Patent Law Blog (Patently-O)

Law Jobs: Patent Prosecution Professor at UNH

Univ. of New Hampshire School of Law in Concord, N.H. (formerly Franklin Pierce) is looking to hire a new full-time professor of patent prosecution practice. As many patent attorneys know, patent prosecution is already a major component of UNH’s patent law program.

“The person who is hired for this position must be able to teach and continue to develop a program of instruction that provides students with the skills needed to prosecute patent applications, including claims drafting and patent application preparation and procedures. The course includes a weekly lecture component that is given by the patent prosecution professor and small sections with practicing patent attorneys that are managed by the patent prosecution professor. By the end of this two-semester program, students will have drafted a complete patent specification and claims, responded to various USPTO Office Actions, and learned to prepare additional documents for filing with the USPTO.”

UNH is also willing to accommodate individuals interested in combining teaching responsibilities with an ongoing law practice or other professional obligation.

Links:

• Read the job posting
• Read about UNH Law’s Center for IP
• Patently-O Patent Law Jobs

USPTO Hiring and Paying More for Administrative Judges

The USPTO’s new Patent Trial and Appeal Board is taking over a backlog of over 24,000 pending ex parte appeals.  The Board has had some difficulty in hiring and retaining top administrative patent judges.  One element of the America Invents Act is to boost the salary schedule of USPTO’s administrative judge so that it is only constrained by the USPTO Director’s salary schedule — currently $165,000. However, unlike the USPTO Director, Administrative Judges will also be eligible for overtime pay.

Director Kappos has announced his desire to hire 1,500 – 2,000 new examiners in the next year.

Getting a Patent Examiner Job through Peer-to-Patent Volunteerism

The USPTO is hiring patent examiners. [Link] The first priority in hiring is to locate individuals who can do a quality job of examining in the areas of technology where expertise is needed. The Office is also looking to hire individuals likely to happily stay on the job and that can be quickly trained for the job (high morale, low turnover, low training time). One problem with these criteria is that very few hopeful patent examiners are able to provide evidence that they fit these criteria.

Over the past week, I spoke with several individuals from the USPTO who agreed that a hopeful examiner's participation as a volunteer reviewer with Peer-to-Patent could help persuade the Office that its criteria are satisfied. (To be clear, there is no official USPTO policy on considering Peer-to-Patent experience in the hiring process.)

The Peer-to-Patent project offers a mechanism for third-party volunteers to provide input into the patent system by identifying and discussing prior art associated with pending patent applications. According to the USPTO press release, "volunteer scientific and technical experts [will] discuss the applications and submit prior art they think might be relevant to determining if an invention is new and non-obvious, as the law requires. After the review period, the prior art is sent to the USPTO patent examiners for their consideration during examination." Although the written comments & discussions are not sent to the patent examiner, examiners are free to read those comments as part of the examination process.

Although certainly not a complete examination, the work of volunteer reviewers incorporates many skills of examination such as searching for applicable prior art and (potentially) explaining how the identified art relates to the presented claims. This process gives volunteer reviewers an opportunity to show their skills at searching and applying the search. The job of examining patent applications is not for everyone. Time as a volunteer reviewer also gives job applicants an opportunity to figure out if the job is a good fit.

The Peer-to-Patent project begins next week. In the meantime, potential volunteers who are not experienced with the patent law system may want to review the Peer-to-Patent tutorial material. [Link]

USPTO Jobs

The USPTO is hiring.  In addition to a number of patent examiner positions, the office is also hiring new executive-level leaders.

