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Patent information in the academic context
~
PATLIB 96, a supplement to World Patent Information. Vol. 19 (1997) © 1997 Published by Elsevier Science Ltd. All rights reserved Pages 23-26
Pergamon
4.1. Patent Information in the Academic Context Ruth Soetendorp, Department ofLaw, Boumemouth University, UK Introduction
The students are required to design a high-technology product and file an initial patent, using the legal expertise of the institute (1988).
"If a young engineer comes into contact with patent information at a very early stage - during his training if possible - he will use this source of information regularly since he will already be familiar with it...instruction in patent documentation must be an integral part of engineering training." Karl Heinrich Oppenlander. Patinnova I. 1990
The teaching team was aware of the importance of patent experience for the young engineers. However, their vision of how varied and interesting the patent work could be was not apparent from its brief description. Nor was any mention made of the importance of the intellectual property regimes other than patenting.
According to "Utilisation of Patent Protection in Europe", a representative survey carried out on behalf of the European Patent Office, Munich, 1994, there is clear evidence to suggest that the innovative potential within Europe is not being fully tapped and that the patent system available is not being adequately used.
All Bournemouth University programmes are required to be submitted for review at a maximum of five-yearly intervals. The first B.Sc. (Hons) EBD review was held in 1992. In the review documentation the team made the first reference to intellectual property per se: "...the protection of intellectual property is also an important aspect, to ensure its intelligent use to gain competitive advantage on an international scale" (1992).
Bournemouth University's B.Sc. (Hons) Engineering Business Development current Course Handbook, states that "The protection of intellectual property is also an important aspect, to ensure its intelligent use to gain competitive advantage on an international scale".
The Patenting Experience of the B.Sc. (Hons) Engineering Business Development student: the Integrating Assignment
Earliest stages of the Patent Assignment on the B.Sc. (Hons) Engineering Business Development degree
The engineering student's patent work is located in the second Year II Integrating Assignment. The Integrating Assignment is described in the course documentation as a vehicle "...to achieve integration of the subjects run within the year. It is based on a student centred approach to allow the students to manage their own learning. It is designed to allow the student to understand and appreciate the value and importance of the various course elements and how they are integrated and used in the engineering business development practice" (1992).
The B.Sc. (Hons) Engineering Business Development degree was developed and had its first cohort in 1988. The course team appreciated that small- and medium-sized enterprises, in particular, need graduates who can operate competently with a range of technological and business problems from the outset. They set out to design an undergraduate degree course programme which would address the shortcomings recognised in the graduates of single honours degrees. In the course documentation, the team recognised:
In Year II, term 2, the student is required to develop a marketable innovative product, be aware of its value, and undertake the process of protecting the innovation. The assignment is designed to develop the student's ability to:
•
•
identify a market need and translate that need into a product idea;
•
partake in and contribute to ideas generation sessions for the purpose of innovation;
•
translate ideas into a working product;
•
that the market for high technology products is increasing rapidly and the need for careful investigation into the protection and legal liabilities is of increasing importance; and the legal expertise of the institute and possibly a visiting patent agent would be used consultatively. 23
24
PATUB 96 Proceedings
•
determine the business worth of an innovative new product; and
•
apply the system of legal protection to the innovative idea (1988).
The Patent Office Information Packs, containing valuable detail on the intellectual property regimes, as well as the Patent Office search and registration facilities, are distributed after the presentation, and are well received. In particular the modest "How to prepare a UK Patent" is a perennial favourite.
"Prophylactic law" Responsibility for law on the B.Sc. (Hons) EBD was delegated to a member of the University Law Department, with an interest in the area of Intellectual Property. Initial responses to "law" and "patents" by the engineers were, anecdotally, reluctant and suspicious. As a result, anything extraneous to their direct interest, or unrelated to their task in hand, was stripped from the syllabus. The students were therefore able to appreciate the direct relevance of the law they were considering. This left product liability and patenting, justified to the students as "'prophylactic law' - the essential law you need as a product engineer to avoid making tragic, dangerous and expensive mistakes, for yourself and/or your employer". Thus engaged, the engineers participated in the law sessions with enthusiasm. The patent work involved in applying the system of legal protection to the innovative idea comprised:
The Patent Office Training Package - Making it Happen has been a library resource for the past four years, during which time it has been brought to the attention of the students, and is available on open access in the Law Library. Perhaps when it is available on CD-ROM in the department it will be more widely used. Additional library resources include online search facilities (US Patent Full Text and World Patent Index on Dialog, which are too expensive for use by second-year students) and Patents on CD-ROM, limited to 1992-1994. The Patent Library
To give the engineering students a personal experience of the vast potential offered by published patents to assist innovators in avoiding the costly and frustrating experience of re-inventing the wheel, they are taken to visit the Patent Library, at Portsmouth. The Patent Library at Portsmouth agreed to visits by groups of students. Having first received the students' abstracts, the Library staff did preliminary searches for the students who were then able to study, in depth, a clutch of patent specifications. From these they were able to assess how innovative their own product was, and what (in real life) they might need to have done to get round an existing patent. Photocopies of relevant patents are obtainable.
