What Skills Should New Patent Associates Have?

I have been asked to create a patent curriculum that will have at a minimum 24 credit hours of patent related legal education, perhaps more.  As you might expect, I have some ideas about how to fill the curriculum, but thought I might open this up for discussion here to gain the collective thoughts, wisdom and insights of IPWatchdog.com readers.

While I know it is unrealistic to expect that even the best, most robust patent law school education will make it possible for new attorneys or patent agents to hit the ground running and able to accomplish all things, I do think that with the right mix of reading, lecture and practical exercises the learning curve can be substantially bent.  Students should even be able to meaningfully provide assistance day one at a law firm assisting more senior attorneys, assuming of course they take their studies and exercises seriously. This being the case, I am interested in hearing from patent attorneys and patent agents with any level of experience.

Senior Partners & Hiring Partners

What skills at a minimum would you like new hires to have?  What knowledge base would you like to be able to assume?  What topics should new hires have been previously exposed to prior to their first day?  What practical exercises would you suggest?

Junior Partners & Senior Associates

What would have been particularly helpful for you and made your transition to practice easier?  What do you wish you had learned in law school?  What quasi-real-world exercises would have been beneficial in hindsight?  What reference materials do you wish you had and could have brought with you day one?

New Associates & Patent Agents

What do you find most difficult and time consuming?  Where do you feel your knowledge is lacking?  What have you been asked to do that makes you scratch your head and wonder where to start?  What skills do you rely upon to get through?  What do you wish you have more training in?

About the Curriculum

The basic curriculum will at a minimum have:

  1. Basic patent law covering 101, 102, 103 and 112.
  2. Basic patent litigation law, relating to injunctions, damages, infringement theories and defenses.
  3. Basic patent claim drafting, focusing on simple mechanical and method inventions.
  4. Basic patent application drafting, focusing on learning the basics about design, provisional and nonprovisional patent applications and learning how to draft a nonprovisional patent application for a simple mechanical invention.

The rest of the curriculum can be pretty much anything, but the focus should be on real world practical training.  It has always been my philosophy that reading cases only gets you so far.  Yes reading the case law is necessary and will be included in all courses, as will applicable reading from Title 35 of the US Code and Title 37 of the CFR.  But what else?

I envision at least one, perhaps more, claim drafting courses.  Perhaps one at an intermediate level and then one that focuses on specific technologies.  I similarly envision at least an intermediate patent application drafting course.  I would like to include a Pre-trial Patent Litigation course that focuses on the Federal Civil Rules of Procedure, discovery and drafting motions, and perhaps another course on advanced drafting that focuses on drafting a Memorandum of Law and maybe even a brief to the Board of Patent Appeals or the Federal Circuit.

So tell me, what are your thoughts?  After all, the goal is to prepare students to become patent attorneys and patent agents, and to make them more marketable.

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Join the Discussion

16 comments so far.

  • [Avatar for Michael]
    Michael
    January 23, 2010 07:51 pm

    Gene –

    As a very newly minted patent agent interning as a paralegal for an international firm (and also a graduate of the PLi course – thanks!), I would have found information on PCT and foreign filings very helpful. It seems that the international IP law is becoming as important as the US law.

    I second TWM’s comment on patent searching as well.

    Best of luck on the project!

  • [Avatar for TWM]
    TWM
    January 22, 2010 10:34 am

    Gene & EG,

    In response to your “I am not sure how to approach 2 though in an academic environment” thread. I am a 2L a Franklin Pierce Law Center and attended the Intellectual Property Summer Institute at Pierce last summer. One of the course I took was “Mining Patent Information in the Digital Age.”

    My Professor brought in people from various patent search providers (including Thomson Innovation, Dialog Classic, Westlaw, Lexis-Nexis, and others) to teach us the ins and outs of performing landscape patent searches, freedom to operate searches, and “due diligence” searches. The course description can be found here: http://www.piercelaw.edu/coursedescriptions/coursedescription.php?SRMasterID=354

    I though the course was very enlightening and I learned a lot about how to be efficient and cost-effective. After taking this course, I have been performing those searches for a couple of medical device companies and for an attorney in NYC without any problems.

  • [Avatar for EG]
    EG
    January 21, 2010 02:09 pm

    “I am not sure how to approach 2 though in an academic environment”

    Gene,

    Good question. “Due diligence” often comes up during a merger of companies or a sale of IP assets. A more general topic might be managing IP portfolios/assets (including mergers/sales). That might also include royalty monetization (which overlaps with my first suggestion on patent licenses).

    Lauren’s comment about how to interact with paralegals/admin assistants is a great one. Most coming out of law school (that included me) are clueless on how to effectively utilize and interact with support personnel.

    This is somewhat off topic, but a course on how to market and manage an IP practice would be valuable for those law students getting into this business. Not all stick with firms (big or small), but if you don’t know how to market/manage an IP practice, you’ll starve (and likely get into trouble, including ethics trouble). Just a thought.

