What’s my motivation

A post from our student blogger Catie

After the patent application has been drafted and filed, the patent agent or attorney is still tasked with the prosecution of that application. This requires responding to Office actions regarding the application, and making arguments against any claim rejections. Basically, the patent practitioner is convincing the examiner that the patent application is complete and worthy of issuance.

In the MSPL, we are taking a course this semester that focuses on filing these responses. The process is extremely detail-oriented, and the document must be at least double or triple-checked to be sure that it meets all the meticulous formatting requirements called for by the USPTO. That’s only half of the battle. The other half is writing a response to rebut the examiner’s rejections. Some of the arguments against rejections may be simply stating and pointing out specific clauses of the patent laws that cause the rejection to be moot. That may sound pretty boring, but in some ways, these are the easiest of the rejections to which a patent practitioner may have to respond.

Other arguments may require the practitioner to argue more subjective matter. A common rejection to receive alleges that two or more earlier patents create the technology of the current application to have been an obvious improvement or combination of elements. In such a case, the practitioner has the option of formulating an argument that no motivation existed to create the invention prior to its conception and patent application filing. This kind of response to a rejection may seem more interesting than simply utilizing the law, but it is much more strategic than it sounds.

Firstly, it’s important to carefully read through the rejection to understand what components or aspects are involved in the examiner’s reasoning for the obviousness rejection. This almost always involves two or more patents or articles that the examiner cited as containing all of the elements in the technology of the current patent application. The patent practitioner must then carefully evaluate the language of the current patent application and the cited sources to determine if the examiner is correct in his or her assertion maintained by the rejection. If the examiner happened to forget an element, or possibly misinterpreted the art of the cited references, then the practitioner should (politely) point out those mistakes and assert that the technology of the current application is therefore not obvious.  It is important for the patent practitioner to formulate arguments against the rejection that are based upon the specific language and components utilized in the examiner’s rejection. This may include arguments against any motivation to combine elements from earlier patents to create the invention at any point prior to its filing.

Generally, when making an argument that no motivation existed to combine elements to create the current invention, the Teaching, Suggestion, Motivation (TSM) standard is used. This is a strategy to argue against the rejection that asserts that prior references did NOT explicitly teach that the particular elements may be combined, suggest that such a combination could be considered, or provide motivation to combine the particular elements  due to the functioning of the separate inventions. Making these arguments calls for plenty of research and focus regarding small aspects of your invention, but it definitely makes for an exciting challenge; especially considering that you get to ‘nerd-out’ on the intricacies of your technology! So, keep on searching for your motivation (or lack thereof)!

The patent process from start to finish

Patent ProcessA post from our student blogger Megan

I get a lot of questions about how the patent process works. Because I think the patent process can seem a little daunting, I thought I’d give you a quick rundown of how it works from start to finish. Please note that this is just a general view of the process and how it works—each patent application is different and therefore the process is unique for each as well. In addition, while you may proceed pro se (without the help of a patent attorney or agent), it is highly recommended that you enlist the guidance of a patent practitioner when seeking patent protection.

Where do you begin when you want a patent? Well, first, you’ll want to know that this is not an extremely fast process. So how long does it take to get a patent? In true lawyer fashion, I have to tell you that it just depends. If you have a complex underlying technology then it could take years. Some dates that you will want to remember are that your application will publish eighteen months from filing and if you file a placeholder application, you will need to replace this with a real application within twelve months. Ok, so you can kind of see where this is going… patent law is complicated so you’ve got to know your dates and prepare accordingly.

Let’s swing back to the original question, though: where do you start when you want to get a patent. You need to figure out if your idea has already been acted on. In other words, you need to do a patentability search to determine if there are other patents, offers for sale, publications, patent applications, or anything else that has already discloses your idea. You will want to do this because if your idea is already within the public domain you will likely be prevented from receiving a patent. Remember, you cannot patent something that isn’t original.

