Documenting Inventions of Others, Not Inventing or Designing
The job of an inventor, designer, or engineer is to design products faster, cheaper, and with greater functionality. The job of a patent prosecutor is to catalog inventions, not to invent or innovate. The job of a patent litigator is to argue about who owns the technology and how much they are owed. There are far more patent prosecutors than litigators, so most future lawyers who go into patents will end up doing prosecution, not litigation.
Patent prosecution demands considerable technical knowledge, attention to detail, and an ability to foresee how an invention is likely to be used or infringed. At the same time, much of the innovation of a patent prosecutor is using clever semantics tricks to broadly claim as much as possible, including further aspects of the invention not yet foreseen. When carried too far, these practices can inhibit future inventions by others. Patent prosecutors often don’t have much control over the ramifications of their work beyond the client’s immediate needs. Patent prosecutors are not involved in policy-related issues in their actual work; those are for litigators, lobbyists, academics, and even bloggers.
Patent Prosecution Has Limits On Profitability
Limited Economic Value of Average Patent: Most patents do not become commercially valuable, so the average value of an individual patent can be quite low, especially in fields like software where hundreds or thousands of patents may cover a single product. Naturally, the expected value of a patent affects how much money a client will pay in order to get the strongest protection possible. Typically patent prosecution is handled at small law firms which charge less, while prolonged patent litigation is done at larger “big law” firms. Note that there are exceptions to this advice in some fields. In pharmaceuticals or biotechnology, the total cost of the research, development, and marketing can be extremely high, so these companies are often willing to spend significant amounts on patent prosecution to ensure the strongest possible patent protection.
International Competition: Much of the work involved in prosecuting patents is being outsourced to lower-wage nations with a significant technical workforce, such as India. Prior art searches and drawings are commonly outsourced. As more tasks become outsourced, there is more competition for the remaining work, eventually reducing fees that agents and attorneys can charge. Outsourcing of more phases of patent work could become more common as it has in other technical work.
Fewer Barriers To Entry: Patent prosecution does not require a law degree or membership in a state bar. Instead it requires a technical undergraduate degree and passage of an exam on patent office procedure known as the Patent Bar. Because no law degree or state bar membership are required, more people can easily enter the field. In other technical areas of law, a lawyer must have underlying subject knowledge plus a law degree; a technical worker can convert into a patent agent without the added time and expense of going to law school. Technical workers often do so when their job prospects in their field are not good. There generally is a surplus of workers with technical degrees, as science and engineering programs are offered by low-cost state universities subsidized by taxpayers and sometimes industry. By contrast, law is only available as a graduate degree, and law schools typically charge higher tuition. So the lack of a requirement for a law degree means more workers can more easily enter the field when the job market for patent work is good. This increased competition is good for clients, but not good for patent attorneys.
Being Tainted By “Knowing Too Much”
Like most lawyers and technical workers, confidentiality restrictions can prohibit a patent prosecutor from using anything he learns that is not already in public record. As a result, should he later want to work as an innovator, that person will be “tainted” in his fields of expertise. If the boundaries of protection include abstract properties of the knowledge, he could be tainted in a wide area of work since he would know what would or would not work in future design work. For example, knowing that one approach works might lead him to believe similar approaches have a high probability of also working.
Restrictions on Lawyers in Technical Fields versus Engineers or Designers: Confidentiality restrictions would seem to be more of an issue for IP attorney than other technical workers because the knowledge is only brought to the IP attorney if there is a desire to protect it; so much greater portion of what he is learning is proprietary information. For other technical workers, there is an expectation that they may someday leave the company and will continue working in their field of expertise, so any company knows that there will likely be some “leakage” of what they learn. Courts in high-mobility technical economies like northern California understand this and balance trade secrecy restrictions against their policy of allowing employee mobility and career freedom. California generally will not enforce non-compete agreements on technical workers, and also will not generally enjoin future employment to prevent “inevitable disclosure” of residual knowledge in the employee’s brain. Even in other jurisdictions that do enforce non-compete agreements or issue injunctions to prevent “inevitable disclosure” of residual trade-secret knowledge, these injunctions against subsequent employment are usually only issued in cases of direct competitors and only for a period of a few years. Thus, an employee going to a non-competitor or who has not worked for the direct competitor for several years is unlikely to be hampered by “inevitable disclosure” lawsuits. Moreover, lawsuits against departing employees are expensive and hurt a company’s reputation among prospective employees, so there is an incentive not to sue every departing employee.
Many economists and industrial researchers believe some knowledge “leakage” actually results in a net increase in innovation. It may decrease the initial incentive to invest in future innovations, yet it also decreases the amount of money and personal needed to innovate. Innovations may be more likely to occur, since they often do build on experiences from elsewhere, including experience from exposure to proprietary subject matter.
Care should be taken not to overstate the issue. Employees who disclose files containing tangible computer code or proprietary data sets often are held liable for such disclosures. This discussion is primarily about employee mobility and reuse of tacit or residual knowledge in the person’s brain.
The three articles on the right discuss research by professors in either law or economics. The first notes that most entrepreneurs that start successful science or technology companies have extensive experience in their particular field. The second discusses how employee mobility that occurs when legal barriers are removed can facilitate the formation of new companies. The third is a detailed discussion of information diffusion in Silicon Valley. Please note that while these articles are relevant to the content of this website, the author of this website is not affiliated with these scholars. Readers should not assume these scholars are aware of or endorse this website.
