The MS in Patent Law and the Certificate in Patent Prosecution are not accepting or considering applications.
The Certificate’s curriculum teaches the fundamentals of patent law as well as how a patent agent applies that information.
The Certificate may be completed in one academic year, or may be spread out over several years as long as all classes are completed within three years of taking the first class. Learn more about our courses below.
|Course||Faculty Member||Credit Hours|
|Patent Law and Prosecution I||Michael Wack||2|
|Patent Application Drafting||Harold Milton, Jr.||2|
|Patent Searching||Ronald Kaminecki||2|
|PatentLaw and Prosecution II||Thomas Mauch||2|
|Patent Prosecution||Karen Deak and Colleen Raphael||3|
|Patent Practitioner Ethics||Thomas McBride||1|
The Certificate in Patent Prosecution adheres to the Hoyne’s Code of the Law School of the University of Notre Dame.
Patent Law and Prosecution I (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.
- 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 (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.
Patent Searching and Analysis (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.
Patent Law and Prosecution II (1 course, 2 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 (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 (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.