Tag Archives: patent law

Crazy times at the MSPL

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Last week was a rough week for the MSPL. Mike Wack (PATL 60101- Patent Prosecution Law) got hit by a car on Thursday! Note that I didn’t say “Mike’s car got hit by a car,” … but rather, “Mike got hit by a car.” He’s doing well, but obviously we’re needing to make some adjustments to our teaching schedule. I’m taking Mike’s class on Monday, and will be lecturing on the changes to 35 USC 102 and 103 under the America Invents Act. I actually really like this topic, so, under the circumstances, I am happy to step in (although of course I’d rather that Mike hadn’t been hit by a car!).

Mike Wack, post-car

Additionally, Hal Milton (PATL 60201- Patent Application Drafting) had to have surgery on Friday. He refers to it as “preventative maintenance,” but any kind of surgery that has to do with blood flow and heart function seems serious enough to me. I hope he’s recovering well!

On a happier note, we’ll be holding an Open House at our Chicago center this Thursday, and hosting Mark Dighton from PLI on Friday. Mark is visiting campus because, every year, we provide our MSPL students with a patent bar exam review course. PLI is the vendor we’ve been using for these courses; last year we had at least four students pass the exam on their first try!

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

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

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

Ethical Rules and Regulations

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A post from our student blogger Sarah Goodman

Registered patent agents and attorneys must abide by the ethical rules enforced by the Office of Enrollment and Discipline of the USPTO. Attorneys must additionally abide by ethical regulations set by the state bar under which an attorney is licensed.  Since patent agents are registered with the USPTO on a federal basis, there is no state-specific ethics code for patent agents. The existing references for the ethical obligations of patent practitioners at the USPTO are 37 C.F.R 10 and 37 C.F.R. 11.

The Code of Federal Regulations includes the Canons and Disciplinary Rules of the Patent Office. A key point is the duty of disclosure to a client. A patent practitioner is required to disclose all necessary information and not to lie to a client. A duty of disclosure to the Patent Office is also included. Patent practitioners have a duty not to submit any documents to the Patent Office which are not true, submitted for an improper purpose, or which violate any applicable law. Patent practitioners are required to maintain confidentiality of information disclosed by the client. Confidentiality is an important aspect of protecting IP rights of clients, and this concept has been emphasized during the MSPL program especially in the capstone course because of the access to proprietary invention information. All registered patent practitioners have a duty to disclose to the Patent Office any non-confidential information which establishes a violation of the USPTO disciplinary rules by themselves or another.

The USPTO is currently proposing an update to the Code of Professional Responsibility to adopt more of the ethical standards set by the American Bar Association (ABA). The USPTO hopes that by adjusting their regulations to complement the state bar regulations, patent practitioners will have more consistent ethical obligations. The USPTO acknowledges that currently, patent practitioners are held to obligations not contained in the Code of Professional Responsibility that apply to practicing patent law and the addition of these stipulations would create a more clear and comprehensive set of regulations.

Proposed updates to the Code of Professional Responsibility and comments from established professionals, including Professor Dennis Crouch of the Patent Law Blog “Patently-O”, may be found online at: http://www.uspto.gov/ip/boards/oed/ethics.jsp

ND Law School IP Clinic Expands to Include MSPL Students

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Notre Dame Law School’s Intellectual Property and Entrepreneurship Clinic (Clinic) will be the first law school clinic to include Master of Science in Patent Law (MSPL) students practicing in the United States Patent and Trademark Office (USPTO)  Law School Clinic Certification Pilot Program (Program).

Launched in January 2012, the Clinic provides students with valuable experience in applying substantive intellectual property law to client problems, and offers assistance to local businesses and entrepreneurs with counsel on intellectual property related issues.  Under the supervision of a licensed practitioner, law school students participating in the Clinic are able to practice both patent and trademark law at the USPTO, including preparing and filing applications, responding to Office Actions, and communicating with USPTO examiners.

In a first for non-law school students, the USPTO has now extended participation in the patent portion of the Program to University of Notre Dame MSPL students, through the Intellectual Property and Entrepreneurship Clinic.  In conjunction with the Law School’s Clinic, the USPTO has authorized a two-year trial enrollment for MSPL students, beginning in January 2014. MSPL students in the Clinic will work exclusively on patent matters, helping expand capacity in this high-demand area of intellectual property practice, and under the direct supervision of the Clinic’s Director.  By participating in the Clinic, MSPL students will gain first-hand, practical experience through assisting real clients.

A one-year, graduate-level program, the Master of Science in Patent Law prepares students with a technical background to pass the USPTO’s Patent Bar and to succeed in daily practice as a patent agent or patent examiner.

