Innovations project 1: fundamentals of patents and drafting (2018 archive)

ARCHIVE OF 2018 PROJECT 1, to be updated for 2019. Leaving online so that you have an idea of what is to come.

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. 24)
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: invention creation

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!!

Second task for Thursday, February 22: counseling and invention selection

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.

Third task for Thursday, February 27: patent searching

Revised (Feb. 24): Do this over the weekend. Don’t wait until Monday or Tuesday, or you’ll never get this done.

Who am I searching for?

This exercise is for attorneys and not their clients. Do not search your own invention.

Take the USPTO video course. 

Watch the instructional course on the USPTO website on the basics of patent searching. It’s at https://www.uspto.gov/video/cbt/ptrcsearching/ (Adobe Flash required). It lays out the recommended seven-step technique to searching patents. The course is excellent and it 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 patent searching, primarily classification 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.

My guidance on the seven steps.

Below is a table. The left column is what the USPTO teaches you to do. The right-hand column contains tips and suggestions from me.

In green is how I searched for prior art for a hypothetical electric guitar invention of mine.

What the USPTO says to do  Professor tips and suggestions
STEP 1: Brainstorm terms The goal here is to generate terms relevant to your invention.

Brainstorm! Come up with terms that are potentially relevant to your client’s invention. Our main task here, however, is not to do keyword searching, but to use your terms to find relevant CPC (Cooperative Patent Classification) classes. CPC is a modern patent classification system used internationally, as opposed to the older USPC (U.S. Patent Classification) system. Both are still useful for searching, but we will only use CPC in this project.

Illustration: For example, suppose I invented a DO-IT-YOURSELF customizable electric guitar. The guitar is easily disassembled and reassembled on the fly, allowing me to quickly swap out parts and create different sounding and looking instruments. Before filing a patent application, I need to search other relevant guitar and electric guitar patents. Potentially good terms would be “electric guitar,” “guitar,” and “musical instruments.”
STEP 2: Use USPTO or WIPO to get CPC classifications The goal here is to find relevant main CPC classifications.

Start off with the USPTO homepage. Use the search box in the upper right and search CPC scheme _____, where the blank space is a search term relevant to your client’s invention.

Illustration: Using the upper-right hand search box, I entered “CPC scheme guitar,” from which I found G10D and G10H to be of potential interest. These are main CPC classes.

Another way of finding potentially useful main CPC classes is by going to WIPO and clicking on “Catchwords.”

Illustration: The term “guitar” (in the range between GRENADES – GYROSCOPES) came up with nothing, so I tried the more general term “musical instruments” (between MUSEUMS – MYOGRAPHS). There I saw the same two solid possibilities: G10H for electrophonic musical instruments, and G10D for other musical instruments.

But finding the main CPC classes is only a start. Then I moved on to the next step.
STEP 3: Review CPC classification definitions. Select most relevant classes The goal here is to find more specific CPC class/subclasses.

Next, go to the CPC listings at either the USPTO or WIPO websites to find relevant CPC classes/subclasses/groups/subgroups.

It’s probably better for you to use the USPTO than WIPO, though I encourage you to try both.

For USPTO: Enter the CPC scheme you found in step 2. First, it’s easy to expand the USPTO listings. Up top of this USPTO page, there are buttons to expand or collapse listings. Second, the USPTO listings seem go into more detail than WIPO, which might help you to narrow your searching more quickly. Once you expand the CPC listings, you can use your browser’s find function (typically CTRL + F on Windows browsers; I don’t use Mac but try Command+F in Safari).

Illustration: Using the USPTO, I entered G10H. This took me here (click to see). I expanded the listings and looked through them. I also did a CTRL+F and found two subclasses for guitars, concluding that G10H 3/18 was of particular interest to me (“Instruments in which the tones are generated by electromechanical means . . . using a string, e.g. electric guitar”).

For WIPO: Click on the WIPO link. Wait for the page to load (it can take a minute). Then click on the letter for your scheme, and keep expanding till you reach your CPC code. Click on that code to enter the page. Alternatively, type your main CPC class into the search box in the upper-left and click the search icon. Scroll to the bottom of the page so the page opens entirely. Then read through the page (and use your browser’s find function) to find relevant subclasses.

Illustration: Using WIPO, I entered G10H into the search box. This took me here. I expanded the listings and looked for guitars, eventually concluding (again) that G10H 3/18 seemed very relevant.

Then I moved on to the next step.
STEP 4: Get issued patents using CPC classification(s) The goal here is to use your CPC subclasses to find potentially relevant issued patents.

Here you are searching the issued patents database (PatFT). Select advanced patent search (left-hand column). Be sure to change the box to search from 1790 to present and not just 1976 to present.

