Course Description
Study of how to write and prosecute a United States patent application. The course both introduces students to common issues arising during patent prosecution and equips students with basic strategies to deal with those issues. The course also explores patent infringement analysis and opinion letter work in which patent lawyers routinely engage.
Additional Requirements for Graduate Students:
Graduate law students will be required to demonstrate mastery
of the material through an applied project not required of the
Juris Doctor students. Graduate law students are primarily
international lawyers seeking expertise in the American legal
system. This expertise is gained through exposure to Juris
Doctor courses in which they will be required to perform more
extensive reading and research.
Athena Title
Patent Prosecution and Proced
Undergraduate Pre or Corequisite
JURI 4920/6920 or JURI 5050/7050
Semester Course Offered
Offered every year.
Grading System
A - F (Traditional)
Course Objectives
Students will learn invention analysis and patent claim drafting techniques; the support that well-drafted claims must have in the patent specification in which they appear; how to evaluate common rejections from the PTO, including anticipation and obviousness, and how to draft effective responses to them; and how what is said and done during patent drafting and prosecution affects the ability to successfully enforce the resulting patent thereafter. Students will also learn how to analyze infringement questions in the context of drafting a formal “clearance” opinion letter.
Topical Outline
The course’s principal topics include the following: • Claim drafting skills – beginning, intermediate, and advanced – and special drafting issues that arise in the chemical, biotechnological, software, and electromechanical arts • Analyzing prior art and foreign filing problems • Assessing and responding to PTO patentability determinations (“Office Actions”) • Effective strategies for interviewing the inventor(s), to help prepare responses to Office Actions • Filing corresponding patent applications in foreign countries • Preparing formal patent-infringement, noninfringement, clearance, and invalidity opinion letters, including infringement, noninfringement and invalidity analysis • Working effectively with in-house IP counsel (or general counsel) and litigation counsel
Syllabus
Public CV