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Shift This!: A Paradigm for Integrating Law School & Law Firm Patent Research.

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Shift This!: A Paradigm for Integrating Law School & Law Firm Patent Research.

  1. 1. Shift This!: A Paradigm for Integrating Law School & Law Firm Patent Research. AALL-PLL Intellectual Property Sub-Group Presents: Webinar Series 4/24/2012 1:00 p.m. EDT
  2. 2. PRESENTERS________________ Jeff Bois Director of Research and Information Services Foley & Larder LLP (Moderator) Mary Gilligan IP Research Services Manager, Library Jones Day Geoff Trigger Law Librarian Lerner, David, Littenberg,Krumholz & Mentlik, LLP. Jon Cavicchi IP Librarian & Assistant Professor UNH Law
  3. 3. • Current Paradigm – UNH Law Model – Why there must be a shift • Aspects of a Paradigm Shift • A Role for Librarians • Training at Firms – IP Boot Camp • What Do Associates/Partners Think? • How do we develop a new paradigm and how should it look? AGENDA____________________
  4. 4. Shift This! : A Paradigm for Integrating Law School & Law Firm Patent Research ©Jon R. Cavicchi, J.D., LL.M. (I.P.) Professor and IP Librarian
  5. 5. Disclaimer: Any appearance of promoting UNH Law is incidental!
  6. 6. Define Scope of Patent Research • Patent Practice – Prosecution – Litigation – Transactional / Business Aspects of IP • Patent Research – Legal research – Searching patent literature & NPL – Fact research
  7. 7. Current Paradigm for Integrating Law School & Law Firm Patent Research? • Law school landscape analysis – Surveying librarians & websites – NONE – Handful of Advanced Legal Research: IP courses • No evidence of patent searching training – Few law school librarians with patent education • Reference/Intellectual Property Librarian
  8. 8. Law School Patent Prosecution Clinics • USPTO Law School Clinical Certification Pilot – 6 of 16 schools prosecute patents • Non Pilot Clinics – Arizona State University – Chicago Kent – U. Illinois – U. Penn – U. Virginia – Others dabble in entrepreneur and innovation clinics – High instructional and malpractice costs
  9. 9. The UNH Law Difference • Founded by a 3d generation patent lawyer Robert Rines with passion to prepare practice ready patent lawyers – 1st Patent Practice Program in the U.S. – Patent clinics for 40 years doing patent searches – Only Academic IP Library in the U.S. – Only academic IP Librarian in the U.S. • Pioneering vision Library Director Judy Gire, Professor Bill Hennessey and Dean Robert Viles – Only two year elective patent searching curriculum in U.S. – Only Patent Landscape Analysis Clinic in U.S. • Professor Stanley Kowalski, ITTI Director
  10. 10. UNH Law Model • Implemented Information Literacy Program drives patent research curriculum – Portfolio of curricular and extra curricular offerings • Some IP problems used in 1L LRIL class • Mining Patent class – a 20 year patent searching 2 credit class • LPIL patent searching 1 credit mini courses • ITTI Patent Landscape Analysis Clinic (Basic & Advanced) • Patent Searching Certificate • Guest lectures in patent law and practice classes • Patent law professors require patent searches
  11. 11. Patent Information Literacy K-12 and University Wide? • Non-law University Librarians Teaching Patent Searching Courses – Connie Wu, Rutgers (PTRC) – Jan Confort, Clemson (PTRC) • Promote synergies between law school and other university librarians to teach patent information literacy. • Don MacMillan, Patently Obvious: The Place For Patents In Information Literacy in the Sciences. 20 Research Strategies 149 (2005)
  12. 12. Why there must be a paradigm shift?
  13. 13. Information Literacy meets the McCrate Report Law schools doing a lousy job preparing practice ready lawyers
  14. 14. Inadequate Research skills is one major skill consistently reported by law firms to the ABA in several surveys and reports
  15. 15. Starting the paradigm shift • The 3 C’s –Consciousness –Communication –Capacity
  16. 16. Factors affecting paradigm shift? • PATENT PROFESSORS AT MOST LAW SCHOOLS HAVE NO INTEREST IN PATENT RESEARCH – Much of academy scholarship is theory – not practice based – No experience or old experience : “farm it out” – Don’t teach business aspects of patents curriculum – Increase empirical legal periodical using patent research on the rise = promise.
