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

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. 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. • 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. 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. Disclaimer: Any
appearance of
promoting UNH
Law is incidental!

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. 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. 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. 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. 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. 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. Why there must be a paradigm
shift?

13. Information Literacy meets the
McCrate Report
Law schools doing a lousy job
preparing practice ready lawyers

14. Inadequate Research skills is one major
skill consistently reported by law firms
to the ABA in several surveys and
reports

15. Starting the paradigm shift
• The 3 C’s
–Consciousness
–Communication
–Capacity

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. Patent Lawyer Professor Diversity

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. 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. 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. 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. 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. Vendors who love to train…

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. • 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. 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. 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. by Mary Gilligan
IP Research Services Manager
Jones Day
28

29. IP Boot Camp
29

30. IP Boot Camp
30

31. IP Boot Camp
Support
Adaptability
Targeted Training
Use of Experts
Research Guides
31

32. IP Boot Camp - Support
Recruitment Director
Hiring Partner
Executive Director
32

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. IP Boot Camp – Targeted Training
Electrical
Chemical
Biotech/Pharma
Trademark 34

35. IP Boot Camp – Use of Experts
Patent Searching
Non-patent Literature Searching (NPL)
Chemical Structure Searching
Gene Sequences
Preliminary Trademark Searches
35

36. IP Boot Camp – Research Guides
Research Strategies
General Strategies
Legal Research
Non-legal Research
On-line Searching
Cost-Effective Considerations
36

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. IP Boot Camp – The Basics
US PTO Resources
PAIR, Assignments, Patents/Publications, MPEP, CFR,
 Interferences
Espacenet Resources
 EPO Register
PatentScope
38

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. IP Boot Camp
40

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. 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. 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. 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. 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!

47. 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)

48. 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."

49. 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

50. 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.

51. 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.

52. 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)