Any questions?

A post from our student blogger Catie

If I have learned anything from the MSPL, that lesson would be to always ask questions. Whether we’re in class, speaking to an inventor, or listening to a presentation from a guest speaker, we are individually expected to have at least one question to ask. It may on a surface level seem irritating or may feel like you’re only doing it for the participation points, but it really does serve good purpose. Asking questions shows your professor, inventor, or guest that you are attentively listening to what he or she is saying. It shows that you are invested and interested in the overall message of their speech and would like to know more. A question can enhance the knowledge gained by the audience or may clarify a foggy understanding of part of the content that perhaps other people were wondering as well.

Those are all good purposes for any individual to frequently ask questions, but those of us in patent law know that we have to become pros at mastering it like an art form. For a patent agent, asking questions is not just courtesy; it is our job. In order to do his or her job effectively, a patent agent must ask the right questions of inventors in order to fully understand the invention in all aspects. This is way more difficult than it sounds, as we are pushed to not only ask all the right guiding questions, but we are encouraged to avoid “yes” or “no” questions in order to elicit the most honest and complete responses. Also, regarding interactions with both inventors and the USPTO, patent agents should always pose questions so that they may refrain from accepting everything at face value. Part of the job of a patent agent is to argue, so learning to constantly have questions provides great training for the career.

To some, this may seem like an easy task. However, the MSPL has made me push myself to break out of my own mold. I have always been the kind of person to never ask questions, unless I REALLY had a burning question. I’m a “head nodder”, so I figured that my body language and silence were signs to the person speaking that I understood what was going on. It was somewhat of an annoyance to me to be so strongly encouraged to speak more, and it still takes a lot for me to compose thoughtful, genuine questions to ask on such a frequent basis. That being said, I think that I’ve learned from it, and I am seeing changes in myself. I think it was most obvious to me while I was at mass in Notre Dame’s beautiful Basilica for Ash Wednesday service, and I had to stop myself from raising my hand to ask a question during the homily! Clearly, the habit of asking questions is slowly becoming instilled in me as a subconscious act.

To conclude, the students of the MSPL are learning an incredibly important skill of persistently asking questions, but are also training to master what questions to ask and when to ask them. I am seeing myself develop these skills, and I am subsequently gaining an understanding of how these skills will make me a better patent professional when I am working in the field!

Decoding the matrix

A post from our student blogger Roberto

As an undergraduate I remember waking up one morning and everything changed.  Before that day I remember straining my brain each second trying to memorize every piece of information my teachers went over in class.  When the time came to prepare for the test I would work through the notes and redo all the practice problems hoping to just re-learn all those examples from class.  Then exam day would come and the questions would be different. As a result, I would be forced to exercise my creative knowledge on test day.  As if those tests weren’t hard enough I would later learn that this method of studying made them far more difficult than they had to be.

As I said, there was a day when this all changed.  Maybe it was a result of staying up all night in computer lab trying to figure out which sign change I needed to make in order for my code to work but one morning I woke up and everything was different.  It was almost a matrix-like moment, for all of my Keanu Reeves fans out there.  Rather than furiously copying down everything I saw on the chalk board I was found myself taking very few notes.  I had finally connected the dots, I had begun to piece the concepts together.  I actually began to look at problems and see the numbers and underlying concepts behind what was going on.  I would take pieces from my other classes and use them to predict what the teacher would say next.  Before long I had unlocked a whole new level of learning and understanding.

When I was going through bootcamp here in the MSPL I realized that I had to become a student of something entirely different than the engineering coursework I was used too.  My reset button had been pressed and back again were the days of tirelessly scribbling notes I would probably never make sense of.  Initially, it was a bit of transition for me going from engineering to law.  I was not used to analyzing words so carefully nor was I accustomed to memorizing statutes and laws.  While I knew all of our classes had been carefully interwoven together it was hard for me to see the common thread at first.  Each time our professors lectured or we listened to guest speakers I was amazed at the level of knowledge they possessed of the law.  They spoke about the law so fluently and eloquently it was as if I was in a foreign country.

After a while the hard work in the classes started to pay off.  I began to put the pieces together and I started to truly understand, rather than memorize, concepts.  While I was studying for the patent bar I began to realize the true intent of the system and that answers to questions would always flow from that understanding.  It was a really great to feel like I understood what patent law was about and what the goal of it was.  The closest comparison I can make is that when you were young your parents instilled in you a sense of right and wrong, a moral compass.  At first, it was difficult to differentiate right from wrong and we would often pay for the price for it.  After a while though we began to trust our moral compass and simply ask ourselves what would be the right thing to do.  Rather than memorizing rules we relied upon our understanding of much larger concepts.

