How can a formal IP/legal training for scientists improve the overall quality of patent applications?

by: in Law
How can a formal IP/legal training for scientist improve the overall quality of patent applications

The quality of a granted patent is dependent on the quality of the patent application. For the companies where scientists write their own patents, IP legal training for scientists can help improving their patent drafting skills.

Concerns about low patent quality are rising worldwide. Sound policy considerations are urgently needed to address these issues. In most countries, the national patent office is responsible for issuing a patent, hence, it is natural that most of the policy concerns concentrate on improving the quality of examination and administration at the patent office. This indeed is very important; nonetheless, we must realise that every patent system is a complex interaction of various stakeholders. For example, the patent grant process starts with the applicant taking the first step by submitting a patent application. Therefore, without a doubt, the applicant assumes control over the quality aspects of the patent.

This means that a well-formulated policy for patent quality improvement is based on a careful investigation into the incentives available to applicants to draft a quality. In my PhD thesis as part of the EIPIN Innovation Society programme, I interviewed experts in a pharmaceutical CDMO (Contract Development and Manufacturing Organization) in order to understand how the quality of patent applications drafted by them is ensured. A CDMO is an organization that serves the pharmaceutical industry and provides clients with comprehensive services from drug development to manufacture.

Who is responsible for writing a patent in the company?
The scientists/inventors in the company are in-charge of writing patent applications, and they receive guidance and comments from senior experts in the company. The draft is then refined by the IP/ Innovation expert at the company, before being submitted to the patent office.

What effect does the IP legal training has on scientists who write patents?
Following a formal IP legal training turned out to have a strong impact on the quality of patent applications.

Scientists who had received IP legal training before writing their patents were more confident about their patent writing skills. One scientist who wrote her first patent without a formal IP legal training reported having had a hard time to understand the requirements of patent law. Furthermore, scientists who afterwards went through the patent training improved not only their patent writing skills, but also patent searches and patent reading skills. This saved them considerable time while working on their patent applications. The quality and relevance of the training was highlighted by interviewees: with national patent examiners giving the training, scientists were made aware of what the patent office expects from patent applications, and, in a way, made sure that they deliver according to the expectations of the patent office.

The training was also able to bridge the gap between legal and technical understandings of various terms relevant for patents, namely, ‘inventions’, ‘obviousness’, ‘novelty’ etc. To a scientist, legal requirements sound complex, and writing a patent is different from writing a scientific paper. Most universities do not have patent writing courses as part of their curriculum for science students and hence basic patent writing skills first need to be acquired. These trainings help them realize which database to use for prior art searches, what part of a patent application is important, how the use of different words can change the scope of a patent and more generally, how to write a patent to make sure it meets the legal requirements of patenting.

Finally, the IP legal training is undoubtedly necessary for scientists to improve their patent drafting skills. As of now, there is no clear policy that obliges companies to organize these training for their scientists. The patent offices could take up an initiative in organizing and promoting these courses to companies, aiming at training the patent application writers. Another suggestion is that patent examiners could be the tutors for these courses in order to make scientists understand their expectations from patent applications, and thereby facilitating searching and drafting. This will also make examiners’ future work easier.

Another suggestion could be that the manuals and guides developed by the patent offices for the applicants could be written in consultation with technical experts and may contain some technical examples (with technical wordings) for the industry to understand (especially for young scientists) the legal expectations from a patent application. Lastly, patent and IP courses could be introduced for science students at Universities.

  Written by Naina Khanna 
Naina Khanna is a PhD candidate under the supervision of Prof. Dr. Meir Pugatch and Prof. Dr. Josef Drexl. She is working on a project on patent quality in the European pharmaceutical industry under European IP Institutes Network Innovation Society (EIPIN-Innovation Society) - A Horizon 2020 Marie Skłodowska Curie Action ITN-EJD. Naina has published widely and has presented her work in various workshops, conferences and courses in different countries.

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