have been recently emerging.

Biological open source technologies extend the principles of open source software development to the development of research tools in medical and agricultural biotechnology. One of the leading organizations aimed at open source biotechnology development is the Biological Innovation for Open Society, or BIOS. This new technology-sharing initiative was developed at Cambia, a nonprofit Australian research institute supported by the Rockefeller foundation.

In one example, open source methods have been used to distribute a technique for creating a genetically modified crop.  This technique is available free to others to use and improve, as long as any improvements are also available free. BIOS states that while users of the technology are required to put any improvements they make into the open source pool of knowledge, companies and universities are allowed to patent any products they make using the technology, like a genetically modified crop. Patents are integral for innovation in biotechnology, so it is important that the products developed from using open source technological tools and methods can be patented. However, all licensees are required to share some aspects of the improvements, making them available for use to other licensees, even though they may be patented.

Open source licenses do not necessarily bar inventors from obtaining patent protection on inventive aspects of their technology. However, there may be some constraints on the inventors’ patent rights if some of the integral pieces of the invention were distributed through the open source method.

There are many difficulties in translating the current open source regulations to the biomedical field. The primary licensing system in software is copyright, whereas in biotechnology it is patents. The cost of patent protection can be substantial, but patent fees can be recovered from licensees. Due to the complexity of biotechnological innovations it can be difficult to determine what constitutes an improvement to a technology that uses open source materials or methods.

The current question is whether the open source model will work in the biological research field and how patent rights will be determined in court cases. A large determinant of the acceptance of the open source method in the commercial market will be whether or not it is appealing to IP owners. Open source biotechnology is an interesting emerging topic that will play a role in future biological patents.

Office of Tech Transfer a Valuable Resource for Students

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A post from our student blogger Sarah Goodman

An important resource to the students in the MSPL program at the University of Notre Dame is the Office of Technology Transfer (OTT). This office is available to assist university faculty, research staff, and students in bringing new technologies to commercialization. The OTT has the resources to patent, market, and license products of university research. This office secures legal protection in the form of patents for technologies invented at Notre Dame and markets the technologies to companies suited to develop the inventions. When appropriate companies are identified, the OTT is capable of negotiating licensing agreements and distributing the proceeds in accordance with the University’s intellectual property policies. The MSPL program prepares us for job opportunities in the field of academic technology transfer as a possible career option.

I am a current student employee in the OTT. My job duties include researching current Notre Dame technologies and completing Patentability and Marketability Reports. To investigate the patentability of an invention, I search patent and literature databases to identify publications that could prevent a patent from issuing on the technology.  To investigate the marketability of an invention, I complete market research to see if anything similar is commercially available, investigate the target customers, and determine whether or not the technology has commercial value.

The other student employee at the OTT is Vini Melo, a current student in the graduate ESTEEM program. He also evaluates inventions and is currently coordinating databases that will be used to market technologies invented at Notre Dame.

The Office of Technology Transfer is a valuable asset on campus and will aid in the success of the MSPL program. The University’s Intellectual Property Policy and information concerning the Office of Technology Transfer is available online at ott.nd.edu.