AUTM Days 2 and 3

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.




2013 BIO International Convention

A post from our student blogIMG_4962_Ager Sarah Goodman

I attended the BIO International Convention April 21-25, 2013 at McCormick Place in Chicago, Illinois. The University of Notre Dame is a BIO member company and a 2013 exhibitor. I volunteered for two days and received two day passes for the convention. During my volunteer sessions on Monday and Tuesday, I worked in the Sponsor Lounge where I was able to interact with members of large international biotech companies. I was able to participate in the convention on Wednesday and Thursday. It was a great opportunity to visit the exhibits and speak with professionals in the biotech and law fields.

Some of the exhibitors were representatives of law firms that practice in the field of intellectual property law. I spoke with patent attorneys and agents from many law firms including Thompson Coburn LLP, Barnes & Thornburg LLP, Frommer, Lawrence & Haug LLP, Foley Hoag LLP, and McDonnell Boehnen Hulbert & Berghoff LLP. The convention also featured major biotechnology companies. Participants included Astellas, Janssen Pharmaceutical Companies of Johnson & Johnson, AstraZeneca, Genentech, Merck, and GlaxoSmithKline. I really enjoyed meeting domestic and international professionals in my field.

Besides the individual exhibitors, there were separate pavilions for each country and some states of the US. Each country pavilion had details about the particular country and business information. During a reception on Tuesday, each pavilion contributed to the festivities. The Switzerland pavilion provided a chocolate fondue with fresh fruit and cookies. The Belgium pavilion provided fancy coffee served by a barista. My favorite pavilion was the France pavilion which provided cheese and wine to attendees and where French was spoken almost solely.

The BIO International Convention was a great opportunity both professionally and academically. Attendance significantly impacted the drafting of my thesis and my professional development. The BIO International Convention was an exciting event that provided a lot of valuable information and insight into intellectual property law, pharmaceutical development, and marketing strategies.


ND Law School IP Clinic Expands to Include MSPL Students

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.

Contract Agreements in the Intellectual Property (IP) Field

A post from our student blogger Sarah Goodman

Mr. Todd A. Dawson, J.D., the owner and president of Todd Dawson Consulting LLC in Warsaw, Indiana, recently visited our MSPL class and presented a guest lecture on intellectual property contracts and other licensing matters. A contract is a legal document that establishes an agreement that is enforceable by law. I learned about some different forms of patent agreements and types of responsibilities a patent agent might have concerning these agreements when working with patent attorneys.

An assignment contract is used for the complete and permanent transfer of all rights to specifically identified intellectual property from the inventor(s) to an assignee. The assignee can be an individual but is often an organization such as a company or university. This form of contract is analogous to a sale of property. An assignment does not contain limitations on how long or under what conditions the assignee can use the intellectual property rights. After assignment, the inventor does not retain any rights to the intellectual property.

A license contract is used to allow another entity to use or develop specific intellectual property. This form of contract is analogous to renting property. A license contract includes specified conditions of use of the intellectual property for a defined period of time. A license may be exclusive, meaning no other party can obtain a license to the intellectual property, non-exclusive, meaning more than one party can obtain a license, or co-exclusive, identifying that only certain specific parties can obtain a license. During the licensing period, the inventor retains ownership of the patent.

Patent agents may have responsibilities concerning contracts especially when working with patent attorneys. These responsibilities can include ensuring that the identified parties are accurate, ensuring that the assignor is the registered owner of the intellectual property, checking employment agreements, and ensuring that the contract language is clear and understandable.

Inventors usually decide to assign or license intellectual property for financial reasons. Employers usually own the rights by assignment to inventions created by an employee during employment. Patents can be licensed for royalty payments by individuals or organizations. The topic of contract agreements in the intellectual property law field was important for our MSPL class to learn and understand so that we can be more prepared in the future for any involvement with contracts.

What is a … copyright? trademark? trade secret?

A post from our student blogger Sarah Goodman

The main type of intellectual property the MSPL courses focus on is patent law. The program prepares individuals to pass the patent bar and work as patent agents. A patent agent is qualified to prepare, file, and prosecute patent applications. Although a patent agent is not qualified to work in the other areas of intellectual property law, it is important to understand the other types of intellectual property rights that are used in science.

Copyrights protect original works of authorship for a limited time. Included are literary, dramatic, artistic, and musical works. A copyright generally gives the owner the rights of reproduction, distribution, and performance. A work must exist in a tangible form of expression in order to qualify for copyright protection. In science, copyrights are often used to protect literary works such as books, articles, and website content. Genomic DNA sequences are not generally considered to be covered by copyright because they are not works of authorship.

A trademark is a distinctive mark that identifies the source of a good or service. Examples include words, phrases, logos, symbols, and designs. A trademark provides recognition protection to the owner by granting the exclusive right to use the trademark to identify goods or services. Trademarks are commonly used in science to identify company products. When a product or service is labeled with a trademark, a consumer can quickly identify the source and expect consistency. Rights to a trademark are acquired by either being the first to publically use the mark in commerce or by being the first to register the mark with the USPTO.

Trade secrets give a company a competitive advantage by keeping information confidential. Trade secrets are information with commercial value and are subject to steps to ensure secrecy, such as through confidentiality agreements. Sometimes, if an invention is patentable, a company needs to decide whether to make their invention a trade secret or to submit a patent application. Benefits to trade secrets include an unlimited time frame (as long as undisclosed to the public) and no costs for patent registration and maintenance. The disadvantages include that another entity could patent the trade secret independently and the owner of the trade secret does not have the right to exclude others from using the secret. Also, once the trade secret is revealed, there is no intellectual property protection for the original owner.

Patents are extremely important for the stimulation of innovation in science and are the primary focus in the MSPL courses, but it is necessary to also be familiar with other types of intellectual property.

Office of Tech Transfer a Valuable Resource for Students

A post from our student blogger Sarah Goodman

An important resource to the students in the MSPL program at the University of Notre Dame is the Office of Technology Transfer (OTT). This office is available to assist university faculty, research staff, and students in bringing new technologies to commercialization. The OTT has the resources to patent, market, and license products of university research. This office secures legal protection in the form of patents for technologies invented at Notre Dame and markets the technologies to companies suited to develop the inventions. When appropriate companies are identified, the OTT is capable of negotiating licensing agreements and distributing the proceeds in accordance with the University’s intellectual property policies. The MSPL program prepares us for job opportunities in the field of academic technology transfer as a possible career option.

I am a current student employee in the OTT. My job duties include researching current Notre Dame technologies and completing Patentability and Marketability Reports. To investigate the patentability of an invention, I search patent and literature databases to identify publications that could prevent a patent from issuing on the technology.  To investigate the marketability of an invention, I complete market research to see if anything similar is commercially available, investigate the target customers, and determine whether or not the technology has commercial value.

The other student employee at the OTT is Vini Melo, a current student in the graduate ESTEEM program. He also evaluates inventions and is currently coordinating databases that will be used to market technologies invented at Notre Dame.

The Office of Technology Transfer is a valuable asset on campus and will aid in the success of the MSPL program. The University’s Intellectual Property Policy and information concerning the Office of Technology Transfer is available online at