Patent Transactions: Novelty and Best Modes in Legal Innovation

Vol. 6 No. 2

By

Douglas J. Sylvester is the dean of the Sandra Day O’Connor College of Law at Arizona State University, a professor of law, and a faculty fellow for the Center for Law, Science & Innovation. Prior to joining ASU, he worked in the Global e-Commerce Practice Group of Baker & McKenzie. He can be reached at douglas.sylvester@asu.edu. Special thanks to Katie Howland O’Brien for her research and cite-checking assistance.

In a companion article, Patent Litigation Training: Law Schools’ Freedom to Operate, my colleagues at the Sandra Day O’Connor College of Law at Arizona State University, Professors Michelle Gross and Eric Menkhus, discuss the limitations of current curricular offerings in the area of patent litigation. Tellingly, one of the examples they provide for “patent litigation” experience is the excellent Lisa Foundation Patent Law Clinic at Arizona State University (ASU)—a clinic that focuses on patent drafting and issuance.1 It speaks volumes that, when discussing the state of legal education for patent litigation, one of the best practices we can identify is a transaction-focused educational experience!

Yet, as they also note, in a depressed legal market, patent litigation has been a bright spot for firms and newly minted lawyers.2 Transactional patent practice—with its numerous barriers to entry, lucrative prospects, and increased importance as the United States has shifted to a knowledge economy—has been another bright spot.3 Somewhat counterintuitively, and yet presciently I think, Professors Gross and Menkhus posit that the dearth of patent litigation curricula may be a consequence of the workload and financial value inherent in that position.

Despite similar factors for transactional offerings, law schools have done a far better job of preparing students for transactional practice than for litigation. The reasons for this distinction are manifold. As Professors Gross and Menkhus make clear, empirical research on patent litigation, as well as best practices to impart to future litigators, are relatively nascent enterprises, making uniform approaches difficult. In addition, finding experienced and knowledgeable patent litigators with the time and inclination to teach effective courses or clinics in the area is rare. Transactional practice, on the other hand, has a far more doctrinal and consistent knowledge base from which to start building a program. Patent clinics that focus on drafting and prosecution are not without challenges—but there are well-known and uniform doctrinal approaches that may be imparted in any such clinic, as well as a wealth of textbooks, manuals, and materials that can be adopted by schools seeking to start such a program.4 Finally, as discussed below, many schools have used patent clinics to build on broader transactional and entrepreneurial clinics and curricula that, in some cases, have decades of experience teaching students the skills necessary to represent corporate clients. In this way, adding a patent experience may be viewed as complementary rather than revolutionary.

For these reasons, and others noted in more detail below, the field of transactional patent pedagogy is strong and diverse and an area of real strength in the modern law school curriculum. For reasons of economy and depth of knowledge, I focus much of the discussion on my law school’s approach to this area. This is not to diminish any other program or privilege my own. There are many excellent programs in the country and, where possible, I point out their innovations as well.

A cursory review of law school offerings reveals a rapid, and welcome, expansion of both doctrinal offerings on patent law as well as experiential opportunities through clinics and externships. For example, ASU has been offering, for a number of years now, the above-mentioned Lisa Foundation Patent Law Clinic, which provides students with a full array of patent prosecution experiences. Students enrolled in the clinic assist inventors with all aspects of the patent procurement process, including patent drafting, counseling on responding to official actions of the U.S. Patent and Trademark Office (USPTO), patentability searching, infringement and validity analysis, and trademark and copyright registration filings. As noted in the companion article, a distinguishing feature of this clinic is its focus on preparing enforcement-minded transactional lawyers. While clinic students are not actively engaged in patent litigation, they receive training designed to meld the two traditionally distinct areas of patent practice, so that they may understand the impact that actions taken during the patent procurement process have during a subsequent patent litigation—in much the same way that many contract drafting courses are taught with a focus on how courts might interpret the language used.

The clinic is by no means the only, or even the first, such patent prosecution clinic. Dozens of schools have started patent clinics, in various iterations, that share many of the same pedagogical goals as ours. One indication of both the acceptance and variety of these student experiences is the recent decision of the USPTO to begin a Law School Clinic Certification Pilot project.5 The USPTO selects individual programs, upon application, on the basis of an “exemplary intellectual property curricula, . . . effective outreach to inventor communities, and . . . comprehensive client services.”6 Students enrolled in selected programs are then granted limited recognition rights to represent clients directly before the USPTO. Students sign official correspondence, use the electronic filing system, and conduct examiner interviews.

