First Female USPTO head to keynote 4th Annual Patterson Thuente IP Lecture

Stanek Rea’s lecture will explore what the future holds for the USPTO. She will also discuss the role patents play in fostering economic prosperity, a topic fitting for Minnesota, considering a recent Brookings Institution report placed the Minneapolis-St. Paul metropolitan area ninth out of 358 metropolitan areas for the number of patents issued annually.

Long considered one of the country’s leading experts in intellectual property law, Acting Director Rea has the distinction of being the first woman to head the USPTO. She continues to also serve as Deputy Under Secretary and Deputy Director. In her dual roles, she is the principal advisor to the secretary of commerce on both domestic and international intellectual property matters and has responsibility for the management and oversight of the policy, budget, and operations of the USPTO, an agency with more than 11,000 employees.

The Patterson Thuente IP Lecture is an annual event, sponsored by the Minneapolis law firm of Patterson Thuente IP. The event brings to William Mitchell national leaders in the intellectual property community and draws more than 200 business leaders and intellectual property attorneys from across the state.

The event is free and open to the public. Seating is limited. Register by Monday, May 13  

Mitchell IP students with Chief Judge Rader and Prof. Erstling in Washington D.C.

A group of William Mitchell Intellectual Property Institute students recently traveled to Washington D.C. to receive a firsthand look at the inner workings of the USPTO.

Six students made the trip, which was funded by the Intellectual Property Institute and designed to introduce them to many of the country’s leaders in protecting business, commerce, and innovation.

While in the nation’s capital, students met with Randall R. Rader, chief judge of the U.S. Court of Appeals for the Federal Circuit, discussed the America Invents Act with USPTO attorneys, and sat in on a Trademark Trial and Appeal Board hearing.

The trip is just one of the ways Mitchell’s Intellectual Property Institute allows students to make connections at the highest level of the profession, gain firsthand experience in practicing the law, and see how the theories they’re learning in class apply to the real world.

Mitchell

William Mitchell, which has won the MIPLA Cup three times, is the only Minnesota law school to have placed a team in the final round of the MIPLA competition each of the six years in which it has taken place.  Teams present oral arguments before competition judges, who are among the state’s most distinguished intellectual property law practitioners.

MIPLA sponsors the MIPLA Cup Competition to help Minnesota law schools prepare their teams for the Giles Sutherland Rich Intellectual Property Moot Court Competition, which held its Midwest Regional Competition March 15-17.  In the Midwest Regional Competition, the Vite/Hilstrom team was one of the top eight teams out of 28 teams competing, advancing to the semi-final round.  Mitchell’s teams were coached by Jim Baker ’03, senior intellectual property counsel at 3M.

MIPLA is a non-profit organization formed to promote intellectual property law and enhance members’ professionalism.  MIPLA members include attorneys practicing in patent, copyright, trademark, and trade secret law, patent agents, paralegals, and students interested in the practice of intellectual property.

MIPLA is more involved with local law schools than any other state intellectual property association in the country.  MIPLA members generously give their time and scholarship dollars to help Minnesota law schools excel in educating future IP attorneys.

“Patent Law Pro Bono: A Best Practices Handbook” is designed to help lawyers set up pro bono programs to help low-income inventors navigate the patent application process. A provision of the Leahy-Smith America Invents Act (AIA) requires the United States Patent & Trademark Office to work with IP law organizations to develop pro bono programs for low-income inventors. The handbook serves as a guide for these organizations, located across the country, as they create patent law pro bono programs. Currently there are at least five state and regional programs in some stage of development.

The handbook was written by Amy Salmela, a partner at Patterson Thuente IP, and Mark Privratsky, a partner at Lindquist & Vennum and chair of its Intellectual Property Group.

William Mitchell students in the Intellectual Property Institute edited and fact checked the handbook before publishing it in Cybaris®, a top student-run intellectual property law review journal that includes videos of author interviews and reader comments.

