Patent Prosecution

Patent Prosecution - LAW 797

Patent Prosecution takes students who have taken the Patent Law prerequisite and teaches them the practicalities of patent prosecution from the ground up - including how to draft a patent application and responding to Patent and Trademark Office (PTO) rejections. 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 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, each year we start with a new innovation that is fairly technologically complex and is intended to be a representative sample of what might be encountered in practice. Over the course of the semester, the students write a patent application for the innovation in stages and with feedback from the Professor. Their patent applications are then submitted to the Professor who acts as the PTO so that students can get a feel for working with the PTO. That is, as is typical in real life, the student's patent applications are all rejected by the PTO and then they must respond to the rejections by amendments and/or arguments in an attempt to secure allowance for their patent applications.

The knowledge and experience that I gained in Professor Barich’s Patent Prosecution class helped me make a strong impression as a summer associate. On my first day, a partner dropped a 200+ page paper file wrapper on my desk and simply asked me to draft a “Response” by the end of the week. There was no discussion about what a Response was, no mention of what the file wrapper contained, much less any indication of how it was organized. Thanks to Professor Barich’s comprehensive, in-depth study and practical application of patent prosecution from start-to-finish, I was able to confidently say “no problem” and proceed with the peace of mind of having seen the task before. In fact, there are aspects of his class that still serve me well to this day. An excellent class with real-world application – my highest recommendation!
-Senior Associate at a Large Firm

"Of the classes in law school that I took, yours was the most immediately practical and gave me a leg up on others in the same year."
- Senior IP Counsel, Fortune 500 Company

The Patent prosecution class taught by Professor Barich is incredibly substantive and applicable to real-world practice. Additionally, the class prepared me well for my job interviews. For example, either before or after the first interview, I submitted the patent application and office action response I drafted in this class as my main writing samples. I was successful in securing many callback interviews. I also have received very positive comments about the writing samples during the interview.
-Associate at IP Specialty Firm

Some Student Comments on the Patent Prosecution Class

It was a tremendous class and I have learned a lot [I] must say it was my best class

It was tough, but well worth it.

Pleasure was all mine and I had a great time in both of your classes. Especially I learned so much about drafting a patent application and believe this class will be a great help in the future.

Thank you for a great semester, I learned a tremendous amount and feel my patent skills set grew immensely as a result of your efforts.
Thank you for teaching us the patent prosecution class. Out of all the classes I took in my LLM, this was the most practical and where I learnt the most regarding US prosecution. The materials were excellent, again very practical unlike other subjects in IP where we just have to read the cases and reproduce in the final exams.

Lots of good class materials
Very realistic approach
Tackling a major new project like this has, unexpectedly, taught me something about how to manage a law career as a whole. It was that whole mentality this built up that has been the most beneficial to me.
Thank you for coming down here and teaching us throughout the whole semester.
This course was the most practical course that I have ever had, and I think this will help me a lot when I go to practice.
The class was quite demanding sometimes (as I feel it rightly should be), but the valuable experience and insight gained more than justify the time commitment required to reap the benefits. Students considering patent prosecution work would do well to take your class.
I wanted wanted to thank you again for taking the time to teach this class. It has definitely been the most beneficial class I have taken in law school.
Thanks! I learned so much more that what grades can reflect (especially what NOT to do!) and it has been really good to go through this entire process.
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.
I can honestly say that you are one of the best teachers I have had in 24 years of schooling (1994-2018). I will never forget those "reality talks" you gave us during and after lectures. Your insight and your careful, thoughtful explanation made this most complex subject in law school easy to understand. I will schedule my Fall 18 classes accordingly so that I can allocate more time for the last semester for the IP Clinic.
In addition, thank you for your immense support and patient help throughout the semester. My heartfelt gratitude, once again, for your rigorous efforts.