Once you’ve performed a patentability search you will want to draft a patent application. Your application will have to comply with various statutes. For instance, the concept that you reveal in your application will need to be new and non-obvious. You will have to describe how to make and use your technology so a person who works in your technology area will be able to reproduce it. Careful planning and drafting are a must at this stage in the game. It is essential that you understand how to draft an application if you want the process to proceed as smoothly as possible. Drafting a patent application is both an art and a science. Patent agents and attorneys are trained to specialize in this.

If you choose to submit your application to the United State Patent and Trademark Office (USPTO), you will enter a phase called “prosecution.” Remember that this is patent prosecution, not a criminal prosecution—these two things are different. Patent prosecution involves sending your patent application to a person who reviews applications in a specified area of technology at the USPTO. You will likely encounter what are called “rejections” from your examiner. Don’t stress, this is a common occurrence. Patent prosecution involves going back and forth with the examiner until you get the application drafted in a proper form that the examiner accepts.

If the examiner sends you a “notice of allowance,” congratulations, you just snagged a patent on your inventive idea. If your examiner denies you at least two times through rejections, you have the option to appeal this decision. Appeal is an interesting court procedure that I won’t delve into it in this blog, but know that it is an alternative if you are struggling to get a patent grant.

This was a quick look at the patent process. Please note that it is far more complicated in real life. But as the saying goes, it may not be easy but it will be worth it. So, happy patenting!

Can you handle grad school?

A post from our student blogger Catie

What everyone tells you is true: grad school is difficult. Is anyone really surprised by that? I somewhat addressed this topic in a post from last semester, but I would like to talk about it more in-depth, incorporating reflections from my experiences from the current semester. As I have mentioned before, I was a graduating genetics senior this time last year. As recent as it seems, it was only a year ago when I myself had so many questions in my mind about what grad school would be like. Of course it’s going to be difficult: I’m entering graduate school at Notre Dame! My real question was: can I do it? Can I handle the work of graduate school? Will I be any good at this patent law stuff?

Grad school is hard; otherwise, everyone would go! I knew this, and I initially had fears that I wouldn’t be able to keep up, which is quite an ominous fear when you’re paying Notre Dame tuition! Another note of advice that you’re likely hearing is that grad school requires a lot of time management. This is also true. However, you had to master time management in undergrad, too, right? This is not something that is ever going away: the program’s visits to San Francisco and D.C. have indisputably taught us that time management will be a major theme during your career, as well.

To connect these two points of advice: have faith that you CAN survive grad school, as long as you are fully aware that you will be tasked with a new world of time management. Grad school is a whole new world. Throughout the year, during casual conversations about how school is going for me, plenty of people had made comments along the line of “you’re in college”. I have been pretty adamant in gently reminding those individuals that I am in grad school, which is most definitely different from undergrad. I am no longer simply going to school, where I am taking an array of classes; I am training for a career and doing class work that is going to prepare me for that upcoming career!

To put this into perspective: I just recently completed my final presentation for my capstone project. I survived drafting my first complete patent application! Seven months ago, I had no idea how I was going to reach this point! The thought of drafting a complete patent application on my own (with plenty of wise guidance from mentors, of course) was simply not something that I could see myself accomplishing. Here I am now, with my capstone completed, and yet I am still taking one day at a time balancing the work from my patent law classes, a group presentation for my elective, work for my internship, correspondence with potential employers, study materials for the patent bar, as well as my miscellaneous day-to-day tasks. The point that I’m trying to make is that I have already completed what I expected to be an insurmountable task, and yet I’m still trucking along and successfully balancing more than I ever thought I could. This is incredible: someone tell this to Catie from one year ago!

What I really want to get across to any prospective student is that you should not be fearful of being able to handle the work load of the MSPL. As long as you put forth the effort and are willing to learn, you will find your balance and discover yourself keeping up with the work. Grad school is a different world, but the adjustment just takes time to master, just like any other change in life. I mentioned how much I have on my plate right now, and it definitely keeps me busy. However, make no mistake: I still absolutely make time for myself. You have to make time to wind down; it’s how you’re going to draft a patent application without going insane! I allow myself to make time for the run that I wanted to go on, the trip to the Grotto that I told myself that I would make, the weekend trip home to see loved ones, and of course: the night out with classmates to watch some Notre Dame March Madness! It’s all about time management, but also making sure that you are taking breaks to take care of yourself.

