Sunday, 12 September 2010

Software savvy patent attorneys, where are you?

From Chris Torrero comes this link to "A Statistical Analysis of the Patent Bar: Where are the Software-Savvy Patent Attorneys?", a 46-page academic study with profound practical implications.  The triumvirate of authors consists of Ralph D. Clifford (University of Massachusetts School of Law at Dartmouth), plus Thomas G. Field Jr. and Jon R. Cavicchi from the University of New Hampshire School of Law -- the rebranded version of the Franklin Pierce Law Center.

The article is published in the North Carolina Journal of Law & Technology, Vol. 11, p. 223, 2010, and its abstract runs like this:
"Among the many factors that impact the declining quality of U.S. patents is the increasing disconnect between the technological education patent bar members have and the fields in which patents are being written. Based on an empirical study, the authors show that too few patent attorneys and agents have relevant experience in the most often patented areas today, such as computer science. An examination of the qualification practices of the U.S. Patent and Trademark Office (“PTO”) suggests that an institutional bias exists within the PTO that prevents software-savvy individuals from registering with the Office. The paper concludes with suggestions of how the identified problems can be corrected".
While the data, the cases and the reasoning is directed exclusively to the United States, there are plenty of messages for other jurisdictions too.  However, it is inevitable that a disconnect will exist not just in software patent writing but wherever new technologies are discovered (I seem to recollect a similar phenomenon in the pioneering days of biotech and gene science).  In terms of timing, people who write patents and people who examine them should ideally be possessed of the same skills at the same time.  So far as litigation lawyers go, however, there can be a time-lag which enables an element of catch-up -- the examination and grant process must be completed before infringement litigation makes its own demands.

NB  Free downloads of the article are available here.

1 comment:

Seth said...

Truth be told, I do not believe that the declining quality of software patents is related to any qualification bias within the USPTO. I believe any graduate of an accredited software engineering school should possess the requisite technical background for practitioner registration. I am a electronic/software engineer with more than 20 years experience. I have a BS, 2 MS degrees, 2 post graduate certificates, and am a licensed Professional Engineer. I have passed the patent bar and have not been able to obtain patent related employment not because of my technical skills, but because of my legal background. The patent prosecution atmosphere in the US values law credentials over technical ones. So, perhaps software-savvy individuals are aware of the dismal employment outlook of the patent field or that they are conscious that any available patent practitioner opportunities would require them to take a significant salary cut.