Patent Prosecution

With Joe Barich

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About the Patent Prosecution Class

My Patent Prosecution class takes students who have taken the Patent Law pre-requisite and teaches them the basics of Patent Prosecution from the ground up.  We concentrate on practical examples and learning the practical skills that will allow students to draft most patent applications.  Many 2Ls who have taken the class and then worked at a firm the following summer report back that the lawyers that they worked with rated their skills as on par with first or second year associates. 

In the class, we start with a new innovation that is fairly complex and typically involves elements of an apparatus, a distributed system, and a business method.  Over the course of the semester, the students write a patent application for the innovation in stages and with feedback from me.  Their patent applications are then submitted to me to act as a surrogate Patent and Trademark Office (PTO), so that students can get a feel for working with the PTO.  That is, as in real life, their initial applications are all rejected by the PTO and then they must respond to the rejections by amendments and/or arguments.



2010 Class Materials
2010 Invention Disclosure - CarbonSaint
2010 Comments on Claim Drafting




Some Student Comments on the Patent Prosecution Class

  • I had a great time in your class this semester. It was easily the most hands-on, most useful class I have had in law school. Your feedback has been outstanding and your dedication to the course and to providing a realistic simulation has been unbelievable. I think we all hope that we'll have your drive to give back when we're 9 or 10 years into practice. I'll be in Chicago this summer putting my new skills to work. It would be a thrill to interact with you professionally at some point. My schedule for next year is still in development, but the Patent Clinic is definitely on my short list for the Spring.
  • I learned more in this class than anything I have done in law school.
  • I also wanted to say that I really enjoyed your patent prosecution course. I learned a lot in the course and I think it will really help me at work this summer. I know you put both a lot of work into the course and in commuting from Chicago every Friday during the Spring semester. I have all of your notes printed in a binder that I plan to use as reference for a long time to come.
  • Also, thank you for getting our grades to us so quickly -- it was a pick me up to get good feedback before going into my final exams this week and next week
  • Thanks again for the opportunity to take your class. I really enjoyed it.
  • Thanks for everything. I really enjoyed the class and I think learned a lot. I'm glad I had a chance to work out some of the kinks before it actually counts. I'll be sure to let you know how the summer goes. I have a feeling my first-year friend at the firm is going to be jealous
  • Thank you for your comments and patience this semester; I know you had a lot of work this semester, and I thought you should know that your contributions to the Law School do not go unnoticed or unappreciated.
  • Prof. Barich's dedication to this class and the amount of time he sacrifices to make it excellent are amazingly inspiring.  Amount of feedback he provides is amazing.  Course was tough but fair.
  • The course materials were excellent.  I will use these in practice.  Professor Barich is very interested in students learning the material. 
  • [What aspects of this course were most beneficial to you?] Alerting us to the potential pitfalls of patent prosecution that we may not be aware of as first-year associates.
  • VERY hands on and practical.  Best class I've taken to prepare for this 2L summer.


2009 Class Materials

2009 Invention Disclosure - FitPotato
2009 Comments on Claim Drafting
2009 Comments on Detailed Descriptions
2009 Comments on Full Application Drafting
2009 Sample Application - Part 1
2009 Sample Application - Part 2
2009 Comments on Filing Paperwork
2009 Comments on First Amendment
2009 Sample Amendment
2009 Comments on Final Amendment



2008 Class Materials
2008 Invention Disclosure - WikiWalker
2008 Comments on Claim Drafting
2008 Comments on Detailed Descriptions
          2008 Sample DD
          Additional 2008 DDs Here Here Here Here
2008 Comments on Filing Paperwork and Full Application Drafting
2008 Comments on First Amendment


2007 Class Materials

2007 Invention Disclosure - CouponMaster
2007 Comments on Claim Drafting
2007 Comments on Detailed Descriptions
          2007 Sample DD
2007 Comments on Full Application Drafting
2007 Comments on Filing Paperwork
2007 Comments on First Amendment
2007 Comments on Final Amendment



2006 Class Materials
2006 Invention Disclosure - PowerBrella
2006 Comments on Claim Drafting
2006 Comments on Detailed Descriptions
2006 Comments on Full Application Drafting
2006 Comments on First Amendment



2005 Class Materials
2005 Comments on Detailed Descriptions
2005 Comments on Full Application Drafting
2005 Comments on First Amendment