In addition, each patent clinic participating in the USPTO project has the opportunity to expedite the examination of two patent applications per semester by filing a Request to Make Special to be advanced out of turn and examined more quickly by the examiner. The time for examination is still dependent on the workload of the art unit in which the application is filed, but based on our clinic’s experience in using these requests, the average time from filing to first office action is about four and a half months as opposed to 18 months or longer without one. This is significant not only for the clients, but also because it allows a student to draft and file an application and respond to a first action on the same application (provided they participate in the clinic for two consecutive semesters). To date, 28 schools, with four focusing exclusively on patent and only 11, including ASU, certified in patent and trademark, have been selected to participate in the project—and our clinic was selected to join in 2011.7

In some ways, the USPTO project represents the maturity of the educational market for transactional patent practice at the nation’s many law schools. However, underlying the pinnacle of the pilot-certified clinic is a mass of decades-old, and constantly developing, curricular and pedagogical advances that made the clinics possible. Indeed, as noted above, a key component of a successful application to the project is an exemplary intellectual property curriculum. Law schools have been advancing intellectual property curricula for more than two decades. As recently as the early 1990s, it was not uncommon for a law school to have no faculty-driven intellectual property program. Since that time, many schools now require an intellectual property course in the first year or, as at ASU, offer it as a first-year elective.8 Today, almost every law school offers some curriculum in intellectual property, while many continue to offer truly robust offerings in patent and related fields.

It is not uncommon, for example, to see schools offer, in addition to a general introductory course, stand-alone full-semester courses in the main fields of intellectual property—patents, copyrights, trademarks, and trade secrets. Again, one would be hard-pressed to find many high-quality law schools that don’t offer at least those four courses. But a search of schools reveals a breadth and depth at many institutions that, a mere two decades ago, would have been unthinkable. Many schools, including our own, offer courses such as: (1) comprehensive patent practice, (2) patent licensing and enforcement, (3) patent litigation, (4) patent preparation and prosecution, (5) licensing in the biotechnology area, (6) intellectual property commercialization, (7) intellectual property portfolio management, (8) high-tech licensing, (9) representing high-tech clients, and many more. Adding to this diversity is the fact that most law schools have formal programs in intellectual property, patents, and technology generally, and, often, multiple permanent faculty members to administer and populate those programs.9

This set of rich curricular offerings focused on aspects of patent transactional practice does not account for the many ways that patents, and intellectual property more generally, now infuse the modern law school curriculum in other ways. Courses in antitrust are often richly focused on patent law issues, as are the first-year property courses at many schools. In addition, at schools like ASU, courses in law, science, and technology; nanotechnology; and pharmaceutical law are also deeply engaged with patent law issues. Finally, the global turn at many schools has led to a comparative and often integrated approach to patent law that takes into account its international implications in courses like patents in global perspective or international intellectual property, or even directly comparative offerings examining patent practice in individual countries outside the United States.10 Making all of this possible is an incredibly rich and diverse set of materials written by law professors and practitioners, all of which is supplemented by the experiences and contributions of an engaged adjunct army across the country.

In addition to this diversity and depth of course offerings is a set of exciting approaches and emphases that different schools place on their curricula. ASU, for example, has always focused on connecting intellectual property and the business aspects of its commercialization and protection. Thus, for more than a decade we have worked closely with Arizona Technology Enterprises (ASU’s technology transfer office) and the W.P. Carey School of Business at ASU to ensure we give our students the broadest possible exposure to all aspects of patent practice. The result was our interdisciplinary Innovation Advancement Program (which, despite its name, also features a legal clinic) that represents clients (including university inventors) in all aspects of their entrepreneurial endeavors; patent drafting and filing, business plan creation, market analysis, incorporation, and licensing are all core aspects of the students’ experience. At other schools—Northwestern,11 Washington,12 and Emory13 come to mind—similar approaches have been highly successful and mirrored at other institutions.

