Innovations and Patent Management Syllabus (Spring 2024)

INNOVATIONS AND PATENT MANAGEMENT: 2024 SYLLABUS

Professor Ira Steven Nathenson

St. Thomas University College of Law

Spring 2023, Law 942, 3 credits (skills)

Email:	inathenson@stu.edu
Phone:	305-474-2454
Homepage:	https://www.nathenson.org/
Course website:	https://nathenson.org/courses/innovations
Assignments	https://www.nathenson.org/courses/innovations/assignments
Class time:	Mon. & Wed. 1:45-3:15PM, room 202
Office hours:	On-campus and Zoom office hours TBD. Regardless, I hang around after each class when feasible.

ABOUT INNOVATIONS AND PATENT MANAGEMENT

This course qualifies for skills credits.

Innovations policy is so important to this country that the Founders addressed patents in the Constitution and made patent protection one of the first laws passed by the new Republic. Since then, patents have become even more important to the development of the economy, with many businesses being built on a foundation of patents. Regardless of their benefits, patents are being increasingly criticized by those who lament vague or questionable patents, “patent trolls,” and pharmaceutical price-gouging. With both practical and policy issues in mind, this course addresses innovations law with an emphasis on placing legal doctrine in a real-world context. The course will emphasize practical aspects of patent practice, spending class time learning the basics of reading patents, construing claims, drafting patents, and enforcing patents.

This course counts towards the St. Thomas Law Intellectual Property Law certificate program.

REQUIRED BOOKS

As noted below, you can use either the print book or the digital book. The former is very inexpensive and the latter is free. But make your choice based on what will provide the better learning experience. In making that decision, you should read the guidance below carefully.

1. Jonathan S. Masur & Lisa Larrimore Ouellette, Patent Law Cases, Problems, and Materials (3rd ed. 2023), available in PDF at Home (patentcasebook.org) and in print form on Amazon (in color or in black & white, color is worth the few extra $$).
2. Nathenson.org course website: Site at https://nathenson.org/courses/innovations/. This website is your source for assignments, project information, and other materials.
3. I’ll provide access to statutes and other materials (such as the first day’s assignment) for free online.

Should I use print or digital?

Studies show that students tend to read with more depth and retention when working with paper books rather than eBooks. And in law school, a student needs to switch deftly between their casebook, their briefs, their notes, and their statute book. Doing so is difficult to do when all these materials are on one screen and a student is not able to switch quickly between materials. More fundamentally, people tend to read in a cursory fashion on a screen, skimming rather than engaging. For these reasons, I have traditionally required students to use the paper editions of their casebook and statute book in class.

Having said that, I’m also respectful of modern realities: that the lawyers of today need to be computer-literate, and that eBooks are becoming increasingly common in undergraduate curricula.

Accordingly, students this year can choose whether to purchase the paper edition of the casebook and statute book, or work solely with the digital editions. Information on obtaining these books is contained in the next section. But before you make your decision, consider the following:

• Best of both worlds. If you want the best of both worlds, buy the print edition, which is super inexpensive. You can still download and use the digital version, which comes as an unprotected and easily annotated PDF.
• Whether print or digital, annotate.
  • Engage and annotate. As noted, law students are expected to read in depth and to engage with their materials. A paper book is easy to highlight and annotate, a digital text less so. However, the casebook is an unprotected PDF, and there are many good PDF annotation programs. (For Windows, I am a big fan of Foxit Reader.) Thus, as I will often say in class, don’t just read the materials. Engage with them, digest them. Doing so also helpfully slows down your reading and forces you to engage in more depth.
  • Spoiler alert: whether you use a printed book or eBook, I will come up to students and ask to see what they’ve done with their books, briefs, and statutes. An unmarked book is likely unread, unloved, and not understood. Thus, regardless of whether you choose print or digital, I expect you to do your own briefs and to annotate your readings and at times will want to see it myself.
• Master your print or digital environment.
  • Be organized and intentional. If you use print, then be organized. Bring your casebook and any assigned statutes to every class. Make sure you set up your in-class workspace so that you can deftly switch between materials, as the books, briefs, and notes are all part of an integrated classroom learning experience. For example, when cases discuss rules and statutes, you’ll need them side-by-side to follow the discussion.
  • If you use digital-only, I expect you to do the very same thing and your obligation of digital competency mandates that you are able to switch competently between materials.
    • While in class, you’ll need to switch between materials often. And I will often ask students what page or paragraph contains the “rule” that governs a hypothetical. Students need to be able to “pinpoint cite,” by referring to the page, paragraph, and language. It is no excuse to say “Sorry, I don’t have that on my screen.” 
    • Thus, working from a device is no excuse for not being able to work with your notes, brief, casebook, and statutes. You’ll need to have all loaded and develop the skill to switch back and forth as needed and without thinking, just like you need to be able to pay attention to gas, steering, brakes, and mirrors when you drive a car.
    • Don’t forget: you are training to be a lawyer, and your obligations of preparation and performance as a student in my class remain the same, whether using print or digital. This means becoming adept, among other things, at annotating electronic materials, switching between documents or screens, and searching through documents at a fast pace. Remember, your printed casebook classmates will be able to flip to page “X” in seconds, and those using a digital casebook need to be able to do the same thing on screen. A judge won’t wait for you to find materials in a digital document, and neither will your classmates and I.
    • Spoiler alert: Use two screens, a laptop and a tablet to increase your screen real estate. Also consider using a device with a stylus to take notes by hand, which will slow you down and make you more of an engaged participant and less of a stenographer.
• Do not be penny-wise. If you choose digital, do so because you know you will be able to work effectively in that environment, and that you are willing to engage and interact with the materials in a way that maximizes the effectiveness of your education. Do not make the choice based on saving a few dollars. First, a legal education is an expensive and significant life-event undertaking, so your choices should be based on what is the best tool for your learning. Second, you can get both print and digital super-inexpensively, so you can always experiment and develop your skills in case you are not sure if you can yet master the intensity of engagement required for studying complex legal materials.

GRADING

There is no final examination. As a skills course, your grade will be based on:

• Two experiential projects (totaling 75% of grade)
• Class participation (the remainder, i.e., 25% of grade)

Regarding the projects, there are two student-designed lawyering simulation projects:

• Project 1: patent searching and drafting (37.5% of course score, due mid to late March)
• Project 2: patent enforcement (37.5% of course score, due towards the end of semester)

The class participation score will be based on:

• Attendance (1/4 of participation). This generally means attending the entire class.
• Timeliness (1/4 of participation). This means being in your seat and ready for discussion once class begins.
• Discussant (1/4 of participation). This refers to your preparation, participation, and professionalism as a member of the class.
• Leader (1/4 of participation). This refers to your preparation, performance, and professionalism as a leader, moderator, or panelist.

ON PREPARATION AND PARTICIPATION

Discussants. Two of the keys to doing well in this course are participation and preparation. Regarding participation, this is a discussion-oriented class and I expect everybody to participate every day. Participation does not mean simply opining in the abstract about “what you think is right or fair” (anybody walking in off the street could do that), but also means engaging meaningfully with the assigned materials. Therefore, participation is inextricably interwoven with preparation. Regarding preparation, all class members, whether Leaders or Discussants, are always expected to be fully prepared on all readings every day, and it is never acceptable to be unprepared. The only exception: one time per semester, if you are unprepared as a Discussant, you may tell me so before class begins and I will not call on you. However, if you do not request a pass in advance, and I determine in my sole discretion that you are unprepared, you will be marked as absent. If this happens more than once, your final grade may be lowered. TPQ Leaders, however, may not pass, and barring extraordinary circumstances, should never be absent.

Discussant TPQs. Discussants are not required to submit TPQs but I encourage you to do so as it shows engagement. To do so, go to the “Class discussants, upload your TPQs here” link on the Canvas home page. Discussant TPQs can reflect participation and engagement, and also require you to think about the assigned materials. Good TPQs tie together all the readings, or reflect on thorny or crucial aspects of some of the readings. You can also include AV. I cannot guarantee that I will always use all TPQs, but I will always make sure to comment on them before class if they are sent at least 24 hours prior to class. If I can, I will also comment on TPQs sent later than that.

