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Patent Prosecution

Class Objectives, Assessment, and Structure - - This skill-based course examines the core requirements and strategies for drafting and prosecuting a patent application before the U.S. Patent & Trademark Office (US PTO). We will examine the theory and practice of drafting patent claims and their supporting disclosure, conducting inventor interviews, and performing patentability searches and other preparatory fact investigations. A major objective of the course will be in helping students draft and prosecute a complete patent application in a real-world setting. Students will interact with real inventors and US PTO examiners to gain the experience of getting a patent issued - through interactions with an inventor to develop an idea and draft a patent application, responding to rejections and office actions from the US PTO after filing the patent application, through interactions with a US PTO examiner to interview the office action and getting the application issued. Students are evaluated on participation, in-class and take-home exercises, and projects relating to the drafting and prosecution of a patent application. A. Intended Student Learning Outcomes - - Upon successful completion of this course, you will: 1. Demonstrate basic skills needed for a patent prosecutor, including drafting patent applications; drafting responses to US PTO office actions; interact with inventors to be able to conduct invention disclosures; interact with US PTO examiners to learn PTO practices; refine communication skills relating to interactions with clients (be it inventors, supervising attorneys, or in-house counsel) and US PTO examiners. The Silicon Valley US PTO has been gracious with providing their examiners' time in helping students obtain a real-life experience of prosecuting patent applications. 2. Demonstrate understanding of the fundamental legal principles related to patent prosecution. B. Assessment - - To assess the learning outcomes, we will use the following assessment techniques: 1. Socratic methods of discussion in class; 2. Two ungraded written assignments that will be critiqued by your student colleagues as well as the professor; 3. Two graded written assignments reviewed by the professor; and 4. A final project that will involve the following: invention disclosure interview with an inventor in a real-life setting, drafting a patent application, evaluating an office action issued on the application by the US PTO, interviewing a PTO examiner to advance prosecution, and drafting a response to the PTO office action. C. Class Structure: Each 3-hour class will be split into equal theory and workshop sections. We will cover fundamental legal principles over the theory sessions and participate in group-exercises building up our claim and response drafting skills in the workshop sections. This course aims at providing you real-world experiences. To that extent, we will integrate networking sessions with US PTO representatives and other practicing in-house and law-firm patent professionals at periodic junctures. Elements used in grading: Class Participation, Attendance, Written Assignments, Final Paper.

2015-2016 Winter
01/04/2016 - 03/07/2016
Instructors: staff

Instructors for this course (Past and Present)