Tag Archives: patent bar

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

Pedal to the Metal

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A post from our student blogger Roberto

As you likely know by now students in the MSPL have been working long and hard all year on their individual capstone projects.  These projects are writing patent applications on various technologies for researchers at Notre Dame.  At the conclusion of first semester the students each gave a lengthy presentation to a panel comprised of their inventors, Dr. Deak who is the director of the MSPL, and the representative from the Office of Technology Transfer at Notre Dame who is assigned to their technology.  In this first presentation the students worked to explain and demonstrate their understanding of the technology as well as presenting a preliminary set of claims they had forged to protect this technology.  This semester, students have worked with professional mentors to perfect their claims and round out many of the sections of the patent application document.  This document served as the MSPL thesis and was recently submitted by all the students who intend to graduate this coming May.  After submitting their thesis, students also have to give a second presentation to the same panel.  This time the students present on the work they did this semester and explain the bulk of the patent application they have crafted.  The second presentation wraps up all the work the student has done and allows the Office of Technology Transfer to take the project on from that point.

A few months ago I sat down and looked at my schedule and decided that I was going to take the USPTO patent bar exam at the end of March.  At the time, I wrote off the effect of the compounding thesis requirements on top of studying for the bar exam using the PLI review materials.  A few short days after turning in my thesis and giving my thesis defense I took and passed the patent bar exam.  It was a crazy but extremely rewarding feeling knowing that I had attained my three main academic goals for the semester and that now I could focus on finishing out my year strong and getting ready for my next challenges.  The MSPL program put me in a fantastic position to succeed on exam day and prepared me well for the variety of questions that were asked.  Our work in the MSPL gave me real life experience that was invaluable and made the entire process much easier.  That being said, the MSPL’s focus is not solely on preparing students for the patent bar and therefore it was necessary to fully exploit the wealth of PLI study materials we have access to.  After taking many practice tests I was ready to go and hit the ground running.

Fisker Thunderbolt (top) and Aston Martin One-77 (Bottom) (Photo courtesy of Car and Driver)

Fisker Thunderbolt (top) and Aston Martin One-77 (Bottom) (Photo courtesy of Car and Driver)

Now, for the fun part of this post.  One thing you probably don’t know about me is that I love cars.  When I’m at home it’s hard to find a weekend where I don’t find myself tearing something apart or putting something back together.  For example, over Easter break my father and I replaced the radiator on a car and schemed as to the next parts we were going to buy and install.  This past week there were some major developments in the auto industry that had intellectual property undertones.  First, one of the most acclaimed contemporary automobile designers, Henrik Fisker, has been accused of copying a design of his former employer, Aston Martin.  Fisker, who now is a founding partner and executive chairman of Fisker Automobiles, recently debuted a “design study” named the Thunderbolt which shares a striking resemblance to the infamous Aston Martin One-77.  Initially, Fisker approached Aston Martin about producing the Thunderbolt and received staunch resistance but he decided to continue on his intended path regardless.  Aston has said that after this initial approach, the conversation had left them believing that Fisker would drop the Thunderbolt concept in an effort to avoid any potential issues.  That all changed when Fisker himself showed up at the Amelia Island Concours d’Elegance, which is the premier automobile charity event in the world, in the none other but the Thunderbolt.  The response from Aston was swift and a legal team soon filed a lawsuit against Fisker in California on multiple counts of trademark infringement.  In particular, Aston alleges that the Thunderbolt contains confusingly similar grille and side vent designs compared to its trademarked designs. Most people believe this to be an attempt by the fledgling Fisker to make off with the high class brand and image Aston Martin has worked so hard to establish.

Lincoln Continental Concept (Top) and Bentley Flying Spur (Bottom) (Photo courtesy of Autonews)

Lincoln Continental Concept (Top) and Bentley Flying Spur (Bottom) (Photo courtesy of Autonews)