Pedal to the Metal

A post from our student blogger Roberto

As you likely know by now students in the MSPL have been working long and hard all year on their individual capstone projects.  These projects are writing patent applications on various technologies for researchers at Notre Dame.  At the conclusion of first semester the students each gave a lengthy presentation to a panel comprised of their inventors, Dr. Deak who is the director of the MSPL, and the representative from the Office of Technology Transfer at Notre Dame who is assigned to their technology.  In this first presentation the students worked to explain and demonstrate their understanding of the technology as well as presenting a preliminary set of claims they had forged to protect this technology.  This semester, students have worked with professional mentors to perfect their claims and round out many of the sections of the patent application document.  This document served as the MSPL thesis and was recently submitted by all the students who intend to graduate this coming May.  After submitting their thesis, students also have to give a second presentation to the same panel.  This time the students present on the work they did this semester and explain the bulk of the patent application they have crafted.  The second presentation wraps up all the work the student has done and allows the Office of Technology Transfer to take the project on from that point.

A few months ago I sat down and looked at my schedule and decided that I was going to take the USPTO patent bar exam at the end of March.  At the time, I wrote off the effect of the compounding thesis requirements on top of studying for the bar exam using the PLI review materials.  A few short days after turning in my thesis and giving my thesis defense I took and passed the patent bar exam.  It was a crazy but extremely rewarding feeling knowing that I had attained my three main academic goals for the semester and that now I could focus on finishing out my year strong and getting ready for my next challenges.  The MSPL program put me in a fantastic position to succeed on exam day and prepared me well for the variety of questions that were asked.  Our work in the MSPL gave me real life experience that was invaluable and made the entire process much easier.  That being said, the MSPL’s focus is not solely on preparing students for the patent bar and therefore it was necessary to fully exploit the wealth of PLI study materials we have access to.  After taking many practice tests I was ready to go and hit the ground running.

Fisker Thunderbolt (top) and Aston Martin One-77 (Bottom) (Photo courtesy of Car and Driver)

Fisker Thunderbolt (top) and Aston Martin One-77 (Bottom) (Photo courtesy of Car and Driver)

Now, for the fun part of this post.  One thing you probably don’t know about me is that I love cars.  When I’m at home it’s hard to find a weekend where I don’t find myself tearing something apart or putting something back together.  For example, over Easter break my father and I replaced the radiator on a car and schemed as to the next parts we were going to buy and install.  This past week there were some major developments in the auto industry that had intellectual property undertones.  First, one of the most acclaimed contemporary automobile designers, Henrik Fisker, has been accused of copying a design of his former employer, Aston Martin.  Fisker, who now is a founding partner and executive chairman of Fisker Automobiles, recently debuted a “design study” named the Thunderbolt which shares a striking resemblance to the infamous Aston Martin One-77.  Initially, Fisker approached Aston Martin about producing the Thunderbolt and received staunch resistance but he decided to continue on his intended path regardless.  Aston has said that after this initial approach, the conversation had left them believing that Fisker would drop the Thunderbolt concept in an effort to avoid any potential issues.  That all changed when Fisker himself showed up at the Amelia Island Concours d’Elegance, which is the premier automobile charity event in the world, in the none other but the Thunderbolt.  The response from Aston was swift and a legal team soon filed a lawsuit against Fisker in California on multiple counts of trademark infringement.  In particular, Aston alleges that the Thunderbolt contains confusingly similar grille and side vent designs compared to its trademarked designs. Most people believe this to be an attempt by the fledgling Fisker to make off with the high class brand and image Aston Martin has worked so hard to establish.

