INNOVATIONS & INVENTIONS THROUGH PATENTS & TRADE SECRETS: ASSIGNMENTS
The first week’s assignments are listed below. Others will be added shortly and as the semester proceeds. We will focus on readings and discussion for the first three to four weeks; after we lay a legal foundation through those readings, our work will also include experiential projects.
Casebooks & Statute book
For each class, read the assigned portions of the casebook(s) and all patent and trade secret statutes noted in the books. Generally speaking, the statutes can be found in the statutory supplement. Bring printouts of the assigned casebook readings to every class, along with printouts of any statutes or other assigned readings.
We will do a number of experiential projects, which together will constitute the bulk (75%) of your score. Examples in the past have included copyright registrations, copyright transfers, and copyright/content enforcement work. As you will see, I like to adjust the course each year based on the needs and interests of the class members, so the substance of the projects will be shaped and revised as the course goes on. This course relies upon your agency as much as it does mine.
Project 1: fundamentals of patents and drafting (35% of course score, due March 13)
Project 2: patent enforcement (TBA, 40% of course score)
Class participation and discussion
Class participation is a major component (25%) of your class score. In addition to attendance and punctuality, participation looks to your participation as a discussant and as a leader (“leader” here meaning class leader, moderator, or panelist). In this course, we use the Harkness method of discussion, an approach that places students at the forefront of learning as discussion leaders, and which will help you to foster your knowledge and practice skills. As a practical matter, this means that learning will often be directed by you, and I will speak up as needed to clarify, redirect, and answer your questions. This method of learning de-emphasizes my role as teacher in favor of my service as your mentor. Similarly, this method de-emphasizes your role as student and emphasizes your experience as a mentee. You can find guidance on serving as a discussant and leader here. Your designated discussion leader dates will be posted online after the first week of class.
Added Jan. 26, 2017
This is not a new assignment or obligation. It is instead provided as further guidance to make sure you are doing what is required for this class.
In addition to the assigned readings, you must bring to every class your compiled statutes (including statutes, regulations, MPEP, etc.)
Going forth, please compile all of the previously assigned statutes, regulations (if any), and sections of the MPEP, and bring all of them to each class. You may include other materials (such as guidance on claim construction) if you find it to be helpful.
It does not matter where you obtain the materials. For example, statutes may be obtained via the Boyle & Jenkins statutory supplement, or from the USPTO site, or from Westlaw/Lexis/Bloomberg, or from the Cornell links provided in each day’s assignment. Other materials (MPEP, regulations, pre-AIA statutes), I will provide to you by special link.
It does not matter how you store the materials. Placement in a binder or a pocket of a folder is fine. They, must however, be:
- Printed. For obvious reasons.
- Organized. It is not useful to have a stack of papers out of order. For example, as we read new statutes, organize them in the order they appear in the U.S. Code. The means of organization are up to you. A binder, or a section of a binder is ok. A stack of papers held securely by a binder clip is also ok as long as it is organized.
- Marked up. As my former 1Ls know, I consider unmarked statutes to be unread statutes. You cannot understand statutes if they are not marked up in a meaningful way. A blank page is prima facie evidence that the statute is unread and unloved, or if read, was done so in a cursory fashion. In this class, we do not skim statutes. We consume them: we metaphorically eat them, digest them, and make them our own. (Please do not do this literally.)
- Complete. Your compilation is an ongoing assignment, and must include all previously assigned and currently assigned statutes.
This is an ongoing professional obligation.
- As new statutes are assigned, you are expected to read them, mark them up, and add them to your collection in an organized fashion.
- You must bring your organized, expanding, and compiled statutes to each and every class.
- I will ask from time to time to see your statutes.
WEEK 1 – JAN. 9 & 11
TUESDAY, JAN. 9: Introduction to Innovations & Inventions
- Much of today’s class will be focused on the mechanics of the class, which relies exclusively on class participation and experiential copyright projects. We will also select discussion leaders for the next several classes.
- Read Loren & Miller pp. 1-16
- Read Boyle & Jenkins pp. ix-xiii (introduction), pp. 1-10 (chapter 1; skip problems 1-1 and 1-2)
- Read handout: Comparison of copyright, trademark, and patent
- Read handout: Guidance on serving as a discussion leader
- In addition to the readings, let’s play “Show and Tell.” Bring an item to class that you believe to be “innovative.” Be prepared to explain: 1) what “innovation” might mean; 2) why your chosen item is innovative; and 3) why the creation of your chosen item might (or might not) depend on intellectual property rights.
THURSDAY, JAN. 11: introduction to patents
- Discussion leader: Jackie G.
- Read Loren & Miller pp. 124-36. What is “innovative” about the OXO cup?
- Read Boyle & Jenkins pp. 633-51. What is “innovative” about the AeroPress?
- Read this short article from Forbes. Does this help you define “innovation?” If so, does it also help you determine when “property” rights are needed?
