Breaking the Training Barrier: Finding the Key to Outsourced Patent Drafting

I'm delighted for this post to introduce Joseph E. Root, Chief Patent Counsel at UnitedLex. I met Joe at the U.C. Berkeley School of Law International Outsourcing of the Legal Profession Conference. We were chatting about the issues involved in "training up" Indian patent engineers with particular reference to higher level work and Joe mentioned that he had a few ideas so I invited him to put them in writing and said I'd be more than willing to publish them on the LPO blog. So anyway, enough from me, and over to Joe.

Introduction – the Nature of the Problem

Folks in the Legal Process Outsourcing business may disagree on issues like the relative severity of traffic in LA and Gurgaon, but mention the subject of training, and the chorus is unanimous: Training is important. Going the next step to ask how training should be done, however, and the opinions once more diverge.

More agreement can be found for the proposition that the higher one aims on the value scale from simple services, such as patent proofreading, to searching to analytics, and finally to patent drafting, the more one needs quality training.

This article suggests an approach to training. The methods discussed here are aimed specifically at training patent drafters, but the overall process can be applied to a number of skill areas. As the LPO industry grows, we need to anticipate and provide for these areas.

The Nature of Patent Training

Training patent prosecutors has been a simple process: Hand the new person a project, point the way to the library, and provide some sort of feedback on the work product. After enough projects, the new prosecutor becomes relatively competent. Outsourcing operations generally emulate that model, limited by the availability of mentors and projects.

Partly, this approach has been dictated by a lack of alternatives. Several US organizations conduct training courses for the US patent bar exam, running some 3-5 days, which can be followed by advanced patent drafting courses of about the same length, usually taken after about three years' practice. Each of the various large legal education organizations (Practising Law Institute, Patent Resources Group) offers one course in each of these areas, of similar scope. No provider offers patent application drafting courses that follow up classroom work with critique of work product over time.

These courses offer practically nothing to outsourcing operations, however, because they do not focus on patent drafting. They are aimed at passing the patent bar, or to developing IP lawyers (not drafters). In addition, the expense of such courses is a deterrent, particularly to offshore companies aimed at minimal cost structures.

We would hesitate to fly in an airplane, or file an accounting document, relying on pilots or accountants trained in this manner, but that’s the way patent education has always been done. It does produce competent patent lawyers, but only after quite a bit of time. Most reputable organizations would not allow a lawyer or agent to draft and file an application without review and supervision, generally seen as requires several years’ experience, with five to ten years required for a seasoned prosecutor.

That is the tradition, but is it the only path? A look at training in other fields suggests otherwise. Totally missing from the traditional approach is the notion of a targeted patent prosecution training program, presented by competent trainers, employing effective and updated training materials, extending to responsive, continuing feedback, and structured around a comprehensive training plan.

A quick view of these factors reveals that such a program is highly achievable.

Trainers

We don’t dispute the idea that good lawyers are not necessarily good teachers, but we were taught by partners at the firm or IP Department supervisors, and that’s how we are training the next generation. We all know better, probably, but we have few choices.

But if choices were possible, what should we look for in a good trainer? At the top of the list one would list the skills that set apart the effective teacher – presentation and communication skills, as well as empathy and analysis. The first two are self-evident, as the first thing a trainer must be able to do is deliver an effective presentation, whether to a single student or before a crowd of hundreds. That ability demands experience and confidence, as well as a certain moxie. Nobody does this well the first time, as all good salespeople understand. Public speaking programs, sales training and instructor training programs all prepare people for this role, but nothing can substitute for time in the spotlight.

Effective training differs from sales and from public speaking in two important characteristics, however. First is the empathy that allows a trainer to make contact with a student on a human level. Training is not a data dump – the student does not plug in to a source of knowledge and download the requisite information. Training is a change in behavior, an integration of new attitudes and new actions as well as new facts. Without person-to-person contact, on a human level, that process is at least impeded and probably precluded.