For my news tidbit of the week I (regrettably) once again turn our attention to the Seattle Seahawks and their running back Marshawn Lynch.  As many who follow the NFL know, star NFL players are required to be available for public media interviews after games or at league scheduled events.  Many stars, including Aaron Rodgers, Jordy Nelson, Eddie Lacy and Randall Cobb, rarely make headlines for these interviews.  Some players however have utilized the venue to air grievances with coaches, opposing players or teammates.  Lynch made headlines this season not for what he said, but what he did not say.  After refusing to answer questions from the media during the majority of the season, and being subsequently fined by the NFL, Lynch decided to answer all media questions with the simple word “yeah”.    The next week Lynch answered all questions with “Nope” and over the next few weeks all questions were answered with “Thank you for asking”, “I appreciate it” or “I’m thankful”.  Many wondered what Lynch would say during “media week”, which is the week before the Superbowl.  Rather than answering questions with one of his already coined responses or not answering at all, this time Lynch responded to every single question with a variant of “I’m just here so I won’t get fined”.  Now, a few weeks after that now famous interview, Lynch is attempting to file a U.S. trademark on the phrase.  Presumably, Lynch intends on reproducing his famous line on his own personal brand of clothing.  As you may know, this trademark would allow him to stop others from reproducing that phrase. While Lynch’s series of interviews will go down in sports lore it is awesome to see intellectual property coming into play and I am excited to see what he does with the phrase.

A nation of innovation

A post from our student blogger Roberto

This past week members of the program went to California to meet companies and law firms involved with intellectual property.  On the plane ride over it hit me just how cool this trip really was.  I mean, we were going to the epicenter of the technology scene in the United States.  What’s more, we actually would get to see how some of the companies and firms worked.  Wow.  That is truly an amazing opportunity.  As the son of an entrepreneur it was really cool getting to visit the area where so many companies were founded.  And what was at the core of many of these companies? Tons and tons of crucially important intellectual property.  Without intellectual property many of these startups would have been swallowed up by a competitor with more resources smothering innovation. Thankfully, patents protect the blood, sweat, and tears these inventors and entrepreneurs have poured into their efforts.  As these inventors know too well, the patent system truly is remarkable.  It arms David against Goliath and allows for the little guys to sometimes come out on top.  This shakes up the game and constantly brings new ideas to the table by facilitating competition and eliminating monopolies.

On our trip, many of the firms we went to have represented some very prestigious clients such as Facebook, Oracle, Uber, and Twitter. Each firm was unique in both its operating style and its employee culture giving us insight into many different environments.  We also had the opportunity to speak with in-house counsel at Qualcomm, eBay, Intuitive Surgical and Stryker.  We even had the unique opportunity of touring the Qualcomm facilities as well as participating in a live demonstration of the DaVinci robot.

One of the things that stood out to me throughout all of our visits was just how different the atmosphere in Silicon Valley was compared to anything I had ever seen.  From the corner street cafés to the corporate headquarters of the most successful companies, there was a real entrepreneurial spirit that permeated the entire region. Everyone we met was talking about startups, innovation and the next best thing. Being from the Midwest, this was strikingly different from what I was used to. Where I come from people pride themselves on hard work and the fruits of their labor in a very different way.  Rather than focusing on radical changes like those in the Valley, I was used to incremental changes in historically successful products.  The differences in mentalities may seem minor but it was, in fact, a very striking difference.   After thinking about this for a while on the ride home, I realized it just gives me another reason to be proud to have chosen to work in the Midwest as a patent agent. In some small way I will be helping to change not only the world but my home as well.  While all of my classmates can say that, I am excited to be a difference maker in a region that needs them.  While many young patent agents are understandably attracted to the flurry activity going on in the Valley I knew it just wasn’t for me.  By staying in the Midwest maybe I could help bring some of that spirit and energy back home.  Who knows, maybe I could help start the next Valley.  In the end, we all need to decide what is most important to us as we start our careers.  Working as a patent agent has many rewards and thankfully there are many jobs and career paths to choose from. For me, going home and working hard to make it an even better place is what is most important to me.