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.

An American Patent in Paris

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A post from our student blogger Sarah Goodman

Over winter break I was in Paris, France. During my trip, I visited research institutes and decided to learn more about patent law in Europe. The European Patent Organisation currently includes 38 member states, and European patents are granted by the European Patent Office.  There are several important differences between European and American patent law.

According to Article 54 EPC (European Patent Convention), if an invention was made publicly available by an inventor or a third party before the filing date of a patent application, the application will be rejected. In the United States according to 35 U.S.C. § 102, there is a one-year grace period beginning with the disclosure of an invention before losing patent rights. However, an inventor in the United States would lose any potential patent rights in Europe even if the invention is publicly available only in the United States.

U.S. patent law requires inclusion of the best mode of practicing the invention according to 35 U.S.C. § 112.  The disclosure of the best mode ensures that the public has access to the best method of practicing the invention. The lack of a best mode cannot be used to invalidate a patent but still must be included in the patent application. European patent law does not require inclusion of the best mode in a patent application. Article 83 EPC only requires the inclusion of at least one method of practicing the invention.

European patent applications usually contain two-part claims. A two-part claim includes features of the invention that are well-known, then a phrase such as “characterized by,” followed by features that constitute the invention. American patent applications usually contain only one part claims with no separating phrase between the well-known features and the inventive features. In the U.S., this type of two-part claim is known as a Jepson Claim. A disadvantage of using Jepson Claims in the U.S. is that anything before the characterizing portion is regarded by definition of the claim structure as previously known even if a novel feature is accidently included which can negatively affect patentability. In European patent law, if an applicant puts an inventive feature in the pre-characterization portion, the applicant will be asked to move the feature to the correct location.

The MSPL program at the University of Notre Dame prepares us for the U.S. Patent Office’s patent bar exam. Successful certification will permit an individual to file in the United States only. However, it is common for American law firms to work with international legal counsel, so it is important for patent agents in the U.S. to understand the major differences.

Leahy-Smith America Invents Act

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A post from our student blogger Sarah Goodman

During the Fall semester our MSPL class has attended several presentations on the Leahy-Smith America Invents Act. This Act was signed into law by President Obama on September 16, 2011. The America Invents Act changes some aspects about patent law in the United States and also includes new material. Most of the changes have already been implemented, and the final modifications will be implemented on March 16, 2013. Presented in this blog post are a couple of the major changes.

One of the best-known adjustments to patent law is the shift from the current First-to-Invent system to a First-Inventor-to-File system. This change will come into effect on March 16, 2013. This adjustment is based on the change to 35 U.S.C. §102 which states that a U.S. patent will not be granted if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The filing date of the earliest patent application to which a U.S. patent application claims the benefit of priority is considered the effective filing date. This provision eliminates the legal concept of an “invention date.” It is important to remember that an individual cannot claim inventor status unless that individual actually invented the material claimed in the patent application.

Another important change was implemented on September 16, 2011 concerning the best mode requirement. The best mode is defined as the preferred mode for practicing the invention. The disclosure of the best mode ensures that the inventor fully enables the public to have access to the best method of using the invention. Previously, lack of disclosure of the best mode was a basis to invalidate or cancel an issued U.S. patent. The America Invents Act has modified 35 U.S.C. §282 by removing the lack of a best mode as a rationale for potential U.S. patent invalidity. However, 35 U.S.C. §112, which addresses the requirement for inclusion of the best mode has not been amended. Therefore, patent applicants must still comply with the requirement to disclose the best mode contemplated by the inventor for carrying out the invention.

The Leahy-Smith America Invents Act will affect U.S. patent applications that are filed on or after the dates of specific law implementation. Therefore U.S. patent practitioners will need to have a working knowledge of the laws before and after the new changes of the America Invents Act.

Nairobi, Kenya

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I recently returned from a trip to Nairobi, Kenya. While I was there, I met with the Law and Science Faculties of the Catholic University of East Africa (CUEA), to talk about their idea of creating a Master’s in Intellectual Property. I also had the opportunity to deliver a series of lectures to faculty and students about US and international patent law.
I am really excited about this collaboration, in no small part because of the enthusiasm of the CUEA folks I met. They see that IP, and patents in particular, are critical to growing their developing economy; and want to figure out how to leverage their ideas in a global marketplace. I am excited to see what the CUEA folks develop, and hopeful that I can be a part of it!
I also got some time to be a tourist. More about that in the next post….

The Dean of the Science Faculty and one of her Department Chairs show off their Notre Dame gear.