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!”

We are family

Members of the MSPL at Wine and Canvas for a fun holiday party!

Members of the MSPL at Wine and Canvas for a fun holiday party!

A post from our student blogger Megan

The European Patent Office (EPO) defines a patent family as “a set of either patent applications or publications taken in multiple countries to protect a single invention by a common inventor(s) and then patented in more than one country.  A first application is made in one country – the priority – and is then extended to other offices.”  This simply means that you can apply for a patent on one invention in one country and receive patents for the same invention in many countries.  You can research patent families and tracespecific publications to the original patent application document.  All the patent documents are related, hence the name “family.”  The Master of Science in Patent Law program is a lot like one of these patent families.

Each student in the program fulfills a certain niche.  There are four doctoral degree students, two doctorates of law, and each MSPL member has an undergraduate degree in either the hard sciences or engineering.  While we are all different, we also share quite a bit in common.  We struggled to write claims during the first semester.  We laughed at each other’s outlandish comments in class.  We shared our worries and our frustrations.  We became a family over the first semester of the program.

The most important thing we each shared over the last four months is perhaps our friendships.  Through our common experience of going through the program together we bonded in a very unique way.  Just like your real family, sometimes you get impatient with your family members and sometimes you even get a little annoyed with them.  But in the end, you are family and you stick together.  Sure, we’ve gotten to do fun activities together like go to a baseball game and have a painting party.  But it is the day to day experience of becoming patent practitioners that has strengthened our bond and brought us together.  We are fortunate to have each other and have made a point to celebrate each MSPL member’s birthday outside the classroom.  We are a family—a patent family.

I was quoted in an article in Minnesota Lawyer last month!

… of course it was an article about a new competitor. But, anyway, I got a nod.

 

Home / Minnesota Legal News / Legal News / U law school launches patent masters

 

 

U law school launches patent masters

By: Elizabeth Ahlin April 4, 2014 0

The University of Minnesota Law School is launching a new degree program geared toward training patent agents and portfolio managers.

The new Master of Science in Patent Law, which will have its inaugural class this fall, is geared toward science and engineering students and working scientists and engineers. The nine-month program will prepare students both to prosecute patents and become portfolio managers.

“That’s part of what makes our program unique, that broad focus,” said law school associate dean Sharon Reich Paulsen. “When students go through our program they’ll certainly want to take the patent bar, they’ll certainly be qualified to become patent agents, but they’ll also have a much broader spectrum of knowledge as a result of the curriculum that we’re building here.”

The curriculum is designed to appeal to graduating students, mid-career professionals, and inventors who want to get a better handle on how to manage the business side of their endeavors. The Twin Cities is uniquely suited to foster such a program, Paulsen said.

“The Twin Cities is a hotbed of innovation and outside of Silicon Valley might be one of the leading centers,” said Paulsen. “Because of that the Twin Cities has attracted and developed some really high-powered patent attorneys and patent practice here.”

Plans to start small

One of those attorneys was Chris Frank, who has worked both as a patent attorney and a portfolio manager for Medtronic. With that breadth of experience, Paulsen said, Frank was a natural choice to be the program director for the new degree.

Frank has an easy answer for those who wonder why such a program is needed. He pulls out a graph which shows the number of new U.S. patent applications skyrocketing — from 300,000 to 550,000 annually — since 2000. During that same time, the number of new patent bar members has remained flat.

“With this increase in patent filings, there’s also a need for people that can have a more sophisticated approach to patent law too. It brings in the need for portfolio management, creating revenues through licensing,” Frank said. “How do we enforce these patents? How do we manage thousands of patents that we have now for our products? Not only do we need more people filing, but we need more people who can do the business side of what’s involved with owning all of these patents.”

In its inaugural year, Paulsen and Frank are hoping for a small class of about six or seven students. Initially, they are targeting undergraduate science and engineering students who are interested in patent prosecution and portfolio management.

The school plans to offer scholarships of between $15,000 and $20,000 to the members of its first class. Tuition will be comparable to law school tuition, which is currently about $40,000 for residents and $47,000 for nonresidents. Eventually, Paulsen said, they will develop a part-time program so they can more effectively market the degree to working scientists and engineers. Even further down the line, they hope to offer it as LL.M. degree in patent law to foreign students.

The fall semester curriculum will include both JD and master courses, including patent law and patent prosecution. Students will also take portfolio management, a patent-specific writing course, and will have the option of taking an elective, which could be from the law school or be a technical science or engineering elective course.

Patent agents in demand

Robin Wright, associate dean of the biological sciences, said the new program will be a boon for the science school as well. Working with patents offers science students a potentially lucrative outlet for their technical knowledge and expertise. And, because so many science students enter the University of Minnesota at the sophomore level in terms of credits, this could offer those students the opportunity to earn a bachelor’s and a master’s degree in four years in a field that is in great demand.

“We love the collaborative attitude the law school is bringing to the table,” Wright said. “We think these are the kind of win-win situations that will be real wins for our students and ultimately real wins for the law school as well, because they’re able to attract a whole new genre of students into their programs.”

The program will include a capstone course in portfolio management, which will help bring the education offered beyond just patent agent training. Students will look at technology that has been tried in the marketplace, Frank said, and examine the way it succeeded or failed.

“You can reverse engineer why, what’s working, what’s not working, and identify the opportunities,” Frank said.

A few other schools — Northwestern University, University of Notre Dame, Arizona State University — have similar degree programs. The program at the University of Notre Dame is in its second year. The first class had seven students; the second class had six. Almost all of the members of the first class were hired as patent agents at law firms, said program director Karen Deak. The job market for patent agents is strong, Deak said.

