CLASS OF 2022
Thinking outside the box
Diversity targets set by clients may be unrealistic for smaller firms to meet. Lisa Mueller of Casimir Jones explores how creative D&I solutions can make a difference.
My law firm, Casimir Jones, is a life sciences IP boutique firm located in Middleton, Wisconsin. Middleton is about six miles from downtown Madison, the state capital of Wisconsin. Casimir Jones has a total of 18 patent practitioners—15 patent attorneys and three patent agents. Of our 18 practitioners, we have four female partners, and all of our patent agents are female.
Over the last few years, a number of the firm’s clients have expressed expectations that we actively focus on the recruitment and development of underrepresented people, particularly women, persons of colour, LGBTQ+ persons, people with disabilities, first generation professionals, and veterans.
Several clients have requested that we focus on hiring racially diverse patent attorneys, agents, and patent specialists. In fact, some have asked that the firm provide the specific number of racially diverse patent attorneys, agents and patent specialists that we intend to hire over the next three to five years.
Some clients have made it clear that if we do not meet their diversity and inclusion (D&I) expectations, they will be forced to reduce the amount of work sent to the firm, or perhaps, even discontinue working with us entirely.
Unrealistic expectations
While working on our D&I efforts, we came to realise that many of our clients are approaching equity, diversity, and inclusion with a ‘one size fits all’ mindset. Specifically, clients appear to be focused on requiring that outside counsel meet certain diversity quotas and metrics regardless of whether their expectations are achievable.
For example, one of the challenges our firm encountered in trying to hire diverse individuals is the lack of diversity that currently exists in the patenting field. Simply put, there are just not enough candidates available for law firms to hire (eg, there is a supply problem).
The available data illustrates the challenges that IP law firms in particular face. According to the American Intellectual Property Law Association (AIPLA) 2019 Report of the Economic Survey, about 86.5% of all IP attorneys in the US are white, meaning that just 13.5% are racially diverse.
”About 86.5% of all IP attorneys in the US are white, meaning that just 13.5% are racially diverse.”
Lisa Mueller
When you look more closely at the patent field, this means that only about 1.7% of registered patent attorneys are Black. If you consider that there are about 34,000 actively practicing patent practitioners in the US, this means that just 578 of them are Black.
Given the small pool of available diverse candidates, it is very difficult, if not unrealistic, to expect that IP law firms are going to be able to meet clients’ hiring quotas, because the candidates to hire just don’t exist yet. If you are in a smaller firm, which does not have a national presence (let alone the brand recognition of a significantly larger firm), and has fewer resources, it is even more challenging.
Encouraging new talent
In view of these challenges, Casimir Jones instituted a multi-pronged approach in its D&I efforts. One of the approaches was to start the Casimir Jones Life Science Patent Academy to try and increase the number of diverse candidates entering the patent field. The Patent Academy began in 2021 and is a free programme made up of three virtual courses which introduces diverse individuals to patent law and teaches them how to draft and prosecute high-quality life-science related patent applications.
The goal is that by the end of the programme, these individuals will have the foundational skill set needed to help them get a job in patent law and/or take the patent bar.
The academy is broken down into three, five-to-six-week courses that run throughout the year. Part I, the patent basics course, is a five-week programme that runs from mid-July to mid-August. Some of the topics covered include: (a) what a patent is, the various parts of a patent and types of claims; (b) understanding prior art; (c) novelty; (d) obviousness; (e) written description and enablement; (f) inventorship; (g) post-grant review; (h) patent litigation and enforcement; and (i) freedom-to-operate.
Part II, the patent drafting course, is a five-week course from mid-October to mid-November. In this course, the participants are given a mock ‘inventor disclosure form’ describing a new invention and tasked with writing claims, and eventually, a full provisional application based on the invention described in the disclosure.
Part III, the patent prosecution course, is a six-week course that runs from early January to mid-February. In this course, the participants prosecute the patent application they drafted in part II. Participants obtain experience responding to a restriction requirement and one or more office actions, filing a request for continued examination and notice of appeal, and finally, by paying an issue fee.
A lasting impact
The academy is now in its second year. During our first year, three of the participants were successfully hired by IP law firms to work on patent matters. More importantly, however, it is the firm’s hope that the academy will make a lasting impact in the patent field by bringing more diverse individuals into patent law.
The firm also created a paid eight-week internship programme for diverse individuals with a scientific background in the life sciences. Individuals can participate in the programme regardless of whether or not they are pursuing a career in law.
As part of this programme, individuals are given the opportunity to obtain valuable experience in a wide variety of patent prosecution and litigation-related tasks under the supervision of the firm’s attorneys and patent agents. During the internship, the participants are given the opportunity to: (a) draft patent applications and responses to office actions, and perform other patent prosecution-related tasks, shadow a patent prosecution docket, assist with opinion work, analyse patentability and freedom-to-operate issues, evaluate issues related to patent litigation, and participate in strategy meetings with our clients. To date, two individuals have participated in the programme, and for each, the firm extended their internship for one or more eight-week periods.
I would encourage clients to think about whether establishing hiring quotas and requiring firms to meet certain D&I metrics are the best way to address the diversity problem in the legal profession, particularly in patent law.
I would challenge clients to think about whether ‘one size fits all’ really is the best approach, and consider recognising and supporting law firms that are developing programmes and devising creative solutions to bring more diverse candidates into patent law. Ultimately, this would help to address the diversity problem in the long- term.
Lisa Mueller is a patent attorney at Casimir Jones. She can be reached at: llmueller@casimirjones.com
Images, from top: Shutterstock / Sergey Nivens, xactive