One could make the case that tolerating some “leakage” also might help attorneys better serve clients. In technical industries, attorneys are needed who thoroughly understand the company’s technology. Often the client needs an attorney with a technical degree in the relevant specialization and technical work experience prior to law school in that relevant specialization. There are a limited number of attorneys in many specialized technical areas, and there are a limited number of clients. Thus it is likely that the attorneys with the most relevant skills will have worked for other clients with similar technology, often even competitors. It may be necessary to accommodate some “leakage” to allow these attorneys to represent new clients in their areas of technical expertise.
The attorneys who are best at innovative approaches to resolving business disputes or structuring transactions acceptable to both sides must be able to understand the goals and needs of both their clients and their opposing parties. That understanding includes matters specific to a particular industry or technology. Such attorneys will often be those with the most experience working for parties very similar to the adversary. The attorney’s new work therefore may build upon his prior exposure to the information of those other parties.
Thus far, conflict-of-interest and confidentiality restrictions in theory may limit a lawyer’s ability to serve future clients more than non-compete and trade secret law limit technical employees. Yet there are patent attorneys who have a substantial amount of experience in narrow technical niches built upon serving many different clients. There may be valid reasons for relaxing some of those restrictions, yet thus far that is not something that has been extensively addressed by the legal community or their clients.
Restrictions on Lawyer in Technical Fields Versus Other Lawyers: Confidentiality restrictions may be more of an issue for patent attorneys than other attorneys because in patent law, what is being protected is the idea or knowledge itself, something abstract, rather than specific facts in particular circumstances, as in most other practice areas. Comments to ABA Rule 1.9 note that in general an attorney can work on the same “type” of case against a previous client, and definitely against a different party. So, outside of patent and other intellectual property fields, a situation may fit the same fact pattern as a prior case, just with different persons, places, or times. That attorney is not disqualified even with knowledge of the prior case. Instead, this prior knowledge makes him more valuable. Based on this knowledge, he has insight into what is likely to have happened here, how the adversary is likely to respond, what the applicable law is and how judges are likely to interpret it, what legal arguments he will raise, and how much the case is likely to settle for.
In Intellectual Property law, what is being protected is not the physical widget itself, but rather the “type” of widget – the ideas and knowledge embodied in its design. So if the attorney later encounters an analogous technical situation, even if the parties involved are different, anything he uses from the previous case could disqualify him or expose him to liability. Thus a patent prosecutor could not work on an application for a new invention that uses similar technology to a prior application he worked on. He may encounter a new software patent that covers a similar mathematical algorithm he patented for another client who produces another type of software. Patent litigators can face similar problems.
There are few published cases alleging that lawyers are inevitably using their technical knowledge for later clients. Perhaps in certain regions patent attorneys have developed certain professional norms that allow more flexibility than a literal reading of the relevant Rules of Professional Conduct would allow.
Further Example: For example, a criminal defense attorney can use everything he learns about reading human emotions to tell if clients or witnesses are lying, or if jury members are believing his witnesses; he can use patterns for explaining away incriminating facts that he has tested before in prior cases. Similarly a business attorney can use anything he learns about special negotiating strategies, including reading human faces to tell if other parties are bluffing or serious. He can also use knowledge about that type of business in general, and knowledge of that business’s general practices (See comment to Rule 1.9). Yet a patent attorney patenting a software algorithm to read emotions cannot later use the proprietary scientific research he reads about human emotions in any way, including for work he later does for a non-competing software company.
Effects of Intellectual Property Regimes on Innovation
Whether patents encourage innovation more than they impede it is a complex issue beyond the scope of this site. However, there are some points to keep in mind.
Patent prosecutors don’t get to ask those questions. The main goal of patent law is to encourage innovation through giving exclusive rights to new inventions. But patent law also adds an extra layer of bureaucracy that can impede innovation. The Intellecutal Property system restricts what can be legally researched and discussed. It places researchers and inventors in a thinking mode of looking up what others have done rather than figuring out solutions.
One goal of patent law is to further disclosure of inventions that would otherwise remain trade secrets. In practice, in areas that did not used to be covered by patent law, companies increasingly protected their knowledge as trade secrets largely only when patents became a concern, such as with software algorithms and business methods. In determining whether a departing employee can use knowledge, or whether that knowledge is a trade secret, court will often look at whether that type of innovation is being patented. If so, they may conclude it qualifies for protection as a trade secret because trade secrecy is usually believed to be broader than patents.
Many people who wish to use their technical backgrounds in law go into patent work. The vast majority of this work is patent prosecution – writing patent applications and responding to requests from the patent office. Pay is limited by international competition, low barriers to entry, and the finite value of the patents themselves. The protection of ideas also can stifle the career progression of attorneys, as these obligations to past clients may limit their ability to take on new work. Since the same technical knowledge can be useful for an indefinite amount of time, and in different, even noncompeting applications, these obligations may be more of a problem than for attorneys in other fields. Nevertheless, despite these concerns, many attorneys and agents enjoy the hours, comparably low stress, and the exposure to new technology prevalent