Lincoln Continental Concept (Top) and Bentley Flying Spur (Bottom) (Photo courtesy of Autonews)

Lincoln Continental Concept (Top) and Bentley Flying Spur (Bottom) (Photo courtesy of Autonews)

In a strikingly similar case, Bentley finds itself contemplating potential legal action after the 2016 Lincoln Continental concept was unveiled at the New York auto show.  Much like the Aston-Fisker case, Bentley is upset because Lincoln is attempting to unfairly profit from the brand image Bentley has worked hard to attain.  As you can see from the images, several key aspects of the Bentley are present in the Lincoln and serve to confuse the buyer as to the product they are actually viewing.  By most estimates, the 2016 Lincoln Continental, should it become a production car, would retail in the $60,000 range which is only a fraction of the over $200,000 base price of the 2014 Bentley Flying Spur.  Perhaps the most fascinating aspect of this case is the reaction of Bentley head designer Luc Donckerwolke (who is also the man responsible for the stunning Lamborghini Murciélago) who said; “Somebody asked me if I wanted to sue. I said, ‘No! I don’t want to sue. I don’t care about that. My issue is about respect for the car-design process.’ If we start copying each other, then this is a negative for the design culture.”  In today’s global rip-off culture it is refreshing to hear such a prominent figure speaking out against acts which are all too often considered common place.  It will be interesting to see how Bentley proceeds and if they take notes during the pending legal case between Aston Martin and Fisker.  It is often said that imitation is the sincerest form of flattery but I’d be willing to bet that recent events have left Bentley and Aston Martin less than impressed.

What’s a disclosure?

A post from our student blogger Catie

Maybe you have this fantastic idea in your head for a new invention, and you already did a little digging around on your own to see if your idea already exists. You scoured the internet and maybe did your own Google Patent search. From what you can tell, no one else has ever patented or sold your invention! You take your napkin sketches to a company that owns a bunch of patents in the field of your invention. You show them your sketches, explain the technology behind your invention, and give a great sales pitch on why this invention would benefit the public. Unfortunately, they look fairly unimpressed, and they quite distractedly tell you that they’ll get back to you when they can. Months go by, and you don’t hear back from them. You may have been putting in hours to reduce your invention to practice, meaning you work to create a real product out of your idea. You tell yourself that you’ll try again, but then you get distracted by school or work. A few years later, you see a commercial for your product, produced by the company to whom you originally showed your sketches. You go searching again and find that they patented YOUR idea! What can you do??

Unfortunately, there may not be anything that you can do about it. Situations like this one and ones that are more nuanced happen all the time, and this is why your patent agent or attorney may pester you with tons of questions regarding any “disclosure” you may have made. A disclosure is basically any description or demonstration of your idea to be patented that is discoverable to the public before you filed any patent application. Disclosure can be an elusive topic, as it is not always as blatant as running out to show your napkin drawings or lab data to a third party. Sometimes, it can be as simple as having a phone conversation about the technology when someone nearby overheard it, or presenting your data in the form of an oral presentation or poster to colleagues when a guest happened to stop by and overhear your idea. Public disclosure is not always a cut-and-dry event, which is all the more reason why the inventor should guard his or her idea carefully to prevent others from knowing about the technology until a patent application is filed.

The scenario described previously is a loss for the true first inventor of the technology because there is a ‘First Inventor to File’ (FITF) system in place. This means that whoever files a patent application on a certain invention first and can show that he or she has reasonable mastery over the technology of the invention will be granted the exclusive rights of a patent. In this case, the company definitely stole your invention, but they filed an application first and likely harnessed an understanding of how to make the invention function correctly. This is not to say that the FITF system is bad; it is just in the best interest of inventors to take certain precautions to protect their IP.