Use the CPC code to search. When searching, you’ll have to eliminate the space in the CPC code.

Illustration: I did an advanced PatFT search for cpc/G10H3/18 (click to see) and found (as of this writing) 355 hits. Way too many for me to look at. (You can click the links to see how I did my search.)

But now keywords might be useful as a way to narrow down a bit. So I added a further search parameter: “guitar” in the specification, searching: cpc/G10H3/18 and spec/guitar (click to see) . This took it to 246 hits.  Still too many for this project.

Now I tried cpc/G10H3/18 and spec/”electric guitar” (click to see) (note the use of quotes for the phrase). 167 hits. Still a lot, right?

Let’s try limiting by abstract rather than specification: cpc/G10H3/18 and abst/”electric guitar” (click to see). Ok, I can deal with looking through 34 hits.

Tip 1: As noted above, start with a CPC subclass, and if needed, narrow by adding keywords (ABST or SPEC are good places to use keyword limiting). If you were doing real-world patent searching, this might eliminate potentially relevant hits. But for this project, I am more interested in you learning the basics of what you’re doing.

Tip 2: If you do what I suggest above and there there are still a huge number of hits still, then use a rule of reason. This exercise is not a true patent search and I don’t expect you to do exhaustive searching. It’s a learning exercise. So if you’ve reasonably culled down the hits through CPC class + keywords, and there are still numerous hits, then look through a reasonable number of them and then stop.
STEP 5: In-depth review of relevant hits (based on front page of patent) The goal here is to review potentially pertinent issued patents, and select actually pertinent issued patents.

FIRST

What you need to do is look at the cover page for the narrowed-down patents you’ve found. (Again, look through a reasonable number, not every single one: I recognize you have lives!!).

At first, look only at the cover page, particularly the abstract and the drawing. If a hit seems relevant, then download the FULL PDF and save it for later.

SECOND

After culling your issued patents (to just a few of the most pertinent), read those patents carefully to determine whether they may be relevant to the patentability of your client’s invention. Do they potentially render your client’s invention non-novel or obvious?

If so, you will later try to “design around” the prior art. That means you will draft your client’s claims sufficiently different from the prior art that they are novel and non-obvious.

Illustration: In reviewing the issued patents, I saw at least one hit that seemed highly pertinent to my hypothetical invention. See U.S. patent no. 9,466,269 (click to see), issued patent for “Electric guitar system for quick changes.” The abstract says:

An instant access guitar system allowing easy access to cavities in the body portion of the electric guitar. The cavities are covered by plates, a pick guard, flexible laminates or other suitable cover materials. The covers are held in place by magnets that magnetically attach to magnetic material mounted in the guitar body. The appearance of the guitar may be changed by changing the pick guard and the decorative laminate on the headstock. The sound of the guitar may be changed by having unique pickups and wiring releases pre-built in multiple configurations on multiple pick guards as modules to change in and out of the guitar at will with no tools or solder.

This looks like a patent I’ll have to consider carefully in determining the patentability of my hypothetical invention. This patent would also be relevant to me even if I don’t try to patent anything, because if I start to make and sell my guitars, they might infringe! So patent searching can be important not just to getting your own patents, but in avoiding infringing the patents of others!
STEP 6: Do same for pending U.S. applications (see # 4 and # 5) The goal here is to do the same things you did in # 4 and 5 but do it with the application database (AppFT). Thus, the goals become finding potentially pertinent applications (# 4) and selecting actually pertinent applications (# 5).

The application database (AppFT, right hand column, advanced search) also contains prior art. It provides access to published U.S. applications. These applications may have already issued to patent, or been abandoned, or are still pending. The database only goes back to 2001, when the USPTO started publishing most applications after they have been pending 18 months.

You’ll do the same thing you did above in # 4 and # 5, but for applications.

Illustration: For instance, I tried a number of searches, including cpc/G10H3/18 and abst/”electric guitar” (click to see). One potential pertinent hit was for a guitar with a cavity to change pickups easily. See U.S. Application No. 15/113,069 (click to see) for “Lightweight electric guitar.”
STEP 7: Broaden search to foreign patents; the old USPC classification system; keywords; non-patent literature; or hire a professional. The goal here is to try some alternative ways of searching.

Use general search tools (such as Google), as well as sites like eBay and Amazon.

Do not search foreign patents at all because that will make the project too unwieldy. Also, do not bother using the old USPC (U.S. Patent Classification). USPC is still useful for older patents, but again, I want to keep your project manageable.

Finally, for obvious reasons, you cannot hire a search professional to do the work for you! You may, of course, seek guidance and assistance from me and your current T-Cubed Innovations class colleagues!

Illustration — using such tools, I found: 

Things not to do.

