Tag Archives: patent law

Building blocks

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StonehengeA post from our student blogger Brittany

This is not your traditional Masters program, our cohort is comprised of several students having educational backgrounds in civil engineering, biology, astrophysics and even a few students with doctorates. I state that not to brag about how educated we are but to say that even with so many educated people in a room, we are ALL new to the field of patent law and are looking to this program to train us to be competent patent practitioners.

Walking into a room with several lanyards laid out and my first thought was “Yes more free stuff” (grad school made me appreciate the freer things in life). To my surprise, we had to write claims for our specific lanyard. Our group spent DAYS describing that darn lanyard to ensure that another group could correctly chose it based on our description. Being able to agree on terms of art or something as simple as deciding between the metric or imperial system to define measurements can be rather difficult. We’ve had a few widgets we’ve had to write claims for and geez is it difficult, but these interactive assignments are providing us the foundation by which to write more elaborate claims for rather complicated inventions.

Patent law building blocks, including claim writing, have been the focus in almost every class. For example, in our Patent Searching class we are learning to use several databases to find issued patents and patent applications relevant to our capstone projects. Deciding on what keywords to use for a search strategy and when to adjust the initial search strategy are important building blocks for determining the patentability of an invention. A thorough search has to be completed before any claims can be written because that will set the stage for the rest of the patent drafting process. Unbeknownst to me, people can have a lucrative career solely as a patent searcher, so that should let you know just how imperative it is.

Obtaining such building blocks will set us apart from people that jump into the patent law field merely because they have an extensive background in science or engineering and don’t want to take a “traditional” route. Being able to properly complete a prior art search and draft an application with a strong claimset will prove to be a great selling point to any potential employer.

Introducing Nicole Reilly

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An introductory post from student blogger Nicole

Hello fellow Patent Law students, my name is Nicole Reilly and I’ve come all the way from Rowan University in New Jersey to study this awesome program!  Being a civil engineering student has taught me how to work hard and efficiently during my college career.  Throughout the years I learned a lot, but by the time senior year came I knew something wasn’t right; something was missing.  I realized that I didn’t want to settle as just an engineer, I wanted something different.  I knew I had to find a way to use my engineering abilities but not as an engineer.  Of course this was a huge deal considering I spent four years working towards a specific degree.  I liked the classes and everything, but I wasn’t interested in a typical day of a civil engineer.  So one day I was going through my emails and stumbled upon the MS in Patent Law email from the University of Notre Dame.  I read about it and looked more into it on the MS in Patent Law page on the University’s website.  I realized that this would be perfect for me!  What better way of using my engineering skills in a different field.  It’s actually funny to think about because when I was younger I always wanted to be a lawyer, but I was too young to know which kind or even if I really wanted to do it.  Now I have the opportunity to become a patent agent that combines my childhood dream and my engineering degree.  Not only will I be able to help people with their inventions, I will be able to hear about all kinds of new inventions.

Speaking of new inventions, I’ve always thought of myself as an amateur inventor.  I am constantly thinking of new inventions.  Every idea, every thought I have is written down.  I have a section in the notes on my phone where I write down all the ideas that I think of or that pop into my head.  I want to be able to use my love of inventions towards helping other people fulfill their dreams, turning their inventions into realities and what better way to do that then becoming a Patent Agent!

Introducing Josh Denison

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An introductory post from student blogger Josh

Welcome to our blog for Notre Dame’s M.S. in Patent Law program! Stay tuned throughout this year to catch a glimpse into life as an MSPL student, so that you can learn more about who we are and what we do. My name is Josh Denison, and as I have yet to fully immerse myself in the life of an MSPL candidate, it seems fitting I tell you a little bit about who I am and how I arrived at the decision to pursue a career in patent law.

I grew up a curious child in the small town of Duvall, Washington. Aside from this curiosity, my only other notable trait was an incessant need to communicate. As I got older, my desire to work with new and exciting ideas through oration and writing persisted. I continued to enjoy pursuing knowledge of the natural sciences, and I was fortunate enough to have a teacher who pushed me to enter projects in local and regional science fairs. As a sophomore, I examined what physical properties of various materials affected the sounds of electric guitar pickups which I had made. This was my first experience with both technical writing and my undergraduate institution, Ohio Wesleyan University; I was awarded a scholarship for this work, and my eventual desire to attend a liberal arts university where I could study a variety of topics was fulfilled.

