Should Formalized Training in Science or Engineering be a Prerequisite to the Practice of Patent Law?

In a recent blog post by Prof. Shamnad Basheer at Spicy IP, he discussed the issue of whether or not patent lawyers should be required to achieve a certain level of training in science/engineering before being admitted to the patent bar. In his discussion, he addressed the question of whether individual academic institutions should be able to limit the number of available spots in their specialized IP programs to those who have completed an undergraduate degree in science/engineering.

I can definitely understand the points provided in support of imposing a limit like the one proposed above, however, I think that the imposition of a limit of this sort would unduly constrain access to the patent bar by many capable and interested individuals. For instance, many law students are completely unaware of the opportunities available in patent law until they are actually enrolled in law school, so imposing a limit on them at such an early stage seems premature and unfair. I believe that a better solution to this age-old debate would be for various law schools to design and implement specialized LLM programs in intellectual property (similar to the one that is set to commence in winter 2010 at Osgoode). Offering a program of this sort would be a great way to ensure that those who are interested in practising patent law (but lacked the foresight to realize this interest during or prior to commencing their undergraduate studies), would not be barred prematurely from doing so. Resources permitting, these LLM programs could be further divided into more specific streams of IP, namely; patents, trademarks, copyright, etc. The patent sub-specialty program could ultimately be broken down into various areas such as chemical, biological, computer/software, mechanical, etc. Of course, the viability of such a program would depend fully on the accessibility of necessary resources, demand from students and the availability of full-time faculty members who possess a requisite degree of knowledge within each niche area. Practitioners could also be recruited to teach in areas where the specific knowledge of full-time faculty is lacking.

Rather than imposing such a drastic limit on students at such an early stage of the game, IP firms could impose the requirement that any new associate (lacking the requisite technical background) who wishes to practice patent prosecution within any specific niche area, must attain an accredited LLM in that area prior to doing so.

However, while I believe that imposing the LLM requirement is certainly preferable to limiting access to the patent bar to lawyers who have completed undergraduate degrees in science/engineering, this solution is not without its defects. The pursuit of higher education is a costly endeavour, both in a monetary sense and in terms of time-spent. By the time they have completed their JD, many law students are so far in debt that the last thing on their mind is continuing legal education at the masters level. Therefore, imposing a differential graduate education requirement on non-science/engineering grads that is both costly and time-consuming may act as an effective bar in and of itself.

  1. I think formalized science training should be required; however I do not think that a specialized LLM program would be an adequate substitute for undergraduate science degrees.

    LLM programs wouldn’t give students the hands on, researched focused science experience that most excellent undergraduate and graduate science programs offer students. Patent lawyers are working with researchers a lot of the time therefore it is important for the lawyer to have had some experience in the lab or academic science setting in order to fully understand how products are developed. It is not the same to learn about how to do experiments/research from a textbook compared to actually having real-world experience in the sciences. Most people do not fully realize the time and dedication it takes to work in a lab. Since it is important for lawyers to understand their clients, it makes sense that a formal science background is required for the patent bar.

  2. I think this is a case where you can let the market sort things out. For the most part I would think that if grads with technical backgrounds make better patent lawyers then they’re the ones who will get the better jobs. If the problem is a dearth of qualified applicants then perhaps law schools and firms should start marketing more aggressively at science and engineering schools.

    I’m not sure a mandatory science exam is the answer. Prof. Basheer notes one of the obvious pitfalls of such a system in his post (although he is actually in favour of it):

    “If someone has a basic degree in chemistry, is that person qualified to draft a patent covering a telecommunication technology? Should we then have separate exams for all these fields and each patent attorney is to be identified with his/her specific field of expertise. From a policy perspective, this kind of further classification seems unduly cumbersome.”

    As far as I’m concerned, if someone doesn’t know anything about telecommunications just don’t get them to draft your telecommunications patent; get someone who does.

  3. Yes, very true, it would be cumbersome to have separate exams for each type of field of expertise, but it is not necessary. Firms are not going to hire a mechanical engineer to work on a life sciences patent. My concern was more dealing with the comparison between a formal science background and taking some classes on science in a LLM program. The two should not be treated equally.

  4. Stephanie, using your logic and applying it to a different legal practice area — imagine telling a first year law student who does not have an undergraduate degree in criminology, that they cannot become a criminal lawyer. I am aware that criminal law and patent law are very different but I think that my point can still successfully be illustrated using this example.

    I think that the most important factors here are interest, aptitude and desire to learn. I am aware of many successful patent lawyers/judges (i.e. Ld Hoffmann) who have zero formal undergraduate training in science or engineering and are very well established within their chosen profession. Over the years, these practitioners have acquired scientific knowledge that far exceeds that which would form the bulk of any 4 year BSc program.

    I totally understand that patent lawyers work with scientists and researchers regularly. However, I don’t think that it is necessary for patent lawyers to be trained in science to the same degree that researchers are. In my view, imposing such a requirement would completely negate the need for scientists/researchers. Should we also require that patent agents and scientists/researchers that regularly work with patent lawyers on various IP matters obtain law degrees?

    I am not saying that patent lawyers should have zero training in science/engineering. What I am saying is that a LLM program that is designed with a specific focus should do the job quite nicely. The objective is not to turn lawyers into scientists. I think the objective ought to be providing sufficient and relevant graduate training to patent lawyers so they can work more effectively and better interact with their clients and colleagues.

  5. I suspect that there is no necessary connection between having a science degree and being a good patent lawyer. However, I understand the desire to hire lawyers who have such degrees because the degree offers a level of assurance that the prospective hire is capable of dealing with the subject matter. It’s not even that the specific knowledge gained will be useful. The things studied in pursuit of (for example) a computer engineering degree will be next to useless in five years, but the fact that you got the degree speaks to your ability to understand the technology in the future.

    But I agree with Stu’s general point: the market can sort it out (assuming the options are there).

Comments are closed.