Innovations project 1: fundamentals of patents and drafting

 

MEMORANDUM

THOMAS, THOMAS, AND THOMAS

A Pretend Limited Liability Partnership

From: Ira Steven Nathenson, “Managing Partner,” T3 PLLP
To: Spring 2018 “Associates”
Date: Feb. 9, 2018 (as expanded Feb. 19)
Re: Innovations, fundamentals of patents and drafting 

Note to public: this assignment is created for teaching purposes. This project uses real-world materials in order to provide a meaningful learning experience. However, no actual affiliation with any person or entity exists.

Quick links.

Background. 

You are fictional associates in a fictional law firm: Thomas, Thomas, and Thomas, PLLP, or “Pretend Limited Liability Partnership.”  (Also known as T-Cubed.)  There are no real clients and no real adverse parties. You will do work related to preparing a draft patent application for the United States Patent and Trademark Office, along with an explanatory memo and supporting documents.

Short description of project.

Each of you will serve as a client, and as an attorney for another client to be assigned to you.

Clients: each of you will create two (2) inventions, either products or processes.

Attorneys: Each of you will serve as a lawyer for someone else’s invention.

Each lawyer will prepare 1) a draft patent application, and 2) a memo addressing the application and the invention’s patentability, along with relevant exhibits and a certification form.

Initial task for Thursday, February 15:

For Thursday, Feb. 15, every class member must prepare short descriptions of two (2) different inventions to be given to me.

Your inventions should be silly or fun inventions and not be anything you or anyone else might ever want to patent or otherwise monetize. This is for at least three very important reasons.

  • First, we will discuss your inventions in class, and I will post information about them to the course website. As such, they could serve as prior art that may disqualify any invention from actual patenting.
  • Second, this experience is educational, not representational. Each of us should be focusing on the learning experience and not on the emotional and financial stakes that arise with real-world inventions.
  • Third, neither I nor your classmates can act as your lawyer. We cannot provide you or others with legal advice regarding any invention or innovation, and you should not take any discussion or feedback on the project to constitute legal advice.

Thus, to be clear, you may not submit for this project any inventions that you (or anybody else) might want to actually patent, maintain as a trade secret, or otherwise use or monetize. Should I find out you have violated this prohibition, it will severely and adversely impact your score for this project,

So here’s what you should do. Come up with ideas for a couple of silly, even impractical ideas, so long as they are products or processes that are likely to actually work beyond research purposes (i.e., is likely to have specific utility). Then write short, one-paragraph descriptions of your two ideas. From your two submissions, I will select one invention to give to a classmate “lawyer” who will search prior art, prepare application materials, and write a memo.

It’s easy to create something silly and financially worthless that nevertheless works. An example is provided below based on my many years of experience as a “Rabbit Whisperer.”

My idea is a “Rabbity Chow-Saddle.” Rabbits love being swaddled and being gently squished by other bunnies, so I have invented a bunny snuggle chow saddle. The saddle is a soft body wrap that uses velcro straps and which has a fabric food bowl on top as the “saddle.” The body wrap gently hugs bunnies, making them feel safe. The food bowl can be filled with bunny kibble. The bowl with kibble encourages other bunnies to come close to the bunny wearing the chow saddle. Soon, the saddle-wearing bunny will be surrounded (and even covered) by happy, hungry bunnies. Once all the bunnies are clumped on top of one another, they will all feel happy and safe!!!

See? It took me only a few minutes to come up with this idea, and an hour or so of toying around with it to get it this far. You can easily do the same. Although the bunny chow saddle is a simple and rather silly invention, I have no doubt that my invention works (even without building a model). This is an example of how a simple invention might nevertheless provide a rich educational experience for somebody to do search prior art, draft an application, and write a memo!

Remember, don’t use any ideas you want to someday monetize. We’re not your lawyers, and some of your information may be publicly posted to this website. You have been warned!!

Task for Thursday, February 22:

For Thursday, Feb. 22, do the following:

I have emailed you with information on attorneys, clients, and inventions. Please do the following to prepare for the Feb. 22 class.