Legalese, please

A post from our student blogger Megan

For the last several weeks during class it has been brought to my attention that lawyers speak their own language.  At some point, halfway through law school, I became submerged into what a layperson would call “legalese.” Sidepoint:  I never knew what a “layperson” (someone who is not a member of a given profession, such as law or medicine) was until law school.  Res ipsa loquitur, injunction, arbitration, certiorari, intestate, sanction, estoppel, and venue are just a few of the words that lawyers tend to use without much thought.  Patent law is even more specialized. The word “patent” itself is derived from Latin and literally means open, evident or exposed. I am guilty of throwing these words into things I write and, worst of all, things I say on an everyday basis. I have peppered more than one phrase with a “summons and complaint” and added a generous helping of “damages” to other conversations without thinking whether my readers and listeners even know what I’m talking about. But is this necessary?  Why don’t lawyers just write and speak simply without using legalese?

We have to consider the origins of law in order to properly answer this question.  While we do not know exactly when laws were developed and where, there is evidence of legal doctrines popping up around China in approximately 2500 B.C. during the rule of Baron Yu. Apparently, Yu drew a line on some sort of grid and criminals were deported to one side while everyone else lived on the other.  Fast forward to 399 B.C. to when a vote by 501 people sentenced a well-known philosopher to death: the trial of Socrates. And most everyone knows that each continent, country, province and state creates, implements, and punishes under its own laws. The notion of specific language that denotes the use of legal terms is likely as old as law itself.  As society continued to develop, new laws were created which in turn became more and more complex, reflecting the advancement of civilization. During the 1600’s it was a known fact that attorneys had to speak French, Latin, and English. Most places have their own words and meanings ascribed to their legal systems—this is likely where much of our legalese stems from.

So is there any problem with throwing a few legalese terms like “shall” and “heretowith” into writing and speaking as a way to honor our long legal heritage?  Well, no, unless you are one of the thousands of plain English proponents out there.  I recently joined the Plain Language Advocates forum on LinkedIn. There are a lot of interesting posts on this site including one article that talks about how using big words reduces credibility.  One person in the group also suggested a “death row” for words that are no longer a part of common usage. There is another side to this argument, though. Contracts and License Agreements are packed with heavy legalese. Any corporate law attorney will tell you that the End User License Agreement on that new program you just installed is set up to protect “somebody.”  That “somebody” is the person or company that developed the software. Legal language in this case can be a powerful warning to would-be copiers and people who intend to misuse.

To sum it all up, language is a living, breathing, evolving creature. Legalese, if it still exists, will likely look radically different 100 years from now. So go ahead, throw some bailment or some bylaws into your word soup when you are writing and talking. Just be prepared to flat out explain why you are using them in the first place and get ready to define these terms to your audience

Tough love and a “little” exercise

A post from our student blogger Catie

We’re already three weeks into our second semester in the MSPL and life is eventful. We have all new classes, an outside patent attorney to provide guidance as we draft the patent application for our capstones, and we leave for San Francisco next week! It feels as though the only things that haven’t changed from last semester to now are that time definitely flies, and we remain perpetually busy.

Although we are finding our rhythm in completing assignments and staying on-task for our new schedule of classes, we are all finding that earning that ‘A’ that we all want on our assignments is not quite as simple as last semester. This is not to say that last semester was easy by any means; our patent law classes from last semester focused on learning the fundamentals of patent law, searching, and drafting, and we learned so much and worked incredibly hard to tie it all together during our technical presentations for the rest of the semester. Our patent classes from this semester are less connected to our capstone projects and focus more on the office work and skills that we must be equipped with once we land a job in the field.

We have learned quickly that we will not earn high scores on our assignments for this semester by simply completing a task; we must have every tiny detail correct and self-review our work constantly to make sure our work is nearly flawless. Trust me: we have all bemoaned this standard to which we will be held, but our professors have been clear in explaining to us why this is. They tell us that, yes, we will all make silly, rookie mistakes when we enter our first job. It will happen and it will be expected.

However, in patent law where you record your own hours and bill by the hours of work you have performed, any mistake that you make must be fixed, and that is time and money that your employer must pay for. An office action can be returned to you for any miniscule mistake, and your employer will not be happy that they have to pay you to fix something that maybe could have been avoided had you had the prior experience in filing the document or had checked it over one last time. Our professors have doled out tons of ‘tough love’ on our assignments so far, knowing that we would make these common mistakes, because it acts as a learning experience for us to make sure that we remember our frustrations now and don’t make the same silly mistakes when we have to bill for it in a real job.