“When I’ve talked with law firms, they want more,” Deak said. “They want patent agents. You can pay them a little bit less, clients like it. From a firm economics standpoint, an agent is a little better moneymaker.”

The program at Notre Dame is different from the University of Minnesota in that it is run through the science department, not through the law school. But Deak said it offers the legal background required to be a successful patent agent.

Non-JD programs on rise

Northwestern University will launch its inaugural class of Master of Science in Law participants this fall. The program offers a concentration in intellectual property and patent design.

“Some people need really focused specific types of legal training as opposed to, say, a three-year JD,” said Kirston Fortune, assistant dean for marketing and communications at the law school. “This has given rise to a lot of masters programs, and ours is specifically tailored to people with science, engineering and medical backgrounds.”

According to the American Bar Association, which approves but does not accredit non-JD programs at ABA-approved law schools, enrollment in non-JD programs has increased from 7,291 in 2000 to 11,139 in 2013. Those numbers might not include programs like Notre Dame’s which would not need ABA approval since it is run as part of the science school, not the law school.

Paulsen said the new program is not an attempt to make money by the University of Minnesota.

“Yes, this will grow over time and will attract students and will bring tuition revenue,” Paulsen said. “Is that our sole motivation for doing this? No, absolutely not.”

Paulsen said she believes the program will add value to the law school and its students, as well as to the state of Minnesota itself.  Rachel Clark Hughey, a partner in intellectual property litigation at Merchant & Gould, agreed. Hughey said she anticipates area law firms and corporations to have a strong interest in the program’s graduates, who will have a more holistic understanding of patent concerns.

“Minneapolis and St. Paul are home to a lot of sophisticated companies,” Hughey said. “There is room for a program like this in the region.”

 

Graduation 2014!

We just finished up Graduation Weekend 2014. I am so happy to celebrate with all of our new graduates!

On Friday night, we hosted students and their families at an intimate dinner at a local restaurant. I got to meet parents, siblings, and other loved ones in a celebration of what our students have accomplished, and the great things which they are heading to next.

Then Saturday morning was the Graduate School ceremony. Nobody tripped, and everyone received their diploma. Saturday afternoon was the commencement Mass, and we had a beautiful homily from Fr. Jenkins. The whole-University Graduation Ceremony was on Sunday, and the weather was, against all odds, beautiful!

A couple of our students (Elaine and Marcy) made their way into the official ND graduation video. See them here, they’re at 0:40. http://bit.ly/NDGradWrapup

It’s been a great year and I wish the best for all of our students! Congratulations!!!

Rose, Joseph and Marcy

Rose, Joseph and Marcy

April 15 is the application deadline for scholarship consideration

Just a quick reminder that, if the MSPL is an option for you next year, April 15 is an important deadline.

Completed applications received before or on April 15 will be considered for all of the MSPL’s scholarships. We have two $5000 blogging scholarships (so you could be writing these awesome blog posts next year instead of me!); and two $5000 scholarships for engineers (financed by ND alum Matt Connors).

Click here to start your application!

And please feel free to contact Program Coordinator Cathi Kennedy (ckenned7@nd.edu) or Program Director Karen Deak (kdeak@nd.edu) with any questions.

Spring Break 2014

The MSPL hit Washington, DC, this year for our Spring Break trip. Rose, Elaine, Josh, Joseph and David came along, and we had a very busy week. We spent a whole day at the USPTO (and saw an Inter Partes Review), visited quite a few law firms to hear about their patent prosecution practices, went to BIO to learn about careers in science advocacy for IP specialists, and finished it off at the NIH / NIAID, where we talked about tech transfer.

One of the highlights of the week was a visit to our state Senator’s office, where we actually got to meet Senator Joe Donnelly. He told us about his own experience with the patent system — he received a letter from a patentee alleging infringement, and he had to pay them some money so they wouldn’t sue him.

If you don’t follow our Twitter or Facebook, it’s worth a glance to see what fun we had this week — the students took over the feed and thoroughly enjoyed keeping everyone up to date on their shenanigans.

Back: Elaine, Sen. Donnelly, Joseph, David Front: Karen, Rose, Josh

Back: Elaine, Sen. Donnelly, Joseph, David
Front: Karen, Rose, Josh

 

Volunteering at the Food Bank

Last week, two MSPL students and Cathi and I spent a couple of hours volunteering at the Northern Indiana food bank. That place is MASSIVE — I had no idea how big it is, or how many people and agencies it services. It’s two floors of a gigantic warehouse, all dedicated to storing and distributing food to those in need.

Our job was to prepare meals for students to take home over the weekend so they don’t go hungry. As you can see in the picture below, the Food Bank has a great system set up — you go down one side, where Rose and Travis are, putting one of each item into a bag, and then tie the bag up and drop it in the bin at the end. Repeat on the other side (demonstrated by Cathi).

A genius two-sided assembly system

A genius two-sided assembly system

Snow day!

School has been cancelled yesterday afternoon and today — we’re having an unusually cold and snowy winter.

Given that class was cancelled yesterday, but also taking into consideration that our professor for Patent Prosecution had driven all the way from Cleveland to teach, we held a virtual class meeting using Google hangouts. It was quite successful, actually! Cindy (the prof) did a great job, and I think it was a good exercise in conference-call and video-conference etiquette for our students. They learned that they need to be more responsive and demonstrative than they would normally be in class, since the prof is not able to read their comprehension as clearly as if in-person.

And, possibly the biggest upside of holding the class virtually is that we don’t have to hassle with scheduling a makeup!