Tuesday, August 9, 2011

What Experience Is Necessary To Write Good Patent Scholarship?

Between taking the patent-law-less bar exam and moving, I haven't had much time for reading scholarship in the past few weeks, so I am looking forward to two full days of IP scholarship at IPSC this week. But Friday's guest post at Patently-O reminded me of a trend I've noticed at the intersection of the academic and practicing patent law communities: practitioners criticizing academics simply for being "academic." Are these merely ad hominem attacks, or is practice experience and/or a technical background really necessary to write good patent scholarship?

First, examples of these critiques: In Friday's Patently-O post, Professors Robert Merges, Pam Samuelson, and Ted Sichelman defend their Berkeley Patent Study from the criticism that it "is typical of other flawed 'scholarship' on patents by academics." When Professor Arti Rai wrote a guest editorial on Patently-O, commenters said "[t]his is not a business for amateurs, and surely not a business for dilettante academics," and noted that Rai was "not a registered patent agent or attorney. Never worked in the private sector. Academic through-and-through. No wonder she's full of it." (Actually, Rai did work in the private sector, but that's not my point.) Professor Doug Lichtman's op-ed on Microsoft v. i4i led Kevin Noonan to criticize him for his lack of practice experience:
This is something Prof. Lichtman might appreciate if he had any experience with the patent system outside opining on it from academe. According to his biography, he graduated from Yale Law School in 1997, spent 10 years at the University of Chicago Law School, and since 2007 has been at UCLA. No matter how intelligent Prof. Lichtman may be, there are some things that require actual experience to understand, and on that score the Professor is woefully lacking.
Many commenters agreed, with statements like this: "I grow weary of rank amateurs like Professor Lichtman opining thoughts they have neither the expertise, nor the experience to make about our patent system." Even on Written Description, a commenter suggested that Professor Mark Lemley is an "academic hack[]" who "may have made this mistake because he does not have the technical background necessary to understand the issues surrounding the invention of the light bulb."

So do any of these criticisms make sense? I think the answer is no: an argument is right or wrong on its merits, irrespective of the speaker's background. Credentials can be a useful shortcut (e.g., it would be a waste of time for physicists to debate the merits of every crackpot email they receive), but patent law professors are hardly crackpots—to my knowledge, most of them have some practical experience with the patent system, even if they don't have technical backgrounds or aren't registered patent agents. And I'm quite sure that my physics Ph.D. doesn't make me better able to research the history of the invention of the light bulb than Professor Lemley.

This is not to say that prior experience isn't helpful. People from all kinds of backgrounds have useful and unique perspectives on the patent system, and I would love to read patent scholarship from scientific researchers (both basic and applied), entrepreneurs, venture capitalists, patent agents, patent litigators, judges, economists, historians, etc. But viewing a system from the outside with a fresh perspective can also be valuable—anthropologists and historians rarely come from the cultures they study—and I see no reason why a diligent academic cannot research and write about the PTO, even without experience inside it. And if that academic gets things wrong, the most intellectually honest critique is "Prof. X says A, but A is not true because of B," not "Prof. X says A, but Prof. X obviously doesn't know what she's talking about."

So I hope that when a practitioner reads and disagrees with one of my papers, she responds by telling me why (or even better, how to improve the argument!), rather than merely criticizing my inexperience.


  1. Having taken the patent bar, I find it amusing that some think being a "registered patent agent" qualifies one for patent scholarship.

  2. The reason that scholarship is so derided by practitioners is because of the nature of scholarship. That is, most good scholarship challenges the underlying assumptions about the way things are.

    A practitioner cares little about the reasons behind the system, they just care about how the system benefits both them and their clients. There is little benefit in challenging the status quo.

  3. I think one reason for that might be that patents have their own sort of language (at least in pharmaceutical/chemical patents which I am most familar with) and with the prosecution of a patent application with the PTO there is skill to crafting claims and thus speeding up the prosecution practice as well as skill in writing disclosures to ensure that you don't get boxed into a corner down the road. With patent disclsoures you can't add anything to it later and sometimes during prosecution it becomes clear to the applicant that they need to narrow the claims to get around prior art but they don't have support for the amendments they want to make. I once saw an applicatoin for a composition that had no disclosure of any amounts at all and later down applicant wants to limit the claim scope to dosages higher than the prior art but can't because they have no support for such. I think academics tend to be more focused on the theory of the law and should be just as skilled at understanding an applying that but may not be as aware of the practical limitations that our patent system requires. Just my opinion.