On another note, we had a night of team building exercises and dinner with Dean Crawford in preparation for our fast-approaching San Francisco trip. We were told to arrive in workout clothes, as the team building exercises would include “some light exercise”. Either we are all out of shape or we got a little too into the competition aspect, because we all had a good sweat going by the end. This was followed up by a fantastic dinner with fun conversation and great people. As it has been mentioned before in the blog, we are really like a family in the MSPL. We thoroughly enjoy each other’s company and we go through the struggles of failing and learning together as nascent patent agents. We also joked at dinner about how our professors and program directors are like our parents: they may come down pretty hard on us at times, but they only do it because they care about us and want to help us be the best that we can be. I could not be any more excited to experience the innovative world of San Francisco with such wonderful people. See you on the flip side, South Bend!

The (r)Evolution of an invention

A post from our student blogger Megan

The evolution of the wheel (Photo credit:  geniusstuff.com)

The evolution of the wheel (Photo credit: geniusstuff.com)

If you have been following the MSPL blog in any depth this school year then you know that we have been working with scientists, engineers, mathematicians and other Notre Dame faculty to draft patent applications on their inventive creations.  This is our thesis project.  In December, we presented our findings and initial patent application claim drafts to our faculty advisors and inventors.  Now we are on the path to drafting the finalized version of the patent application that covers our respective technology.  This might seem simple, I mean, it is just filling out an application you say, right? No.  In fact, the art of claim drafting and task of completing a patent application are a little daunting.  But the end product is within sight and we are looking forward to achieving this goal.

One of the most challenging aspects of completing a patent application is how to capture the essence of an ever-changing underlying invention.  Let me explain what I mean.  I am fortunate enough to work with two incredibly bright, visionary biochemists and two brilliant, keenly astute engineers. The invention that these four faculty members supplied to me in August was a curious drawing of several component lab parts strung together that they said would change the face of cancer diagnostics.  I diligently visited each inventor’s lab for a total of twelve times to have the essentials of this apparatus explained to me.  When December rolled around, I had crafted a forty-five minute oral presentation that, I thought, tied my inventors’ ideas neatly together with the patent concepts we had been learning in the MSPL.  Despite a few random butterflies, I was confident about my knowledge of the science and engineering principles, as well as the legal concepts that I needed to discuss.  The words flowed like liquid gold from my mouth until I was stopped by one of the biochemists.  It seemed that I had not perfectly captured the essence of this invention after all.  My faculty advisors discussed with each other, and with me, what the bare bones of their concept was and I left satisfied with my performance but also with a feeling of slight uncertainty:  according to my inventors, the invention that they envisioned had changed since August.

Two weeks into January I have now received more updated drawings of my inventors’ concept.  These drawings are a world away from the originals that I was handed at the start of the school year.  The idea is still the same, though. And although this means revamping my patent application-completion-strategy, this is the single most exciting thing that could have happened to me.  You see, I’ve gotten to witness the creative genius of four talented inventors. I’ve also learned firsthand that inventive concept is not static, it is dynamic and evolving; one idea leads to an even better one. This has taught me patience and has ignited yet another deep level of fascination with the most basic understanding of how things work.

An idea that begins small will probably evolve.  In patent law you have to just sit back, relax, and go with your inventors’ lab flow. Inventing is a mutable concept: one drawing leads to a plethora of new thoughts.  You have to be ready, as a patent agent or attorney, to revise and rework your patent application to match what your inventor needs to patent. In the end, this tiny little lab evolution of one little idea just might be the next big revolution in science and engineering.

Classroom tested, industry ready

A post from our student blogger Roberto

The first few weeks of the second semester have gone by fast.  These new classes are refreshing and offer a whole new take on patent law.  The most dramatic difference so far has been in our capstone class where we have been paired with industry mentors who will review all of our assignments.  Their feedback will be instrumental as we craft our final patent application.  It is helpful having someone who you can go to with complicated questions and needed advice along the way.  As many of the bloggers mentioned, writing a good set of claims is a form of art.  Having an industry mentor allows you to see a completely different artistic style as well pick up helpful tips they have learned through their careers.