•
a visit by the Patent Office
•
the distribution of Patent Office materials
•
the Patent Office Training Package Happen
•
a visit to Portsmouth Patent Library
Patent Attorney
•
a visit of a Patent Agent
•
lecture and tutorial support
As the students grapple with preparing their own Patent Specification, a local (retired) Patent Attorney visits, giving advice on their work in progress. They find for themselves how difficult it is to draft strong claims, and thus appreciate the benefit of engaging a professional Patent Attorney.
Making it
In designing delivery of this important element of their integrating assignment, it was agreed to move the engineers away from lawyerly tomes, to encounters and interaction with appropriate professionals The Patent Office - Marketing and Information Directorate
The most appropriate agency, with experience of bringing intellectual property concepts to inventors, small and medium enterprises and multinationals is the Patent Office - Marketing and Information Directorate.
Lectures and tutorials
In addition, the Law staff provide introductory lectures to patenting, and two tutorials in which the student can discuss, individually, the progress they are making with their patent specification. Note
• The Patent Office agreed to visit the university with their comprehensive slide collection. Their user-fri.endly presentation to the engineers early on in the academic year did much to dispel the engineers' innate nervousness about the task ahead of them.
Any student who, having submitted their abstract, discovers, probably through the visit to the Patent Library, that their innovation sits fairly and squarely in the prior art may still proceed with the Patent Specification. The lesson of "not re-inventing the wheel" will not have been wasted.
PATUB 96 Proceedings
•
The potential of any student's innovation to be the subject of a real patent application reinforces student awareness and appreciation of confidentiality and nondisclosure.
Engineers and lawyers working together -
I
Concurrent with the development of the B.Sc. (Hons) Engineering Business Development programme, the Law Department was considering developments to its qualifying law degree. In 1989 the L.L.B. (Hons) Business Law degree admitted its first cohort. The fourth-year programme is designed to give students study options in business law. These include Intellectual Property Practice. The aim of the Intellectual Property Practice option has been: "To develop the student's awareness of the existence, diversity, mortality and commercial value of intellectual property rights" (1989). It was felt necessary to give the law students a practical way
25
omissions) would mean that the client would not return to do further business. It was agreed as follows:
•
Engineers are required to write their request to the lawyer.
•
Students addresses and phone numbers are exchanged.
•
"Client" and requirements.
•
The lawyer prepares a letter to the engineer as jargonfree as possible (plus an authoritative appendix for the tutor).
•
Peer assessment allows for the engineer and lawyer to give each a mark for their perception of the letter received. The Patent Attorney participates in assessment of the lawyers letters of advice.
"adviser"
can
meet
to
discuss
Conclusions
in which to demonstrate and be assessed in their ability to fulfil the option's aim.
Do students value instruction in intellectual property?
Ideally, such a test would be provided, as in real life, by engaging with a client and offering specific advice.
During 1995/96, the Patent Office has funded a project at Bournemouth University researching the possibility of a blueprint for raising awareness of intellectual property across a University campus.
Here in the University existed the ideal client base - the engineering students, currently engaged in patenting their integrating assignment. Whilst the engineers would emerge from their assignments with a good understanding of patents, their syllabus was too crowded to include further study of intellectual property. The engineers risked graduating, unaware of their procl ~cts ' potential to generate design right, registered design right, copyrights and trademarks - unless the intellectual property practice lawyers were prepared to give them detailed and professional advice on the intellectual property exploitation potential of their product!
