January 24 - Mark Janis, Patent Law

 

Announcements-

• Bake Sale will be on February 13, the Wednesday before Valentine’s Day.  Please start thinking about what time you could possibly work and/or what items you would like to bring. 

• Dr. Brant will be speaking to us next week.  His title of his presentation is "Eugenics - Past, Future, and a Question: Is eugenics ('good genes') ever ethically acceptable?”  It will be a great talk, so please plan to attend.

Speakers- Professor Mark Janis and Professor Kneeble of Indiana University School of Law

Many patent lawyers have an engineering or science background, then also 3 years of law school.  There are two different kinds of patent lawyers: those who are primarily courtroom lawyers and those who are patent prosecution lawyers.  The courtroom patent lawyers usually deal with patent infringements.  Prosecution lawyers advise their clients (those wanting to obtain a patent), do all the writing and filling out paperwork.  To be a patent prosecution lawyer, you have to be a US Patent Bar member and also have a technological background. 

Below are some examples of patents that Professor Mark Janis has worked on in the past.

• A company wanted a patent on pig intestine. Professor Janis had to find why the pig intestine was important (used as a tissue graph material, causing remodeling of the tissue).  He then needed to know how the intestine was exactly used (combined inertial layers gave the best tissue graph results).  All of this information was needed to make the best patent, and made it possible to come up with a patent for the pig intestine. 

• Loratadine is the active ingredient in Claritin, and a metabolite is formed when loratadine is digested.  Those who had a patent on Claritin wanted to get a patent on the metabolite as well before the patent of Claritin was up.  They sued a company when it came out with a generic brand of Claritin, saying that they had infringed on their patent on the metabolite. 

Professor Janis and Professor Kneeble said that scientists should know a few things before they file for a patent.

• The rules about disclosing before filing for a patent

• Difference between what you bring to the lawyer (often the prototype) and what is the actual invention (the concept of the invention and how you made and designed it)