  • [Avatar for Lauren]
    Lauren
    January 21, 2010 01:45 pm

    I would add a section on interacting with your paralegal/assistant. I’m in charge of “training” our new associates and the majority of them have no clue how to utilize and partner with their assistant.

  • [Avatar for Gene Quinn]
    Gene Quinn
    January 21, 2010 12:43 pm

    Thanks Chris, and congratulations on becoming a member of the patent bar!

    As you can probably guess, I agree with you on Faber and Sheldon. I already utilize them in the courses I have taught in the past, and I am sure I will utilize them moving forward. Everyone new to the practice should have access to these wonderful texts.

    I hope all is well.

    -Gene

  • [Avatar for Gene Quinn]
    Gene Quinn
    January 21, 2010 12:17 pm

    sgiles-

    At this point I would rather hold off because I don’t have approval to disclose, but once things are moving I will certainly update everyone.

    Thanks.

    -Gene

  • [Avatar for Gene Quinn]
    Gene Quinn
    January 21, 2010 12:16 pm

    EG-

    Those are definitely good things to add. I particularly like 1 and 3, which do definitely get overlooked in most law schools. I am not sure how to approach 2 though in an academic environment. Do you have any suggestions on what would make a good exercise to bring home the issues? I guess teaching the approach would work, but it seems a little like detective work. Follow the leads presented.

    -Gene

  • [Avatar for Gene Quinn]
    Gene Quinn
    January 21, 2010 12:14 pm

    Step-

    That is a good approach and I do try and teach a real world perspective and address skills needed, including interviewing an inventor who is reluctant to give information, but will if and only if the right questions are asked.

    I have to comment on your 99. I suspect the answer is “not much”!

    Thanks.

    -Gene

  • [Avatar for Chris]
    Chris
    January 21, 2010 12:11 pm

    Hi Gene,
    I’m about to be a newly registered Patent Agent (I passed the test in November and I’m still waiting on my reg number). I took the PLI class taught by you and John, which was a big help. But as you know, studying for the test is not the same as studying to be a solid Patent Practitioner. To supplement my on-the-job training, I read “Faber on Mechanics of Patent Claim Drafting” and “How to Write a Patent Application” by Jeffery Sheldon. Both of these texts have been extremely valuable. I reference them quite often, too. Good luck setting up the curriculum.

  • [Avatar for BB]
    BB
    January 21, 2010 10:57 am

    Gene – Excellent post. As a newly minted Agent (w/ 30+ years engineering/business experience) I’m always on the lookout for those things that can help me sharpen my skills in a 2nd career. I look forward to reading the results of this effort, and putting the recommendations to use.

  • [Avatar for Annette Y. Allgood]
    Annette Y. Allgood
    January 21, 2010 10:36 am

    Gene,
    The George Washington University’s Alexandria Graduate Education Center is just around the corner from the USPTO on Ballenger Avenue. If you think we might be a good partner for this wonderful endeavor, please contact me.

    Best,
    Annette Allgood
    Director, NVA Graduate Education Centers

  • [Avatar for sgiles]
    sgiles
    January 21, 2010 09:07 am

    Wow…This is a great post Gene. Are you at liberty to disclose the university that is considering implementing this type of curriculum?

  • [Avatar for EG]
    EG
    January 21, 2010 07:58 am

    Gene,

    Here are some that get overlooked:

    1. How to negotiate and draft patent licenses.

    2. How to carry out due diligence investigations.

    3. Understanding international patent practice.

  • [Avatar for step back]
    step back
    January 21, 2010 06:00 am

    Gene,

    At the end of the day, most laws are about how people interact with people.

    We can spend a lot of time in deep focus on the black and white words of some obscure statute or regulation. But that does not illuminate the people aspect of patent-related transactions.

    You might start making a chronological list of the various people involved in the birth, life and death of a patent; for example:

    1. What does a first-time inventor go through after having had his/her eureka moment and then realizing or not that they might need to find a good patent attorney/agent?
    2. What does a junior associate go through in conducting his/her intake interview with a new/veteran inventor?
    3. What does a junior associate go through in trying to write a patent application from scratch after having conducted a disclosure conference with an inventor?
    4. What does a patent examiner go through when taking on a new case for examination?
    5. How do patent examiners and prosecutors interact with each other during the course of a prosecution?
    6. What does the patent procurement process feel like to a business manager who is trying to control costs at his/her tech company?
    7. ____ Well, you get the picture by now.
    8.
    9.

    99. What goes through the mind of a US Supreme Court justice when taking on a patent issue of national importance?

  • [Avatar for Gene Quinn]
    Gene Quinn
    January 20, 2010 09:53 pm

    Thanks POP. It should be fun.

    I hope all is well.

    -Gene

  • [Avatar for pop]
    pop
    January 20, 2010 08:35 pm

    I certainly have no business offering you any advice, so here goes…. just kidding.

    It sounds like a big honor though, congratulations!

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