Innovations project 1: Drafting and Searching

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
• Short description of project
• Initial task: creation of two inventions
• Second task: invention selection conference
• Third task: patent searching
• Fourth task: patent drafting
• Other tasks
• Guidance on your memo
• Final due date
• Checklist for what goes in your case file before turning it in
• Permitted and prohibited
• Scoring and guidance

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 (you received this via email).

• 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.

Task # 1: invention creation

Every class member, acting as “client,” must prepare short descriptions of at least two (2) different inventions to be given to me. You will upload them to Canvas to the link on the Assignments page.

Click here for details.

Task # 2 do ASAP: confer with client

Once I have assigned each lawyer their client and their client’s invention, each lawyer should ASAP confer with their client to obtain additional information regarding their innovation. Take good notes of your discussion. Those notes, or a memo to file of those notes, must be included in your final case file.

Click here for details.

Task # 3: patent drafting

Task # 4: patent searching

We will do a session on how to search your client’s invention for prior art. You will find that your search results will likely affect how you draft your client’s written disclosure and claims. Bring the results to class and be ready to discuss.

Click here for details.

Other tasks.

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

Guidance on your memo.

Mar. 26, 2023: New memo template is online. It is a single consolidated template, as a Word file that includes annotations and guidance. Remove or replace bracketed areas as apropriate.

Final project file due: See Assignments page.

Please see assignments page for due date and Canvas submissions link [to be added].

Checklist for what goes in your case file before handing it in.

Before handing in your project case file, go through this page, as well as this checklist, to make sure you have not omitted anything. Submit it as a single combined PDF, with items in the order listed below:

1. Project cover page
2. Project table of contents
3. Notes of your conference with your client or your memo-to-file.
4. Draft patent application made using Application Template/Clean.
   1. The application must include the Declaration digitally signed by the inventor. For your client’s Declaration, I will permit you to insert a line saying “/reviewed and approved by my client firstname lastname/,” so long as you have actually had your client review and approve your draft.
   2. Your application must also includes a listing of the relevant prior art along with full PDFs of all the prior art as exhibits. You may not include more than five (5) piece of prior art, no matter how many you believe to be pertinent. (You may note the existence of additional prior art in your memo, but your file itself should only include up to the five most pertinent pieces of prior art.)
5. Memorandum made using memo template. 
6. The memo includes the required Attribution form, filled out and digitally signed by the submitting lawyer. You can sign the document electroncally, i.e., /s firstname lastname/. 
   1. The memo should also include a listing and copies of any needed exhibits (particularly any templates relied upon).
   2. Any templates must be highlighted and/or annotated, to indicate any language you used or adapted for your application or memo.
7. Any other materials you deem to be relevant.

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 are two versions of the scoring system for this project. The first is the old one (previously posted and somewhat out of date; below is an updated one that more accurately reflects what I currently think is a fair division of point allocation. So as not to prejudice you, your 2023 project score will be the higher of the two scores below.]

Draft of updated scoring system (not finalized)

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

Patent application with declaration & drawings

Did you follow the instructions and guidance in the Application Template: annotated with guidance? Is the form filled out neatly, accurately, and in a manner that reflects diligence and sound professional judgment in light of your client’s invention, the prior art, and patent law? Are all parts provided?

Prior art searching.

This looks at the memorandum, as well as the pertinent prior art (along with listing of prior art) that you have attached to the application. Have you followed the seven-step approach to searching recommended by the USPTO, with revisions suggested by the Professor? Have you chosen useful CPC codes and used them in a way that revealed pertinent prior art? Did you search both issued patents and patent applications? Did you also search with other tools, such as Google, eBay, or Amazon? Does your memo provide a clear explanation of your searching?

Discussion of patent application in memo.

This primarily refers to the parts of the memorandum not dealing with searching or the substance (e.g., 101, 102, 103, etc.). Did you follow the instructions and guidance in the Memo Template: annotated with guidance? Are these portions of the memo well-written with the ultimate audience (the client) in mind? Does the memo include thoughtful discussion and analysis of all the required parts of the application? Do they explain and justify the way you filled out the application form? Does the memo, where appropriate, cite and concisely discuss, relevant legal authorities underlying those choices? Where application choices were uncertain or debatable, does the memo point out those concerns and explain how you resolved them?

Discussion of subject matter, 101 utility, 102, 103, and 112 in memo.

This primarily refers to Part V of the memorandum. Did you follow the instructions and guidance in the Memo Template: annotated with guidance? Are these portions of the memo well-written with the ultimate audience (the client) in mind?  Does the memo include thoughtful discussion and analysis of subject matter, 101 utility, 102 novelty, 103 nonobviousness, and 112? Does it explain any counter-arguments regarding these issues, where appropriate? Does it discuss and cite relevant legal authorities for your conclusions?

Organization of case file.

This category looks to the organization of your project file as a whole. Can the senior partner (and later, your client) easily work through the file in a meaningful and efficient way? Are the exhibits neatly labeled, corresponding to citations in the memo and the listing of exhibits? Note that well-written work product is much more likely to be well-organized, and well-organized work product is much more likely to be well-written. Marking up is required for the attribution form, but is also noted in your organization score.

*Attribution form, a/k/a Certification of Originality, Attribution, and Disclosure (not scored, but no score possible without providing the form).

You must include a filled-out attribution form that reveals any assistance you provided or received, along with a listing of templates or forms relied upon. The form is attached to the end of the Memo Template. You must attach to the Attribution form any materials relied upon. For example, you must provide copies of any applications, registration, or templates from which you borrowed language, whether verbatim or via paraphrase. You need not, however, include copies of statutes, cases, circulars, or other legal materials, since I can find those through a citation. You also do not need to provide copies of the memo or application templates, as I am aware that I provided them to you.

• You must fill out and indicate who you helped and who helped you, and how. Help is only available from other current members of this class.
• You must e-sign.
• You must provide copies of any templates used, and mark up any language used.

Attribution forms lacking this information upon initial submission will face a reduced score of up to 0.5 overall points. Attribution forms that provide misleading or false information may lead to additional consequences, including further reductions in the project score, course grade, or referral to the academic integrity committee. Cf. FRCP 11(b)(3).

**Timeliness.

As noted above, there are a number of deadlines for the project. Untimely work may impact your overall score, so turn in all materials on time.

Posted Feb. 21, 2024