1. 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

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

3. Define Scope of Patent Research
• Patent Practice
– Prosecution
– Litigation
– Transactional / Business Aspects of IP
• Patent Research
– Legal research
– Searching patent literature & NPL
– Fact research

4. 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

5. Law School Patent Prosecution
Clinics Certification Pilot
• USPTO Law School Clinical
– 6 of 16 schools prosecute patents
• Non Pilot Clinics
– Arizona State University
– Ave Maria
– Chicago Kent
– U. Illinois
– U. Penn
– U. Virginia
– Others dabble in entrepreneur and innovation clinics
– High instructional and malpractice costs

6. 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

7. 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

8. 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)

9. Why there must be a paradigm
shift?

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

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

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

13. 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.

14. Patent Lawyer Professor Diversity

15. 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

16. 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

17. 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

18. 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.

19. 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

20. Vendors who love to train…

21. 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

22. • 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.

23. 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?

24. 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