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BPDA: "Fundamantals of Patent Law" course

Welcome to the BPDA: "Fundamantals of Patent Law" course

This will be a 10 week course covering the fundamentals of Patent law. The course will begin on Aug 18, and run every Friday, 6-8 pm, until Oct 20.

The course fee of $35 will go towards refreshments during the course.

Understanding the patent process can be very beneficial for postdocs as they are often the actual innovators in the labs. This course will help you familiarize the fundamentals of patent law in a very user-friendly manner.

Attendees will gain an understanding of

  • Patent Law terminology, the rules of patentability
  • Patent searches
  • Different components involved in writing a patent application
  • Patent prosecution process

Whether you are simply interested in learning more about the Intellectual Property (IP) law process, or considering a career in Patent Law, this course is a great starting point. This course is designed to serve as a perfect first step for preparing for the Patent Bar exam. 

Tentative Course Outline:

Week 1: CRISPR patent controversy. Fundamental concepts – Terminology and definitions, types of patents, reading a patent, the patent process, navigating the patent examination manual 

Week 2: Criteria for patent eligibility – Patent eligible subject matter, written description requirements, novelty, obviousness, clarity (Myraid, Process Patents, strategies for patenting natural products and biologics, criteria for continuation filings) 

Week 3: The patent specification – Summary, Figures, Description, Abstract - 1 example plus do's and don'ts (Patent fees and timelines) 

Week 4: The patent claims – Types of claims, claim structure, reading a claim   

Week 5: Searching and the application filing - searching for prior patents and walk through patent application transmittal to be sure you correctly file, what are the pieces of a patent application 

Week 6: Office action - example of publicly available office action 

Week 7: Amendments to office actions and review of midterm 

Week 8: Legal recruiter visit 

Week 9: International patent applications.  National stage filing. 

Week 10: Wrap Up –  Review, Final questions, Info on the Patent Bar Examination 

Course Instructors:

This course will be led by Dr. Michael Mattoni, senior patent agent, and Dr. Katherine Jensen, patent agent with Mintz Levin.

Dr. Michael A. Mattoni 

Mike joined Mintz Levin with extensive experience as a registered patent agent. He is well-versed in preparing and prosecuting domestic applications, overseeing preparation and prosecution of foreign applications, contributing to business development activities, and assisting with diligence investigations, including patentability/FTO assessments. Mike is experienced in a variety of technology areas including mechanical, electrical, and medical devices, metallurgical compositions, functional coatings, energy storage, software, and structural materials. Some of the more diverse technical areas in which he has substantive experience include polymer and ceramic composites, carbon nanotubes, graphene electrodes, Li-ion and F-ion electrochemical cells, mass spectroscopy, confocal microscopy, metal-ceramic coatings, intermetallic alloys, semiconductors, phased radar arrays, LADAR imaging, and arthroscopic surgical tools and methods.

Mike earned his PhD in materials engineering at the University of California, where his dissertation research focused on the mechanical behavior of fiber-reinforced oxide composites. He continued his post-graduate research jointly with the materials department and Marine Science Institute at the University investigating the mechanical behavior of bio-materials, specifically marine worm teeth. Mike has also published in numerous scientific journals, including the Journal of the American Ceramic Society, the Journal of Experimental Biology, the International Journal of Applied Ceramic Technology, and the International Journal of Materials Research (Zeitschrift für Metallkunde).

Dr. Katherine C. Jensen

Katie is a Patent Agent with significant biochemistry research experience. Her postdoctoral and graduate work included the expression, purification, and enzymatic characterization of the Alzheimer’s Disease target protein, BACE1; structure-based drug design for the identification and development of novel potent inhibitors; kinetic characterization of inhibitors using steady state kinetic assays; and extensive synchrotron experience for automated X-ray crystallographic data collection. 

Earlier in her career, Katie was a production scientist in the immunodiagnostics division of an international biomedical testing company, and worked at a large food company as a research scientist.