Examining IP PhDs: a Katchat with IP profs

Professor Lionel Bently
Last month this blog hosted a number of posts [here, here, here] devoted to the IP PhD experience. Considering the interest raised by this topic, further aspects will be examined. And speaking of examination, what is the perspective of IP PhD examiners?

This Kat has asked a few questions to illustrious and learned Katfriends Lionel Bently (University of Cambridge), Eoin O'Dell (Trinity College Dublin), and Estelle Derclaye (University of Nottingham). 

So here we go with some questions:

What are you looking for in a PhD thesis when you examine it?

Lionel : It depends on the regulations of the particular university. These vary, so the starting point is always to look at the rules. That said, most seem to require an original and significant contribution in a thesis which reflects three years worth of research. The contribution might come in one big argument (a ‘thesis’) or in a range of more specific comments organised into a coherent whole.

Eoin I am looking in the main for three things. First, originality. The usual criterion for a PhD is that it must make a substantial contribution to the literature in the area; and I believe that it best does so by being original, and not derivative or repetitive of the existing literature. This is an intangible quality, but it is by far the most important one. Second, I am looking for a sophisticated understanding of, and engagement with, a wide range of research materials - this is demonstrated not only by comprehensive footnotes and bibliography, but also by the quality of the commentary on it. This is less intangible than originality, and it can mostly be achieved by hard work, good research, and several drafts. But it is an essential pre-condition for the development of original thoughts. Third, I am looking for good writing. It doesn't matter how original the ideas are, or how good the research is, if the writing gets in the way. The best theses eschew jargon and vernacular for relatively short, grammatical, sentences - and for a good structure which sets out the material in a coherent fashion, building the original argument step by logical step.

Estelle As an examiner, either internal or external, I look for a clear hypothesis, clear limitations and methodology all set out in the introduction. As to the thesis itself: originality, clarity, structure, links between chapters. Readibility is very important too - namely a clear, flowing style, although that does not prevent having a personal tone. Avoid overlong sentences and paragraphs, and long-winded arguments. Be precise and concise. The examiner and for that matter any reader must be able to follow the hypothesis throughout the whole thesis.

Professor Eoin O'Dell
Have you noticed any changes in the average quality of IP PhD theses over the past few years?

Lionel : I have not noticed any particular changes in the average quality of IP PhD theses lately. I certainly don’t think they have got any worse. I never experienced a golden era when every thesis could have been written by a professor.

Eoin There has been a definite improvement in the mechanical things - like getting citations right (most theses now use OSCOLA), finding relevant current materials (most universities have good online subscriptions), and going through various drafts, improving writing, structure and range of material (a good first year programme teaches these kinds of things). There has also been a change in the average candidate, with more good recent graduates, and fewer later-career lawyers. And there has been an improvement in the quality of supervision, with greater ongoing involvement by supervisors. All of this has certainly improved the polish of the output. In terms of the three things I identified in response to the question above, this means that the second and third have definitely improved. On these levels, the quality of the average thesis can be said to have improved. However, I don't think that the intangible quality of originality has improved, and in the end, that's what makes a great thesis.

Do you find it difficult to fail a thesis?

Lionel : There are usually options other than pass or fail – such as minor or substantial modifications, the latter involving resubmission. I think failing is rare, at least without offering an opportunity for substantial modifications. On at least one occasion I have asked for these and they have not been done.

Eoin Yes, but I have done so. It's difficult to fail a thesis because there is almost an expectation that after 3-to-4 years of work, the outcome is pre-ordained. But it is nevertheless necessary to do so, to maintain the integrity of the system, if the work as submitted is simply not redeemable. The various options open to an examiner, of passing a PhD, requiring minor changes, requiring major changes, and awarding a Masters-level degree instead, make failing unlikely. But it is a possible outcome, and occasionally it is a necessary one.

Estelle So far I have never had to fail a thesis. It has to be pretty bad for one to do so. Any normally constituted supervisors would not let their student go to the first line of battle without a reasonably good armour. But some systems may allow students to submit without the agreement of the supervisor so it may happen that a thesis is not worthy of passing even with corrections and must be failed. In any case, most British universities generally offer a MPhil to the candidates who do not meet the requirements of the PhD so failing is rare. But the possibility of failing a thesis is there and I think it is important rules allow for it to sustain the quality of PhD theses and the integrity of the system.