TPQ Leaders. The standing instructions for TPQ leaders is noted below. Note in particular that TPQ leaders must submit their draft questions to Canvas at least 24 hours prior to class start time, and that a TPQ leader who cannot come to their assigned class is responsible for finding a substitute and giving me notice. Also, Leader TPQs should embrace the entirety of the readings and not just the first few pages or the first case.

• TPQ leaders must upload their TPQs to the relevant page on the Canvas site at least 24 hours prior to the class they are leading. At least 2-3 TPQs. If your TPQ includes any links or AV, include them in the upload to Canvas.
• If a class member knows in advance that they will be missing a day of class, they must let me know in advance so that I do not make them a TPQ leader for that day.
• If an assigned TPQ leader later realizes they cannot be in class for their TPQ day, they are responsible for finding a substitute willing to take their place. Obtain email confirmation from the substitute with CC: to me.
• Discussants (everyone else) should always be prepared to discuss all materials fully. They too may upload TPQs to the Canvas site if they wish.
• Leader TPQs should embrace the entirety of the readings and not just the first few pages or the first case.

As a skills course, your regular presence and participation in the classroom are a crucial part of your learning. Therefore, except for excused religious holidays, your attendance and timeliness scores look solely to the number of times you were late or absent (or deemed unprepared and absent), without regard to the reason for any absence or tardiness. The STU attendance policy has no bearing on the scoring of attendance or timeliness, and you should not consider 80% to be your goal: instead, you strongly encouraged to seek perfect timeliness and attendance.

LEARNING METHODOLOGY: SKILLS+

This is a skills course, but the real goal is to treat it as much more than a skills course.  It is intended to be one that integrates your learning—and I mean learning and not teaching—of innovations doctrine, theory, practice skills, and professional values.  I am a strong believer in the integrated approach, one that uses skills to teach law and doctrine, and that uses professional values to tie them all together.  So instead of learning doctrine in one class, ethics in another class, and skills in yet another class, I want to use them all, together, to better learn the law and to become a better lawyer.

LEARNING OUTCOMES, METHODOLOGIES, AND ASSESSMENT

Learning outcomes refers to skills, concepts, and other matters I want you to learn in our course.  Learning methodologies are the techniques we will use to learn these matters.  Assessment refers to the ways you will receive feedback to help you determine your level of success and to course-correct for improvement. As a skills course with multiple projects, assessment is primarily formative, i.e., feedback that occurs while the topic is still being studied.  This contrasts heavily with traditional doctrinal courses where assessment is primarily summative, i.e., feedback that occurs at the end of a course. St. Thomas Law lists our institutional learning outcomes here.

Learning Outcomes (the goal)	Learning Methodologies (the means)
Patent and trade secret law and theory (STU outcomes # 1-3): Examples include the Patent Act of 1952, America Invents Act of 2012, Uniform Trade Secret Act (model state law), Defend Trade Secrets Act of 2016 (federal law); policy issues such as optimal term for patents to spur innovation; non-practicing (“patent troll”) entities; business methods, genes, and computer code; trade secrecy over voting technology, search algorithms, and more.	Reading, briefing, marking up, and discussing patent and trade secret cases and statutes (Patent Acts of 1952 and 2012, UTSA, DTSA), and group discussion.
Integrating law and theory with practice skills and professional values (STU outcomes # 1-7): Developing basic practitioner proficiency in tasks common to lawyers who prosecute, litigate, protect, defend against, and engage in transactions involving innovations, all the while tying professional values into practice. Examples may include reading patents, basic patent drafting, designing trade secrecy policies, and drafting NDAs.	Skills projects designed to integrate the teaching of the four components of lawyering: doctrine, theory, practice skills and professional values.  For information on the MacCrate Report’s recommendation for integrated teaching of these components, see here.

CLASSROOM POLICIES

Accommodations.

If any students believe they need, or are entitled to receive, any accommodations due to a disability they should consult with the Director of Law Student and Support Services, or other designated person, as early in the semester as possible. Further information on accommodations can be found at http://www.stu.edu/law/students/disability-accommodations.

Attendance: be there.