Other law schools have incredibly strong programs that focus on patent drafting and enforcement (without commercialization angles)—New Hampshire’s14 program, as well as Wayne State’s,15 are well known. Some incorporate innovative approaches to international patent licensing, while still others focus on client-centered experiences such as counseling and mediations—and here Stanford16 and Virginia17 have well-known programs. In addition to clinics, adding experiential learning opportunities for patent-focused students can be accomplished in a multitude of ways. Many schools, such as CUNY,18 Chicago-Kent,19 and University of Missouri-Kansas City20 already incubate21 sole practitioner and small firms of their graduates. Patent-specific incubation support could be implemented for patent-focused firms/practitioners, where necessary. Additionally, a number of law schools, such as George Mason,22 have established patent-focused externship and tech transfer office partnership programs.

One always worries about characterizing these programs as one thing or another—the point is not to try and sum up their approaches but, rather, to say that the emphases and inclinations of each are strengths in our national approach to ensuring law schools graduate well-rounded lawyers.

Finally, a small move in the recent past has been to focus on legal education for nonlawyers—and patent practice is no exception. In the last two years, we have seen two law schools (Notre Dame23 and now ASU24) launch master’s programs for prospective patent agents. These programs reflect the market for patent attorneys, in that we are all seeing an increase in the number of patent agents. As top firms increase the use of patent agents, there is a need for agents who have a broader understanding and perspective about the enforcement and commercialization of the patents they practice. These programs are significant advances in the education and credentialing of patent prosecution professionals.

One question is, of course, what’s next? Where else can we go to enhance the student experience while providing invaluable legal services to entrepreneurs and innovators? One answer is to expand our reach—increase the number and size of our clinical offerings (based on the broad set of curricular offerings outlined above) to mirror the practice of patent drafting—including specializations dependent on field. To make that step, in addition to the always short supply of money, we may need to move to models that hybridize education and practice. To return, again, to the school we know best, ASU has recently launched the ASU Alumni Law Group. This nonprofit (100 percent paid for with private donations) teaching law firm employs graduates of the college in a number of legal areas. One way to synergize developments like these is to provide some portion of client legal work pro bono through clinics while, at later stages (yet still underfunded) have graduates (perhaps even those who worked prior to graduation) continue their representation at the nonprofit law firm. Or (and this seems truly radical) schools could share resources with one another—allowing clients in one city to have the representation of clinics and students somewhere else (perhaps across the world).

The experiences of the past few decades show that, when it comes to transactional patent practice, law schools and practitioners have shown an uncanny ability to adapt programming to meet market needs—wherever those needs may arise. While I focused much of my attention on the institution I know best, programs at Berkeley, Northwestern, Colorado, New Hampshire, and many more are also incredibly exciting and rich approaches to preparing students for patent practice. In short, the law school world has done a strong job of innovating in ways that help ensure that graduates are well-prepared to understand and face the challenges of patent protections for clients’ innovations. From smaller, but excellent, programs that provide patent doctrine and initial drafting courses, to incredibly robust programs that take a holistic approach to patent transactions, the state of legal education in this area is strong and getting stronger. There is often much to criticize about legal education—but the advances in intellectual property curricula and, in particular, the influx of experiential opportunities that benefit students and the communities in which they will work, is one area worthy of praise, not criticism.

Endnotes

1. See Lisa Foundation Patent Law Clinic, ASU Sandra Day O’Connor C. L., www.law.asu.edu/clinics/TheClinicalProgram/LisaFoundationPatentLawClinic.aspx (last visited Sept. 12, 2013).

2. Kandy Hopkins, Law Firm Hiring to Increase, Survey Says, Hildebrandt Inst. (July 25, 2013), http://hildebrandtblog.com/2013/07/25/law-firm-hiring-to-increase-survey-says. In my years as dean, and working closely with our career advancement office as well as visiting numerous firms across the country, patent transactional and litigation opportunities, for those with qualifications, continue to be the most sought after.

3. Gene Quinn, Legal Jobs: Patent Job Market Shows Signs of Improvement, IPWatchdog (June 14, 2012), www.ipwatchdog.com/2012/06/14/legal-jobs-patent-job-market-shows-signs-of-improvement/id=25449. Quinn’s predictions of an improving patent lawyer job market, made in 2011, seem to have been borne out as we, at least anecdotally, have seen an increase in those seeking patent attorneys with technical skills.