  17. 17. Patent Lawyer Professor Diversity
  18. 18. Then when is the tipping point? • Many law school librarians face serious and continuous budget cuts that require balancing of priorities – Being law librarians • Staff cuts result in Librarians doing paraprofessional activities – Being teachers • some Library faculty low caste = consequences • If a patent research course or a substantive law course has to be cut… • Law faculty like senior partners in some schools – Being team players • Showing worth in growing service to institutions
  19. 19. Patent Research Information Literacy Requires Re$ources • Patent law firms REVOLT & demand a shift in consciousness • Prioitization – Time allocation – Hiring or training patent information literate librarians – Patent law professors NEED to advocate for patent research training “through and “through” – Fees for high end platforms? • UNH Law provided fee unlimited access by major vendors
  20. 20. Paradigm Shift : next step • COMMUNICATION – Patent law firm librarians and partners need to communicate to law schools on a GRANULAR level what problem solving skills they desire of new associates – This relationship needs to be institutionalized and systematized • associated opportunity costs – Consider embedding law school librarians in patent firms to gain the tasks, tools, strategies and insights
  21. 21. 200+ Law Schools… • Diversity of capacity and priorities • Most law schools now teach patent law – only a few have a deep patent practice curriculum • Develop a mirror twin to the AALL PLI-SIS IP with academic librarians • Dialog and meet regularly at professional meetings • Use human and social networking • Never stop, never stop fighting till the fight is done.
  22. 22. Paradigm shift : jump start patent research small investment • Top down law school “corporate culture” requiring patent research skills events • Designate GTP for patent research • Invite patent information vendors…they will come
  23. 23. Vendors who love to train…
  24. 24. Promote Student to Student Promotion • Mary Gilligan – I think we should incorporate the role of Summer Associates into this fine dance we are crafting. I know at Pennie (and during the times of stiff competition to get the most qualified associates), we offered abbreviated versions of our training programs. I feel the students can be good ambassadors to bridging the gap between school and firm, while keeping a foot in both pools. • Peer to peer education is a reality – These skills show a competitive advantage – All law students want to show demonstrable value – Law firm librarians and attorneys need to support the value of mastering patent & NPL search and applications
  25. 25. • The importance of the many applications of patent data and NPL will only increase as the business aspects of IP grow • Those law schools who fail to grow this area of their curriculum do so at their peril.
  26. 26. Student Teach Teachers • UNH Law engineer TA/grad Matthew Preiss – Top 50% of research skills instruction is responsibility of law schools – Other 50% is professional training – the responsibility of law firms • AALL Law Library Journal literature has general surverys – Shall we do patent research skills survey?
  27. 27. UNH Law has a long history of commitment to preparing the highest quality practice-ready patent lawyers with solid research skills. Dean, University of New Hampshire School of Law Former Chief Justice, NH Supreme Court
  28. 28. by Mary Gilligan IP Research Services Manager Jones Day 28
  29. 29. IP Boot Camp 29
  30. 30. IP Boot Camp 30
  31. 31. IP Boot Camp Support Adaptability Targeted Training Use of Experts Research Guides 31
  32. 32. IP Boot Camp - Support Recruitment Director Hiring Partner Executive Director 32
  33. 33. IP Boot Camp - Adaptability 20+ Hours (all of B. Bering’s Commando Videos) <10 Hours (selected B. Berings videos) =5 Hours for group training 33
  34. 34. IP Boot Camp – Targeted Training Electrical Chemical Biotech/Pharma Trademark 34
  35. 35. IP Boot Camp – Use of Experts Patent Searching Non-patent Literature Searching (NPL) Chemical Structure Searching Gene Sequences Preliminary Trademark Searches 35
  36. 36. IP Boot Camp – Research Guides Research Strategies General Strategies Legal Research Non-legal Research On-line Searching Cost-Effective Considerations 36
  37. 37. IP Boot Camp – Research Guides – Summer Associates Researching a Patent, a Trademark, a Copyright Compared free and fee-based services Reviewed formats of information Domestic and international resources Litigation information 37
  38. 38. IP Boot Camp – The Basics US PTO Resources PAIR, Assignments, Patents/Publications, MPEP, CFR,  Interferences Espacenet Resources  EPO Register PatentScope 38
  39. 39. IP Boot Camp – The Basics Search for a patent by application / serial number Search for a patent by patent or publication number Search for a patent by inventor name Search for patents by assignee or owner 39
  40. 40. IP Boot Camp 40
  41. 41. Shift This!: A Paradigm for Integrating Law School & Law Firm Patent Research. Geoffrey C. Trigger Law Librarian Lerner, David, Littenberg, Krumholz & Mentlik LLP
  42. 42. I Shift This?  For a legal research paradigm to be constructed it will require the participation and commitment of a number of parties across the professional legal community.  At the completion of this presentation we will have taken the first step toward creating a plan to integrate patent legal research education in law schools with law librarian instruction in firm practice, and constructing a patent legal research paradigm.
