The missing link

Why are American universities so much better at patenting their work than their European counterparts? Craig Evan Klafter spots a crucial difference in the qualifications of patent lawyers

July 23, 2009

Over the past ten years, league tables that rank universities around the world have come into vogue. One of those tables, by the Milken Institute, focuses on the ability of universities to develop and commercialise patents. The Milken Institute Biotech Patent Rankings Composite Index, 2000-2004 shows that of the top 30 universities in the world, according to biotechnology patents granted, American institutions captured 23 places. Only two European universities - the University of London and the University of Oxford - made the list. What explains this disparity?

It is not a question of American university researchers being superior to their European counterparts. Rankings of countries based on the number of Nobel prizes won and scientific papers published do not reveal anything close to the disparity found when comparing patent output. Nor is it a matter of different levels of funding. The Milken Institute also considered patent productivity per $1 million (£610,000) in research funding and found a similarly large disparity between the US and Europe.

Other studies have looked at the incentives that faculty members receive to develop patents and found that most European universities have patent policies that are equal to or more generous than those that exist in the United States.

One commonly held view in Britain is that the disparity stems from American academics placing a higher value on financial success than their European counterparts. Yet surveys of faculty members on both sides of the Atlantic reveal that respondents get involved in patenting activities for the same reasons - to enhance their prestige and reputation and to see their inventions improve the human condition. Personal earnings are not considered to be a major incentive. So what does explain the disparity in patent development between American and European universities?

A key factor is the difference between the legal education system in the US and in Europe. In the first quarter of the 19th century, legal education was established in American universities as a postgraduate course; a bachelors degree was a prerequisite for law school admission. This was because legal educators at the time believed that liberally educated students would become more insightful and creative lawyers and legislators. These traits were considered important to a young nation in need of developing its own laws and desirous of using law as a tool to promote economic growth. That tradition has continued to this day. In general, a prospective lawyer will need to pass a state-administered Bar exam after earning a juris doctor degree from a law school approved by the state in which he or she wants to practise.

The establishment of American legal education as a postgraduate course of study led to another innovation with regard to membership of the Patent Bar (a requirement in order to be registered as a patent lawyer). American patent lawyers are required to hold, in addition to a three-year postgraduate degree in law, a bachelors or masters degree in a hard science or engineering, or to have accrued a significant number of credits in undergraduate science courses. Indeed, many patent lawyers also hold a doctorate in a technical subject. American patent lawyers are also required to be admitted to practise before a State Bar as "general" lawyers.

The situation in the UK is representative of what exists throughout Europe. There are many British solicitors and patent lawyers who hold bachelors or even masters degrees in science or engineering, but there are very few who hold doctorates in technical disciplines. UK universities, in contrast to US institutions, usually require those who pursue advanced degrees to hold first degrees in the same or a related subject. If your first degree is in law, you cannot pursue an advanced degree in science or engineering. If your first degree is in science or engineering, your only option for becoming a solicitor is to take a conversion course. Although there is nothing to prevent an individual with a doctorate in science or engineering from taking a conversion course or seeking to become a patent lawyer, few have done so. This is because undergraduate and masters-level scientists view the practice of law as a substitute for, rather than an addition to, doctoral study. Those with a bachelors degree in law are effectively barred from pursuing a doctorate in science or engineering, and those with a bachelors and/or masters degree in science or engineering usually choose to study law because they don't want to pursue a doctorate in science or engineering.

In June 2005, The Scientist magazine ranked the most effective US universities in technology transfer and labelled the top 15 "patent powerhouses". The ranking measured both the quantity and quality of life sciences patents issued to universities. A review of the qualifications of staff in each of those universities' technology transfer and university counsel offices revealed that all of them employed patent lawyers.

Many European universities also employ patent lawyers. However, in the US, unlike in Europe, most of them hold both law degrees and doctorates in one of the technical disciplines.

Through the course of my work negotiating international research collaboration agreements, I have had the opportunity to meet with scores of university patent lawyers in the US and in Europe. One of the most striking differences between them is how they view their role vis-a-vis faculty member inventors and creators. In Europe, the lawyers generally describe their role as reactive. They wait for faculty members or administrative staff to come to them with possible patentable ideas. In the patent-powerhouse universities of the US, however, the lawyers generally describe their role as proactive. They routinely meet with faculty members in search of patentable ideas and are so trusted by faculty members that they are often called on to help direct research into areas not heavily populated by patents.

The trust that has developed between these US lawyers and their academic colleagues has much to do with the fact that all of these patent lawyers have had three years to learn the ins and outs of the law and to hone their communication skills, and many also hold doctorates in scientific or technical subjects. Indeed, some engage in scientific research themselves and even hold faculty appointments in technical disciplines. They hold qualifications that command the respect of faculty members and are fluent in the languages of law and science. Simply put, they are better placed than their European counterparts to help faculty members be effective inventors and creators.

So what can European universities do to compete better with their US counterparts in the development of patents? Some have suggested adopting the postgraduate legal education model found in the US. Indeed, a few UK and Irish universities have introduced two-year conversion courses that award masters degrees - a step in the direction of the American model of legal education. However, I do not find this trend particularly appealing. The American model has its limitations. It is more professional and less academic, more uniform and less individualistic, more subject to control by professional bodies and less innovative than its European counterparts. Another option would be to encourage doctoral-level scientists to pursue the practice of law, but I suspect that few of them would be willing to shift careers after investing so much time in earning a doctorate.

A better option would be to create a means for law graduates to pursue a doctorate in a technical discipline. One possibility would be to develop a course that would confer both a masters degree in intellectual property law and a masters degree in science or engineering. Joint courses that bridge professional and academic subjects are common in the US. In the European context, they would provide law graduates with the unique opportunity to pursue postgraduate education in both legal and scientific disciplines. The course could require A levels, or their equivalents in sciences, and foundation study in science or engineering subjects before the start of the non-law portion of study. The graduates of such a course would be qualified to pursue a doctorate in a technical discipline and have advanced knowledge of intellectual property law. They would be well on their way to competing effectively with US patent lawyers in facilitating the development of patents within higher education institutions.

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