Finally, the trainer needs the analytical skills to spot the student’s needs and identify the best way to meet them. The presentation phase is the end of the job for the typical seminar provider. For the trainer, that step is only the beginning. From there on, the trainer must be able to modify the training as required by the student, and each iteration will be different.

Materials

Outside of the bar review and workshop seminars noted above, patent training materials – handouts, papers, summaries, and the like, are notable for their absence. A few large firms have standing (or, more often, sporadic) training programs for young prosecutors, but those are few and far between. Most often, the patent prosecution student relies on the handouts from her patent bar review course and whatever textbooks are in the department or firm library, such as Sheldon or Landis.

Mentor-based systems, with partners training associates, often fail most miserably at the level of adequate training materials. Even if a partner is willing to take the time to explain an associate's mistakes, or areas where an application could be made better, there is certainly no time available for that partner to prepare a teaching outline, or to annotate an application as a teaching example.

That system is unlikely to change, given the realities of both firm and corporate practice. Where training is not tied to a corporate legal manager’s performance objectives, or a law firm partner’s billable hours, then it will not be done, or at least not be done well. We know that people do that they are incented to do, and we can expect no difference here.

So, any training material will probably be skimpy, and certainly they will not be updated. Rare indeed is the supervisor / trainer who makes case notes to annotate her copy of the handouts from the advanced prosecution workshop she attended five years ago.

Follow-up

Instruction that is designed to impart a skill, as opposed to put out a set of facts, must provide an opportunity for the student to practice the skill, with feedback. Student pilots attend lectures, certainly, but then they fly airplanes, under the close supervision of an instructor. Patent prosecution training completely divorces the presentation phase from the performance phase of learning. The former is meager in content and time, but then the student is left with a supervisor who is most certainly not looking for then same set of results that the student has just learned.

To the extent that we have a functioning population of patent prosecutors, the present system works just fine, at least until one considers the time required to produce a competent prosecutor. And not only should we address the problems of training associates, but the need to train non-lawyer patent drafters, taking engineers and converting them into patent prosecutors, needs either to allow a number of years in training or to develop a new approach.

Planning

Traditionally, patent training proceeds by assigning a new prosecutor tasks from among the work that comes in the door, whether corporate or law firm. Thus, the range of experience gained in the first year, say, will depend entirely on factors such as how active clients may be, or the state of the R&D budget. Like most other factors of the traditional system, this tends to even out over time, but that notion provides little solace to one trying to develop prosecution skills in the minimum amount of time.

Again, contrast this method with almost any skill-based training program. Pilot training does not proceed by whim, chance, or what feels good at the moment. Not only is a plan followed, but the plan is designed to impart a certain skillset, performed to a certain level. That implies an approach that starts with the question, “What is the objective of this training?” Precision is required here: “Fly an airplane” is not a valid objective; “Fly a single-engine aircraft, under Visual Flight Rules” states the objective completely and precisely. Similarly, the requisite tasks must be set out in detail For a pilot, that list will include broad skill statements, such as “Landing,” which are in turn broken down into atomic actions, such as “Land a single-engine aircraft, at night.” Each of these tasks is supported by prerequisites, such as “Use the radio to communicate with air traffic control.” In the end, a person who is able to execute each stated task will be able to perform the overall objective.

Such an approach is unknown in patent prosecution. Certainly, there are books on the subject, and one could say that the chapter headings perform this function, but that argument misses the point. Nowhere in the literature will one see a list of the skills required of a patent prosecutor, and nowhere will one find a list of subtasks that make up, for example, the ability to respond to a PTO Office Action, or the fulfill the best mode requirement for software patent applications.

Conclusion

Training patent prosecutors has traditionally been viewed like winemaking, as a time-intensive effort for which nature demands an extended aging and maturing process. The seeming inevitability of the traditional time requirements, however, dissipates in the face of careful analysis. Rather, we need to think through the problems of training to develop comprehensive plans, presented by competent trainers, based on instructive materials and continued with individual follow-up. Such programs will succeed in producing quality patents because they start by producing quality patent drafters.