There are a few scenarios where you could have prevented this from happening. Firstly, it is important to keep thorough notes over your idea and always date them. That way, you possess proof that you had ownership of the idea first. Secondly, as suggested previously, avoid disclosing your technology as much as you can. No one can find out about your invention and steal it if you never tell anyone about it! Although, if you must make a disclosure, you may want to consider filing a provisional (similar to a placeholder) application or implementing a confidentiality agreement before disclosing. In this way, you are protecting your IP and claiming it as your own before others can experiment with it for themselves. Even if you don’t take this route, you can still claim rights to your idea as long as you file a provisional or non-provisional (actual patent application) within one year of your disclosure date. However, the clock will be ticking and you can never be sure who is trying to patent the same idea. Therefore: go forth, keep inventing, and don’t tell anyone about it until you have a provisional!

Patent trolls

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

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

A post from our student blogger Roberto

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

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

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

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

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

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

The MSPL takes on DC

A post from our student blogger Catie

MSPL students pose for a picture in front of the White House before going in for a tour

MSPL students pose for a picture in front of the White House before going in for a tour

To continue our whirlwind of a spring semester, a small group of MSPL students spent our spring break in D.C., exactly one month after our excursion to San Francisco. I know that it’s hard to believe that a trip anywhere could live up to a visit to sunny California, but D.C. was absolutely amazing! We were lucky enough to experience beautiful weather in the nation’s capital, as we mostly took the metro and traveled on foot to explore the area. The experience was four days packed with law firm and professional visits, informative and fun site seeing, and sampling of some of the area’s unique restaurants!

Similar to our agenda in California, we had the opportunity to visit a few law firms and D.C. area organizations that each houses at least a small cohort of IP professionals. With each visit, the MSPL’ers held candid conversations with these patent agents and attorneys to gain a solid understanding of what a career in patent law is like. We definitely learned something new at each location, and it was really awesome to be exposed to so many new concepts of intellectual property in such a short amount of time!

It was also fascinating to observe the personality dynamics of each firm or organization. A point that has frequently been reiterated to the MSPL is that as we begin our job search, it is important that we are not only determining where we would like to work, but also in what kind of environment we would like to work. It has been described that interviewing for a job is much like dating: it is critical to assess whether or not you like the given set of employers and would enjoy working with them just as much as they are assessing you in the same way. With such a small group of MSPL students, we also had the opportunity to speak with the IP professionals more casually and talk more about ourselves and our backstories. We made really great connections, and this helped to break down the serious and stiff demeanor that the East Coast was made out to have (prior to the trip, of course). This enhanced our experience all the more, to the point where the MSPL’ers had a really difficult time pinpointing our favorite visit by the end of the trip!

We also took the time to do some site-seeing. On the first day, we visited the USPTO and saw an examiner’s office up close as well as visited the patent drop-off window! Between professional visits on the first day, we stopped by the National Archives, where we saw the Magna Carta, the U.S. Constitution (including the clause of Article One that authorizes patent law!), and a few of the earliest granted U.S. patents. The next day, we had the privilege of touring the White House, the Capitol Building, and the Supreme Court, where we had the exciting opportunity to actually go inside the courtroom! On one stormy, foggy night, we took the opportunity to make the trek around the Lincoln Memorial, the National World War II Memorial, the Washington Monument, and then circled back around to walk past the White House before heading back to the hotel. On top of the magnificent site-seeing that we did, we also ate at some fantastic D.C. eateries, where we dined on specialty pizza and fresh seafood, and even had the experience of eating at the Old Ebbitt Grill!

My description of the trip is clearly incomplete without mentioning the wonderful family-bonding that we had on the trip! Although we only had a small sub-set of the MSPL in attendance, we still had tons of fun spending time together and exploring the area. From terrible direction-giving to cramming inside of taxis together, we had a great time and many laughs along the way. We even topped off our trip by passing the time on the drive home with an in-depth exploration of music and sharing of all of our favorite genres! If it isn’t already obvious, it was a truly fantastic trip. It was a spring break well spent, and I am incredibly happy that I made the decision to go!