Engineers and lawyers working together -
n
The Law tutor and Engineering tutor both agreed that it would be very exciting to see engineers and lawyers working together. The exercise would help each student group learn a useful lesson: •
•
For the engineers - the need to communicate clearly by letter or phone with the professional adviser: any unnecessary time spent trying to explain points to the professional adviser goes on the engineer's bill. For the lawyers - the need to make their advice comprehensible to the legal layperson is paramount. Too much impenetrable jargon (or invaluable
Students on 19 of the University'S 40 undergraduate programmes received a one-hour input on intellectual property, during which the students were introduced to the Patent Training Package - Making it Happen. They were asked what they knew about aspects of innovation before the hour, what relevance the topic had to their course of study, and what use they felt it would be in their future profession. The value placed by design students on design rights and "protecting inventions" in their future careers suggests its significance for inclusion in some way during the students course of study. The Figures show that the B.Sc. (Hons) Engineering Business Development team are obviously already addressing this student need. A similar course could be introduced in other institutions, but essentially the programme needs a Champion - which could be an academic, engineer or lawyer, a local firm of Patent Attorneys or (retired) Patent Attorney. Accessibility ofpatent information
As patent information becomes more accessible, through CD-ROM and online facilities and eventually the Internet, students could make use of it in conjunction with visits to the Patent Library and Information facilities.
PA1UB 96 Proceedings
26
Availability of Patent Office personnel and materials The support of the Patent Office Marketing and Infonnation Directorate has been key to the development of this work.
With the Patent Training Package Making it Happen shortly to be available on CD-ROM, it is hoped that it will be more easily accessible within University departments.
80
r------------,
80
r------------,
70
1------------1
70
f-------------I
60 1 - - - - - - - - - - - - - 1
80
1-------------1
• not at all • a little ffi40 • probably ~ ! 30 1 - - - - - - - - - - - 1 almost certainly • definitely 20
& 50 i!!
---~------I
i50~----~,
~4O
!
30 20
10
10
o
o
Fig. 1. Will "protecting your invention" be of value during your course?
Fig. 3. Will "design rights" be of value to you during your course?
80
80
70
70
80
80
&50
III
~4O
8. 30 20
• not at all • a little • probably 11 almost certainly • definitely
&50
i!! C:4O
~
!3O
• not at all • a little • probably II almost certainly • definitely
20
10
10
0
0
Fig. 2. Will "protecting your invention" be of value to you in your future profession?
-=1
t-------
• not at all • a little • probably ffi}j almost certainly • definitely
Fig. 4. Will "design rights" be of value to you in your future profession?
PATLIB 96, a supplement to World Patent Information. Vol. 19 (1997) © 1997 Published by Elsevier Science Ltd. All rights reserved Pages 23-26
Pergamon
4.1. Patent Information in the Academic Context Ruth Soetendorp, Department ofLaw, Boumemouth University, UK Introduction
The students are required to design a high-technology product and file an initial patent, using the legal expertise of the institute (1988).
"If a young engineer comes into contact with patent information at a very early stage - during his training if possible - he will use this source of information regularly since he will already be familiar with it...instruction in patent documentation must be an integral part of engineering training." Karl Heinrich Oppenlander. Patinnova I. 1990
The teaching team was aware of the importance of patent experience for the young engineers. However, their vision of how varied and interesting the patent work could be was not apparent from its brief description. Nor was any mention made of the importance of the intellectual property regimes other than patenting.
According to "Utilisation of Patent Protection in Europe", a representative survey carried out on behalf of the European Patent Office, Munich, 1994, there is clear evidence to suggest that the innovative potential within Europe is not being fully tapped and that the patent system available is not being adequately used.
All Bournemouth University programmes are required to be submitted for review at a maximum of five-yearly intervals. The first B.Sc. (Hons) EBD review was held in 1992. In the review documentation the team made the first reference to intellectual property per se: "...the protection of intellectual property is also an important aspect, to ensure its intelligent use to gain competitive advantage on an international scale" (1992).
Bournemouth University's B.Sc. (Hons) Engineering Business Development current Course Handbook, states that "The protection of intellectual property is also an important aspect, to ensure its intelligent use to gain competitive advantage on an international scale".
The Patenting Experience of the B.Sc. (Hons) Engineering Business Development student: the Integrating Assignment
Earliest stages of the Patent Assignment on the B.Sc. (Hons) Engineering Business Development degree
The engineering student's patent work is located in the second Year II Integrating Assignment. The Integrating Assignment is described in the course documentation as a vehicle "...to achieve integration of the subjects run within the year. It is based on a student centred approach to allow the students to manage their own learning. It is designed to allow the student to understand and appreciate the value and importance of the various course elements and how they are integrated and used in the engineering business development practice" (1992).
