MSPL Curriculum

The MS in Patent Law and the Certificate in Patent Prosecution are not accepting or considering applications.

 

The MS in Patent Law provides its students with the legal knowledge necessary to help inventors obtain patents. Our practically-focused curriculum teaches real-world skills and helps students prepare to take the US Patent Office's Patent Bar Examination.

The MS in Patent Law is designed to be completed in one academic year. Learn more about our courses below.

Fall Spring
Patent Prosecution Law 1 (2) Patent Prosecution Law II (2)
Patent Application Drafting (2) Patent Prosecution (3)
Patent Searching (2) Patent Practitioner Ethics (1)
Capstone Project I (3) Capstone Project II (6)
Technical Elective (3) Technical Elective (3)
Technical Elective (3)  
Total Credits: 15 Total Credits: 15

**Numbers in parenthesis indicates semester credit-hours for each course.

The MSPL adheres to the academic code of the Graduate School of the University of Notre Dame.

Fall Semester

Patent Law and Prosecution I (PATL 60101; 1 course, 2 credits):  The Patent Law and Prosecution I & II sequence teaches the legal information required to be successful in the day-to-day practice of patent law. Topics covered in the first semester include: (1) Introduction to Patent Law; (2) 35 U.S.C., 37 C.F.R., and the MPEP; and (3) Precedential Case Law. Watch a short video of Professor Wack's introduction to the course.

  • Introduction to Patent Law: We do not assume that our students have any prior exposure to patent law. This course first introduces the concepts of patentable subject matter, enablement, utility, non-obviousness and legal bars to obtaining a patent; these elements define the theoretical overview of the requirements for an idea to be patentable. This course additionally introduces the MPEP (Manual of Patent Examining Procedure), which is the document which governs patent practice at the USPTO; and which is the only resource available to a student sitting the USPTO’s patent bar examination.
  • The Manual of Patent Examining Procedure (MPEP). 35 U.S.C. (Patent Laws), 37 C.F.R. (Patent Rules): 35 U.S.C. (United States Code, the "patent laws") is the section of the US Code (the laws of the United States) and 37 C.F.R. (Code of Federal Regulations, the "patent rules") define US patent practice. These laws and rules are interpreted by the USPTO in the MPEP. These topics comprise the bulk of the semester’s instruction, and provide in-depth description of the statutes governing US patent practice, and how the USPTO has interpreted them. The content synergizes with the Patent Application Drafting course to introduce the students to the parts of a patent application, and their form and content..
  • Precedential Case Law: Finally, this course addresses precedential case law which has not yet been incorporated into the MPEP but which  nevertheless must be accounted for in the practice of patent law. As time and student interest permits, deep-dives into specific case-law topics are undertaken.

 

Patent Application Drafting (PATL 60201; 1 course, 2 credits): Patent Application Drafting teaches one particular type of legal writing skill necessary in day-to-day practice as a Patent Agent: writing patent applications. In this course, students learn how to draft patent applications using controlled scenarios. For each "invention", students begin by drafting a picture claim to a pre-defined invention, then generate an entire claimset, and then draft a complete, enabling patent disclosure and application. Watch a short video of Professor Milton's introduction to the course.

Patent Searching and Analysis (PATL 60111; 1 course, 2 credits): Patent Searching and Analysis introduces students to the appropriate databases (both patent and technical) for performing a patentability search and teaches options for structuring a patentability search. Students use their Capstone technology to apply the skills they learn, by performing a search to identify relevant publications that impact the patentability of their Capstone technology. Students then analyze the scope of patentability for the Capstone technology in light of the references they have identified. The final deliverable for this class is a patentability report, which defines the landscape of patent- and non-patent literature related to the Capstone technology; and which clearly identifies the patentable and non-patentable features in the Capstone technology.

Patent Searching and Analysis additionally comprises a legal research module. This module teaches students general legal research skills such as finding case law and federal statutes; and general legal writing skills such as analysis and summary. Watch a short video of Professor Kaminecki's introduction to the course.

Capstone Project I (PATL 60301; 1 course, 3 credits): The student utilizes concepts taught in the Patent Law and Prosecution, Patent Application Drafting, and Patent Searching courses to analyze and evaluate an idea from the Office of Technology Transfer in their technical field. In addition, the student drafts a claimset capturing the patentable features of the invention. The final project for the semester is a written summary of the analysis, in the form of a legal corporate deliverable, summarizing the disclosed invention, the related art that the student has identified, potential issues with patenting the technology; and a set of claims capturing the "invention" as the student has defined it. The student defends his/her work in front of the research faculty member whose technology they are investigating, and at least one member of the MSPL faculty.