In our other classes we have already covered several interesting topics.  Claim interpretation, figuring out how a set of claims impacts the potential infringement of an article, so far has really interested me.  Claim interpretation is almost entirely an exercise in argument between the two sides over the meaning of words and the use of punctuation.  Patent Litigators, individuals with a law degree, argue before each other, judges and a jury about all of these things.  In the end, millions of dollars have been spent (typically) and the entire landscape of an industry may change. For example, in recent years Samsung has had to pay out around $1.2B to Apple in patent disputes over their competing technologies, according to Forbes.

Last semester we spent a good amount of time working on claims for physical devices but not much time working on what are called “method” claims.  Method claims protect a certain way of doing things to achieve a specific, new and useful result.  This semester we have a whole series of assignments directed to constructing these special claims.  This experience will be very useful for many students since their capstone projects require the use of this type of claim.  When would a method claim be useful?  Well, suppose that you decided to try to use engine degreaser to ward off the pesky ants persistently attempting to infiltrate the crack under your front door.  Much to your amazement the ants, and all other insects for that matter, never came near your door again.  Suppose you wanted to patent this newly found miracle ant repellant.  Well, you couldn’t get a patent on the actual ant repellant since it was just some engine degreaser you had lying around.  What you could attempt to do however, is obtain a method patent on the new and useful method of spraying engine degreaser on areas to repel ants.   Writing claims to protect methods is very different and in many senses more difficult since you are not claiming a physical article and instead a process.

In general, this semester is geared towards getting us ready for the day-to-day life of being a patent agent.  We are routinely turning in assignments simulating those we will have at our jobs in a few months.  As an engineer, I really appreciate having the opportunity to practice the legal writing and formatting skills many take for granted.  One last piece of exciting news is that being a patent agent was just rated the #4 on CNN’s “Best Jobs in America” list. This is great news for the MSPL students and only reaffirms our excitement to join the field.

The Packers lost.  I will be the first to admit that they deserved to lose.  And, in the end, I am glad they did.  A few days after the loss the younger brother of our head coach died of a heart attack suddenly and without warning.  I am thankful that we lost because it meant that our coach had the opportunity to speak with his brother during those final days; an opportunity that he otherwise may not have had.  As the great Vince Lombardi once said, “In my life there are three things: God, Family and the Green Bay Packers.  In that order.”

Interview with MSPL professor, Mike Wack

Professor Mike Wack

Professor Mike Wack

A post from our student blogger Megan

After a few weeks of winter break the Notre Dame MSPL students have returned to lovely South Bend, Indiana.  Strike “lovely.”  If you know anything about the Great Lakes region, where Notre Dame is located, you know that January is not the most pleasant month of the year for this area.  In fact, it is quite snowy…and cold…and at times…miserable.  But as we return, we have started to reflect on last semester and how far we’ve come.  We have had some great opportunities and have created some lasting memories with one another.  One particular conversation I had with another MSPL’er was about our Patent Law and Prosecution professor last semester.  Professor Mike Wack—we both agreed—would have banished our January glums with his “aloha.”  Aloha means “hello” and “goodbye,” but if you’ve ever visited Hawaii you know that aloha extends far beyond greetings—it is a way of life.  The dictionary defines aloha as “friendly,” “hospitable,” and “welcoming.”  These are three words that can certainly be applied to the environment that Professor Wack created for his students in his patent prosecution class.

Mike Wack epitomizeed aloha by wearing one of his forty-six Hawaiian shirts each week to class.  Professor Wack’s spirit of aloha went far beyond his shirts, though.  Each Monday afternoon the MSPL students were greeted with Professor Wack’s laid-back, conversational approach to learning how to prosecute patents.  Professor Wack is an incredibly astute engineer and patent law professional; he is detail-oriented, grades tough but fair, and has high expectations for his students.  Attending his class, though, was a lot of fun.  He took time to answer every question thoroughly and concisely.

When it snowed twelve inches in one day last November, Mike Wack still wore a Hawaiian shirt to class.  It’s nice to know that even though there may be a blizzard outside, we have professors like Mike Wack.  Mike’s aloha has inspired us to learn.  He has deep roots in the Notre Dame system and is part of a truly fascinating legacy with the University.  The following is a brief discussion with Professor Wack, who you will see, is a pretty cool guy with aloha spirit that is quite contagious.

Please discuss your background.  You are a teacher, engineer, and a licensed, practicing patent agent—why did you choose this particular career path?