  1. To all: Your names are listed twice (2x), once as client and once as attorney to another client.
  2. Clients: Please contact me immediately if I have listed your inventions erroneously.
  3. Attorneys: Review your client’s inventions. Confer with your client prior to Thursday, asking about their two inventions. Take notes about the inventions and about your client’s knowledge of prior art, which should be kept in your project file. Based on your conference, make a recommendation to your client regarding which invention appears to be a better choice for a patent application, and which should be maintained as a trade secret. If you are not sure, then make your decision based on which invention seems to be a better candidate for patenting. However, the ultimate decision on which to patent, and which to keep secret, is for your client.
  4. Clients: Tell your assigned attorney about your inventions, and reveal to them any prior art that you are aware of. Do not hide the ball. Although the decision—which to try to patent, and which to keep secret—is up to you, you should consider your attorney’s recommendations carefully. Do not ignore your attorney’s advice without good cause.
  5. Attorneys: Consider methods you might use to search for additional prior art, including using the Patent Office website as well as other sources (such as Google, eBay, and Amazon). Consider also keywords and search terms that may be useful.
  6. To all: Come to class prepared to discuss all of the above.

There is a listing of clients and attorneys on this site. Inventions, however, have only been sent via email.

Task for Thursday, February 27:

Note (Feb. 21): This is a general cut. I may elaborate on this in the next several days, but here’s what we’ll be doing. Prep this early in the weekend, and don’t wait until Monday or Tuesday, or you’ll never get this done.

  1. Watch the instructional course on the USPTO website on the basics of patent searching. It’s at https://www.uspto.gov/video/cbt/ptrcsearching/. This will tell you how to use the USPTO website, the international CPC classification codes (via USPTO or WIPO), and the PatFT and AppFT databases to do classification and keyword searching. The video is short (38 minutes), and broken into dozens of bite-sized chunks. You’ll want to pause it frequently in order to try the things the video course teaches you to do.
  2. Once you get the gist of things, do what the video says for your client’s invention. Find at least one (several, if applicable) CPC classifications for your client’s invention. Do some basic searching and identify several relevant instances of prior art using both the issued patents database (PatFT) and the applications database (AppFT). Try keywords as well (to narrow your CPC searching, if necessary, and to supplement it). Do some additional searching online with other sources (such as Google, eBay, Amazon, maybe even YouTube). Keep notes of your search strategy (as you’ll need to discuss it in your memo). Keep printouts of the most pertinent pieces of prior art.

In class, each of you will briefly discuss your search strategy, your best CPC classifications, your keywords, and your results.

Other tasks.

Other intermediate activities and deadlines may be added here as the project unfolds.

Final project file due: Monday, March 12.

The final project file, in paper form only, is due Monday, March 12, at 4PM EST.

All final project materials must be printed out and organized, and must be turned in to either Mariela Torres, Diana Barroso, or Suzi Gelin (administrative assistants in the faculty suite, upstairs, second floor, near faculty offices).

Electronic submissions will not be accepted.

Permitted and prohibited assistance and sources

As noted in earlier classes, I encourage each of you to seek out, and to provide assistance to, your current Innovations classmates. Lawyering is a collaborative learning experience, and I want you to learn from your apprentice colleagues. That means you can ask and answer questions, seek and provide suggestions, and seek and receive comments on your searching and drafting.

Equally so, you can and should seek out documents and templates to help you, such as prior applications, registrations, and the like. Obviously, you must still do your own work by updating materials to reflect your own facts in light of the governing law. Regardless of what a form or template may say, the lawyer who uses it is always responsible for making sure it is factually correct, legally sound, appropriate for the situation, and proper for the client’s needs.

The only thing I require of you in return is that you fully and truthfully fill out the attribution form, in which you will state who you helped, who helped you, and how. You must also identify any templates or pre-existing materials that you use in drafting your forms or memo. Err on the side of revealing too much information rather than too little.

However, you absolutely may not seek information or assistance from anyone who is not currently enrolled in this course (such as other students at STU). This prohibition includes, without limitation:

  • STU students not currently enrolled in this course.
  • Lawyers and other legal professionals.
  • Anybody at the United States Patent and Trademark Office.

Scoring and additional guidance

Scoring for each component will be done on a 4.0 scale (actually, up to a 4.5, which would reflect the equivalent of an A+ for a particular category).

Below is the tentative apportionment of scoring for this project, though I may tweak this.

Item %
Prior art searching & documentation 10%
Patent application materials 30%
Memo: discussion of draft application 25%
Memo: discussion of subject matter, utility, novelty, nonobviousness, and 112 25%
Organization of casefile 10%
Attribution form 0/100%*
Total 100%

Assuming you provide timely work throughout the project, your overall score is based on the considerations above. The overall score for this project will count for 35% of your final course score. The other portions of your final course score are project 2 (40%) and class participation (25%).

Below is a brief explanation of each category, with further guidance.

Project-related links.

Additional project information can be found on the pages below. Be sure that you have carefully reviewed all of these materials:

Patent search links:

Best posted Feb. 24, 2018