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USC Gould School of Law PATENT LAW FOR SCIENTISTS AND ENGINEERS LAW-599 SPRING 2013 SYLLABUS

I. BASIC INFORMATION A. Course Description Many graduate and professional students in engineering, the natural sciences, medicine, and pharmacy will go on to become inventors. Most, however, will have little or no understanding of the rules that govern the process of obtaining and enforcing the patents that protect their inventions. Because a single patent can be worth hundreds of millions of dollars, it is vital that scientists and engineers understand the legal framework in which patents exist so that they can avoid critical mistakes that can result in inadequate patent protection for their inventions or, indeed, complete loss of such protection. This course aims to give future inventors the tools to make, in consultation with their patent attorneys, more informed decisions about protecting their inventions by providing them with an in-depth introduction to patent law using materials appropriate for nonlawyers. The topics to be covered include indefiniteness of patent claims, the written description and enablement requirements, invalidity based on anticipation, rules for what is and is not prior art, invalidity based on statutory bar, invalidity based on obviousness, claims and claim interpretation, literal infringement, infringement under the doctrine of equivalents, indirect infringement, unenforceability, and post-grant proceedings such as reexamination and reissue. The course will cover both current law and the changes to be phased-in under the 2011 Leahy-Smith Act. Students who have successfully completed the class will also be able to make an informed decision about whether they wish to study for and take the US patent bar examination and become registered US patent agents, obtaining an additional credential that can expand career opportunities and improve employment prospects both in the US and in other countries.

B. Instructor Professor: Roman Melnik Phone: 626-356-1869 Email: romanmelnik@yahoo.com Office Hours: Wed., 3:15-4:15pm (Law 306B), or by appointment.

C. Textbooks Janice Mueller, Patent Law (3d ed. 2009) Alan L. Durham Patent Law Essentials (3d ed. 2009) Additional materials for some lectures will be posted on Blackboard. D. Time and Place Thursdays, 6:30 pm to 9:30 pm. Room 114, Musick Law Building, USC. E. Credit and Grading 3.0 Units; option of numerical grading or CR/D/F. F. Prerequisites There are no formal course prerequisites. G. Class Recording Classes will not be routinely recorded but may be recorded upon a request made through the Law Portal (or to the instructor) by an individual student who is unable to attend a particular class due to illness or other emergency. Routine requests for recording are disfavored. H. Course Objectives After completing the course, students should be able to: (1) Analyze a patent claim and develop alternative interpretations of the claim language based on the nature of the accused products, the prior art, and other relevant factors. (2) Determine what is and what is not prior art to a particular patent claim, both for anticipation and obviousness purposes, under both current law and the 2011 LeahySmith Act. (3) Assess whether a particular art reference anticipates a patent claim. (4) Evaluate whether a particular prior art reference or combination of prior art references renders a patent claim obvious. (5) Assess whether a particular accused product or process infringes a patent claim literally or under the doctrine of equivalents. (6) Determine whether an accused infringer may be liable for indirect or foreign activity infringement.

(7) Evaluate whether a patent has been rendered unenforceable by conduct of the patent applicant. (8) Assess whether a patent claim may be invalid due to indefiniteness, lack of enablement, or lack of compliance with the written description requirement. (9) Determine when and whether initiation of particular post-grant proceedings may be of benefit to either the patentee or the accused infringer. (10) Evaluate which arguments and defenses in a patent lawsuit are most likely to lead to a cost-effective resolution. II. COURSE REQUIREMENTS & GUIDELINES A. Class Preparation and Participation Class discussion will commence with the assumption that everyone is thoroughly familiar with the assigned materials and is prepared to participate in discussions in a professional manner. B. Attendance and Classroom Behavior Regular and punctual attendance is expected of all students. Copies of all lecture slides will be posted on Blackboard shortly after each lecture. Diagrams drawn on the board during the lecture will not usually be posted, and should be obtained from classmates notes. C. Grading Criteria Homework will consist of reading assignments from the above two textbooks and other selected materials, and practice problems. Practice problems assigned as homework will not be graded, but will, instead, be solved collectively during a subsequent class. No separate points will be awarded for class participation (but students who participate in class will be rewarded with fabulous snack prizes). There will be an open book in-house final examination, which will be at least partially multiple-choice in format. Students are permitted to use computers with Soft Test (an exam administration program installed by the Law School) on the final. D. Statement on Academic Integrity USC seeks to maintain an optimal learning environment. General principles of academic honesty include respect for the intellectual property of others, the expectation that the work submitted represents solely the effort of the person(s) submitting the work (unless otherwise allowed by an instructor), and the obligations both to protect ones own academic work from misuse by others as well as to avoid using anothers work as ones own. All students are required to understand and abide by the Law Schools policies and expectations, http://mylaw2.usc.edu/portal/policies/handbook/character/plagiarism.cfm,

as well as those of the University, http://www.usc.edu/studentaffairs/SJACS/forms/AcademicIntegrityOverview.pdf, regarding academic integrity. E. Accommodation of Disabilities USC is committed to providing reasonable accommodations for members of the student body who have permanent or temporary physical, learning or other disabilities, to ensure that all students are given an equal opportunity for learning and for pursuing their academic interests. Students wishing to seek accommodation should consult the policies and procedures in the Law School Student Handbook, http://mylaw2.usc.edu/portal/policies/handbook/exceptions/disabilities.cfm.

