Course Details

Patent Preparation & Prosecution Workshop II: Advanced Topics

The Patent Preparation II: Advanced Topics course will build on the Patent Preparation and Prosecution Workshop of Spring 1, and is also focused practically on preparing and obtaining issued patents having both broad coverage and sufficient detail for contingencies which may arise at the patent office, in licensing, and in litigation. Students will participate, in small groups of 2 – 3 students, in conducting invention disclosure sessions with university scientists and engineers, generally within the students’ technical or scientific fields. Using information from the invention disclosure session and other materials provided by the inventors, each student will then apply the core applicable laws and regulations in preparing an actual patent application. The course will focus on how to “engineer” a patent application within the legal “structural” constraints, including patent claim drafting, patent claim mechanics and legal interpretation, and preparation of a patent specification (written description, enablement, best mode). Additional topics which will be covered include processor-based (e.g., computer-based, medical devices, mobile devices, etc.), software and biotechnology inventions (Section 101, Alice, Mayo and their progeny); analysis of office actions with rejections and objections; actual amendments and responses to office actions from the USPTO; doctrine of equivalents and prosecution history estoppel; claim construction, claim charts and infringement analysis; and additional foreign requirements for international protection. We will review new approaches for preparing software and biotechnology patents in light of US patent office guidelines and recent precedent. Optionally, we will also review topics suggested by students for greater analysis and discussion from the Spring 1 Patent Preparation and Prosecution Workshop. Drafts of sections (claims, specification) of each student’s patent application will be submitted at regular intervals, with opportunities to meet with and receive feedback from the professor and revise the application accordingly. Regular and much shorter assignments will also include office action responses; and claim drafting and claim amendments from inventions provided in class, which will be submitted by each student, reviewed in class, and reviewed individually. Although not required and at the student’s option, students can also meet regularly in small groups and individually with the professor for individualized feedback on course assignments and drafts of their actual patent applications. Evaluation will be based on each student’s patent application prepared during the course, along with individual class participation, class presentations, and regular course assignments. Prerequisites: Patent Preparation and Prosecution Workshop. "

Catalog Number: INTPROP 912-0


Course History

Spring 2018
Title: Patent Preparation & Prosecution Workshop II: Advanced Topics
Faculty: Gamburd, Nancy R
Section: 1     Credits: 1.0
Capacity: 20     Actual: 8