I began a career in medical device product development as soon as I got out of graduate school, and did that for twenty-one years.  It was a fantastic, rewarding occupation … I was able to design and develop devices and instruments used on many individuals.  During that time, I became very interested in the intellectual property side of things and I took it as a challenge to design around competitive IP.  I was able to take and pass the Patent Bar Exam, and then find a position in the same industry as a patent agent.  I can still work with and mentor development engineers, while at the same time protecting our intellectual property.  The best of both worlds!

Please discuss your associations with the University of Notre Dame and why you decided to teach patent prosecution at this university.

I have a very long association with ND!  My great-uncle, Fr. Ed Keller, was a world-famous economist who taught there.  My grandfather lived where Eddy Commons is now (at one time Knute Rockne lived across the street), and taught German there.  My father graduated from there in 1950, along with a brother and several uncles, cousins, nieces and nephews.  Two of my brothers are Holy Cross priests and attended the seminary there.  And finally, two of my children currently are undergraduates there.  I grew up in South Bend, and spent a lot of time on campus.  True story: I came very close to being born in the stadium during a home game.  Notre Dame is in my DNA!

My son saw a flyer about the MSPL program in his e-mail, and forwarded it to me.  I immediately contacted Karen Deak, and we got it worked out.  It is really a dream for me to be able to teach at Notre Dame and follow in my relatives’ footsteps.

What surprises you about patent law?

I guess the biggest surprise to me is how important every single word can be in a patent application.  Each word’s meaning can be argued throughout the prosecution, and then again post-issuance.  It makes me be really vigilant when I handle applications!

You often times stress to your students the importance of preparing for the USPTO Examination, commonly known as the “patent bar.”  Please recount your personal experience with this test.

The first time I took the Examination, I was really confident and told my wife during the lunch break how well I thought I was doing.  After I finished the afternoon session, I couldn’t believe I had scored a 64 and therefore did not pass!  When I called my wife on the way home, at first she didn’t believe me.  Then, she hurried outside to pick up the “Congratulation!” signs from the front yard and cancel her planned celebration (she told me this later).  I was initially pretty discouraged, but I studied for several weeks and then re-took and passed the Exam.  By the time I was finished studying, I’m pretty sure most of my children knew what a 102 rejection was!

What is the most important piece of advice that you would give to a newly licensed patent agent or attorney?

Look outside the art field of the invention!  I have found a lot of relevant art in fields that on the surface appeared to have nothing to do with what I was searching.  It is also a good way to help development engineers find ideas if they are stuck.

In your opinion, what is your greatest accomplishment in your career thus far?

Strangely enough, the first two years and my last two years.  The first two years I developed custom implants for people with serious bone deficiencies or deformities, and it was extremely rewarding for me to be able to help them lead pain-free and functional lives.  In my last two years I hope I have been able to not only teach students patent law, but also pass on some of my “life’s lessons” and help them become better people as well.

Please discuss your personal “fashion” choices.

I am well-known for my Aloha shirts … I have 46 of them!  I wear a different shirt for each class, and I hope the students enjoy my brightening their day a little.  Some of them wonder what I wear to work every day, and I tell them “Aloha shirt and jeans!”

What’s next for you; will you continue to teach as well as practice at Biomet, Inc.?

I hope to continue teaching the MSPL Patent law & Prosecution class.  As far as my “other” life, I hope to continue to work as a patent agent for Biomet since I love working with medical devices.  I am also starting a patent searching business (Blue Jay IP, LLC) with the eventual goal of doing that full-time.  Finally, my wife and I want to be involved with as many philanthropic activities as possible: God has blessed us immeasurably, and we want to help others share in our fortunes!

The second half

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!

Interview with MSPL professor Ron Kaminecki

Ron KA post from our student blogger Catie

As the bloggers have discussed numerous times, a thorough prior art search is pivotal to drafting a worthwhile patent application. During the fall semester, patent searcher Ron Kaminecki instructed the MSPL students in a course that focused solely on patent searching. Ron is a wealth of knowledge and experience, and he uses that knowledge and his own personal connections to provide his students with the broadest possible exposure to the realm of patent databases. Ron also uses his experiences to provide real-life examples of what he teaches, which hold the attention of his students.