The intellectual property story of Legos

Figure 1:  Comparison of Mega Bloks (Top) and Legos (Bottom). (Courtesy of Wikipedia)

Figure 1: Comparison of Mega Bloks (Top) and Legos (Bottom). (Courtesy of Wikipedia)

A post from our student blogger Roberto

As a kid, I could usually be found playing ball in the yard with my brother until the sun went down.  When we were forced to be inside, either by the lack of sunlight or good weather, my brother and I would always find something fun to do.  Many times I would find myself with screwdriver and hammer in hand, plotting how to take something apart in order to figure out how it worked.  As you may be able to guess, this led to the absolute destruction of many valuable items, including a watch which was my mother’s wedding gift to my father.  Shockingly, my parents were in desperate need of a new way for me to get my early engineering fix and began investing in Legos.  Like any aspiring engineer, I spent days on end constructing the coolest hydrogen-powered intergalactic star destroyers and subterranean exploratory vehicles.  Pretty soon I was bringing my creations to family gatherings showing them off like blue ribbon cattle at the state fair.  Before long my amazing family contributed to the cause by routinely giving me Legos on birthdays and at Christmases.  I remember one year getting a set of Mega Bloks and initially not even realizing the difference.  For those who do not know, Mega Bloks are a direct competitor to Lego’s interlocking brick platform and often times can even be used interchangeably with Legos.  After using these new Mega Bloks with my old Legos I soon realized the truth; the Mega Bloks were simply not as nice as the Legos I had come to know and love.  These Mega Bloks looked and worked like Legos but were not made to the same quality.  Rather than precisely locking together like Legos, Mega Bloks were flimsy and never really fit well together often leading to weak structures that fell apart.  In contrast, my Lego creations were so rigid that they needed to be pried apart and often doubled as formidable defense measures against an unexpected onslaught by my brother.

So why am I spending all this time talking about Legos?  Well, while reminiscing about my childhood over our recent spring break I remembered my love for the little plastic blocks.  After I thought about them for a while I asked myself two things.  First, where the heck were they, I needed to find them and relive all these awesome memories.  And second, I wondered what kind of crazy intellectual property issues Legos ran into.  After doing some research I found out that the Danish company started selling toys in 1932 and introduced the first of their famous bricks in 1958.  As you may be able to guess, many of Lego’s patents have since expired with the last major one expiring in 1978.

Mega Bloks first entered direct competition with Legos in 1991 and has been involved in about a dozen lawsuits with Lego since then, many of which are still active.  The natural question now is, how did Mega Bloks’ activity after Lego’s patent expirations result in a lawsuit?  Well, after running out of patent protection Lego’s savvy legal team turned to copyright and trademark protection.  In particular, Lego has tried to protect the visual appearance of its standard brick with eight studs through trademark protection.  In 2005, Lego sued Mega Bloks for trademark violation in Canada and lost and after that, Lego brought a similar suit against Mega Bloks in Europe and lost again.  As it stands right now, Lego is currently grasping at straws to protect its intellectual property and facing the possibility of little real protection.

Figure 2:  Image of "Lego Friends" Comparison (Courtesy of Cato).

Figure 2: Image of “Lego Friends” Comparison (Courtesy of Cato).

While many of the cases surrounding Lego’s trademark of a block with studs have been settled Lego is now going after competitors for making products similar to their new “Lego Friends” products.  Lego has recently filed a complaint to the U.S. International Trade Commission (ITC) against several companies to bar importation of several products similar to their “Lego Friends” products on the basis of copyright infringement.  The ITC’s intellectual property powers originate from their responsibility to protect domestic industries from “unfair competition”.  The key issue here is that Lego is a Danish company which manufactures its products in Europe and Mexico.  This may disqualify them from standing as a “domestic industry” and therefore they may not subject to the ITC’s protection.

