Wednesday, December 05, 2007

Have academics in intellectual property been pronounced brain dead?

A Dec. 3 thread at Patently-O has some comments on legal academics:

Michael Slonecker:

There seems to be a common thread running throughout the vast majority in academia who are only too willing to jump in feet first and pronounce the critical need for patent reform.

None of them have any familiarity with the substantive law other than what they appear to have read in journal articles from academic colleagues, "creative" reading of judical decisions at the all levels of the federal court system, seem to seriously believe all problems can be solved without soiling their feet in the nitty gritty facts faced by inventors and attorneys alike as they collectively wend their way through the administrative and judicial process, are not registered to practice before the USPTO and, hence, have never had to wade their way through 37 CFR and the MPEP, are only too happy to write "learned" articles and testify before Congress on the needs of a system within which they have never actively participated, likely have never read a patent (utility, design, etc.), likely have never crafted a license, likely have never had any meaningful interaction with the business sector, and, very importantly, appear to act on the assumption that practitioners haven't a clue what the law is and what changes may be appropriate to improve the "system". Last, but certainly not least, they really seem to believe what they say is meaningful, accurate, helpful, and insightful. In short, the are only too willing to "get drunk on their own wine", and then pass along their drunken wisdom to others who have no means readily at hand to determine is they are spouting substance or bovine offal.

Later in the thread, Slonecker wrote:

Please note I do parse words in attempting as best I can to be accurate. Not all in academia are "tarnished", but the majority of scholarly articles I have read over many years are anything but scholarly. It is one thing to provide a historical perspective on the development of law. The same can be said for "honest broker" scholarship calling attention to areas where case law is inconsistent, ambiguous, etc. It is, however, an entirely different matter when open advocacy from someone with virtually no experience in the full gamut of intellectual property law is passed off as "scholarship".

One does not need, nor have I ever suggested, that membership within the USPTO bar is a condition precedent to speaking authoritatively (though I do find it interesting that all current senior members of USPTO management are not eligible to practice before the office on any patent matters). What one does need to do, however, is take the time to thoroughly understand all aspects of the "system" before prancing over to Congress and declaring that the system is badly in need of repair, and then promoting/advocating "reforms" bearing virtually no meaningful relationship to the problems at hand. Merely by way of example, academic advocacy for FTF versus FTI to promote international harmonization (what I call "We need to do it because everyone else is doing it."). There are numerous issues associated with such a cardinal change that have never even been noted in the "scholarship" of many academics. Were these "experts" ever to leave their law school offices and saunter over to the research units of their universities, they would quickly come to the realization that things are not so clear cut. This is an issue that deserves thoughtful consideration and analysis, few "scholarly" articles of which I have ever read that suggest the author is cognizant of the pros and cons.

While there are obviously exceptions (many of whom seem to reside in positions of in-house counsel), most practitioners who have been at it a while are keenly aware that the advocacy of a particular position that benefits Client X may have disastrous consequences for Client Y. As a consequence, I have noted an unerring tendency on most of such practitioners to approach changes in a much more cautious manner, placing their focus primarily on proposals they believe are directed to the orderly and impartial progression of the law.

Yourmommasays wrote:

Ipropose the following test by which to measure the patent quality of the United States Patent and Trademark Office.

1. Identify prior art references applied to the claims recited in a predetermined number of of different patent applications, e.g., at least two.

2. Identify common teaches of the references identified in item 1 that have been asserted in support of a rejection of any claim.

3. Ascertain the interpretation provided by the examiner for the teachings identified in item 2.

4. Identify the instances in item 3 in which different and/or conflicting interprations were identified.

5. Take item 4 divide by item 3 multiply by 100 and obtain a percentage.

0-59% F- fire managment

60-69% D-don't pay management

70-79% C-status quo

80-89% B-Bonuses for management

90-99% A-Bonuses for everyone.

Former policy wanker wrote:

The first report recommending patent reform came in 1917. The committee was chaired by Mr. L. H. Baekeland, the inventor of Bakelite. At this time the patent office was broken, staff were overburdened. One of the recommendations was to throw more resources at the PTO. Another was to create a single court of appeals for patent cases (realized in 1982).

The second report recommending patent reform came in 1936 (almost 20 years later). The committee was chaired by Mr. Vannevar Bush. At this time the patent office was broken, staff were overburdened. One of the recommendations was to throw more resources at the PTO. Another was to create a single court of appeals for patent cases (realized in 1982). Another was to publish patents prior to issuance (realized around 2001).

wanker later wrote:

Congratulations on your Ph.D. in genetics and your JD. Re: your comment "it was a gigantic risk for the VC guys who invested", wasn't BRCA1 a discovery of the University of Utah? Didn't NIH fund the research? I didn't realize VCs were doing much in funding basic science in universities. I am aware that some companies do so. Doesn't Utah own the patent and exclusively license it to Myriad (co-founder is also discoverer).

My point wasn't that it was a wonderful finding by a University and didn't have a great back story regarding the rush to discovery (if I recall there was a Berkeley scientist doing similar work) and we cannot forget the NIH funding that made much of this discovery possible, and how important and chancy that discovery was...I digress.

My point is not that Myriad isn't making money on the test, that their lab is the only place you can go to get the test done. That might be good for business and reward innovation, but that doesn't assure me that their lab is 100% reliable. Sometimes I'd like a second opinion, and not from the same doctor, not from the same lab, and certainly not from the same Ph.D.

This was in response to a post by "me" which included the text:

BRCA1 was one of the first genes underying a complex trait ever mapped, it was huge success. It was game changing - and it was a gigantic risk for the VC guys who invested. Myriad deserves their patent on every count. If you don't reward Myriad, then the VC guys simply won't fund the next company with a risky idea, but a large possible reward. Go jump in the proverbial lake, please.

As to academics-

They can be fine, but too many either never practiced or practiced little. Their ideas speak of this naivete and lack of knowledge.

IPBiz notes that one academic at the prestigious Stanford Law School wrote that Gary Boone invented the integrated circuit, never mentioning Noyce or Kilby. The question as to many of the legal academics is whether they are writing this bogus stuff at all, or if it is merely the work of students hired to fill in blanks to pre-determined conclusions. In a world in which many IP academics attached themselves to the "97% patent grant rate" fiction, one really wonders if IP academics are doing any thinking at all.

See also:

no to patent reform

**Separately, see discussion of a new book by Paul Goldstein -->


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