The B.Sc. (Hons) Engineering Business Development degree was developed and had its first cohort in 1988. The course team appreciated that small- and medium-sized enterprises, in particular, need graduates who can operate competently with a range of technological and business problems from the outset. They set out to design an undergraduate degree course programme which would address the shortcomings recognised in the graduates of single honours degrees. In the course documentation, the team recognised:
In Year II, term 2, the student is required to develop a marketable innovative product, be aware of its value, and undertake the process of protecting the innovation. The assignment is designed to develop the student's ability to:
•
•
identify a market need and translate that need into a product idea;
•
partake in and contribute to ideas generation sessions for the purpose of innovation;
•
translate ideas into a working product;
•
that the market for high technology products is increasing rapidly and the need for careful investigation into the protection and legal liabilities is of increasing importance; and the legal expertise of the institute and possibly a visiting patent agent would be used consultatively. 23
24
PATUB 96 Proceedings
•
determine the business worth of an innovative new product; and
•
apply the system of legal protection to the innovative idea (1988).
The Patent Office Information Packs, containing valuable detail on the intellectual property regimes, as well as the Patent Office search and registration facilities, are distributed after the presentation, and are well received. In particular the modest "How to prepare a UK Patent" is a perennial favourite.
"Prophylactic law" Responsibility for law on the B.Sc. (Hons) EBD was delegated to a member of the University Law Department, with an interest in the area of Intellectual Property. Initial responses to "law" and "patents" by the engineers were, anecdotally, reluctant and suspicious. As a result, anything extraneous to their direct interest, or unrelated to their task in hand, was stripped from the syllabus. The students were therefore able to appreciate the direct relevance of the law they were considering. This left product liability and patenting, justified to the students as "'prophylactic law' - the essential law you need as a product engineer to avoid making tragic, dangerous and expensive mistakes, for yourself and/or your employer". Thus engaged, the engineers participated in the law sessions with enthusiasm. The patent work involved in applying the system of legal protection to the innovative idea comprised:
The Patent Office Training Package - Making it Happen has been a library resource for the past four years, during which time it has been brought to the attention of the students, and is available on open access in the Law Library. Perhaps when it is available on CD-ROM in the department it will be more widely used. Additional library resources include online search facilities (US Patent Full Text and World Patent Index on Dialog, which are too expensive for use by second-year students) and Patents on CD-ROM, limited to 1992-1994. The Patent Library
To give the engineering students a personal experience of the vast potential offered by published patents to assist innovators in avoiding the costly and frustrating experience of re-inventing the wheel, they are taken to visit the Patent Library, at Portsmouth. The Patent Library at Portsmouth agreed to visits by groups of students. Having first received the students' abstracts, the Library staff did preliminary searches for the students who were then able to study, in depth, a clutch of patent specifications. From these they were able to assess how innovative their own product was, and what (in real life) they might need to have done to get round an existing patent. Photocopies of relevant patents are obtainable.
•
a visit by the Patent Office
•
the distribution of Patent Office materials
•
the Patent Office Training Package Happen
•
a visit to Portsmouth Patent Library
Patent Attorney
•
a visit of a Patent Agent
•
lecture and tutorial support
As the students grapple with preparing their own Patent Specification, a local (retired) Patent Attorney visits, giving advice on their work in progress. They find for themselves how difficult it is to draft strong claims, and thus appreciate the benefit of engaging a professional Patent Attorney.
Making it
In designing delivery of this important element of their integrating assignment, it was agreed to move the engineers away from lawyerly tomes, to encounters and interaction with appropriate professionals The Patent Office - Marketing and Information Directorate
The most appropriate agency, with experience of bringing intellectual property concepts to inventors, small and medium enterprises and multinationals is the Patent Office - Marketing and Information Directorate.
Lectures and tutorials
In addition, the Law staff provide introductory lectures to patenting, and two tutorials in which the student can discuss, individually, the progress they are making with their patent specification. Note
• The Patent Office agreed to visit the university with their comprehensive slide collection. Their user-fri.endly presentation to the engineers early on in the academic year did much to dispel the engineers' innate nervousness about the task ahead of them.
Any student who, having submitted their abstract, discovers, probably through the visit to the Patent Library, that their innovation sits fairly and squarely in the prior art may still proceed with the Patent Specification. The lesson of "not re-inventing the wheel" will not have been wasted.
PATUB 96 Proceedings
•
The potential of any student's innovation to be the subject of a real patent application reinforces student awareness and appreciation of confidentiality and nondisclosure.