What presents an even more interesting situation for Lego is the advent of 3D-printing technology.  As you may know, 3D-printers are becoming less expensive and are beginning to offer more capabilities.  In the coming years as 3D-printers become common place it will be impossible for Lego to prevent others from printing their own bricks.  In fact, a professor at Carnegie Mellon University recently created an online library of pieces which can be printed by anyone with a 3D-printer.  It is not out of the realm of possibility that 3D printers will dramatically impact sales of products like Legos which are largely uniform and easy to print.  As the cost of 3D-printers and supplies continue to decrease, at what point will Legos become simply too costly?  These issues are surely being considered by the company and it will be exciting to see how they adapt.  Before long Legos may no longer be bought at the store, but downloaded online and printed at your desk.

Getting down to business

Enlightened Diagnostics™ (EnDx™) from left to right: Gaylene Anderson, advisor; Colin O’Toole, MA ’15; Scott Manwaring, MBA ’15; Chris Cali, MS ’15; Megan Usovsky, MS ’15; and Victoria Zellmer, PhD ’17

Enlightened Diagnostics™ (EnDx™) from left to right: Gaylene Anderson, advisor; Colin O’Toole, MA ’15; Scott Manwaring, MBA ’15; Chris Cali, MS ’15; Megan Usovsky, MS ’15; and Victoria Zellmer, PhD ’17

A post from our student blogger Megan

When we think about patents we normally don’t think about business. In reality, patents go hand-in-hand with business. Why do people seek patent protection in the first place? Ultimately, patents place a monopoly on a device, machine, manufacture, or method, and insure that others do not make or use the patented item for a specified period of time. Patenting, as you can see, means the difference between having the ability to create a business based around specified items or not.

At Notre Dame I have had the distinct honor of being part of a business team that competes at competitions around the country. This experience has been incredible to say the least. My capstone project for the MSPL has been intricately woven into a business venture. For the past eight months, Chris Cali, ESTEEM masters 2015 candidate; Victoria Zellmer, PhD in biochemistry 2017 candidate; Scott Manwaring, MBA 2015 candidate; Colin O’Toole, Masters of Accounting 2015 candidate, and myself, have met outside school hours to craft a business plan and presentation to sell our inventors’ technology to potential investors. The five of us have learned that building a business from scratch takes a lot of time and effort: sweat equity needs to be poured into creating a business formula that will work, as well as a healthy dose of personal time and attention.

When we first met on a balmy sunny day in August, our business team was all smiles; we had no idea the commitment we were about to engage. With the help of our steadfast business team advisor, Gaylene Anderson, we started to meet at least once every week. The process was slow at first but as we started to decipher the makeup of our technology and how it worked, we were able to begin drafting a rough copy of our business plan over first semester break. The original plan was the culmination of each team member’s contribution: our technology entrepreneur drafted the majority of the business plan, our biochemist added her expertise on the science, our engineer/MBA added his knowledge of the technology as applied to business, the accountant added his numbers throughout spreadsheets, and I added sections devoted to our intellectual property. We entered several competitions ranging from the McCloskey business plan competition here at Notre Dame, to national competitions in Texas and California.

Our first competition took place at the University of Louisville in Kentucky at the Cardinal Challenge on Valentine’s Day. We didn’t know what to expect but we looked dapper in our company color—royal blue—which also paid deference to the University of Notre Dame. With some nerves and a little trepidation, we made it through a fifteen minute presentation. There were four judges that provided feedback after we presented. Some of the feedback was harsh—since we didn’t know what to expect we were thrown off by some of the criticism. We left the first round with some worry that we would not make the final round; however, we also left with a huge sense of accomplishment.

The top four teams were announced during lunch and we were called last. We made it, though! All the hard work had gotten us to at least a spot in the top four. We practiced for another couple hours and then it was show time again. We pitched our idea to a second set of tough judges as well as a larger audience.

I can still remember the feeling I had when the third and fourth runner-ups were announced: complete and utter happiness! Our company name was called for second-place. This was a respectable showing, but the entire team agreed that we were hooked on the spirit of the competition, our technology, and eventually, we set our minds to win it all going forward to other competitions.