  43. 43. II A Fundamental Question?  How can a patent attorney be qualified to practice patent law if s/he is unable to conduct a patent assignee search?  Law firm librarians are required to teach these practical skills to first year attorneys because most haven’t learned them in law school. Is there a minimum requirement law schools should be held accountable to in teaching students in patent courses? If so, what do they need to teach?
  44. 44. III Why Now? $$$$$ $ . OPPORTUNITY  After the economic crisis of 2008 many General Counsels of corporations demanded law firms to cut billing rates, or at minimum lower the percent of yearly billing increases. And corporate counsel in some cases would no longer allow firms to assign first year attorneys to their work, seeing it is an inefficient use of legal manpower. In addition, some General Counsel thought law firms assign work to new attorneys for training experience and no longer accept this practice.  Law firms consequently face the problem of paying first year associates sizable salaries and are challenged with the task of molding them into billable productive units. Law firms are dealing with this problem in various ways, and law librarians are a part of the solution.  The economy has affected law schools as well. The cost of attending law school is rising and there have been fewer jobs for students to apply for after graduation. Also, law schools have been criticized for not preparing graduates for legal practice. Law librarians are again partners in solving the problem.
  45. 45. IV Do Law Librarian’s Know Best?  Of course!! (But do we really? Hubris of Experience)  Here are a few of the fundamental requirements a new attorney should be instructed in law school in order to be prepared for practice.  Research in the USPTO, Espacenet & JPTOS Databases:  1.) Assignee Search;  2.) Inventor Search;  3.) Maintenance Fee Search;  4.) Family Search:  5.) Litigation Search (Courtlink, Dialog, LEXIS/NEXIS & Westlaw;  6.) Find a Japanese Patent & Translation.  7.) Use of JPTOS machine translation.  Awareness of research resources on a first name basis, because partners will refer to them as: “Chisum,” “ Harmon,” “Schwartz” “Faber,” “ Sheldon,” & “Donner.”  Assessing new attorney skills, must we start from scratch?  Time Constraints. I have more time to work with Summer Associates, less with First Years and even less with Lateral Hires.  Philosophy of firm, the meaning of life and fear of God!
  46. 46. V What Do Associates Think?  I asked the associates at my firm to respond to an informal survey. “What do you need to know in practice that you didn’t learn in law school.” Here is a brief summary:  Need to learn how to use the books:  Treatises are more useful than CALR. Partners assigning research expect associates to find the answers without running up bills to clients on CALR. The partners found the answers inexpensively in books on the library shelf and expect the new associate to do the same.  Need to learn about USPTO.com:  PAIR on the USPTO, didn't learn it in law school and use it far more than Westlaw or Lexis.  Need to know how to perform a reference interview  Didn’t learn a useful thing in law school. (Hubris of Inexperience)
  47. 47. VI What do Partners Think?  Lerner, David, Littenberg, Krumholz & Mentlik, LLP, managing partner William Mentlik said in a 2007 New Jersey Law Journal article “.. this year's multiple upward revisions ( in salary and bonus’) would be unimaginable a few years ago. It boggles my mind because, while there are very capable, bright young people coming out of law school, the reality is they don't have any particularly useful skills."