F. Emergency Preparedness/Course Continuity in a Crisis.


In case of a declared emergency if travel to campus is not feasible, USC executive leadership will announce an electronic way for instructors to teach students in their residence halls or homes using a combination of Blackboard, teleconferencing, and other technologies. Please activate your course in Blackboard with access to the course syllabus. Whether or not you use Blackboard regularly, these preparations will be crucial in an emergency. USC's Blackboard learning management system and support information is available at blackboard.usc.edu.

III. ASSIGNMENTS Tentative Course Schedule: A Weekly Breakdown

Topics

Readings and Homework (to be completed before that weeks lecture) (check Blackboard for possible changes)

Week 1 Date

An introduction to different forms of intellectual property; format of the US patent document; claims and claim drafting; US patent prosecution and litigation.

(1) Schechter & Thomas, "Intellectual Property," pages 1-9 (posted under " Content") (2) McJohn, "Intellectual Property," (2d ed.) pages 1-5 (posted under " Content") (3) Mueller textbook: chapters 1 & 2 (except pages 59-63). (4) Durham textbook: pages 9-21,

33-38, 62-70, 77-80 & 218-223. (5) Goldstein et al., "Patent Law for Scientists and Engineers," pages 319 and 203-240 (you can skim pages 6-11 and 210-214) (posted under "Content") (6) Handout of prosecution history of '685 patent (posted under "Content") (simply browse this document). (1) Mueller 97-113. (2) Durham pages 80-85. (3) Goldstein et al, chapter 4 (but omit 4.5) and portions of chapter 8 (pages 147-156 & 166-173) (posted under Content). (4) Finish any practice problems not completed in class. (1) Durham 90-94 & 108-111. (2) Mueller 121-33 and 135-153. (3) Merges (4th ed.) 387-93 (posted under Content). (4) Finish any practice problems not completed in class. (1) Durham 94-108 & 120-21.

Week 2 Date

Claims and claim drafting (continued); claim definiteness under 112, 2; overview of the two disclosure requirements of 112, 1; the enablement requirement.

Week 3 Date

The enablement requirement (continued); the written description requirement; overview of 102; the standard for anticipation.

Week 4 Date

Week 5 Date

Week 6 Date

The standard for anticipation (continued); the novelty-destroying provisions: 102(a) and 102(e); 102(f); novelty(2) Mueller 153-156 & 174-90. destroying provisions (continued): 102(g). (3) Finish any practice problems not completed in class. Section 102(g) (concluded); Rule 131 (1) Mueller 530-541. practice; international issues and 102. (2) Finish any practice problems not completed in class. Introduction to the statutory-bar (1) Durham 121-29. provisions; 102(b) "public use; 102(b) "on-sale bar." (2) Mueller 156-73.

(3) Homework problem re Williams v. Forsythe interference. (4) Finish any practice problems not completed in class. (1) Durham 111-120. (2) Mueller 191-233. (3) Finish any practice problems not completed in class. (1) No additional reading assignment. (2) Finish any practice problems not completed in class. (1) Durham 53-64 & 149-160.

Week 7 Date

Experimental use and sale negation of the 102(b) bar; 102(c) and 102(d); the obviousness requirement and 103 (historical overview).

Week 8 Date

The obviousness requirement and 103 (historical overview) (continued); the obviousness requirement after KSR.

Week 9 Date

The obviousness requirement after KSR (concluded); claim construction and literal infringement; the prima facie test under the (2) Mueller 325-359 (except 328doctrine of equivalents. 30).

Week 10 Date

The prima facie test under the doctrine of equivalents (concluded); the four legal bars to the application of the doctrine of equivalents; infringement of means plus function claims; reverse doctrine of equivalents

(3) Finish any practice problems not completed in class. (1) Durham 160-174 & 67-70 & 174-175. (2) Mueller 360-382 & 87-91 & 359-360. (3) Finish any practice problems not completed in class. (1) Durham 141-49 & 175-76 & 133-37.

Week 11 Date

Experimental use exception; indirect and foreign activity infringement; inequitable conduct.

(2) Mueller 328-31 & 383-401 & 412-416 & 431-42. (3) New cases on joint direct infringement and inequitable conduct (posted under Content) (4) Finish any practice problems not completed in class. (1) Durham 40-43.

Week 12

Post-grant proceedings: correction, reexamination, reissue, inter-partes review

Date

and post-grant review.

(2) Mueller 297-324. (3) Finish any practice problems not completed in class. (1) Merges 12-13 Supp. at 29-44 & 53-54 (posted under Content). (2) Chisum Supp. on Leahy-Smith Act, sec. 3 (pages 9-41) and Appendices B & C (posted under Content) (optional reading) (3) Wegner Supp. on Leahy-Smith Act, secs. 100-237 & 300-432 (posted under Content) (optional reading) (3) Finish any practice problems not completed in class. (1) Homework Problem 2008 Final Exam Essay (posted under Content). Note: when this question was administered, students were permitted to use a ruler when answering the question. (2) Homework Problem 2009 Final Essay Question (posted under Content). Note: when this question was administered, students were permitted to use a ruler when answering the question. (3) Finish any practice problems not completed in class.

Week 13 Date

The new prior art rules under the 2011 Leahy-Smith Act.

Week 14 Date

Review for final: practice problems from old exams.

Week 15 Date

[Reserved for make-up lectures and additional exam review]. [TBD]

FINAL Date

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