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Course Descriptions

Course Descriptions

Patent Drafting and Prosecution (Spring 2018)

  • Course Number: LAW-838
  • Class Number: 03606
  • Instructor: Marc E. Brown

Course Description

Co-taught with Matthew McCloskey  mmcloskey@mwecom

Students will learn how to prepare and prosecute U.S. patent applications, as well as an overview of design and foreign patent prosecution. Practical advice will be provided as students study key statutes, rules, and patent office guidelines. Students will put what they learn to practice. Students will draft patent claims, a patent application, a response to a patent office action, a request for an examiner interview, and a summary of examiner interview. Each student will also have an individual conference with a mock inventor, law firm partner, and patent examiner. 

Topics covered include: Types of patents; overview of patent law and claims; drafting patent claims; drafting other parts of patent application; inventor interviews; law firm partner interviews; considerations when filing, including benefits of early filing and public disclosure of invention before filing; who may apply for patent; securing filing date; inventor oath/declaration; fee reductions for small/micro entity status; pre-grant publication of application; expediting examination; assignments; powers of attorney; overview of process after filing; actions before first office action, including preliminary amendments, duty of disclosure, and correction of inventors; responding to office actions, including amendments, non-prior-art rejections, and prior art rejections; final office actions; examiner interviews; revival of abandoned applications; notices of allowance; descendant applications; post-issuance actions by patent owner, including certificate of correction, ex parte reexamination, supplemental examination, reissue application, and maintenance fees; post-issuance challenges by third parties, including post grant review, inter partes review, and covered business method review; design patents; and foreign patents.

Final exam

Multiple choice. Counts for 50% of grade.

Class recording access

Access to class recordings will be provided.

Out-of-class conferences

You may request a conference on campus with Marc E. Brown the morning before any class or by phone at other times with either instructor. Please send an email proposing a desired time to Marc E. Brown or Matthew McCloskey 

Course Details

  • Unit Value: 3
  • Grading Options: Numerical or CR/D/F
  • Schedule: W 10:00 am - 11:50 am
  • Room Number: Room 114
  • Exam: In-class exam
  • Writing Requirement: No
  • Skills/Experiential Unit Requirement: yes
  • Participation: Points may be added or subtracted