Intellectual Property & Entrepreneurship Clinic - Patent

Students in the Intellectual Property and Entrepreneurship Clinic (“IPEC”) will explore intellectual property needs with clients and will assist them in building various aspects of an IP portfolio. The clinic meets weekly in a class seminar, jointly taught by two instructors who have expertise in patent, trademark and copyright law. While all students are combined in one class, upon enrollment students should select a particular specialty track for the clinic, which will determine the primary nature of the legal work assigned to them in the clinic. The two specialty tracks, described below, consist of the Trademark & Copyright Specialization (4 students) and the Patent Specialization (4 students).

Students who are enrolled in the Patent Specialization will perform patentability searches and draft patentability opinions relating to the scope of protection a client might be able to receive if it filed a patent application. In appropriate situations, the student may then be asked to prepare and file provisional and non-provisional utility patent applications and design patent applications. The clinic participates in the United States Patent and Trademark Office’s Law School Clinic Certification Program, giving students limited recognition to practice before the office for purposes of filing and prosecuting patent applications while they are in the clinic, working under the supervision of a registered patent attorney.

In order to qualify for the USPTO’s Law School Clinic Certification Program for Patents, a student must satisfy the technical qualifications required to sit for the Patent Bar Exam, although there is no requirement that a student actually take that exam in order to participate in the clinic. This generally means that a student must have an undergraduate degree in engineering or the hard sciences. In some instances, a student who has taken a substantial number of science and/or engineering courses, but who did not obtain a degree in one of those disciplines, may qualify for the Patent Clinic. Students should be prepared to produce college transcripts documenting their degrees; in some cases, course descriptions may also be requested. Further information may be found in the USPTO’s General Requirements Bulletin (pages 3 through 5), available at https://www.uspto.gov/sites/default/files/documents/OED_GRB.pdf. Students with questions about whether they may satisfy these requirements should contact Professor Edward Yee, the supervisor of the Patent Specialization.

Students in the Patent Specialization may also have an opportunity to assist with other intellectual property and business law matters being handled by the clinic, such as trademark clearance and registration, copyright registration, preparing a nondisclosure agreement or licensing agreement, or creating a new business entity. However, students should expect that the majority of their assignments will involve patent-related matters.

The clinic includes a “classroom” component, consisting of weekly two-hour meetings at the Law School. During these meetings, students receive instruction on practical topics such as how to conduct a trademark clearance search, how to prepare a patent application, how to create a new business entity, and how to draft a nondisclosure agreement. Students may occasionally be asked to brief classmates on their projects and discuss strategy and work plans, as well as ethical challenges they are facing in their client representations.

Students are also required to attend regular office hours every Friday from 10:00 am to 3:00 pm, where they will meet with prospective clients to learn about their businesses and discuss their legal needs. Additional meetings with existing and prospective clients may be scheduled throughout the week.

P: Intellectual Property Law Survey (May be waived with written permission from the instructor, where the student has taken multiple relevant IP courses but has not taken the IP Survey)

Key to Codes in Course Descriptions
P: Prerequisite
C: Prerequisite or Concurrent Requirement
R: Recommended Prior or Concurrent Course