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.


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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!



Other kinds of Intellectual Property?!

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

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

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

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

Patent Prosecution Part III

Part II:

Read part I here.

Read part II here. 

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

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

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

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

Patent Prosecution part II

Part II:

Read part I here.

After a patent application has been filed, a person at the US Patent Office has to review the application and decide whether the application deserves to become a patent. The person who does this review is called a Patent Examiner.

The Examiner looks to make sure the application fulfills all of the requirements that the US Code sets out for a patent (mainly, 35 USC 101, 102, 103 and 112). The Examiner will reject any application that does not fulfill these requirements — ie, s/he won’t allow the application to become a patent. As I mentioned in a previous post, it’s not unusual for the Examiner to make a rejection the first time s/he looks at an application.

Once an applicant gets a rejection, s/he gets to rebut it. In other words, the applicant gets to say why the Examiner is wrong. This process of rejection and rebuttal is known as “Patent Prosecution”. Sometimes people hear prosecution and think of going to court — but that’s not the case here at all! Patent Prosecution refers to the negotiation between the applicant and the Patent Office about whether a patent application should be allowed as a patent.

In future posts: What does patent prosecution look like from the inventor’s perspective? What do MSPL students learn about patent prosecution?