LAWS 4474 Course information

Syllabus, Advanced Patent Law

Course no. LAWS 4474, Spring 2008, three credits

Prof. Carl Oppedahl

Version: December 3, 2007.

Course description. Advanced Patent Law will take up a dozen or so advanced topics in patent law. These will probably include claim drafting, international patent applications, opinion letters, remedies in patent cases, security interests, patentability of software, and patentability of genetic sequences. While Patent Law and Trade Secrets is not a formal prerequesite for this course, students who have not taken Patent Law and Trade Secrets should be prepared to do extra reading in the first few weeks to familiarize themselves with the basic concepts of patent law.

Who should take this course? This course is chiefly intended for those who are considering making a career in patent law. Most such students will have an undergraduate degree in a technical field, qualifying them to sit for the Patent Bar Exam (requirements given at http://www.uspto.gov/web/offices/dcom/gcounsel/oed.htm ). This course will not assume that the student has technical training in any particular area, but some classroom discussion topics will draw upon a basic math and science background.

About the professor. Carl Oppedahl is a practicing lawyer in Summit County, Colorado. He is a partner in the firm of Oppedahl Patent Law Firm LLC. You can read more about him at the firm's web site.

Cancellations and make-up classes. Prof. Oppedahl is a practicing attorney with his office in Summit County, at some distance from the Law School. There is thus the possibility of class cancellations with little advance warning due to client needs or due to blizzards, in which case students should be prepared to attend make-up classes.

Course materials. There is no commercial casebook for this course. Students will be expected to obtain the Patent Act (35 US Code), the Patent Rules (portions of 37 CFR), the Paris Convention, and the Patent Cooperation Treaty, all of which can all be found free of charge on the Web or can be purchased in law school book stores. These items are voluminous and students may find it workable to read them online and to print out only the pages that are needed for a particular class. In addition, there will be numerous duplicated course materials, most of which can be downloaded instead from the Oppedahl Patent Law Firm LLC web site at http://www.oppedahl.com.

Meeting place. The course is scheduled to meet in room 259.

Final exam. May13th, 2008, 1:00pm

Meeting time. The course is presently scheduled to meet Wednesdays 2:45-5:15 PM. I will ask the students whether their schedules may permit occasionally staying later for makeup times in case bad weather or other events cause course cancellations.

Attendance and grading. There will be a final exam and students may be asked to do a short writing assignment. There may also be "pop" quizzes, which may or may not count toward the course grade, if I am not sure everybody is doing all the readings. Students should appreciate that this is an advanced course with no commercial casebood text and no commercial outlines to fall back upon; it is difficult to imagine doing well in the course without regular study, attendance, and class participation. Thus, while classroom attendance will not be an explicit part of the class grade, it is likely that missing class will result in a poorer grade in the class.

Use of the Internet. Each student in this course is urged to obtain an Internet account if he or she does not already have one. This syllabus, updates to the syllabus, and other course announcements will be available on the World Wide Web at http://www.oppedahl.com/apl/. Students in the class will be urged to subscribe to an email discussion list as described below. Prof. Oppedahl's email address is . Most of the course materials will be available via download from the http://www.oppedahl.com web site, but some materials require Adobe Reader to read and print them. You can obtain Adobe Reader from http://www.adobe.com/prodindex/acrobat/readstep.html.

Email discussion list. Students in Advanced Patent Law are strongly urged to subscribe to the Advanced Patent Law email discussion list server. To subscribe, send an email message to imailsrv@oppedahl.com with the following in the body of the email: subscribe apl-l Homer Simpson, supplying your name instead of "Homer Simpson". You should then receive a confirmation email message stating that you have bee successfully subscribed to the list server. Each email message sent to apl-l@oppedahl.com will be automatically emailed to everyone who has subscribed. If you reply to such an email message, your reply is automatically emailed to everyone who has subscribed. Between now and the first day of class, this list server will also serve those who wish to be kept up to date as this syllabus is finalized. If you would like to be notified as this syllabus gets finalized, please subscribe to the list server. You can always unsubscribe later.

Students who have previously taken a patent law course should review their notes from that course prior to the first class, and should be prepared to re-review their notes from time to time during the semester, since the topics covered in Advanced Patent Law build upon concepts learned in Patent Law and Trade Secrets.

To do before the first class. Students should obtain the materials listed below for the first day of class, prior to the first day of class, from this web site. Students should study the materials prior to the first day of class.