4. See, e.g., Janice M. Mueller, Mueller on Patent Law: Patentability and Validity (2013); Joseph E. Root, Rules of Patent Drafting Guidelines from Federal Circuit Case Law (2012).

5. See Law School Clinic Certification Pilot, USPTO, www.uspto.gov/ip/boards/oed/practitioner/agents/law_school_pilot.jsp (last modified Aug. 13, 2013).

6. Press Release, USPTO, USPTO Expands Patent Law School Pilot Program (July 18, 2012), www.uspto.gov/news/pr/2012/12-43.jsp.

7. USPTO Law School Clinic Certification Pilot Program, USPTO (Dec. 2012), www.uspto.gov/ip/boards/oed/practitioner/agents/v9_Law_School_map.pdf.

8. See, e.g., JD Curriculum—Electives: Intellectual Property, University of New Hampshire School of Law, http://law.unh.edu/academics/jd-degree/jd-curriculum/electives-ip.

9. For examples of formal IP programs, see Intellectual Property, University of California Berkeley School of Law, www.law.berkeley.edu/4449.htm; Cyberlaw Clinic, Harvard Law School, www.law.harvard.edu/academics/clinical/clinics/cyberlaw.html; The Entertainment, Media, and Intellectual Property Law Program, UCLA School of Law, www.law.ucla.edu/academic-programs-and-courses/specializations/entertainment-law/Pages/default.aspx; and Stanford IP Litigation Clearinghouse, Stanford Law School, www.law.stanford.edu/organizations/programs-and-centers/stanford-ip-litigation-clearinghouse.

10. There is a wealth of teaching materials available for these more specialized offerings. See, e.g., Frederick M. Abbott, Thomas Cottier & Francis Gurry, International Intellectual Property in an Integrated World Economy (2d ed. 2007); Paul Goldstein & Marketa Trimble, International Intellectual Property Law: Cases and Materials (3d ed. 2012).

11. See Entrepreneurship Law Center, Northwestern University School of Law, www.law.northwestern.edu/legalclinic/elc.

12. See Entrepreneurial Law Clinic, University of Washington School of Law, www.law.washington.edu/Clinics/Entrepreneurial.

13. See TI:GER Program, Emory Law, www.law.emory.edu/ academics/academic-programs/tiger.html.

14. See Franklin Pierce Center for IP, University of New Hampshire School of Law, http://law.unh.edu/franklin-pierce- ip-center.

15. See Intellectual Property Law, Wayne State University, http://law.wayne.edu/jd/why/iplaw.php.

16. See Juelsgaard Intellectual Property and Innovation Clinic, Stanford Law School, www.law.stanford.edu/organizations/clinics/juelsgaard-intellectual-property-and-innovation-clinic.

17. See Patent and Licensing Clinic I, University of Virginia School of Law, www.law.virginia.edu/html/academics/practical/patentclinic.htm.

18. See Community Legal Resource Network, CUNY School of Law, www.law.cuny.edu/clrn/incubator.html.

19. See Solo and Small Practice Incubator, IIT Chicago-Kent College of Law, www.kentlaw.iit.edu/alumni/solo-and-small- practice-incubator.

20. See Solo and Small Firm Incubator, University of Missouri-Kansas City School of Law, law.umkc.edu/careers-cle/solo-and-small-firm-incubator.asp.

21. See Deborah L. Cohen, Growing Justice: Law Schools Hop on the Incubator Trend, A.B.A. J. (Oct. 1, 2012), www.abajournal.com/magazine/article/growing_justice_law_ schools_hop_on_the_incubator_trend.

22. See Legal Clinic—Practical Preparation of GMU Patent Applications, George Mason University School of Law, www.law.gmu.edu/academics/clinics/gmu_patent_applications.

23. See Master of Science in Patent Law, University of Notre Dame, http://patentlaw.nd.edu.

24. See Admissions, Sandra Day O’Connor College of Law at Arizona State University, www.law.asu.edu/admissions/Admissions/MLSMasterofLegalStudiesProgram/MLSPatent Practice.aspx.

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