Tag Archives: patent

The second half

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A post from our student blogger Roberto

After a few short weeks off, winter break is finally over in the MSPL.  My break largely consisted of working around the house, installing countless car parts in the frigid Wisconsin weather and enjoying time with my friends and family.  Of course, I spent some time studying for the patent bar but largely this break was about focusing on what really matters to me.  I learned recently that we often forget to take time for the little things in life and I knew there wouldn’t be much time for them this semester.  That’s because the final semester in the MSPL is jam packed with patented filled fun by featuring a follow-on class in patent law and prosecution, a specialized patent prosecution class, an ethics class, the second half of the capstone project and an elective class.  Just like last semester a major theme of the coursework in the MSPL is preparation for success in the real world.  In addition to coursework, students in the MSPL are diligently working through the PLI patent bar study kits provided by Notre Dame.  These kits include both physical literature and access to a multitude of comprehensive video lectures by PLI professionals.  The kits even include practice patent bar questions that students can work through once they feel confident in a particular area.

The second semester will also include trips for the students to both California and to Washington D.C.  These trips are focused on exposing the students to different types of careers and work environments that they may be interested in pursuing after graduation.  As has been mentioned in a few past posts there are many different career options that MSPL graduates can pursue.  Like last semester there will be many guest lectures hosted by prominent patent professionals in which they will give us practical insight into these career options as well.  These guest lectures also serve to compliment the coursework of the MSPL by delving further into specific topics than would otherwise be possible.  For example, a patent practitioner from the intellectual property merchant bank Ocean Tomo will be giving a lecture on intellectual property valuation, a topic that we simply don’t have the time to expand upon within the framework of the MSPL.

As you may have heard, my Green Bay Packers, and I say mine because I am an owner, have advanced in glorious fashion to the NFC Championship game in Seattle.  For those who saw the Divisional game against the Dallas Cowboys you undoubtedly noticed the controversy over the potential game turning catch by Cowboys’ wide receiver Dez Bryant with around four minutes left in the game.  While it was initially ruled a catch on the field, a challenge by the Packers forced the referees to enforce a rule that nullified the play.  While many agree that the call was correct according to the current rules, few agree on whether the rules are proper to begin with.  This is where the analogy to patent law comes in.  Many familiar with patent law dislike many of the rules and standards they are held to.  However, these individuals will be held to the rules whether they like them or not.  If you aren’t a sports fan I apologize for always mentioning sports in my posts.  I mainly do this because want readers to know I am a normal guy with a normal life outside of the MSPL (and because I love the Packers).

GO PACK GO!

Other kinds of Intellectual Property?!

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By definition, the MSPL focuses on teaching our students about patents. How to get them, how to talk to people about them, what they’re good for (or not). But sometimes it’s important to step back and get some perspective.

In our Ethics class, our students will spend the first three weeks of the semester learning about the other kinds of Intellectual Property that are common in the United States: trade/service marks, copyright, trade secrets, and trade dress. (In other countries, traditional knowledge is also considered a type of IP, but we don’t cover TK in our curriculum.)

The point of having our students learn about these other kinds of IP is quite practical: clients have problems; and most clients have more than one type of problem. So, it’s almost certain that, at some point, every patent agent is going to see a TM or (c) and need to know what that means. … and whether or not s/he can provide legal advice to the person who’s asking a question (hint: NO!).

I teach these classes, and even though they’re out of my area of specialty, I really enjoy them. This year the Robin Thicke/Marvin Gaye lawsuit over “Blurred Lines” is going to provide us with some fun subject matter when we talk about copyright. And, my favorite Diet Coke will make a special appearance as a teaching prop!

Patent Prosecution Part III

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Part II:

Read part I here.

Read part II here. 

Patent prosecution, from the inventor or applicant’s perspective, can be scary. Their patent application, which they have probably spent a lot of money to have prepared, isn’t going to become a patent after all??!!

That’s not necessarily the case, though — as mentioned in Part I, it’s quite frequent that an applicant gets a rejection for a good reason!

Here’s where a good patent agent or attorney is invaluable. The rejection will be made in highly legal and technical terms — and the patent agent or attorney will know how to rebut the rejection appropriately. They’ll be able to throw the legal and technical jargon right back at the Examiner and blow his or her argument to bits (formally known as “overcoming the rejection”).