- Note: a slight update for Boyle & Jenkins p. 651. The term of protection for design patents is now 15 years.
WEEK 2 – JAN. 16 & 18
TUESDAY, JAN. 16: Patentable subject matter
- Discussion leader: Isabel
- As noted in class, whenever statutes are assigned: 1) print them out; 2) mark them up; and 3) bring them ready to discuss. Statutes can be found in the statutory supplement or via the links below. Consider this to be a standing assignment. I’d also recommend that you always bring all the assigned statutes we’ve read, as we’ll often refer back to previously assigned statutes. Thus, as you read new statutes, you are assembling a statutory supplement with your own markings.
- 35 USC § 100
- 35 USC § 101
- Casebook and other readings:
THURSDAY, JAN. 18: Patentable subject matter (cont’d)
- Discussion leader: Daniel
- Boyle on abstract ideas, Boyle & Jenkins, pp. 671-72
- Bilski, Boyle & Jenkins, pp. 673-89 (skip problem 18-1). Be sure to be well-versed in all the opinions, not just the majority.
- Alice, Boyle & Jenkins, pp. 690-96
- DDR Holdings, LLC v. Hotels.com, L.P., click here to download edited case. Who has the better argument? The majority? Dissent? Why?
WEEK 4 – JAN. 30 & FEB. 1
TUESDAY, JAN. 30: Utility
- Discussion leader: Elina
- Important: See the blue box near the top of the page regarding statutes. Take the already-assigned statutory materials and compile them into an organized collection as instructed in the blue box. So far, we have read sections 100 , 101, and 112, as well as MPEP 2701.
- Section 101 will be part of today’s assignment as well, as it addresses the utility requirement.
THURSDAY, FEB. 1: Novelty
WEEK 5 – FEB. 6 & FEB. 8
TUESDAY, FEB. 6: Novelty
- Note: be sure to read the right materials, as I’ve posted a few weeks ahead.
- Discussion leader: Oscar
THURSDAY, FEB. 8: Nonobviousness
- Discussion leader: Luis
- Statutes. Go to https://www.bitlaw.com/source/35usc/103.html. Print out and read all three of the following:
- Current section 103
- Pre-AIA section 103
- The redline of old to new
- Loren & Miller, pp. 232-256 (Feb. 5: reduced from previously assigned 232-260)
- Handout with suggested order of nonobviousness analysis
WEEK 6 – FEB. 13 & FEB. 15
TUESDAY, FEB. 13: Nonobviousness
- Discussion leader: Jason for new materials; Luis for materials from previous class
- Boyle & Jenkins, pp. 743-769. Note that there is an update to page 751 that can be found in page 36 of the casebook update.
THURSDAY, FEB. 15: Innovation, creativity, and inventing
- Discussion leader: Michael
- Carefully read the project information.
- We are now starting Project 1 (patent searching, application, and memo)
- For today’s class, I want you to write up brief descriptions of two (2) silly inventions.
- Bring two (2) hard copies of each of your two inventions. Please email them to me as well before class.
- It is essential that your inventions not be anything that you or anyone else might be interested in actually patenting, keeping as a trade secret, or otherwise using. See the project for further instructions and requirements.
- Reading assignment: R. Keith Sawyer, Creativity, Innovation, and Obviousness, 12 Lewis & Clark L. Rev. 461 (2008).
- Discussion preparation: Consider Professor Sawyer’s discussion in his article regarding the different kinds of creativity and innovation that exist. Be prepared to discuss the innovative nature of your inventions, and how they fit into the frameworks discussed in Professor Sawyer’s article.
WEEK 7 – FEB. 20 & 22
TUESDAY, FEB 20: Go to your Monday classes
- Today is treated as a Monday per the academic calendar.
- Go to your Monday classes, if any.
- If you have any questions or want to discuss the project, I will be in my office from at least 4-6PM, after which I’ll be in the moot courtroom to cheer on our winning moot court team.
THURSDAY, FEB. 22: Patent project workshop
- Class leader: Alessandra
- I highly recommend that you do not miss this class. We will discuss the project in detail.
- Activity: I have sent you an email with instructions. These instructions are also found on the project page for Feb. 22.
WEEK 8 – FEB. 27 & MAR. 1
TUESDAY, FEB 27: Patent searching workshop
- Class leader: Professor
- Activity: Preliminary instructions are now online (click on link for Feb. 27 on project page). Later, I will send you an email with more detailed instructions. After I send the email, the expanded instructions will be added to the project page for Feb. 27.
THURSDAY, MAR. 1: Design patents
- Class leader: Tyler
- Before we move into utility patent infringement, we will first study design patents,
- Statutes & regs:
- Loren & Miller, pp. 290-320
- Fun! Check out Professor Sarah Burstein’s Design Law blog and Twitter feed.
SPRING BREAK – MAR. 5 to MAR. 9
- Enjoy Spring break!
- I will be monitoring my email during the break.
- Please contact me if you have any project related questions.
Last revised Feb. 21, 2018