Course outline. What follows is an approximate outline of the topics to be covered in the course. Students should be prepared for the possibility of changes due to topics taking more or less time than expected. Students should feel free to speak up regarding particular advanced topics they would like to suggest for discussion toward the end of the course if the syllabus is finished with time to spare.

Class 1. January 16. Review of some patent fundamentals. Pick up a copy of U.S. Pat. No. 5,448,226 from the US Patent Office web site, or download it from http://pdfs.oppedahl.com/US/5448226.pdf, and read it. Be prepared to discuss the various parts of the patent and why they are present. Identify the independent claims, and the dependent claims. Which claims are method claims, and which are apparatus claims? Compare claims 1 and 19 and be prepared to discuss why both claims are in the patent. Also read Examining Corps Official Gazette Notice at http://www.uspto.gov/web/offices/com/sol/og/2007/week02/patexam.htm.

Class 2. January 23. Claim construction. Pick up Sage Prods. Inc. v. Devon Indus. Inc. 880 F.Supp. 718, 35 USPQ2d 1321 and read it. The figures are quite important. (I have placed a PDF of the case on the web site but it is not very good, some of the figures seem to be missing or cut off.) What patents are being asserted, and against which products? Who owns the patents and who makes the products? It will be helpful to draw a picture. Be prepared to explain in detail, for each claim and each product, how the claim elements are (or are not) found in the product. Again, drawing pictures will be helpful.

Class 3. January 30. Information disclosure statements, powers of attorney, inventor's oath or declaration, assignments, indemnification clauses in contracts. Read the following materials and be prepared to answer questions about these materials. Here is a rules excerpt containing the rules cited below.

Information disclosure statements
- 37 CFR § 1.56
- 37 CFR § 1.97
- 37 CFR § 1.98
- Form_PTO/SB/08a version A or version B (Version A can be read only using Acrobat 7.0.8, so if you do not have version 7.0.8, use Version B)
powers of attorney
- 37 CFR § 1.32
- 37 CFR § 1.33
- 37 CFR § 1.34
- 37 CFR § 1.36
- Form PTO/SB/80
- Form PTO/SB/81
- Form PTO/SB/96
inventor's oath or declaration
- 37 CFR § 1.63
- 37 CFR § 1.64
- 37 CFR § 1.66
- 37 CFR § 1.67
- 37 CFR § 1.68
- 37 CFR § 1.69
- Form PTO/SB/01
- Form PTO/SB/01a
assignments
- 37 CFR § 1.46
indemnification clauses in contracts
- Please read the sample contract as if the consultant were your client. Identify any potential issues that you think might be valuable to discuss with your client.

Class 4. February 6. Patent marking. Read the Trim-Tex case. Pick up Patent Marking of Systems, 11 Santa Clara Computer & High Technology Law Journal 205 (1995) from http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_287.htm. and read it. Also read 35 USC 287 at http://www4.law.cornell.edu/uscode/35/287.html. The article discusses the importance of marking one's product with one's patent number. But what if one does not make products, but merely owns a patent -- what are the consequences of their not having a product to mark?

Class 5. February 13. Examination guidelines in biotech patent law. Pick up Synopsis of Application of Utility Guidelines with Examples from http://www.uspto.gov/web/offices/com/sol/og/1995/week34/patutil.htm and read it. Read/review 35 USC 101. Be prepared to discuss how the Guidelines (which were issued in 1995) differ from previous Patent Office practices.

Class 6. February 20. Patenting software I - is it patentable subject matter? Read Interim Guidelines for Examination of patent Applications for Patent Subject Matter Eligibility at http://www.uspto.gov/web/offices/com/sol/og/2005/week47/patgupa.htm.

Patenting software II - the patent application. Read 35 USC 112 at http://www4.law.cornell.edu/uscode/35/112.html. Print out Deposit of copies and phonorecords for copyright registration (37 CFR 202.20 available at http://www.loc.gov/cgi-bin/formprocessor/copyright/cfr.pl?&urlmiddle=1.0.2.6.2.0.175.15&part=202&section=20&prev=19&next=21) and read it, particularly the portion (part (c)(vii)). Consider reasons why one might include executable code, source code, flowcharts, or portions of these, in a patent specification. Contrast with the deposit requirements for copyright.

The remaining classes will be scheduled in more detail, and reading assignments set, as we find out how the class is progressing. Here is a tentative list of topics.

Classs 7 and 8. February 27 and March 5. The Paris Convention. Some readings from the text of the Convention, which may be found at http://fletcher.tufts.edu/multi/texts/BH004.txt .