Tag Archives: patent office

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

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!

Patent trolls

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Just your friendly neighborhood patent troll. Beautiful image courtesy of WIPO illustrator, Bob MacNeil

Just your friendly neighborhood patent troll. Beautiful image courtesy of WIPO illustrator, Bob MacNeil

A post from our student blogger Roberto

Staying up to date on intellectual property news is tough.  In a field centered on the advancement of technology it’s no surprise that there are things always going on.  Doing a quick search on Google for “Intellectual Property” returned more than 15,500,000 results in the “news” category alone.  Lately, one of the most trendy and talked about topics is “patent trolls”, which are also known as “non-practicing entities” (NPEs) because of their tendency to never actually produce a product covered by the patent, and “patent assertion entities” (PAEs).  The term “troll” is pretty descriptive and, even without any further understanding of the concept, one immediately conjures up a negative image in their head.  For instance, some may imagine a mammoth forest green creature with warts the size of golf balls covering them from head to toe whom is wielding a massive sand barbaric wooden club.  Taken in a patent law context, that creature with warts is often a corporation swinging around the weight of its potentially damaging patent portfolio.  In many instances, patent trolls are corporations that acquire and own patents simply for the purpose of chasing down potential “infringers” and doing all they can to get the most money possible out of them.  At first, many of these trolls send the infringing entity a letter asking for a reasonable royalty to continue doing whatever it is the troll believes is infringing their patent.  Now, either the “infringing” company gives in to the troll’s demands or they do nothing and wait for the troll to potentially file a lawsuit against them.  Often times after not getting their royalty, the trolls file lawsuits which, in the end, cost companies on average around $2M.  While some large corporations can easily absorb that cost many small startups cannot and are permanently crippled as a result.

While patent trolls have existed for a long time, by some accounts since the turn of the 20th century, there has been a recent push to reform current laws to combat patent trolls.  On March 18, 2015, there was a Senate Judiciary Committee hearing on patent reform titled The Impact of Abusive Patent Litigation Practices on the American Economy.  At this hearing a large amount of focus was placed on finding ways to eliminate trolls from existence.  The troll destroyers, as I have termed them, argue that patent trolls have cost American businesses a lot of money.  Further, many fear that patent trolls could attack vulnerable small startups and force them out of business when they don’t have the funds to enter into a lawsuit or pay the royalties demanded by the trolls.  It is no surprise that over the past four years ten bills that attempt to combat patent trolls have appeared before Congress without any of them getting through.  These bills have not only met a tough audience, much of congress is not particularly well versed in patent law or related issues, but also has met a battalion of resilient and powerful patent troll lobbyists.  Many of these past reforms focused on increasing the penalties on trolls for losing patent infringement lawsuits and the same plan of attack is still being pursued by some Senators today.

Given all of the hatred on the patent trolls, by people like the troll destroyers, it makes sense to ask yourself how anyone could possibly be in favor of patent trolls.  Well take a journey with me as I transform you into just that, a patent troll abolitionist and war chief.  Imagine yourself coming up with a great idea for a brand new windshield for your car.  This windshield is amazing, it’s hydrophobic causing rain and water bead up and roll off it, it’s internally heated by invisible resistance heating elements that melt snow on contact and prevent ice from forming on it, it has an integrated and invisible photovoltaic cell array that charges the car’s battery, and it attaches to the cars computer to regulate the temperature of the glass so that it never gets fogged up.  After developing the product and working with your friendly neighborhood patent agent you are granted a patent on your awesome new windshield.  You call all your family members and friends and ask them to pitch in money to help you get a company started.  After investing all that time and money you finally get your first sale.  Sales over the next few months are slow, and you decide to approach Ford about licensing the windshield from you for use in future vehicles.  Much to your surprise, it is almost impossible to figure out who to talk to and how to get them to listen.  After pitching your idea to several “VPs” they tell you that they aren’t interested and send you on your way.  Discouraged, you decide to continue to try and sell it on your own, figuring that your awesome product would catch on and people would buy them once they saw how great they are.  One weekend you are sitting at home watching the commercials during the Packers game when you see it.  A commercial for the brand new Ford Raptor, a truck that has a never-before-seen windshield that has all the same features as your prized creation.  You are in an utter state of shock.  You run to the computer and do a quick online search.  You immediately notice that the windshield is identical to yours and it is getting all kinds of publicity causing orders for the new truck to go through the roof.