Estelle Derclaye
When a thesis goes wrong, whose fault is it?

Lionel : In some cases it might be that the person should not have been admitted: PhD students are rarely interviewed, and it can often be difficult to predict how a person will react to the process of a lengthy research project. Most institutions conduct a review after one year, and certainly this “weeds out” some of the weaker candidates. In some cases a thesis may go awry because the supervisor provides insufficient guidance, perhaps because they are not competent or confident in the field. More commonly, the failure will be the student’s own fault. They may have become  distracted, involved in other activities, and not focussed on their work. Or they may ignore the advice they are given. Most often, however, it is nobody’s fault: a student might simple get sick or be involved in an accident, or some unforeseeable event such as the death of someone close, or perhaps being the victim of a crime, might affect them. Doctoral students are people, not machines: the things that go wrong with the world at large can and do also affect doctoral students.

Eoin It depends. Sometimes, it's at the admission stage, when an unworkable thesis is admitted. Sometimes, it's at the end of the first year, where most universities have a confirmation/transfer system, and it's not properly used. Sometimes, the candidate goes awry (commonly not enough time to devote to the thesis, for personal or economic reasons). Sometimes, there has been insufficient supervision. Sometimes, all these things work, and the examiners are still not convinced.

Not to worry:
accelerated heart rate is perfectly normal
when undergoing a PhD examination
(especially if you are not the examiner) 
If you could make one change to the current system for examining PhD candidates, what would it be?

Lionel : There is no single PhD examination system: processes vary from country to country. I personally have a preference for an oral examination which is a real part of the process, rather than formal or theatrical (or non-existent). I think you learn much from discussion with the other examiners, too, so I prefer it where that is possible, rather than where a decision is made by a bureaucrat based on a bunch of wholly independent reports. One response you might hear is that it would be good if we could grade dissertations, at the very least: so examiners could highlight the really good dissertations with a star or distinction or some other form of commendation. We grade everything else, so why not PhDs? One answer is that it might generate appeals and re-examinations. Moreover, in general, the quality eventually becomes clear to those who are interested because the dissertation will be published, or may win a prize, and the candidate likely will give papers and get academic jobs.  

Eoin I would like to see greater funding for candidates, so that any teaching or other work they take is directly related to their research, thus allowing sufficient time for the thesis.

EstelleI like the British system, it is a real oral exam with the outcome unknown in advance, unlike in some other countries. It allows to check if the candidate really wrote the thesis which is of course crucial. It also allows the examiners to see how the candidate can defend their work and to highlight weaknesses here and there and give suggestions for improvement in view of publication. It is a really useful process for the student in my view.  

How marketable do you think are the skills of PhD candidates you are used to examine inside academia, as well as outside it?

The real feelings
behind a re-submission request
Lionel : The question of “marketability” of doctoral students assumes that undertaking a doctorate is about making the student marketable. But there are many reasons people choose to undertake PhD’s. In my view, ‘marketability’ of doctoral students is not the only, nor the most important, attribute by which we should judge the success of a doctoral programme. Having said that, PhD programmes teach and nurture the development of a wide range of skills. Most universities differentiate between research/subject-specific skills and so-called “transferable skills”. The former would include skills in the particular field (methodologies, subject area etc), whereas the latter are portable, and include organisational skills, presentation skills, language skills and so on. There has been increasing pressure from RCUK on PhD programmes to ensure students have the latter, as well as the former. Often there is quite a lot on offer, but it is up to the student to take advantage of what is there. That said, many do learn presentation skills, and some get involved in organising conferences and seminars. How marketable are these various skills? I think that depends. Obviously, if the “market” is that of academic employment, then I think many PhD students end up reasonably ready to take on the key tasks: by doing the PhD, they learn how to devise and execute research projects and often receive valuable guidance on teaching. But there are plenty of different markets other than academia, the legal profession is one, but others would include government (national, regional), NGOs, policy-units etc. Whether the particular PhD skills turn out to be useful may depend precisely on where a person ends up. Many of the “transferable skills” are designed to make research students able to market themselves, but also to show that they are not simply unworldly boffins. If doing a PhD is just a way to exhaust ones interest in a subject, and decide to look for employment elsewhere, I think these skills plus greater maturity will often make such persons rather attractive candidates.