In a strikingly similar case, Bentley finds itself contemplating potential legal action after the 2016 Lincoln Continental concept was unveiled at the New York auto show.  Much like the Aston-Fisker case, Bentley is upset because Lincoln is attempting to unfairly profit from the brand image Bentley has worked hard to attain.  As you can see from the images, several key aspects of the Bentley are present in the Lincoln and serve to confuse the buyer as to the product they are actually viewing.  By most estimates, the 2016 Lincoln Continental, should it become a production car, would retail in the $60,000 range which is only a fraction of the over $200,000 base price of the 2014 Bentley Flying Spur.  Perhaps the most fascinating aspect of this case is the reaction of Bentley head designer Luc Donckerwolke (who is also the man responsible for the stunning Lamborghini Murciélago) who said; “Somebody asked me if I wanted to sue. I said, ‘No! I don’t want to sue. I don’t care about that. My issue is about respect for the car-design process.’ If we start copying each other, then this is a negative for the design culture.”  In today’s global rip-off culture it is refreshing to hear such a prominent figure speaking out against acts which are all too often considered common place.  It will be interesting to see how Bentley proceeds and if they take notes during the pending legal case between Aston Martin and Fisker.  It is often said that imitation is the sincerest form of flattery but I’d be willing to bet that recent events have left Bentley and Aston Martin less than impressed.

The patent application

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http://www.toonpool.com/cartoons/Vanilla%20Ice%20Patent_145365

http://www.toonpool.com/cartoons/Vanilla%20Ice%20Patent_145365

A post from our student blogger Megan

Three words: patent application drafting. This is what the MSPL is immersed in as of right now. Our graduate thesis consists of drafting a patent application which is due on April 1. Drafting a patent application is a true art form and more in-depth than its moniker suggests. It is not simply an “application” that one fills in information into prepared blanks. In fact, patent application drafting requires serious skill and thought into the future. Most of what goes into a patent application is very calculated language and terminology, with careful consideration of what types of language could be litigated on at a later time.

One interesting aspect of the patent application is that there are rules that accompany each part of the application. There is even a rule for the title which states that: it must be 500 characters or less and the words ‘“new,” “improved,” “improvement of,” and “improvement in” are not considered as part of the title of an invention, these words should not be included at the beginning of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues. Similarly, the articles “a,” “an,” and “the” should not be included as the first words of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues.”’ This rule for invention titles is actually very short and understandable compared to the other rules for each part of the patent application.

Combine the pressure of submitting a patent application within a specific deadline (timing is everything in the patent world—if you miss a date your client can be enormously hindered) and the rapidly, seemingly never-ending evolving design of cutting-edge inventions, and you have the perfect storm of quiet chaos. My desk is stacked with notes from inventors, red-inked application drafts, and sticky notes with simple reminders to look up a rule of law. I work day in and day out on the application but somehow each new day brings a new challenge: this document is truly living and breathing, it changes each time the inventors email with a new drawing or ask about adding a detail that they hadn’t considered before.

Be forewarned: patent application drafting is not for the faint at heart. I joke, but in all honesty, while drafting my first patent application has admittedly been a struggle, it has also deepened my appreciation for the agents and attorneys that draft applications on a daily basis. These professionals walk a thin line between fully describing the underlying invention, and avoiding costly litigation blunders that may crop up sometime in the future. This requires the utmost in scientific and engineering comprehension, along with a deep-seated legal knowledge of rules.

The enjoyment in drafting the application has been in translating science and engineering principals into legal language. We are seeing the finished product after months of careful planning and understanding another person’s detailed creation. I am eternally grateful to the Notre Dame inventors I got to work with to draft my first patent application; I learned a ton and the experience was one-of-a-kind. I’d like to make this blog entry longer but please, excuse me, I have to get back to this application!

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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!

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.

Patent Pros Highly Sought After

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How’s this for a start to a recent article in the New York Times:

“Patent lawyers are in such demand that their specialty may account for more than 15 percent of law firm job openings while representing just 3 percent of lawyers in the United States.”

Yes, intellectual property is booming in the U.S., thanks in part to the America Invents Act, which allows for more patents to be applied for and issued.

One of the central hubs for patent careers is in the San Francisco Bay area, where a close proximity to Silicon Valley  the demand for protect all the innovation coming from the myriad tech businesses there. Hip, temperate, and cosmopolitan, with plenty of fine restaurants and endless cultural happenings—not a bad place to start a career…

Interestingly, the article also states that overall hires “among law school graduates continue to weaken… the employment rate among American law school graduates fell 4.7 percent last year” according to the National Association of Law Placement.

Which is another plus for patent professionals, who with the help of a Masters in Patent Law from Notre Dame, need only to pass the patent bar to be able to prepare patent applications and administer cases with the USPTO—all without the time and expense spent at law school.

In keeping with the haute opportunities available to those with a patent background, it seems if the world of law were the world of cuisine, it’s fair to say that patent professionals would be the succulent black truffle mushroom: rare, in great demand, and able to fetch a premium price!