This is an introductory course in American law, providing an overview of a wide variety of constitutional, statutory and common law legal issues. A primary focus will be on American constitutional law: legislative, judicial, and executive powers; the legal structure of “checks and balances” among the three national governmental powers; the distribution of powers between the national government and state governments (federalism); and the constitutional rights of individuals (including rights of free speech, freedom of religion, due process, and equal protection). We will also examine the American system of litigation: the structure of the court system, the jurisdiction of federal (national) and state courts, and the litigation process. We will also address some common law substantive topics in American law including torts and contracts. Students will have the opportunity to learn how to read and interpret American legal materials, to do legal research within the legal system, and to write an analytical legal memorandum.

This course offers an overview of patent law, both for students intending to specialize in patent prosecution and those whose general practice may include patent litigation and licensing. Topics to be covered include patentable subject matter; novelty, utility, and nonobviousness; statutory bars; enablement and written description; direct and vicarious patent infringement; claim interpretation; and administrative review of patent validity.

Patent Prosecution Practice I is recommended for all students interested in intellectual property and patent law, including students considering practicing in the areas of patent prosecution, litigation, licensing, technology commercialization, and patent portfolio management. The course focuses on US patent practice and is designed to extensively develop the student's skills. Throughout the semester each student will complete two projects: (1) formulate and draft patent claims for a number of different inventions in view of prior art, (2) develop strategies for responding to a patent examiner according to rules of the U.S. Patent Office, arguing patentability and allowance of a patent application over cited prior art. Each student will be paired with a senior practicing attorney who will act as a mentor, including reviewing drafts and providing candid feedback to the student. Lectures and discussion topics include: -Organization and structure of the U.S. Patent Office, -The US patent process including the entire life cycle of a patent from application preparation and filing through examination and grant, -Formulating patent claims in view of prior art and potential infringers, -Architecting patent portfolios including all types of US patent applications, such as provisionals, utilities, continuations and divisionals, -Examination of patent applications including responding to Office Actions issued by the US Patent Office; -Inventorship and ownership determination and legal ramifications flowing therefrom, and -US law and regulations governing patent prosecution practice. A technical background is not required to take this course.

Patent portfolio management is the art of aligning patent strategy with business objectives. In general, the successful portfolio manager must have the ability to transform complex patent information into actionable insights that provide decision-making value to a wide variety of stakeholders. This course introduces students to the various practices and skills that go into building, implementing, and managing a patent portfolio whether from the point of view of a small, innovative, start-up company or a Fortune 500 company in a highly competitive market space.

The field of patents extends across the boundaries of business, technology, innovation, and law. In this course, students will be introduced to a broad range of patent related topics presented by leading practitioners working at the intersection of law and technology. The course is designed to provide an overview of patent law topics, for example: Patents Now and the Future; Strategic Patents; Patent Analytics; Patent Firm Business Model; Patent Agent/Attorney Roles; Global Patent Procurement; Inventors and Inventions; Claiming Inventions; Patentable Subject Matter; Patent Litigation; Patents Appeals and Trials. Leading practitioners lead a discussion for each of these topics. Subject matter experts may include corporate and law firm lawyers, patent agents, intellectual asset managers, consultants, tech transfer officers, and business owners. Open to graduate students, open to undergraduate juniors or seniors in CSE or CBS, open to other undergraduates with instructor permission

Patent Prosecution Practice II is recommended for all students interested in intellectual property and, in particular, students interested in advancing their skills and understanding of patent law and practice. Throughout the semester each student will complete three practical and diverse assignments designed to develop the student's skills. Each student will be paired with a senior practicing attorney who will act as a mentor, including reviewing drafts and providing candid feedback to the student. Specifically, in this class, each student will: (1) prepare a complete US Patent Application based on a real invention, (2) write an appeal brief according to rules of the US Patent Trial and Appeal Board, arguing patentability and reversal of the patent examiner in view of an examination history by the US Patent Office, and (3) provide clearance counseling to a client about to launch a new product, including reviewing issued US patents and developing a full non-infringement / invalidity opinion for the client. The course grade is primarily based on these three projects in lieu of a final exam. Lectures and discussion topics throughout the semester include: -skills and strategies for writing patent applications, -appeal practice including brief writing before the Patent Trial and Appeals Board (PTAB) at the US Patent Office, -clearance analysis including invalidity and non-infringement counseling and opinions, -foreign practice including national filings in foreign countries and international filings using the Patent Cooperation Treaty (PCT), including leveraging patent prosecution highways for accelerated examination, -eligible subject matter issues including recent case law and claim drafting tips, -accelerated examination procedures within the US Patent and Trademark Office, -legal and practical considerations of infringement counseling including formulating invalidity and non-infringement opinions, -post grant review and other mechanisms for challenging issued patents before the US Patent and Trademark Office, -patent prosecution related considerations that arise in relation to participation in industry standards organizations, -patent prosecution related considerations that arise in the context of universities and technology licensing organizations, and -design patents. prereq: Master of Science Patent Law Students only.

Intellectual property rights have been described as a “sword and shield.” Rights holders are thought to act offensively by suing or threatening to sue infringers and seeking money damages, irrespective of the holders’ marketing and product sales programs. Or they act defensively to protect their current or future market positions by having federal courts enjoin competitors. This course considers a third way: intellectual property rights are also valuable intangible assets that may be bought and sold. In this course, we will explore the principal theories and practices of intellectual property transactions. We will be considering closely the doctrines regulating the assigning and licensing of patent, copyright, trademark and other intellectual property rights, and we will be questioning critically whether these laws and practices encourage or inhibit commercial activity and innovation. While studying specific transactions in the course, we will be examining the practical uses of intellectual property law to meet commercial objectives.

This capstone course introduces students to the principles of successful innovation and the integral role of patents in this process. This is a course in innovation. There are no right or wrong answers. Large companies with very smart people often launch products that fail. Venture capitalists seeking to invest in winners more-often-than-not end up investing in losers. Innovation is an art not a science. There is no “secret formula” that guarantees success. There are simply different tools, skills, methods of analysis and approaches that may or may not work better than others. We will explore the art of innovation and the integral role that patents play in turning an idea into an innovation. Goals: Students will learn how to research complex subject matter across the intersecting domains of business, finance, marketing, science, technology and intellectual property. Students will then develop the ability to present their findings in a clear and concise manner that is understandable to and can be acted upon by a cross-functional audience of high-level decision makers.

This course is designed to provide students with an introduction and understanding of the ethics and rules of professional responsibility and the unauthorized practice of law. Scope: This course covers ethics and professional responsibility for lawyers, ethics and professional responsibility for patent agents and patent attorney’s and the unauthorized practice of law. Goals: This course will provide students with the framework that will guide their actions and conduct as future patent professionals by introducing them to various scenarios that they are likely to encounter in their professional career. By the end of the course, students will understand the principles behind the ethics and rules of professional responsibility and the unauthorized practice of law as it applies to nonlawyers. prereq: Master of Science Patent Law Students.

The field of intellectual property extends across the boundaries of business, technology, innovation, and law. In this course, students will be introduced to a broad range of IP related topics presented by leading practitioners working at the intersection of law and technology. Topics may include trade secrets, copyrights, trademarks, patents, IP transactions, IP litigation, emerging technologies, intellectual asset management, IP valuation, and commercialization. Lecturers may include corporate general counsels, firm lawyers, transactional lawyers, litigators, consultants, tech transfer officers, R&D Leaders, and CTO. Open to graduate students, open to undergraduate juniors or seniors in CSE or CBS, open to other undergraduates with instructor permission.