Download the handbook

Learn more about Cybaris

Read the iP Frontline magazine article about the book

Learn more about the Intellectual Property Institute at William Mitchell

Recently, the USPTO was tasked with implementing the America Invents Act, an important piece of legislation that significantly changes the U.S. patent system. Knight will present highlights of that new legislation, along with an overview of the federal rulemaking process.

The general counsel also works with the U.S. Solicitor General’s Office on Supreme Court cases involving intellectual property issues. Knight will discuss the process for determining the government’s position in cases and a few of the recent decisions.

With intellectual property frequently described as the currency of innovation, and innovation seen as a key vehicle to economic growth and prosperity, Knight will also discuss how intellectual property and the work of the USPTO contributes to the United States economy.

Knight’s appearance at Mitchell is made possible thanks to the law school’s top intellectual property program, which has strong ties to the USPTO. Mitchell is home to:

the Intellectual Property Institute, an international leader in fostering and protecting innovation
the Intellectual Property Clinic, which, under the direction of Professor Jay Erstling, helps students develop legal skills by working with small businesses, nonprofits, and individuals on legal issues. Mitchell is one of only six law schools in the nation to be chosen to participate in the U.S. Patent and Trademark Office Law School Clinic Certification Pilot Program, which allows students to practice patent and trademark law before the USPTO under the supervision of faculty
one of the most developed intellectual property law curricula in the country.
The event is open to Mitchell students, alumni, and prospective students. Seating is limited. Reserve your seat by emailing Meg.Daniel@wmitchell.edu.

Learn more about William Mitchell’s top intellectual property progam

Learn more about USPTO General Counsel Bernie Knight

“Our local IP community is remarkably supportive and our board of advisors has been fantastic,” says Professor Ken Port, director of the Intellectual Property Institute. “They financially support the school and support our students by being mentors.”

Jim Baker ’03, senior intellectual property counsel at 3M, has demonstrated his commitment by serving as a mentor, a coach, and in the classroom. Baker coaches Mitchell’s moot court Giles Rich teams every year and co-teaches Mitchell’s IP appellate practice course, a pre-requisite for IP moot court participation. But his involvement doesn’t stop there. He and his wife Lana Perkins have established a scholarship through yearly financial gifts and an estate gift.

“The legacy I want to leave is the people legacy, law students whose lives I have touched in a positive way,” Baker says. “I want to be able to look back and see hundreds of young attorneys I’ve helped become better attorneys through my teaching, or my coaching, or through the Baker IP Law Scholarship.”

Baker has been a frequent mentor to Mitchell students, and as an adjunct professor, he provides another key link to the IP community.

“Adjunct professors give of their time, expertise, and knowledge, for not a lot of money,” says Port. “They get to see the new talent coming up and it’s always invigorating to talk with students who want to do what you’re doing. Frankly, we could not deliver our curriculum without the adjunct faculty. They are really dedicated to the education.”

Students in the IP Institute are often matched with a professional who is in their science field, exposing them to the specific details of the environment they’ll be working in.

“We don’t just throw a body in front of them who has a vague understanding of their field,” says Port. “We work to find someone in IP and in their science.”

The results speak for themselves. For the fall of 2012, patent-eligible incoming students (science and engineering students who can sit for the patent bar) are up 50 percent. And graduates are finding out they’re in demand. Port says he often hears from students who are trying to choose among two or three job offers. Those offers frequently come through connections they made during their time at Mitchell.

For many alumni, it’s a simple matter of treating students the way they were treated.

“I think alumni give back because while they were here, they knew people cared about them,” Port says. “They sense the value-added they received. It’s a personal thing. People won’t give to a law school just for the fun of it. They have to feel they got something out of it, and that the people there care about them.”

Mitchell student and State Rep. Joyce Peppin, R-Rogers, today (Thursday, April 5, 2012) introduced House File 2996, the Small Business Trademark Protection Act, which seeks to provide an alternative settlement process in trademark disputes between companies who attempt to assert their trademark rights beyond a reasonable interpretation of those rights.  This conduct is called “trademark bullying” by the US Patent and Trademark Office.