Business is integrally tied to patents, and quite possibly to everything we do in life. As the old saying goes, “nothing in life is free.” This means you can capitalize on almost everything out there. But business is more than just making money. It is about selling something that is going to help someone. Our technology is an imaging platform that enhances cancer diagnostics. And I get to be part of this—simply amazing. Now, let’s get down to business, and I’ll update you on our progress as we compete for first place at further business competitions.

Trademark tactics

The WalletHub logo is being opposed by Major League Baseball on behalf of the Washington Nationals and Chicago Cubs. (Courtesy of Evolution Finance) (All Courtesy of Washington Post)

The WalletHub logo is being opposed by Major League Baseball on behalf of the Washington Nationals and Chicago Cubs. (Courtesy of Evolution Finance) (All Courtesy of Washington Post)

A post from our student blogger Roberto

When many hear the words “intellectual property” they think only of patents.  In fact, there are many other forms of protection that are available depending on the subject matter.  For example, a trademark can be filed to protect any word, name, symbol, or design, or any combination of the proceeding, to be used in commerce.  This identifies and distinguishes the goods of one from the goods of another and serves as indication of the source of goods.  Not surprisingly, most of the work of patent agents relates to patents.  However, it is important to understand the other types of protect that exists and how they may fit in with your client’s needs.

For me, it has always been easiest to learn through examples.  Better still, it is more fun to learn through examples that peak my interest.  As you will likely find out in the coming months (through subsequent posts) I am an avid baseball fan and even play on a team back in Milwaukee.  With spring training starting just a few days ago, and a torturous ending to the Packers’ season, I admittedly have a bad case of baseball fever.  Out of the blue, I decided to do an online search for “baseball intellectual property”.  Oddly enough, there were a few news outlets covering a trademark dispute between the Chicago Cubs (Booooo!!), the Washington Nationals, and a small Washington D.C. startup called Evolution Finance.  Evolution Finance uses the trademark to represent WalletHub, a Web site they run where consumers can compare credit cards and find personal finance advice.  The dispute is over Evolution’s application for a trademark, the white W on the green background, which Major League Baseball (MLB) is opposing because of the trademarks owned by their clubs, the Cubs and Nationals.  While I have watched baseball my entire life, well since I can remember, I have watched baseball.  One of my first memories was hitting baseballs off a tee in my backyard and I can’t tell you how many summer hours I have put in on the diamond.  Even with my knowledge of baseball, I had absolutely no idea what the Cubs’ trademark was from.  While I had never seen the Washington trademark because it was from their early Senators years (1912-1927), I was shocked to hear that the Cubs trademark had been used at least 38 times each season since the 1940’s.  In fact, the Cubs trademark is actually depicted on a flag that is hoisted at their home stadium, Wrigley Field, after each home victory.  After learning this, it made sense to me why I had not seen the flag before.

MLB is arguing that consumers may be confused by the Evolution Finance trademark and mistakenly associate it with baseball or believe that it is endorsed or partnered with MLB.  Conversely, Evolution Finance is arguing that their uses are substantially different than those of MLB and that the uber-powerful baseball conglomerate is attempting to hijack the letter W and all its potential uses.  Currently the two sides are awaiting a trial before the Trademark Trial and Appeals Board which will decide the fate of Evolution Finance’s trademark.

In a follow up to my last post, it looks like football player has followed in Marshawn Lynch’s footsteps and filed their own trademark application.  Jameis Winston, the highly touted and potential first overall selection in this year’s draft, has filed a trademark application on his nickname “Famous Jameis”.  In addition to the contract he will sign, last year’s number one pick Jadeveon Clowney signed for $23M guaranteed, Winston will look to cash in on branding much like Lynch aims to do.  The trend of sports players seeking trademark protection for nicknames or catch phrases definitely seems to be heating up.  In recent years Johnny Manziel, Roberto Griffin III, Jared Allen, Darrelle Revis and former players John Elway, Bart Scott, Michael Strahan, and Terrell Owens all have filed trademarks.  Given the cash cow that sports marketing is, it is not surprising that athletes are looking to capitalize.