Class attendance. Attendance means being in the classroom, on time, and not leaving the classroom without authorization. Moreover, class attendance is mandatory and in accordance with St. Thomas Law’s attendance policy, you may not obtain credit for any course for which you miss more than 20% of the classes. However, I strongly recommend that you do not miss even that many classes. In addition to the assigned materials, anything I say or that we discuss in class is fair game for quizzes and exams. Further, if you are absent more than five times, you will be dropped from the course with a failing grade and will not be allowed to take the final exam. If you anticipate missing more than 20% of any class, you are strongly advised to contact the Assistant Dean of Students, John Hernandez, regarding the possibility of withdrawal before it is too late to do so. I do not have the discretion to excuse any absences so please do not ask me to do so.

Sign-in certification.

Sign-in sheet as verification of your presence. I take attendance manually or via a quiz available by in-class QR code. Except for days on which I take attendance manually, it is each student’s responsibility to personally sign in at the designated time during class. The attendance form (via QR code) is the exclusive measure of your attendance for that day, so do not come to me later and tell me you forgot to sign the roll sheet, and do not offer to show me your notes as proof that you were in class. Further, be aware that it is a serious violation of the Academic Integrity policy to sign in other people or to have others sign you in. The reason for this goes to the paramount value of honesty, which is one of the most important qualities of an aspiring attorney. In fact, we will study FRCP 11(b) regarding honesty in certification later this academic year.

Punctuality.

Early is on time, on time is late. You should be on campus at least ten minutes before class. That way, you will be in your seat and ready to go the moment class starts. Problems happen to everyone, so plan accordingly. A professional arrives early and never makes excuses. Spoiler alert: I tend to cold-call late students.

Leaving the room.

Leaving the room during class. We will usually take a break during each class, so barring a genuine emergency, hold off on classroom exits until there is an appropriate break point for all. Leaving the room during class without an extremely good reason is extremely unprofessional. Do it enough and your presence will be stricken from the attendance sheet for that day. See FRCP 12(f).

Email.

From time to time, course-related announcements (such as new online materials or assignment revisions) will be sent to your official St. Thomas Law email account. My transmission to you of a class-related email shall constitute notice and you are responsible for the information contained in any such transmission, whether you read it or not. Cf. FRCP 4(e), FRCP 5(b)(2)(E). Check your email regularly.

Disclosure, Candor, and Attribution policy: i.e., non-plagiarism: I take this stuff seriously, so read carefully.

Technology.

Class recordings. Class is highly discussion-based and absent exceptional circumstances, will not be recorded. Neither may you record any portion of class or screenshot any materials without my permission. However, as an exception to that rule, you may take screenshots of display materials during class with your cellphone without prior permission. Recording otherwise requires prior written permission from me.

Laptops and tablets. As you know from the sections above reading digital casebooks, I encourage law students to develop professional digital competency. So does the Florida Bar. Laptops and tablets are therefore permitted. In fact, you might find multiple devices to be useful, such as having one device open for note-taking and another for viewing the casebook or other materials, particularly for students using the digital casebook and interested in developing their professional digital skills. I am also a big believer in the power of a good stylus such as with an iPad or a Surface Pro.

Phones. Cellphones may only be used when I indicate (I use them sometimes to poll the class). Your phone must otherwise be silenced and put away.

Proper use of technology. As the superhero trope goes, with great power . . . well, you know. Use the privilege of classroom technology responsibly and smartly. So don’t abuse my willingness to encourage technology as the privilege is revocable. No screwing around on your computer. I’ll walk around the classroom and kick you out if I find you surfing Amazon or playing Fortnite or the like. Regarding working smartly, don’t be a stenographer (the person who types up every word a witness says at a deposition or trial). Writing down every word is a horrible way to learn as the words will flow from my mouth to your fingers without taking a pit stop at your brain. So another part of being a law student/lawyer is learning how to take intelligent notes. Don’t fall into the trap of writing down every word, as not every word I say is that interesting or important. For that reason, another approach you might take is to take notes by hand and them type them up after class as part of your post-class work.

REVISIONS AND AMENDMENTS

This syllabus sets out policies and guidelines to cover reasonably foreseeable and commonly occurring situations. It does not attempt to cover all possibilities. The syllabus and assignments may be revised as I deem necessary, for any reason, with written notice to you through this website or email.