Currently, small businesses have little ability to fight an expensive legal battle if a large and well-known corporation demands that a smaller company stop using a trademarkDue to the perceived excessive cost of waging a legal battle, small business owners usually stop using their trademarks, even if they have been marketing their company trademark for years. The financial impact can be devastating to a small-business owner trying to build market share.

The bill, along with its companion in the Senate (Senate File 2598), which was authored by Sen. Geoff Michel, would allow small businesses to bring a legal action to a state settlement court, the Office of Administrative Hearings, at a much lower cost. If the larger company refuses to participate in the settlement conference, an administrative law judge could issue an order recommending the Secretary of State revoke that company’s license to do business in Minnesota.

“There are already so many obstacles and costs  associated with starting a small business and making it profitable,” said Rep. Peppin. “Leveling the playing field so that small businesses can defend themselves in frivolous and expensive trademark disputes is one thing we can do to help small businesses thrive in Minnesota.”

Professor Kenneth Port, director of William Mitchell’s Intellectual Property Institute, has analyzed all 2,700 trademark cases since the inception of the Lanham Act, the primary federal trademark statute in the United States. He found that only 1.5 percent of all trademark cases filed reach a trial on their merits, largely because small companies can’t afford to fight the case in a court of law.

“Trademark bullying is happening in the United States and it is suppressing development,” said Professor Port. “This legislation could address that inequity.”

William Mitchell’s intellectual property law program features an extensive, broad-based curriculum focused on patent, trademark, and copyright law. Assisting in the drafting of  House File 2996 is just one of the ways that William Mitchell offers practical, real-world educational opportunities. Other students that helped in this continuing effort to bring balance to the American trademark system included Jessica Alm, David Matzen and Mitch Billings.

http://web.wmitchell.edu/news/2012/03/get-a-candid-insider-perspective-on-the-america-invents-act/

1. Trademark Litigation and Trademark Prosecution will be eliminated.  In their place, we will offer one 3 credit course each spring called Advanced Trademark Law.  This course will combine practice before the TTAB, litigation and cutting edge issues largely brought on by the Internet and computerized use of trademarks.

2. Intellectual Property Transactions will be eliminated.  In its place will be a 6 credit IP Keystone course called Intellectual Asset Management.   This course will have the optional component of a Long Paper.  If students elect to take the course and write their Long Paper (or any 25 page paper) for this course, two additional credits (totaling eight) will be allotted.  The idea of this course will be to allow students to experience the full lifecycle of IP from conception, commodification, monetization, management (including buying, selling, or licensing) and, perhaps, extermination.   It is contemplated that students in their last semester with the College would be most appropriate for this class.  Prerequisites will be one of the following and IP Licensing:  Foundations, Trademarks, Copyrights or Patents.  Any student who may want to take this course in the spring of 2013 will have to take Licensing in the fall of 2012 (or have had taken it previously).  The course will be project based.  Each student will be assigned a fictitious corporation, its goals, its IP portfolio, etc. and expected to appropriately manage it in a wealth maximizing, ethical manner.

These changes have to be approved by the Curriculum Committee and the full Faculty.  I anticipate that happening this spring for implementation next year.

Kenneth L. Port

Professor of Law and Director, Intellectual Property Institute

MIPLA sponsors the MIPLA Cup Competition to help Minnesota law schools prepare their teams for the Giles Rich Intellectual Property Moot Court Competition, which held its Midwest Regional Competitions March 16-18.  In the Midwest Regional competition, the <strong>Bruzzone/Martyn </strong>team was one of the top eight teams out of 26 teams competing, advancing to the semi-final round before being eliminated. Mitchell’s teams were coached by <strong>Jim Baker ’03</strong>, senior intellectual property counsel at 3M.

MIPLA is a non-profit organization formed to promote intellectual property law and enhance members’ professionalism. MIPLA members include attorneys practicing in patent, copyright, trademark, and trade secret law, patent agents, paralegals, and students interested in the practice of intellectual property.

MIPLA is more involved with local law schools than any other state intellectual property association in the country. MIPLA members generously give their time and scholarship dollars to help Minnesota law schools excel in educating future IP attorneys.