Eoin Inside academia the PhD is now seen as the vocational qualification for an academic, in the same way as a solicitor's or barrister's qualification is the vocational qualification for a practitioner. If the programme is well structured, especially in the first year, then the skills will be designed to be transferrable and marketable. They are increasingly also transferrable and marketable in specialist practice.

Estelle I think the hard work that goes in a PhD thesis, the rigour, the research skills, the critical abilities, the attention to detail, the sheer knowledge acquired, gives great skills to a doctoral candidate. These skills are transferable to any job, and definitely to a practising lawyer. Sadly, as far as I know, it is maybe not always recognised by practitioners but maybe times are changing ... Of course, these skills are definitely those you need to acquire to be an academic, apart of course from the teaching skill. I'd say to the doctoral candidates that they should take advantage of the possibility they are offered to do a bit of teaching and to take as many courses as they can that their alma mater is offering while studying for the PhD as they are generally free and generally gives them additional transferable skills. There are of course those relating to the PhD - how to work with long documents, how to survive the viva, how to give presentations - but there are lots of other courses which can bring new, transferable, skills. So if what a student is after is to maximise their marketability, that's the way to do it.
Examining IP PhDs: a Katchat with IP profs Examining IP PhDs: a Katchat with IP profs Reviewed by Eleonora Rosati on Friday, September 12, 2014 Rating: 5


  1. I don't recall the previous blog postings challenging the value of the person doing the PhD, or the value of doing a PhD to an individual. The issue not raised with the esteemed Profs regards the real-world value of the IP research.

  2. I think the real world value of the Ph.D is much like the real world value of "the patent" or "the copyright work". It varies.

    Some Ph.D's (when converted to a book) have had a significant and substantial effect on the legal landscape; a well known example being Francis Gurry's book on Breach of Confidence (based on his Ph.D) which has been relied upon by Supreme Courts in many common law jurisdictions. This is but one example of a book resulting from a Ph.D being cited by a court, government report or international organization. Many more become well known textbooks (or parts thereof) or become wider reading for law students and practitioners.

    Nevertheless, it cannot be denied that other Ph.D's may have had little or no impact in what Anonymous (11.19) probably thinks is the "real world". But so what? In such a case, one hopes the completion of the doctorate has led to an individual's personal development - something which clearly has value (and may facilitate that person having a real world impact they might not otherwise have had).

    Returning to my opening point, most patents and almost all copyright works (such as this post) have no real world impact - but that in itself does not mean those legal regimes are worthless. Other patents and works have great value. It varies - so does the impact of an individual's Ph.D research.

  3. "So what"? If that is the best answer, I would support the abolition of state funding for ALL law research.

  4. No real world impact? Fine. No real world relevance? No.

    A PhD has at its core the object of advancing knowledge. New thinking. A basic review of laws and cases without suggestions or conclusions on advancing IP law is no more than a glorified undergraduate essay.

    Mr Kat mentioned that his work on employee inventions was of benefit in drafting new legislation, and I don't doubt it. However, has the law in this area worked? I think the answer is clearly no, and the relevant sections of the UK Act have been a waste of much ink and pixels.

  5. I think IP is rich in topics that could be the basis of PhD's, and I'm sure could provide interesting new perspectives in lots of areas, for example:
    - is there an inherent uncertainty in language that makes perfect claim construction impossible?
    - the morality of owning parts of 'nature'
    - patents as instruments in economic domination
    - IP rights in international relations
    - the role of patents in open innovation systems

    I think PhD students and academics that address these issues could input so much into other areas which would give us benefits economically, socially and culturally. Let's also bear in mind the tremendous contributions made by that former employee of a patent office, Albert Einstein.

  6. Such topics are already covered by PhDs and are no more than academics looking though a window into the IP world, rather than being a part of it.

  7. Professor Robin Feldman has just published an article on the relationship between the US Supreme Court and the Federal Circuit (http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2496763). As an academic she brings a fresh perspective to such things, and I think an invaluable one.

  8. Post from spc blog, which sums up the pointless nature of academic IP law:

    "I am in the process of researching for my PhD thesis on Supplementary Protection Certificates for Medical Devices and I am currently looking for any kind of decision which is relevant, and which is preferably available in English or German.

    I have only found four decisions so far matching that criteria (Bundespatentgericht Yttrium-90 glass microspheres, Bundespatentgericht Hylan A and Hylan B, UKIPO Cerus, UKIPO Leibnitz).

    Are you aware of any other decision helpful on that matter?"


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