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

Research.

AALL-PLL Intellectual Property Sub-Group Presents:

Webinar Series4/24/20121:00 p.m. EDT

PRESENTERS________________

Jeff BoisDirector of Research

and Information Services

Foley & Larder LLP(Moderator)

Mary Gilligan IP Research Services

Manager, Library

Jones Day

Geoff TriggerLaw Librarian

Lerner, David,

Littenberg,Krumholz

& Mentlik, LLP.

Jon CavicchiIP Librarian &

Assistant Professor

UNH Law

• 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____________________

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

Disclaimer: Any appearance of

promoting UNH Law is incidental!

Define Scope of Patent Research• Patent Practice

– Prosecution– Litigation– Transactional / Business Aspects of IP

• Patent Research– Legal research – Searching patent literature & NPL– Fact research

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

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

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

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

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)

Why there must be a paradigm shift?

Information Literacy meets the McCrate Report

Law schools doing a lousy job preparing practice ready lawyers

Inadequate Research skills is one major skill consistently reported by law firms

to the ABA in several surveys and reports

Starting the paradigm shift

• The 3 C’s–Consciousness–Communication–Capacity

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.

Patent Lawyer Professor Diversity

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

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

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

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.

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

Vendors who love to train…

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

• 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.

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?

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

by Mary GilliganIP Research Services Manager

Jones Day

28

IP Boot Camp

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IP Boot Camp

30

IP Boot CampSupportAdaptabilityTargeted TrainingUse of ExpertsResearch Guides

31

IP Boot Camp - SupportRecruitment Director

Hiring Partner

Executive Director

32

IP Boot Camp - Adaptability20+ Hours (all of B. Bering’s Commando Videos)

<10 Hours (selected B. Berings videos)

=5 Hours for group training

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IP Boot Camp – Targeted TrainingElectrical

Chemical

Biotech/Pharma

Trademark34

IP Boot Camp – Use of ExpertsPatent Searching

Non-patent Literature Searching (NPL)

Chemical Structure Searching

Gene Sequences

Preliminary Trademark Searches35

IP Boot Camp – Research GuidesResearch Strategies

General StrategiesLegal ResearchNon-legal ResearchOn-line SearchingCost-Effective Considerations

36

IP Boot Camp – Research Guides – Summer Associates

Researching a Patent, a Trademark, a Copyright

Compared free and fee-based servicesReviewed formats of information

Domestic and international resources

Litigation information37

IP Boot Camp – The BasicsUS PTO Resources

PAIR, Assignments, Patents/Publications, MPEP, CFR, Interferences

Espacenet Resources EPO Register

PatentScope

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IP Boot Camp – The BasicsSearch for a patent by application /

serial numberSearch for a patent by patent or publication number

Search for a patent by inventor name

Search for patents by assignee or owner

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IP Boot Camp

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Shift This!: A Paradigm for Integrating Law School &

Law Firm Patent Research.

Geoffrey C. TriggerLaw LibrarianLerner, David, Littenberg, Krumholz & Mentlik LLP

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.

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?

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.

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!

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)

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."

VII How to Develop a New Paradigm?

Organize, Communicate, Partner & Lead• United States Patent and Trademark Officeo Law librarians:

1.) Academic 2.) Law Firm Librarians

Law Schools: 1.) Professors 2.) Adjunct Professors

Lawyers: 1.) Associates2.) Summer Associates 3.) Partners

Administration: 1.) University2.) Law Firm

Associations: 1.) ABA2.) AALL3.) NALP

Vendors1.) Dialog

2.) LEXIS/NEXIS3.) Thomson Reuters/Westlaw4.) Bloomberg BNA5.) Others

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.

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.

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)