This is almost identical (minus the awesome windshield idea I came up with) to the stories of many inventors, including a U.S. veteran named Fred Sawyer, whose amazing story can be read here.

What do you do?  You could try to bring legal action, but that takes funding you simply don’t have. You would need to have the funding to compete with a mega-corporation that plans to simply out spend you.  What is most likely to happen is that you lose out and go out of business.  Today, inventors can turn to patent trolls to team up and go after that big corporation using the funding the patent trolls have.  Without someone like the patent trolls the small inventors would have no chance at competing in arena where the price of entry is north of $2M.   Without trolls there would be no way to practically enforce patent rights because of these financial realities.  Still, inventors pay a heavy price for partnering with the trolls, often forfeiting 95% of their patents value after winning a patent infringement case.  Even if the inventors decide to go to battle alone the act of waging war on an all-powerful corporation often earns them the title of “patent troll” as well.

So, now that you have seen both sides of the coin, what are we to make of patent trolls as a whole?  I believe the term “patent troll” is misleading and that the trolls are actually divided into two camps.  One camp that wants to pillage every possible piece of intellectual property and make as much money as possible through downright exploitation of the system, these are the trolls that (almost) everyone agrees we need to address in some way.  The other is the camp of trolls that exist to provide balance and security for the small inventors against the big corporations that they otherwise would have no chance against (included in this camp are the single inventor “trolls” going at it on their own).  Any potential patent reform needs to be wary of these two distinct camps and the effects any legislation would have on this precarious balance of power.  Take away too much of the troll’s power and with it goes the security of the single inventor.  Figuring out an answer that protects inventors while combating wasteful litigation will be difficult but is necessary to preserve the integrity of our patent system.

For MSPL Graduate, Patent Examiner is Career Option

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Stroh River Place

Stroh River Place, Detroit, MI

A post from our student blogger Sarah Goodman

Some members of the MSPL class met with patent examiners at the Detroit USPTO satellite office over spring break. The educational requirements for a USPTO patent examiner are similar to the educational requirements to become a U.S. patent agent. A patent examiner must have a bachelor’s degree in science or engineering. Employment as a patent examiner is a potential short-term or long-term career opportunity for a graduate of the MSPL program.

Employment as a patent examiner could be short-term. A patent examiner job pays well and the starting salary is increased for a graduate of the MSPL program versus an individual with no intellectual property graduate education. Experience working as a patent examiner is beneficial for future job searching. Employers value a job candidate who has experience working for the USPTO as a patent examiner. A patent examiner has a very detailed understanding of the MPEP because the MPEP is the manual which contains the rules for the patent prosecution process. A patent examiner also gains a familiarity with the best strategies for writing a patent application for allowance which is extremely valuable knowledge. Working short-term as a patent examiner could be a good way for a graduate of the MSPL program to get experience that would be valued by any future employer.

Employment as a patent examiner could also be long-term. The field has the ability for promotion based on performance. For individuals who would like a lot of time with family or need job flexibility, a career as a patent agent is flexible in regards to the work schedule. Another appealing aspect of a patent examiner position is the ability to work from home after working at least two years and meeting certain performance standards.

The MSPL curriculum prepares students for the option of a career as a patent examiner at the USPTO. Currently, applicants with bachelor’s degrees in Mechanical Engineering, Computer Engineering, or Electrical Engineering are needed by the USPTO to assist with the backlog of unexamined patent applications. In the future, these postings may remain and other backgrounds may also be needed.

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.