Engineers and lawyers working together -
I
Concurrent with the development of the B.Sc. (Hons) Engineering Business Development programme, the Law Department was considering developments to its qualifying law degree. In 1989 the L.L.B. (Hons) Business Law degree admitted its first cohort. The fourth-year programme is designed to give students study options in business law. These include Intellectual Property Practice. The aim of the Intellectual Property Practice option has been: "To develop the student's awareness of the existence, diversity, mortality and commercial value of intellectual property rights" (1989). It was felt necessary to give the law students a practical way
25
omissions) would mean that the client would not return to do further business. It was agreed as follows:
•
Engineers are required to write their request to the lawyer.
•
Students addresses and phone numbers are exchanged.
•
"Client" and requirements.
•
The lawyer prepares a letter to the engineer as jargonfree as possible (plus an authoritative appendix for the tutor).
•
Peer assessment allows for the engineer and lawyer to give each a mark for their perception of the letter received. The Patent Attorney participates in assessment of the lawyers letters of advice.
"adviser"
can
meet
to
discuss
Conclusions
in which to demonstrate and be assessed in their ability to fulfil the option's aim.
Do students value instruction in intellectual property?
Ideally, such a test would be provided, as in real life, by engaging with a client and offering specific advice.
During 1995/96, the Patent Office has funded a project at Bournemouth University researching the possibility of a blueprint for raising awareness of intellectual property across a University campus.
Here in the University existed the ideal client base - the engineering students, currently engaged in patenting their integrating assignment. Whilst the engineers would emerge from their assignments with a good understanding of patents, their syllabus was too crowded to include further study of intellectual property. The engineers risked graduating, unaware of their procl ~cts ' potential to generate design right, registered design right, copyrights and trademarks - unless the intellectual property practice lawyers were prepared to give them detailed and professional advice on the intellectual property exploitation potential of their product!
Engineers and lawyers working together -
n
The Law tutor and Engineering tutor both agreed that it would be very exciting to see engineers and lawyers working together. The exercise would help each student group learn a useful lesson: •
•
For the engineers - the need to communicate clearly by letter or phone with the professional adviser: any unnecessary time spent trying to explain points to the professional adviser goes on the engineer's bill. For the lawyers - the need to make their advice comprehensible to the legal layperson is paramount. Too much impenetrable jargon (or invaluable
Students on 19 of the University'S 40 undergraduate programmes received a one-hour input on intellectual property, during which the students were introduced to the Patent Training Package - Making it Happen. They were asked what they knew about aspects of innovation before the hour, what relevance the topic had to their course of study, and what use they felt it would be in their future profession. The value placed by design students on design rights and "protecting inventions" in their future careers suggests its significance for inclusion in some way during the students course of study. The Figures show that the B.Sc. (Hons) Engineering Business Development team are obviously already addressing this student need. A similar course could be introduced in other institutions, but essentially the programme needs a Champion - which could be an academic, engineer or lawyer, a local firm of Patent Attorneys or (retired) Patent Attorney. Accessibility ofpatent information
As patent information becomes more accessible, through CD-ROM and online facilities and eventually the Internet, students could make use of it in conjunction with visits to the Patent Library and Information facilities.
PA1UB 96 Proceedings
26
Availability of Patent Office personnel and materials The support of the Patent Office Marketing and Infonnation Directorate has been key to the development of this work.
With the Patent Training Package Making it Happen shortly to be available on CD-ROM, it is hoped that it will be more easily accessible within University departments.
80
r------------,
80
r------------,
70
1------------1
70
f-------------I
60 1 - - - - - - - - - - - - - 1
80
1-------------1
• not at all • a little ffi40 • probably ~ ! 30 1 - - - - - - - - - - - 1 almost certainly • definitely 20
& 50 i!!
---~------I
i50~----~,
~4O
!
30 20
10
10
o
o
Fig. 1. Will "protecting your invention" be of value during your course?
Fig. 3. Will "design rights" be of value to you during your course?
80
80
70
70
80
80
&50
III
~4O
8. 30 20
• not at all • a little • probably 11 almost certainly • definitely
&50
i!! C:4O
~
!3O
• not at all • a little • probably II almost certainly • definitely
20
10
10
0
0
Fig. 2. Will "protecting your invention" be of value to you in your future profession?
-=1
t-------
• not at all • a little • probably ffi}j almost certainly • definitely
Fig. 4. Will "design rights" be of value to you in your future profession?