LAW6232

LAW 6232 - Patent Prosecution Practice II (3 Cr.)

Law School (10806) TLAW - Law School

LAW 6232 - Patent Prosecution Practice II (3 Cr.)

Course description

Patent Prosecution Practice II is recommended for all students interested in intellectual property and, in particular, students interested in advancing their skills and understanding of patent law and practice.

Throughout the semester each student will complete three practical and diverse assignments designed to develop the student's skills. Each student will be paired with a senior practicing attorney who will act as a mentor, including reviewing drafts and providing candid feedback to the student.

Specifically, in this class, each student will: (1) prepare a complete U.S. Patent Application based on a real invention, (2) write an appeal brief according to rules of the U.S. Patent Trial and Appeal Board, arguing patentability and reversal of the patent examiner in view of an examination history by the U.S. Patent Office, and (3) provide clearance counseling to a client about to launch a new product, including reviewing issued U.S. patents and developing a full non-infringement / invalidity opinion for the client. The course grade is primarily based on these three projects in lieu of a final exam.

Lectures and discussion topics throughout the semester include:
- skills and strategies for writing patent applications,
- appeal practice including brief writing before the
Patent Trial and Appeals Board (PTAB) at the U.S.
Patent Office,
- clearance analysis including invalidity and non-
infringement counseling and opinions,
- foreign practice including national filings in foreign
countries and international filings using the Patent
Cooperation Treaty (PCT), including leveraging patent
prosecution highways for accelerated examination,
- eligible subject matter issues including recent case
law and claim drafting tips,
- accelerated examination procedures within the U.S.
Patent and Trademark Office,
- legal and practical considerations of infringement
counseling including formulating invalidity and non-
infringement opinions,
- post grant review and other mechanisms for challenging
issued patents before the U.S. Patent and Trademark
Office,
- patent prosecution related considerations that arise
in relation to participation in industry standards
organizations,
- patent prosecution related considerations that arise
in the context of universities and technology
licensing organizations, and
- design patents.

Minimum credits

3

Maximum credits

3

Is this course repeatable?

No

Grading basis

A-F - A-F Grade Basis

Lecture

Requirements

009355

Credit will not be granted if credit has been received for:

02178

Fulfills the writing intensive requirement?

No

Typically offered term(s)

Every Spring