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Course Descriptions

Course Descriptions

Patent Drafting and Prosecution (Spring 2017)

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

Course Description

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

  • Use of course knowledge
  • Homework
  • 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
    • Benefits of early filing
    • 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
    • Power of attorney
  • Overview of process after filing
  • Before first office action
    • Preliminary amendments
    • Duty of disclosure
  • Correction of inventors
  • Office actions
  • Responding to office actions
    • Amendments
    • Non-prior-art rejections
    • Prior Art rejections
    • Final office actions
    • Examiner interviews
    • Revival of abandoned application
  • Notices of allowance
  • Descendant applications
  • Post-issuance actions by patent owner
    • Certificate of correction
    • Ex parte reexamination
    • Supplemental examination
    • Reissue application
    • Maintenance fees
  • Post-issuance challenges by third parties
    • Post grant review
    • Inter partes review
    • Covered business method review
  • Design patents
  • Foreign patents
  • Final exam
Final exam

Objective final.  Counts for 50% of grade.            

Class recording access

Access to class recordings will be provided for excused absences.               

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