I didn’t initially attend OWU intending to study physical sciences, despite the scholarships that brought me there. Yet, I found myself riveted by the more difficult courses in physics and astronomy. When it came time to select a major, I settled on Astrophysics, as it satiated my childish curiosities and gave me a new lens through which to see my world. I took a position as a student intern at the local observatory, and did over two years of research with an advisor on imaging the surfaces of magnetically active stars. I presented my research at two annual meetings of the American Astronomical Society, and in doing so found my calling of writing and debating about ideas in science.

I applied to Notre Dame after hearing of their MSPL option from an OWU alumnus who completed the program two years ago. While I applied elsewhere, I knew that this program was an education in the very areas of my talents, and thus it rapidly evolved into my top choice. I was thrilled to receive an offer of admission, and as of a few weeks ago, Notre Dame will officially be my new home for next year. I cannot express how excited I am to begin the process of being educated in patent law, and I hope to be able to share my academic experience with you here.

Intoducing Brittany Butler

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An introductory post from student blogger Brittany

As young research scientists we are too often told to follow the yellow brick road to academia and while that may be the end goal for many students, it cannot be said for all, as a growing number of graduates from the biomedical sciences field are venturing out into a variety of career paths. I am one of those graduates. My name is Brittany Butler and I recently received my Doctorate in Neuroscience from the University of Florida after receiving a dual Bachelor’s degree in Biology and Chemistry from the University of Missouri-Kansas City, so as you may be able to tell I have a soft spot for science. As a trained microscopist, I enjoyed spending hours on the scope obtaining data for my dissertation which focused on understanding the molecular machinery responsible for altering proteins involved in Parkinson’s disease and drug addiction.

I was fortunate enough to attend a highly competitive Neuroscience program with an amazing mentor and despite my success as a graduate student, my passion did not encompass a career in academia, but I knew that I wanted a career that would incorporate my enthusiasm for the advancement of scientific research. It was during a workshop at the National Society for Neuroscience Conference that I first learned about the high demand for patent agents/lawyers with extensive scientific experience. The presenter, Paul A. Calvo, Ph.D., was genuinely enthused and forthcoming with the pros and cons of being a patent agent, such as high job satisfaction but extensive hours reading. His honesty regarding his choice to transition from what many consider a “traditional” career path to patent law and how his life had changed for the better immediately intrigued me. The idea of being able to work with lawyers and attorneys to patent compounds, antibodies and biotech devices seemed rather impressive. Upon leaving the meeting I felt encouraged; after years of debating between alternative fields I finally had an idea about the career path that suited my passions and goals.

Because I’m quite methodical in nature, I spoke with as many people and read as many articles as I could about a career transition to Patent Law to determine if it was right for me. Luckily for me, I knew VaNae Hamilton, Ph.D., a student in the 2014 entering class of the Masters in Patent Law Program (MSPL) at The University of Notre Dame. She like me was a recent biomedical sciences Ph.D. graduate, so our stories paralleled although she was a few steps ahead.  I knew that The University of Notre Dame was an exceptional academic institution, and because I am originally from the Midwest, the thought of going back was comforting although I had grown accustom to Florida winters. I picked VaNae’s brain with questions about her personal experience with the program and I could tell she was all-around very satisfied. The curriculum is not only well structured and detailed for the success of students with a science or engineering background, but it also provides hands-on experience in the field which was crucial in my decision to apply. Prior to my acceptance I often spoke with the Program Director, Karen Deak, Ph.D., and other members of the administration and I immediately felt welcomed, so when I finally got my acceptance letter I was beyond ecstatic.  Initially it was daunting to think I was going back to school yet again and change isn’t easy, but I knew this was an opportunity I didn’t want to pass up, that I couldn’t pass up. I look forward to starting the MSPL program in fall of 2015 and trading out my tickets to the swamp for front row seats to Touchdown Jesus!

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!

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)!

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.