• Chief Administrative Patent Judge: The Board of Patent Appeals and Interferences (BPAI) is charged with managing and deciding internal patent appeals as well as interference proceedings.  Former Chief Judge Mike Fleming recently moved to a PTO management position working directly under Director Kappos and opened a new position.  The new Chief Judge will move into a role that has become increasingly public. An increasing percentage of rejections are being appealed and the Board has a rapidly growing backlog.  An additional new challenge/potential of the position Director Kappos has recently shifted the organizational chart so that the BPAI Chief Judge reports directly to the PTO Director rather than being part of the Office of the General Counsel. [JOB POSTING]
• Associate Commissioner for Innovation Development: The  Associate Commissioner would work with Commissioner Robert Stoll in an outreach-role to work with inventors, entrepreneurs, non-profits, and the US innovation community to help ensure that the US intellectual property protection system continues to work well with these groups. [JOB POSTING]
• IPR Commercial Officer for the International Trade Administration in Bangkok Thailand (Not a USPTO Job): The ITA is a branch of the department of commerce that is designed to help US firms compete globally. This position would be situated at the US Embassy in Bangkok and would focus helping US companies protect their intellectual property rights. [JOB POSTING] 

In an e-mail, Hal Wegner highlighted other organizational changes in PTO management. The former public relations office has been revitalized under Peter Pappas in his role as the “Chief Communications Officer and Senior Advisor to the Under Secretary.” [Org Chart] [Pappas Bio] [Management Bios]

Professor Arti Rai recently left her role as Administrator for External Affairs and returned to teaching at Duke Law School.  Paul Salmon has stepped-in to fill her role as the Acting Administrator. However, the Office is looking to fill that position on a more permanent basis.

Recent Patently-O Job Postings:

• Marjama Muldoon Blasiak & Sullivan LLP is looking to hire an experienced patent attorney for its Syracuse office.
• A Charlotte, N.C. firm is looking to hire a docket administrator.
• Holland & Hart is seeking an experienced transactional attorney to work in one of its mountain-west offices. 
• Lee & Hays is looking for an experienced patent attorney with some portable business to join one of its Washington-state offices.
• Buchanan Ingersoll & Rooney is seeking a patent agent or patent attorney for its Alexandria office.
• Dorsey & Whitney is seeking an experienced patent attorney for its Seattle office.
• Design IP is looking for a patent attorney for its Allentown office.
• Morgan Lewis is seeking an entry or junior level associate for its patent litigation practice in Houston.
• Frost Brown LLC is seeking a Mechanical Engineering focused Patent Prosecution Associate with at least 3 years of experience for its Cincinnati office.

Patently-O Bits and Bytes

Upcoming Events:

• Professor Mark Janis of Indiana has put together a really interesting conference titled “Patent Scope Revisited: Merges & Nelson's ‘On the Complex Economics of Patent Scope,’ 20 Years After.”  Sept 23–24 in Bloomington. Speakers include Rob Merges, Don Chisum, Ed Kitch, John Duffy, Jay Kesan, Rochelle Dreyfuss, Kevin Collins, Chris Cotropia, etc. (I will also be speaking at the event and hope to see you there.) [LINK]. (FREE)
• Catholic University (Columbus School of Law) is presenting a discussion of the “Ethical Ramifications of Therasense” on Sept 27 from 5pm – 6:30pm at the National Press Club.  Speakers include Professors Beth Winston and Megan La Belle from Catholic University along with ITC Chief Judge Paul Lukern, Professor Lisa Dolak (Syracuse), Jim Kulbaski (Oblon) and Ed Polk (Foley) [LINK]. (FREE).
• Former Chief Judge Michel along with a host of professors and in-house counsel will discuss “Patentable Subject Matter” on Sept 20 9:30am – 12:45pm at GWU in DC. [LINK].
• San Diego IP Law Association is holding a Discussion of Therasense on Sept 23 from 6pm – 10pm. Speakers include Chris Mammen, Hans Sauer (BIO), Larry Repress, and Fred Hadidi. [Link] ($70–$90).
• 2010 APLF Annual Meeting is September 29 – October 1 in Chicago. [LINK].
• IBC Legal has an interesting looking conference in London discussing IP Rights in China on the November 22–23. Patently-O readers should use code KW8070PO for a 10% discount. [Link] 
• WAY OUT IN THE FUTURE: On Feb 25, 2011, The Missouri Law Review is hosting a conference that looks at the patent jurisprudence of the Court of Appeals for the Federal Circuit with a special focus on the impact of Chief Judge Michel. It will held right here in Columbia Missouri.

