INNOVATIONS ASSIGNMENTS (SPRING 2024)
WEEK 1 – JAN. 8 & 10
MONDAY, JAN. 8: Intro to Innovations
- Note: today’s assignment was rescheduled to Jan. 10 per email notification
WEDNESDAY, JAN. 10 (class 1): Intro to Innovations
- Discussion leader: Professor
- Casebook pp. 10-32. We will often also discuss the problems or exercises in the book. Today I am particularly interested in discussing the exercises starting on pages 23 and 32.
- Handout: Comparison of copyright, trademark, and patent, https://www.nathenson.org/courses/ip/resources/comparing-copyright-trademark-patent/
- The next part of the assignment involves TPQs, or “thought-provoking questions,” which are the heart of this course, and a significant part of what I assess you on. For the first day, it’s TPQ + Innovations Show-and-Tell. Be prepared to discuss the following:
- Why we might need patent and trade secret protection. In support, bring an example of something innovative that you think others should not be allowed to use or replicate without authorization. (Yes, I mean it when I say “Show-and-Tell.”)
- Why we might not need patent and trade secret protection. In support, bring an example of something innovative that you think others should be allowed to use or replicate without authorization.
WEEK 2 – JAN. 15 & 17
MONDAY, JAN. 15 (no class): MLK Day
- No classes, MLK Day
WEDNESDAY, JAN. 17 (class 2): introduction to patents
- Discussion leader: Professor
- Assignment:
- Casebook pp. 33-42
- Use Patent Public Search, https://ppubs.uspto.gov/pubwebapp/static/pages/landing.html, and find and read this patent: Patent 6,263,732 (‘732 patent). In this course, you will also learn about searching, drafting, and enforcing patents.
- Do this.
- Answer this TPQ: What, if anything, is “innovative” about this measuring cup? Aren’t most components of the invention already in the public domain? What exactly is being patented?
- Your own TPQs:
- For today, everybody should upload at least one (1) TPQ (thought-provoking question) to the Canvas site at this link. Tie the question to today’s readings and exercise. I would like to give you feedback so you should upload your TPQ at least 24 hours prior to the beginning of the 1/17 class.
- Starting with class # 3 (that’ll be the class after this class), I will assign each person a different day to be TPQ leader. For your assigned day, you will need to upload at least 2-3 TPQs to this link. If you know of any days this semester you’ll be absent please email me prior to today’s class so I know not to schedule you for a conflicted day. However, once you are assigned a day it is your responsibility to be there and to lead. Should something come up, it is your responsibility to find a classmate to swap with (and please notify us both via email).
- Tips on TPQs:
- Don’t ask a vague question or one vaguely connected to the readings; instead, tie your questions into today’s readings, so give some real thought to this. That means, don’t do the readings at the last minute, either. Starting soon, each of you will serve as TPQ leaders and will be doing this as part of your Leader class participation score.
- Examples of good TPQs are:
- Original hypos you create based on the readings.
- Examples taken from current events, current disputes, or something interesting that sheds light on the readings.
- Questions that challenge the policies or theoretical foundations underlying IP rules.
- Questions that show unintended or undesirable consequences of IP rules.
- Examples of bad TPQs are:
- What did the court decide?
- What is the rule?
- What do you think about what the court did, said, etc.?
- Do you agree with the requirement of novelty?
Tentative assignments have been posted for the full semester. Dates and assignments re subject to revision. Note that we have one class we can make up, which we will use either for an IP Palooza event or for something else. I’ll add TPQ leader names to future assignments after our second class.
WEEK 3 – JAN. 22 & 24
MONDAY, JAN. 22 (class 3): statutory requirements (novelty)
- TPQs:
- TPQ leader: Aki. See Jan. 17 assignment (as well as syllabus) for tips on TPQs.
- TPQ leader questions should be posted to Canvas at this link.
- Readings and problems:
- Casebook pp. 43-60
- Important: as noted in class, the casebook has problems and questions. Always make sure you have prepared answers and have them with you in class. I will often but not always call on people on these. Same re statutes: the casebook often has the text of important statutes, which you should read carefully. If necessary, look up the full statutes online.