Do not use Google Patent search. It is keyword-based. I want you be primarily using the CPC classification-based search system, which is explained in the USPTO video lesson.

Do not do foreign patent searching for this project. If you are curious, here is a link to info on foreign patent offices, but this is not required or recommended within the confines of this project: https://www.uspto.gov/patents-application-process/search-patents#heading-9.

Do not use the old USPC (U.S. Patent Classification) system.

Do not hire a lawyer or search professional!

What we’ll do in Tuesday’s class on Feb. 27.

Bring printouts of what currently seem to be your most pertinent patents, applications, and stuff you otherwise found online. Also bring your notes of your search techniques, along with any questions you may have.

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

Patent search links.

How to search:

Where to search:

Additional resources (not all reviewed by Professor, but shared with you)

Fourth task for Tuesday, March 13: patent drafting

Download the following three items:

  1. USPTO checklist for  nonprovisional patent applications (USPTO Checklist, PDF)
  2. Application Template: annotated with guidance (Application Template/Guidance, PDF form)
  3. Application Template: clean copy suitable for drafting (Application Template/Clean, DOCX form)

Read the USPTO Checklist (# 1) and the Application Template/Guidance form (# 2). Note that your Application Template (# 2 and # 3) does not include all the sections discussed in the USPTO Checklist. Instead, you will be drafting only select portions of a nonprovisional patent application.

Using these tools (and referring to relevant sections of patent law such as the MPEP), start drafting your client’s patent application. You must use the Application Template/Clean (# 3). Do not change the template’s format. This is the form and format you must use. The instructions and guidance contained in the Application Template/Guidance form are detailed and point you towards sections of the MPEP, patent law, patent regulations, and online resources at the USPTO and elsewhere.

The Application Template includes the following sections, the ones most most directly tied to our study of patent law:

  • Declaration
  • Specification
    • Title of the invention
    • Background of the invention
    • Brief Summary of the Invention
    • Brief Description of Drawings
    • Detailed Description of the Invention
  • Claims
  • Abstract
  • Drawings
  • Prior art (listing, with labeled attachments)

So during Spring break, you should work on drafting your patent application. 

For the March 13 class, bring a printout of your draft application and be prepared to discuss it. This will be an important opportunity for you to pose questions as a group. We will discuss the applications and help each other with our drafting

Below are links that may be of further guidance.

USPTO MPEP sections relevant to drafting a nonprovisional application:

Other USPTO drafting resources:

Other drafting resources (not necessarily reviewed by Professor):

Other tasks.

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

Guidance on your memo.

Two versions of the memo template are provided. Download both:

  1. Memo Template: annotated with guidance (Memo Template/Guidance, PDF form)
  2. Memo Template: clean copy suitable for drafting (Memo Template/Clean, DOCX form)

Review the Memo Template/Guidance for tips on how to fill out the memo. Use the Memo Template/Clean to draft your memo.

Final project file due: Monday, March 19.

The final project file, in paper form only, is due Monday, March 19, at 4PM EST (changed from 3/12 deadline).

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.

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. Print this out. Don’t do this on screen.

  1. Draft patent application made using Application Template/Clean. The application must include a Declaration signed by the inventor, and also include a listing of relevant prior art with hard copies of prior art as exhibits.
  2. Memorandum made using Memo Template/Clean, including the required Attribution form, filled out and signed in ink by the submitting lawyer. The memo should also include a listing and copy of any needed exhibits (particularly any templates relied upon). Projects lacking a signed and filled-out Attribution form will not be scored.

To be added here.

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).

Item %
Patent application with declaration & drawings 30%
Prior art searching (memo part III & prior art attached to application) 10%
Discussion of application (memo parts I, II, IV, VI) 25%
Discussion of subject matter, 101 utility, 102, 103, 112 (memo part V) 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

Patent application with declaration & drawings (30%).

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 (10%)

This looks at Part III of 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 (25%).

This primarily refers to Parts I, II, IV, and VI 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 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 (25%).

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 (10%).

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.

*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.

Projects submitted without a signed and filled-out and attribution form will receive no credit, unless the defect is promptly cured after being brought to the student’s attention. Cf. FRCP 11(a). Attribution forms with materially incomplete or false information will lead to reductions in score for the project, or reductions in the score or grade for the course, with possible referral to the academic integrity committee. Cf. FRCP 11(b)(3).

**Timeliness.

As noted above, there are a number of deadlines for the project, including the initial deadline of Feb. 15 (inventions). Untimely work may impact your overall score, so turn in all materials on time. If you will not be in class on a deadline day, make other arrangements, such as dropping off work with me or with the faculty secretaries (Mariela, Diana, or Suzi).

Last revised Mar. 13, 2018