Patent Jobs:

• Marjama Muldoon Blasiak & Sullivan LLP, a Central New York intellectual property law firm, has immediate openings for a Patent Attorney. [Link]
• Lee & Hayes, a nationally known intellectual property (IP) law firm, is seeking a lateral experienced patent attorney. [Link]
• International IP Law Group is seeking an Associate, Of Counsel to prepare and prosecute patent applications relating to complex electrical technology and software. [Link]
• ResMed (Sydney) is seeking a Qualified US, European or Australian patent attorney with a number of years post registration experience. Experience within biomedical engineering and in-house will be looked upon favourably. [Link]
• HP seeks a patent attorney. [Link]

New Hampshire Law School:

Franklin Pierce Law Center was founded by patent attorneys back in 1973.  For a time the law school was the clear national leader in the training of future patent attorneys. In the past 15–years, many law schools have added patent-focused faculty, but Franklin Pierce is still one of only a handful of schools that focuses on IP law training rather than legal theory. This week, the law school announced that it has formally merged with the University of New Hampshire and has become the University of New Hampshire School of Law. At the same time, the school created Franklin Pierce Center for Intellectual Property. Congratulations to my friends at UNH! [Link]

Guest Post: Keys to Hiring Newly-Minted Patent Lawyers

by Thomas G. Field, Jr., Professor, University of New Hampshire (UNH) School of Law (formerly Franklin Pierce Law Center)

There is much ado about generalist and specialty law school rankings, but it is difficult to understand why they should make much difference in hiring new, much less experienced, patent lawyers.

Technical training figures prominently too, but that is difficult to factor in. As has been discussed on this blog, two others and I published a paper concerning the correspondence between the percentage of attorneys with formal training in computer science (our focus) or engineering and the percentage of computer-based patents issued. There we argued, as I strongly believe, that the PTO’s discrimination against computer science graduates is irrational.

The paper also implies that one needs formal training in a particular art to competently draft and prosecute applications in that art. Most patent attorneys would reject the idea. Despite co-authorship, I do too.

I regard the most important technical criteria to be attorneys’ (or agents’) capacity to be educated by inventors and, as one of our alumni put it several years ago, function as a mediator between inventors and examiners. In that regard, I recall the late Robert Shaw. Prior to coming to Pierce in the mid-1970s, where he taught claim drafting and prosecution until he retired, Bob was a full-time attorney for MIT. It’s difficult to imagine that he could have had much expertise with regard to the wide range of applications drafted and prosecuted on behalf of an incredibly sophisticated faculty. Yet there is no reason to doubt the quality of his work for people there or at other universities. I do not envy those who attempt to judge such capacity from college transcripts and unrelated work experience.

Moving from technical to legal training, I regard the most important criteria to be the capacity to identify what decision makers will find critical, spot flaws in opponents’ positions and to argue effectively for their own. Regarding potential clerks, Justice Scalia famously stated, “I’m going to be picking from the law schools that . . . admit the best and the brightest, and they may not teach very well, but you can’t make a sow’s ear out of a silk purse. If they come in the best and the brightest, they’re probably going to leave the best and the brightest, O.K.?” (as quoted by Adam Liptak, On the Bench and Off, the Eminently Quotable Justice Scalia, N.Y. TIMES, May 12, 2009, at A13. If so, what’s gained from the education? There’s also risk of loss. I was struck by the observation that, “For most of the past fifty years, attending Harvard Law School was a miserable experience for the majority of its students.” Kevin K. Washburn, Elena Kagan and the Miracle at Harvard (2010). It is difficult to see how students would be better off for such an experience — unlikely to be unique.

General ranking may be useful for identifying some of the best and the brightest. But many choose schools based on a variety of other factors including cost, effects on partners, and quality of life. It would therefore seem that indicia of drive and intelligence other than that reflected in decisions of law school admissions committees deserve consideration.

