Patent Prosecution Practice II – 5232

Spring 2024


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 U.S. Patent Application based on a real invention, (2) write an appeal brief according to rules of the U.S. Patent Trial and Appeal Board, arguing patentability and reversal of the patent examiner in view of an examination history by the U.S. Patent Office, and (3) provide clearance counseling to a client about to launch a new product, including reviewing issued U.S. 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 U.S. 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 U.S. 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 U.S. 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.

Other Sections

Spring 2025

Spring 2023

Brian Dawley ’08
Ambar Nayate ’07