These skills aren’t something you just pick up — the MS in Patent Law teaches our students how to systematically approach rejections from the Patent Office, so they can help inventors get patents.

Last Football Friday for the Fall semester

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Our last guest for the MS in Patent Law’s Football Friday lecture series this semester was Michael Sartori, PhD – chair of the patent prosecution practice at Venable LLP. Michael is a triple domer (BS, MS and PhD)… although he decided to go elsewhere for his JD.

Michael talked to MS in Patent Law students about things to consider to create a successful career in patent prosecution. Among the pointers he provided: as a new patent agent, make sure you get to work on all of patent application drafting, patent prosecution and patent litigation; and make sure that your firm has processes in place for providing a quality product to its clients — which requires knowing how to serve the clients you work for.

Michael has been a big supporter of the MS in Patent Law, from before it was ever officially created, in fact. Thanks for coming to visit and talk to our prospective patent agents, Michael!

Karen, MS in Patent Law student Josh, and Michael

Karen, MS in Patent Law student Josh, and Michael

M Sartori 1

AUTM Days 2 and 3

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On Wednesday I attended a very interesting session: “Not the Usual Suspects: Non-traditional IP from Non-traditional Sources.” The panel presenters from the OTT from the University of Illinois shared how they realized one day that they were only interacting with a very small part of their campus. To kick start communication with the rest of the campus, they held an open meeting with the deans of the humanities and social science departments to discuss what the OTT does and what types of resources they could offer.

They have since partnered with foreign language department, industrial design, music, sociology, psychology and architecture. The OTT has made the commitment to the entire campus to listen and learn, and to adapt existing processes and tools (within reason) in order to meet non-traditional IP needs.

One presenter from a consulting company mentioned something important to think about when opening up OTT resources to departments other than STEM – impact is not always proportional to dollars. These projects are still important.

The consultant also talked about licensing opportunities for university collections of art, music, artifacts, antique maps, and books. These licensing agreements are often very different from tech agreements in that they are limited term, payout minimum royalties in advance and often specify how the work is to be used (replicated on t-shirts, used as a logo for software, etc.). This type of licensing protects the university’s investment in the collection.

Today on the closing day of the conference, I attended a session which was essentially an open discussion about faculty expectations of tech transfer offices. Many topics were brought up in this session both from faculty representatives and OTT representatives such as faculty motivation for disclosing their IP (money, altruism), the need for consistent clear expectations and communication from both parties, and showing the value of what the OTT can bring to the inventor.

One university representative talked about having a faculty liaison act as a bridge between OTT and the inventor. When OTT has to say no to a technology or invention, the inventor might doubt that the OTT office has done its due diligence, but if a colleague explains why it can’t move forward, they are often more accepting of the news.

One panel presenter who has been on both the university and the corporate side of IP, suggested that the OTT be more involved with the brainstorming around how ideas and technology could be used. He gave the example of a chemist who is very interested in how certain molecules are bonding, but is unsure of how this would be applicable commercially. The OTT staff could bring an outside perspective on ways the technology could be used.

Another suggestion from the audience is using a third-party patentability and licensing analyst. This negates any perception of the tech transfer office being biased toward individual faculty or departments.

 

 

 

Tech Transfer and Patents: Observations at AUTM

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My name is Cathi Kennedy and I am the program coordinator for the MSc in Patent Law. This week I’m attending the Association of University Technology Managers’ (AUTM) Central Regional Meeting in Indianapolis. Representatives from universities, law firms, and industry are here to exchange ideas, network, and learn about new trends and practices in the field.

Having neither a technical nor legal background, I am here to observe and absorb information and meet nice, very smart people who are interested in hearing about the MSc in Patent Law program.

Today’s first session was about the America Invents Act, which went into effect on March 16th. Two people on the panel were from the USPTO. They spoke to the new procedures and requirements surrounding the new act, and also about the AIA training and resources available for both new and seasoned patent examiners.

The other presenters were from law firms and a tech transfer office. They spoke about how the new act is changing the way patent applications are being written and prosecuted and took questions from the audience.