WEDNESDAY, JAN. 24 (class 4): statutory requirements (novelty, cont’d; “paper,” public use)
- TPQ leader: Melissa
- Casebook pp. 60-80
WEEK 4 – JAN. 29 & 31
MONDAY, JAN. 29 (class 5): statutory requirements (novelty, cont’d; on sale, trade secrets, third-party rules)
- TPQ leader: TBD
- Casebook pp. 80-105
WEDNESDAY, JAN. 31 (class 6): statutory requirements (novelty, cont’d; earlier invention; anticipation analysis)
- TPQ leader: TBD
- Casebook pp. 105-122
FRIDAY, FEB. 2: post your inventions for class projects
- No later than 11:59PM EST today, post at least two silly inventions to this link on Canvas at this link.
- You can find tips on how to do this at this link: Patent drafting task # 1: invention creation – Professor Nathenson
WEEK 5 – FEB. 5 & 7
MONDAY, FEB. 5 (class 7): statutory requirements (novelty; anticipation, inherency)
- TPQ leader: TBD
- Casebook pp. 122-132
- Be sure that you are prepared to discuss the problems including filling out the anticipation claim chart on pages 123-124. That will require you to download and read the ‘109 and ‘178 patents referred to in the readings. This is not an assignment to skim through at the last minute. To download the patents, go to the search tool at the USPTO website and do a number search, omitting the commas. Make sure to download the full PDFs and not merely the cover page.
WEDNESDAY, FEB. 7 (class 8): statutory requirements (nonobviousness)
- TPQ leader: Professor
- Casebook pp. 133-153
- Note that whereas much of 102 novelty is rule-based, much of 103 nonobviousness is standard-based. So conceptually think of obviousness as the “peanut butter cup” rule. Peanut butter and chocolate both preexisted peanut butter cups. Was it obvious to combine them? This is not a binary rule. Along those lines, the most important patents in the KSR case are the Engelau, Smith, and Asano. You should download them and become familiar with them. Pay particular attention to the drawings in the Smith and Asano patents. Was it obvious for the PHOSITA to combine them?
WEEK 6 – FEB. 12 & 14
MONDAY, FEB. 12 (class 9): statutory requirements (nonobviousness)
- TPQ leaders: Professor
- Casebook pp. 153-67
- You can see a video of the Neonode device at this link.
- Note that the exercise on pages 149+ requires you to adapt your anticipation claim chart from last week to include an additional reference (‘260 Hall). Download the ‘260 Hall reference from the USPTO site and update your anticipation claim chart to create an obviousness claim chart.
WEDNESDAY, FEB. 14 (class 10): statutory requirements (utility; enablement)
- TPQ leader: Professor
- Casebook pp. 168-180 (including first paragraph of B), 193-205
WEEK 7 – FEB. 19 & 21
MONDAY, FEB. 19 – PRESIDENTS DAY – NO CLASSES
TUESDAY, FEB. 20 (Class 11): Client conference; written description
- Today is Tuesday but go to your Monday classes
- TPQ Leader: Frank
- Casebook pp. 205-230
- Project-related: You have already done Patent drafting task # 1: invention creation. For today’s class, you will also need to have talked to your client and taken notes. See Task # 2: client conference. In future classes, we will also discuss Task # 3 (patent drafting), and Task # 4 (patent searching).
WEDNESDAY, FEB. 21 (Class 12): Patent drafting workshop
- Discussion leader: Professor
- Do Task # 3 (patent drafting) and be well-prepared.
- Be sure to have all your patent drafting-related documents and your work-in-progress at hand during class and be prepared to discuss.
WEEK 8 – FEB. 26 & 28
MONDAY, FEB. 26 (Class 13): Patent searching workshop I
- Discussion leader: Professor
- Do Task # 4 (searching) and be well-prepared. See the notes I added to this page. Our goal today is to learn together how to use the tool; however, I expect you to have spent a normal amount of class time going through the videos and playing with the tools. By this point you should have determined potentially useful CPC Schemes and started to learn the new Advanced Public Search tool.