  48. 48. VII How to Develop a New Paradigm? Organize, Communicate, Partner & Lead • United States Patent and Trademark Office o Law librarians: 1.) Academic 2.) Law Firm Librarians  Law Schools: 1.) Professors 2.) Adjunct Professors  Lawyers: 1.) Associates 2.) Summer Associates 3.) Partners  Administration: 1.) University 2.) Law Firm  Associations: 1.) ABA 2.) AALL 3.) NALP  Vendors 1.) Dialog 2.) LEXIS/NEXIS 3.) Thomson Reuters/Westlaw 4.) Bloomberg BNA 5.) Others
  49. 49. VIII Conclusion: What is the Destination? A Suggestion. A NEW PATENT BAR REQUIREMENT: Is it not only logical for the patent bar exam not only to test knowledge of the “Manual of Patent Examining Procedure,” but also to have a test for patent research skill? The “McCrate Report” essentially requires it. Rank Law Schools: Create a standard and rank law schools with IP programs based on the research skills course curriculum requirements. Publicize results to law firms, legal placement professionals, university placement professionals, etc.
  50. 50. QUESTIONS_______________ Jon Cavicchi (Jon.Cavicchi@law.unh.edu), Professor Cavicchi for two decades has been the chief administrator of intellectual property information resources at the University of New Hampshire School of Law Intellectual Property Library. UNH Law is the only law school in the U.S. with a dedicated Intellectual Property Library and patent informatics curriculum. He presently teaches Mining Patent Information, Patent Landscape Clinic, Legal Research and Information Literacy and Law Practice: Researching Open IP Web Resources. He is the co-founder and Research Director of the UNH Law International Technology Transfer Institute where he teaches advanced patent search and analysis skills. He manages the U.S.P.T.O. Patent, Trademark Resource Center at UNH Law. He is an author and frequent speaker on IP research and education. In recognition of his expertise in the intellectual property research field, Professor Cavicchi was chosen to sit on the Advisory Board of Questel, focusing on its core business, intellectual property data and solutions, for more than thirty years. Mary Gilligan (MGilligan@JonesDay.com), More than 27 years ago, Mary answered an employment advertisement in the NY Times which read: Librarian, Patent Law, Box 123456. This was her entree into a new universe of intellectual property law as the Director of Library Services for the boutique Pennie & Edmonds, at the time when the pocket protector nerds were stunned to find themselves in the really cool and hip practice of law. Prior to her “Pennie” days, Mary was the Librarian and Records Managers for the General Counsel of The Chubb Group of Insurance Companies and prior to that a staff member of the Archives of Time Inc. She obtained her MLS from Rutgers University. Geoff Trigger (GTrigger@ldlkm.com), Geoff has been the Law Librarian at the intellectual law firm “Lerner David” in Westfield, NJ for the past thirteen years. Before holding this position Geoff was the Reference Law Librarian at Chase Manhattan Bank for two years, the Law Librarian at the law firms of “Tenzer Greenblatt “ and Gilbert, Segall and Young, also in New York City for the previous twenty years. Geoff was the President of the Law Librarians Association of Greater New York for 1992-3, founding Chair of the Legal Information Services for the Public Committee, LLAGNY. 1990-92 and was a member of the AALL Task Force to Study the Value of Law Libraries in the Information Age, 1995-96. He has authored articles for Practicing Law Institute, the Law Education Institute and presented lectures on legal research and knowledge management at St Johns University Law School, Practicing Law Institute and METRO. Geoff graduated from Germain School of Photography in 1972 and worked in motion picture film production and distribution, until beginning his career in law librarianship at Gilbert, Segall & Young in 1979.
  51. 51. THANK YOU_______________ Title: Shift This!: A Paradigm for Integrating Law School & Law Firm Patent Research. Participants: Jon Cavicchi (Jon.Cavicchi@law.unh.edu); Mary Gilligan (MGilligan@JonesDay.com); Geoff Trigger (GTrigger@ldlkm.com); Jeff Bois (JBois@foley.com)