In tough economic times, hiring seems more likely to turn on the skills and knowledge candidates have, rather than what they are capable of acquiring. If so, hires may be based on program rankings. But, as I have pointed out at length in Ranking Law Schools’ Special Programs, 50 IDEA 335 (2010), all rankings are suspect, whether based on the number and fame of faculty, the number of specialty courses offered or something else. In that article, at 344, I ultimately wonder whether “anyone other than a fool would favor one candidate over another based on reputations of professors neither candidate may have seen or lists of courses neither may have taken.” You might too.

Who is Behind H.R. 5980?

H.R. 5980 is a Bill "To amend Federal law to encourage the repatriation of jobs to the United States, and for other purposes." The bill includes three major tweaks to US patent law.

1. Ending the publication of pending applications [as discussed here].
2. Dramatically narrowing 35 U.S.C. 102(e) so that it only applies to patents that were subject to an international patent application.
3. Giving "priority to the examination" of applications "made by" any "institution of higher education" or any "patent holding company affiliated with such an institution.”

Other portions of the bill would create several commissions and task forces to try to figure out how to bring jobs back to the US.

The sponsor of the bill, Frank Wolf is a Republican from north-west Virginia. Co-Sponsors include Randy Forbes (Republican from south-east Virginia), Daniel Lipinski (Democrat from Chicago), Candice Miller (Republican from northern Michigan), Hal Rogers (Republican from eastern Kentucky), and Rob Wittman (Republican from eastern Virginia).

The patent amendments appear out of the blue and have no logical link to repatriation. 

Michel & Nothhaft: Inventing Our Way Out of Joblessness

Judge Paul Michel and Hank Nothhaft (Tessera CEO) have written an important OP-ED for the New York Times. They argue that an important way for the US government to stimulate entrepreneurship and job growth is by giving the USPTO a large bolus of money ($1 billion) to put its affairs in order:

This would enable the agency to upgrade its outmoded computer systems and hire and train additional examiners to deal with the threefold increase in patent applications over the past 20 years. Congress should also pass pending legislation that would prohibit any more diverting of patent fees and give the office the authority to set its own fees.

. . . .

To be sure, not every patent creates a job or generates economic value. Some, however, are worth thousands of jobs — Jack Kilby’s 1959 patent for a semiconductor, for example, or Steve Wozniak’s 1979 patent for a personal computer. It’s impossible to predict how many new jobs or even new industries may lie buried within the patent office’s backlog. But according to our analysis of the data in the Berkeley Patent Survey, each issued patent is associated with 3 to 10 new jobs.

In addition, the pair suggests an “innovation tax credit” for each patent received by a small business:

To encourage still more entrepreneurship, Congress should also offer small businesses a tax credit of up to $19,000 for every patent they receive, enabling them to recoup half of the average $38,000 in patent office and lawyers’ fees spent to obtain a patent. Cost, after all, is the No. 1 deterrent to patent-seeking, the patent survey found.

For the average 30,000 patents issued to small businesses each year, a $19,000 innovation tax credit would mean a loss of about $570 million in tax revenue in a year. But if it led to the issuance of even one additional patent per small business, it would create 90,000 to 300,000 jobs.

Taken together, fully financing the patent office and creating an innovation tax credit could mean as many as 2.5 million new jobs over three years, and add up to 600,000 more jobs every year thereafter.

It only makes sense to help innovative small businesses make their way to the patent office and, once there, find it ready to issue the patents that lead to new jobs.

I have quibbles with the numbers used by the authors. However, I do think that they are on the right track in a few respects — especially with the idea that investing in incentives to innovate is a much more cost-effective and stable policy approach as compared with hiring folks to do government work.

Notes:

• Read the full Op-Ed: http://www.nytimes.com/2010/08/06/opinion/06nothhaft.html
• As academic quibbles: 
  • The statement that “each issued patent is associated with 3 to 10 new jobs” cannot be derived from the Berkeley Patent Survey.  However, I don’t see that figure as unreasonable or unlikely. It would be helpful to see how the authors calculated this figure.
  • In addition, it is important to recognize that patents are just one step along the road toward job creation. The idea is that patents can provide confidence and stability in business potential ventures.  That confidence and stability leads to investment and job creation.