After graduating from the Illinois Institute of Technology with a Bachelor’s degree in Chemistry, Ron began his career as a technical assistant chemist at the IIT Research Institute in Chicago where he did chemical information work, mostly concerning contract research. One of his first big jobs was to prove that trains can spontaneously catch fire; a task in which he succeeded and gained a passion for information searching. He transitioned into performing patent searches, and decided on a whim to get a Masters in Computer Science and then later take the patent bar exam. By the suggestion of his wife, he decided to take the LSAT and was later accepted into DePaul Law School, which he attended while also working as Manager of Patent Information at a drug company. Because of the law school’s newly formed department of intellectual property, Ron was one of the first graduates to receive a Certificate in Patent Law at the same time as a JD. Ron has spent his career as an independent Patent Information Researcher, assisting clients and leading courses in patent searching in all parts of the world. I asked Ron to answer a few questions for the blog, and the following is a brief overview of the fantastic stories and experiences that he shared with me.

What do you like about patent searching?

“I would be given the name of a company or a patent number and was expected to do a full legal briefing to my boss and the rest of the team (a techie and a financial person) usually within the next day or two!  Then, we would all fly onsite, armed with a blank check and would have to decide whether or not to buy the company/patent from the client. I did deep dives into the literature and would love finding “embarrassing” facts, like one company in which the president’s spouse had owned a trademark for the company.  When I name dropped this, the room went silent and they asked how I knew this!  Just did my homework.  I did several of these and really enjoyed doing this work.”

What brought you to be an adjunct professor at the University of Notre Dame?

“I was out of a job after 32 years at one company and was consulting when an old friend told me about the new program that Karen Deak was setting up. I contacted Karen and proposed a patent analysis course. Just a few days before we met to discuss this possibility in person, I fell off my bicycle (I’m a big bicyclist) and ended up in the ER with my entire left side abraded, a crack in my pelvis and other painful injuries.  I could barely walk and could not sit and didn’t think I made a good impression on Karen; she was gracious as always.  She contacted me a few weeks later to say that she could not use a patent analysis course.  However, during the first school year, she contacted me because she noticed the students were struggling with finding patent information for their capstones. I did a two hour quick overview with the students, along with the same goofy examples that you saw, and showed them how to search.  I agreed to consult over the semester, and Karen asked me to put together a syllabus for the next year of patent law students. Since then I have done a similar class at DePaul Law last summer and have since put together another class for New Hampshire Law. Luckily, this class is all online (which, while I am typing this, I am staring at my recording apparatus as I am recording my classes now).”

What do you like most about teaching a patent law course at the University of Notre Dame?

“I really like meeting the students because I like to meet people face to face.  I learn from students, too, and I do change my syllabus, my teaching methods, and my presentations based on feedback.  Yes, I do notice people almost dozing off when I am going through one of my hundred slide presentations. So, I add ridiculous inventions, or I try to find a really memorable example (like the black pills made by heating a mole for a week) to make people remember that a drug can involve a product and a method patent.  Or, I will introduce something colorful, like the Mars lander that I worked on.  I try to teach while entertaining, never the other way around, because I have found that all this technical stuff goes in and out and no one remembers it, but show them a tea bag and how to do a patent search on it, and they tend to remember it.”

You often spoke about your experiences in China. How did that shape your career in patent law? Do you get to travel outside of the country for your job?

“At one point I traveled about 80% of my time, though that was mostly in the US.  I’ve been to many countries in Asia and Europe several times per year for many years and have even been to South Africa a few times. Based on my work in Asia, I have been asked to speak at legal meetings in which people paid to hear about the latest cases.  My background in law and public speaking has taken me around the world many times.  I once had a million miles on American and an a million and a half on United. I also learned that you have to be able to say a few words in the native language.  Nothing special, just “Thanks; yes, no; bathroom?” and such essentials.”

If you weren’t a patent searcher, what would you be?

“I would be a judge in the Court of Appeals for the Federal Circuit; the court that decides patent cases.  Nothing like having everyone stand up when you walk into a room!  Just kidding.  I would love to dig into the depths of really technical cases and then argue with others.”

What is the greatest piece of advice that you would give to a beginning patent agent or attorney?

“Meet as many people as you can and remember them.  Get to know their spouse’s name, their kid’s names, their dog’s name, their favorite food and better yet, the food they hate.  People really like it when you recall such details years later. Also, I encourage everyone to get as educated as possible!  I would love to further my education in a different field or learn something fun instead of something technical/legal.  I learned how to cook for very large groups (hundreds) when younger, and I have an award winning chili recipe that made it into a cookbook! I’ve finally hit upon the almost right recipe…I’m always improving on my recipes!”