Science/Engineering Courses (2 courses, 3 credits each): The student, in consultation with MSPL faculty or their Science/Engineering faculty mentor, chooses two science or engineering courses which complement his or her background. Technical elective classes are at the graduate level (60000-level).

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Spring Semester

Patent Law and Prosecution II (PATL 60102; 1 course, 3 credits): This course continues the legal and professionalism training necessary for successful daily practice as a Patent Agent. Topics covered in the second semester include: (1) Global Patent Practice; (2) Patent Contracts; (3) Patent Litigation; (4) After-Disposition Practice.

  • Global Patent Practice: The US Patent Bar examination tests the fundamentals of International Patent Practice. The course introduces the major international patent treaties (the Paris Convention and the Patent Cooperation Treaty) and the concepts required to pass the patent bar. The course also addresses jurisdictional issues and counseling considerations.
  • Patent Contracts: Patent Agents are not allowed to advise clients regarding contractual relationships such as licenses or transfer of patent ownership; they are, however, enabled to determine inventorship and therefore ownership of the patent as claimed. Patent Agents also may participate in the preparation and filing of patent contractual documents under the supervision of a licensed attorney. The course introduces the basic concepts in patent contracts that Patent Agents are most likely to encounter.
  • Patent Litigation: Patent Agents may be called upon use their analytical or technical skills during the litigation of, for example, a patent infringement suit. The basics of litigation are discussed.
  • After-Disposition Practice: Re-examination, Reissue, and practice at the PTAB are all important parts of a Patent Agent’s potential practice, and all require knowledge of intricate rules. Practice in these areas is discussed.

 

Patent Prosecution (60202; 1 course, 3 credits): This course continues to develop students’ patent legal writing skills, and builds on concepts taught in the first semester of the MS in Patent Law curriculum. In this course, students learn concepts related to conducting business with the USPTO. Specific modules include: (1) Patent Prosecution and Correspondence with the USPTO; and (2) Patent Forms and Formalities.

  • Patent Prosecution and Correspondence with the USPTO: The course teaches practical skills utilized in correspondence with the USPTO. Students learn strategies for analyzing and drafting responses to USPTO Office Actions. 
    • Restriction Practice refers to the process whereby an application comprising multiple inventions is subdivided into the individual invention groups; and where individual embodiments of a broader invention are identified for search purposes. The rationale behind the selection of invention groups and patentable species for examination is discussed.
    • Overcoming Rejections refers to the arguments and claim amendments presented in response to an Examiner’s rejection of a claim. Real issued rejections of pending patent applications will be analyzed, and students will draft responses thereto, focusing on claim amendments and strategies for responding to Examiners' rejections. Although not strictly written correspondence with the USPTO, Examiner Interviews are also discussed. The bulk of the course is spent on this section of the curriculum.
  • Patent Forms and Formalities: Students learn about the nuts and bolts of filing papers with the USPTO. Filing requirements for communications with the USPTO are discussed and students prepare documents as if they were to be filed.

Patent Practitioner Ethics (PATL 60112; 1 course, 1 credit): The USPTO requires full candor from all registered patent practitioners to meet certain ethical/legal obligations in their practice at the Patent Bar. This course teaches students about their responsibilities as patent agents. In addition, the course introduces students to dilemmas associated with excessive patenting and utilizing intellectual property in the third world for the common good.

Capstone Project/Patent Application (PATL 60302; 1 courses, 5 credits):  The student develops the seed idea from the first semester capstone course into a technology to be described in a provisional patent application. The student prepares a complete patent application and all supporting documents as if they were to be filed with the USPTO. (See “Theses and Dissertations” and “Examinations” section below for a more complete description of the Capstone Project.) This semester’s portion of the capstone project is co-overseen by an outside mentor who is a practicing patent professional (attorney or agent) in addition to a faculty member from the program. These outside mentors are matched based on technical expertise, and are therefore able to provide feedback to the student regarding current best practices about application drafting strategies and pitfalls both generally and in the student’s specific technical field.


 

Science/Engineering Courses (1 course, 3 credits): A requirement for a third science/engineering course broadens the student’s technical skill set and enhances the student’s résumé.


IP & Entrepreneurship Clinic

The MSPL is excited to provide a second track for select MSPL students in the spring semester. The MSPL has recently been accepted into the USPTO's Pilot Clinic Certification program Law School Clinic Certification Pilot Program, through which the Law School’s IP and Entrepreneurship Clinic (Clinic) operates. Under this new agreement, MSPL students will be allowed to enroll in the Clinic (both classroom and practical portions), and will provide patent services to live clients under the oversight of the Clinic's director. Only MSPL students who already hold advanced degrees in a technical field will be considered for enrollment into the Clinic, for MSPL curricular reasons.

