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.

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