WEDNESDAY, FEB. 28 (Class 14): Searching workshop II
- Class leader: Professor
- Further details on the memorandum and organization for Project 1 can be found at this link.
- I may require some additional activities for today, namely, refining and documenting your searching as well as reviewing pertinent guiding videos such as those posted to the Task # 4 page.
- Make sure you’ve watched the first video below in bold. It will make PPUBS much easier to navigate. Think of it as Google on steroids. I’ve also given links to several other videos that may be helpful.
SPRING BREAK – WEEK OF MAR. 4-8 MONDAY, MAR. 4: Spring Break WEDNESDAY, MAR. 6: Spring Break WEEK 9 – MAR. 11 & 13 MONDAY, MAR. 11 (class 15): Definiteness & Functional Claiming WEDNESDAY, MAR. 13: Friday schedule DUE DATE PROJECT 1 WEEK 10 – MAR. 18 & 20 MONDAY, MAR. 18: (class 16): Subject-matter & judge-made limitations WEDNESDAY, MAR. 20: (class 17): Subject-matter & judge-made limitations WEEK 11 – MAR. 25 & 27 MONDAY. MAR. 25 (Class 18): Inventorship and double patenting WEDNESDAY, MAR. 27 (class 19): Patent infringement–claim construction; direct (literal) infringement WEEK 12 – APR. 1 & 3 MONDAY. APR. 1 (class 20): Patent infringement–direct (DOE) infringement WEDNESDAY, APR. 3 (class 21): Patent infringement–indirect infringement
WEEK 13 – APR. 8 & 10
MONDAY, APR. 8 (class 22): Patent infringement–indirect infringement (rescheduled)
- Note (Apr. 4): Note that assignments for the last several weeks have been shuffled and shifted a bit.
- TPQ leader: Cristian
- Please reread and carefully prepare the materials from last Thursday. In particular, be aware of the potential claims and resolution (if any of actual claims) against GM, Ford, Aro, GM purchasers, and Ford purchasers. Re the inducement case, what exactly constituted inducement in this case?
WEDNESDAY, APR. 10 (Class 23): Patent infringement–other issues
- TPQ leader: Michael
- Casebook pp. 393-412
SATURDAY, APR. 13: C&D letters due
- Your cease and desist letters must be emailed by 11:59PM EST today. You may only send them via email to an address that I will give you. Triple-check your email address and proof on paper before hitting send.
WEEK 14 – APR. 15 & 17
MONDAY, APR. 15 (Class 24): Patent infringement–defenses
- TPQ leader: Jada
- Casebook pp. 420-442
WEDNESDAY, APR. 17 (Class 25): Patent infringement–remedies
- TPQ leader: Yasmin
- Casebook pp. 443-456, 500-514
WEEK 15 – APR. 22 & 24
MONDAY, APR. 22 (Class 26): Other types of patents and non-patent IP rights such as trade secrets
- TPQ leader: Aloni, Jacqueline
- Casebook pp. 538-551
WEDNESDAY, APR. 24 (Class 27): Project and semester wrap-up; coda to “what is innovation?”
- TPQ leader: Marcela, Randy
- Discussion of projects
- Here’s a bookend to our semester-long group discussion of what is innovation. Read: R. Keith Sawyer, Creativity, Innovation, and Obviousness, 12 Lewis & Clark L. Rev. 461 (2008). Consider Professor Sawyer’s discussion on creativity and innovation that exist. Be prepared to discuss the innovative nature of your client’s invention, and how they fit into the frameworks discussed in Professor Sawyer’s article.
DUE DATE PROJECT 2
- Due at any time of your choosing between Sunday, April 28 and Saturday, May 4, 2024.
- Upload your consolidated single project PDF with attribution & certification form to this link, no later than 11:59PM EST on Saturday, May 4, 2024.
Revised Apr. 4, 2024