Students selected to participate in the Clinic will enroll in the following spring semester classes:

PATL 60102 - Patent Law and Prosecution II (2 credit hours)

PATL 60202 - Patent Prosecution (3 credit hours)

PATL 60112 – Technology and Ethics (1 credit hour)

PATL 60302 - Capstone Project II (5 credit hours)

IP and Entrepreneurship Clinic - (5 credit hours)

This schedule requires one additional credit hour of coursework compared to a MSPL student not enrolled in the Clinic. Enrollment of MSPL students into the Clinic will be by application, with applications reviewed by both the Director of the MSPL and the Director of the Clinic; and enrollment will be allowed at the sole discretion of the Director of the Clinic. Once approved, MSPL students will register for the Clinc through the Law School registrar. MSPL students may be required to meet additional criteria for enrollment into the Clinic, consistent with requirements for Law School students enrolled in the Clinic.

Learn more about Notre's Dame IP & Entrepreneurship Clinic.
 

Final Capstone Project

The capstone project consists of a patent application and all of the supporting documentation. Overall, the students are required to demonstrate a technical understanding of the topic. Students are also required to interact with the inventor to ensure that they have a solid grasp of the technical content of the application, do extensive literature searching to identify any scientific or patent literature that might be relevant to the patentability of the invention; and to provide a detailed technical analysis of that literature. Each of these aspects is described in more detail below.

Due Diligence: The capstone project captures all of the pre-drafting due diligence that is required of a Patent Agent. In real practice, before a patent application is filed, the patent practitioner must first understand the invention, and then often performs a prior art search to determine whether a similar invention already has been disclosed. As part of the capstone experience, the MS in Patent Law students undertake similar processes. As part of the fall capstone credit, each student is required to meet with the faculty inventor to discuss the invention and the underlying technology. This ensures that the student understands both the technology and the “inventiveness” of the subject matter. The student then writes an approximately 5-page summary of the technical content underlying the invention. This summary is the basis for the patent application’s Background section. Once the student has proved that they understand the underlying technology, the student performs a prior art search to identify any similar inventions, also as part of the fall capstone credit. The student searches, inter alia, the US Patent Office’s applications and patent databases and relevant academic journals. The results of these searches are summarized in a legal memo, such as might be presented to a partner or client. In this memo, the searches are described, the relevant results named, and any conclusions about possible issues for patentability are stated.

Patent Application over the two semesters of the Capstone experience: The student drafts a complete patent application. A patent application is similar in technical scope and content to a scientific or engineering paper that is published in a refereed academic journal. It has a background section in which the current state of the art is described; and a detailed description of the invention, including specific results, figures and materials & methods, just like an academic paper. Additionally, a patent application contains very specific legal language that protects the invention – the claims – and fulfills other legal requirements set forth in the patent laws.

Further, the capstone project requires the student to prepare all of the formalities papers that are required to file the patent application. These include: the forms necessary for filing the application with the Patent Office (which vary by type and content of the application); an Inventor’s Declaration/Oath (in which the inventor declares/swears that s/he is a true inventor of the claimed subject matter and that they believe that the claimed invention is eligible for a patent); an Information Disclosure Statement (providing to the Patent Office any results of the prior art search that might be relevant to the claims); and if appropriate, an Assignment of Rights (if the inventor is not the legal owner of the invention – which is almost always the case when the research leading to the invention was conducted at a R&D company or university). These documents are provided as an appendix to the capstone project.

The entire process of drafting the patent application is overseen by an outside mentor. The outside mentor is a practicing patent attorney or agent, and is matched to the student’s technical background and the subject of the capstone project. The coordination of technical expertise serves to provide the student with an additional opportunity of understanding of any particular legal issues around that technical field.

The patent application/capstone project is defended before a faculty member from the MS in Patent Law program, the research faculty member who contributed the idea, and the student’s outside (practicing patent professional) mentor. The content of the oral examination covers both patent legal subject matter and technical understanding of the invention.

 

Mock Patent Bar Examination

The MS in Patent Law program administers a mock Patent Bar Examination at the end of each spring semester. The mock Patent Bar Examination helps the students benchmark their readiness for the real Patent Bar Examination.

 

Graduation Requirements

To be awarded the MS degree, a student must: complete all MS in Patent Law coursework with a grade of C or above; complete all technical electives with a grade of C or above; have an overall GPA of greater than 2.0; and pass both the oral and written sections of the capstone project and defense.