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Course Descriptions

Course Descriptions

Patent Drafting and Prosecution (Spring 2019)

  • Course Number: LAW-838
  • Class Number: 03603
  • Instructor: Marc E. Brown

Course Description

Course Description

Students will take a training journey with the instructor through the world of U.S. patent drafting and prosecution. After appropriate classroom instruction, each student will draft patent claims, a patent application, and a response to a rejection. An overview of post-grant patent challenges, design patents, and foreign patent prosecution will also be provided.  


Prerequisite(s); Co-Requisite(s); Concurrent Enrollment: none

Recommended Preparation: Patent Law (LAW-810)

Grading Options: Numerical or CR/D/F

Exam: In-class final exam

Writing Requirement: No

Skills/Experiential Unit Requirement: yes

Enrollment Limitation: 14 students

Required Reading

Before each class, students should study and prepare to discuss the slides for each class (download from Blackboard), as well as the edited legal authority (statutes, rules, guidelines, and cases) that is cited in these slides (download from Blackboard).



The three written homework assignments (patent claims, a patent application, and a response to a patent office action) will be graded (collectively 50% of grade), as well as the multiple-choice final exam (also 50% of the grade). The final grade may be adjusted up to ±3% based on class participation.


Assignment Submission

The three written homework assignments should be submitted on Blackboard by the deadlines specified in Blackboard.




Topics Covered:

Uses of course knowledge

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
     Filing date
     Inventor oath/declaration
     Fee reductions for small/micro entity status
     Pre-grant publication of application
     Expediting examination
     Power of attorney


Overview of application process after filing
Filings before first office action

     Preliminary amendments
    Information Disclosure Statements

Correction of inventors
Office actions
Responding to office actions

     Non-prior-art rejections
     Prior art rejections
     Final office actions
     Examiner interviews
     Revival of abandoned applications

Notices of allowance
Descendant applications
Post-issuance actions by patent owner
Post-issuance challenges by third parties
Design patents
Foreign patents




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
  • Pre-requisites: Patent Law is recommended.
  • Enrollment Limitation: 14 students