I also attended an interactive session on “Negotiating the Basics.” In this session, we broke out into groups in which half the took the side of the university and the other half played the role of the industry. Each side then had to go through the terms of negotiation on the technology for the Horseless Carriage from their perspective. The terms that were considered were scope, term, joint development, reps and warranties, consideration (payments), improvements, and enforcement of patent rights.

My half of the group represented the company side of the negotiation (although all the members of the group work for tech transfer departments). Panel representatives from a university tech transfer office and from a large biotech company then talked through each of the terms of negotiation from their viewpoint. It was interesting to see how each side ranked the terms’ importance and which areas were more contentious (consideration and reps and warranties for instance).

Tomorrow’s agenda: licensing opportunities from non-traditional sources, and trends and strategies for working with academia from the industry leader perspective.

Power and Water

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We spent today (our last day!) at GE’s Power and Water facility in Schenectady, NY. This facility was started by Thomas Edison himself – check out the signature on the visitor’s pass we found!

 

 

 

GE visitor pass

 

 

 

 

 

Also in the picture is Buddy Cusick, one of the IP counsel who supports some of the R&D that happens at the Schenectady campus. Buddy is second from the right.

In addition to hearing from quite a few GE representatives today, we toured two plants. We got to see where they make their HUMONGOUS steam and gas generators, and also where they make a cool new type of battery.

After the tours, we chatted with Mike Gregory (a ND alum, and GC for the business unit), three technologists who develop new products at the facility, Buddy and Frank Landgraff (chief IP counsel for the business unit) and Mike Gnibus, who heads GE’s Global Patent Organization in Shelton, CT. Each speaker gave us their perceptions of the importance of patents to the business unit and to the company overall, and our students got some excellent advice that they can take with them into their practice careers.

 

It’s our last day, so sadly we will be headed home tomorrow. It’s been an amazing trip, and I am looking forward to next year already!!

 

GE’s GRC

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We spent yesterday at GE Transportation in Erie, PA. They make locomotives there. Who knew how much innovation is going on in that space – it’s a 150 year old technology in some ways, but in other ways, entirely new. The below photo was taken in the building in which we had a learning session with Shawn McClintick (Senior IP Counsel for the Transportation group). Shawn is second from the right – after Thomas Edison and one of our students.

GE transportation

 

 

 

 

 

 

Today we spent the day at the Global Research Corporation. We got an up-close view of a couple of very cool new GE technologies, met a few ND alums, and got to talk to a part of the IP team which manages GE’s patent portfolio. The students learned alot about what options are available for patent agents and patent practitioners generally at corporations like GE.

 

We’ve been lucky enough to be invited to stay at the GE Lodge on campus, and the view is beautiful!

GE view from lodge

 

A visit to Detriot

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Detroit GM buildingWe spent today in Detroit, MI. Most of the day was spent learning about the new Detroit regional USPTO. They only do patent work there, and concentrate heavily in the mechanical and electrical engineering fields. They’ve hired and trained around 70 new patent examiners since they opened, and are aiming to have about 100 new examiners in their first year of operations.
The folks at the PTO were very gracious hosts. We learned about the mission of the PTO and of the Detroit office, had lunch with some current examiners, learned alot more about the job of an examiner, and also got to share a bit about the MSPL.
After a tour of the office, we traveled to Dickinson Wright to mingle with some of the folks we know through our adjunct faculty member Hal Milton. Kim Slaven, a ND alumna, is a patent associate in the Troy, MI office of Dickinson Wright, and arranged for the MSPL students to meet some of their patent interns (trainee patent prosecutors). We spent some time in their 40th floor office, which has a great view of the GM building. Unfortunately it was rainy today, so the photo isn’t great, but you can still get the idea of how amazing the view is (Canada is in the background!).

MS in Patent Law accepting applications

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Notre Dame’s one-year MS in Patent Law is accepting applications for the 2013-2014 academic year.

Our students learn hands-on skills that prepare them for a career as a patent agent – helping people prepare and obtain patents. Patent agents work at the cutting edge of their technical area, and also at the cutting edge of the law.

Applicants must have a background in science or engineering. Strong applicants have good oral and written communication skills. Applicants with EE and advanced degrees are especially encouraged to apply.

We expect our class of twenty to fill soon. Apply early for best consideration!