Patent Prosecution Practice I – 5231
THIS SECTION FOR MSPL STUDENTS ONLY. JD AND LLM STUDENTS MAY ENROLL IN #6231.
Patent Prosecution Practice I is recommended for all students interested in intellectual property and patent law, including students considering practicing in the areas of patent prosecution, litigation, licensing, technology commercialization, and patent portfolio management.
The course focuses on U.S. patent practice and is designed to extensively develop the student’s skills. Throughout the semester each student will complete two projects: (1) formulate and draft patent claims for a number of different inventions in view of prior art, (2) develop strategies for responding to a patent examiner according to rules of the U.S. Patent Office, arguing patentability and allowance of a patent application over cited prior art. 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.
Lectures and discussion topics include:
- Organization and structure of the U.S. Patent Office,
- The U.S. patent process including the entire life cycle of a patent from application preparation and filing through examination and grant,
- Formulating patent claims in view of prior art and potential infringers,
- Architecting patent portfolios including all types of U.S. patent applications, such as provisionals, utilities, continuations and divisionals,
- Examination of patent applications including responding to Office Actions issued by the U.S. Patent Office;
- Inventorship and ownership determination and legal ramifications flowing therefrom, and
- U.S. law and regulations governing patent prosecution practice.
A technical background is not required to take this course.