For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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Monday, 21 April 2008

French patent attorneys: an endangered species?

The IPKat would like to hand over this post to Alex Thurgood, an English patent professional living and working in France. Alex has some very interesting things to say about what is currently going on in the IP profession over there. The following is written in Alex’s own words (only mildly edited by the IPKat):

Just in case you weren't aware, there is a bit of a war of words going on over here in France at the moment, in relation to the potential future merger/acquisition of the French Bar with the IP attorney profession. Things are heating up now that the French Bar Association has made its position clear, which is that they will allow those who are already registered IP attorneys to join, but not all those wannabe's (i.e. our hardworking engineering and scientifically qualified juniors), who are going to have to sit the same qualifying exams as any normal wannabe barrister, in addition to the exams patent attorneys have to pass.

Ooops, there goes the patent attorney profession !!!

What this means is that a freshly qualified engineering graduate or PhD student will, if he is fortunate enough to find someone willing to take him on and train him, have to jump through rings, hoops, nay fire, for at least 6 years before being able to have a hope of calling him/herself an Avocat spécialisé en propriété intellectuelle (even the name may change apparently). The candidate will have to sit :

  • CEIPI 1 (IP Law) - similar in substance to the PG courses offered by Bournemouth or Queen Mary's from what I can judge
  • CEIPI 2 (French law of obligations, tort, ethics, constitutional law, community law, etc,etc)
  • pre-CAPA - I have no idea as yet what exactly this will consist of, although it is supposed to be the equivalent of CEIPI 1 and 2
  • the EQE (yes, obligatory, otherwise the candidate will be doomed to failure and wandering in the wilderness)
  • CAPA : bar exam, where IP will be but one option among the 20 or so subjects that are tested.
Bearing in mind that candidate are only allowed to sit the CAPA twice, ever.

In essence, the new system, if it were to go through, would require engineering or scientific based candidates to have the same knowledge as someone who has spent 6 years in law school, with a pass rate at the final exam of about 1 in 20.

Needless to say, which right minded trainee would want to go through all that, when they could just go and study law for 6 years instead ?

Where will we get our engineers from ?

The Bureau of the CNCPI, in its thirst for acceptance of the proposal, has been brandishing the spectre of deregulation, which will come anyway at some stage, and has now initiated a huge "win 'em over" campaign, blogs, stock and barrel. What the bureau fails to have seen is that, despite the mandate they were given at the AGM by the "majority" (I use that term lightly) of CPIs, they have not followed that mandate and appear on the face of it to have accepted what is totally unacceptable for many today, and especially for those who officially have no voice within the CNCPI: the trainees !!!

If you are an adept reader of French, then you may wish to peruse the CNCPI blog, which it has to be said, is illustrative of the lack of freedom given to its members, other than commenting on the crass contributions made by the moderator of the blog, an unknown, and non practising Doctor at Law, rather more versed apparently in constitutional law than anything to do with IP.

Another, more thought provoking blog is that of my erstwhile fellow Pierre Breesé.

It goes without saying that should we lose our identity in this big mess, then that'll mean more work for you guys [IPKat comment: i.e. patent attorneys outside France, and particularly those working in English], since French industry has already given this project the big thumbs down, and it will inevitably turn to IP service providers who are technically capable of understanding what it is they are trying to protect. Maybe you should start recruiting now ;-)

French industry has already said that it is largely against the merger, because inevitably the temptation will almost certainly be to align our prices with those of the barrister profession, and as a consequence many industry representatives, including the MEDEF (French equivalent to the CBI), have said that they will direct their IP work demands for day to day prosecution and filing to non-French firms, i.e. English and German firms essentially.

[In response to a question about whether this might mean the gradual death by retirement of the French IP profession:] As for growing old, we already have a problem, even without the future proposed integration. According to the statistics, roughly about one third of the French profession is due to retire over the next 10 years, and at present numbers of newly qualified entrants is well below the amount required to maintain the status quo. The whole of the French private practice IP industry only amounts to some 700 or so licensed professionals. If the merger goes through, then even fewer engineers will take the path to full qualification, and fewer still will pass, which as you surmise, will probably lead to the extinction of the patent attorney species as we know it in France. Certainly, in terms of client satisfaction, French industry is none too keen on the prospect of having to work with pure "lawyers" with no scientific background for the protection of its industrial innovation.

Although I was initially personally in favour of the merger, at the start the proposal involved maintaining our recognised specialised status and only having one extra adaptative exam for the new entrants (the grandfather clause would have existed for those already registered as IP attorneys), which in the end wouldn't have been too burdensome. The French Bar Association, however, has scuppered that intention because it felt that to allow anything else would be detrimental to its (rather poor IMO) public image and would be lowering its standards to accept the plebs (sorry for my somewhat ironical tone here) they call IP Attorneys (trademark and patent attorneys alike). They are also dead scared, for some obscure reason, that we are all suddenly going to compete with them for their client base!!! I must admit that I, and indeed the majority of my peers, have absolutely no intention of doing anything else in terms of legal services other than IP, and additionally, we are, as I said, only 700 or so, compared to 40,000 barristers nationwide. But this was not sufficient for the CNB, hence the draconian terms :-) There is even a plan by the CNB to make it illegal for European Patent Attorneys from practising independently, other than for filing and prosecution - no counselling though, in order to prevent groups of EPAs from forming independent companies and competing outside of the one big legal happy family we are all supposed to become.

There is a CNCPI AGM planned for May 13th, so we shall have to wait and see what kind of resolution is going to be put forward to us, but if we do decide to go ahead with the "collective suicide" then it is pretty clear that the face of IP representation in France as we know it, will change drastically. Oh, and as the proposal currently stands, if it goes through, we all have to become Avocat, it’s an all or nothing decision, there will be no possibility of remaining and IP Attorney on an individual basis, if you refuse, you will simply lose your current title and not be allowed to operate in France. And here was I thinking that lemmings lived in Scandinavia ?

I must admit as an Englishman in France, I would find this all quite amusing if I didn't have some heart for the youngsters that I'm training and are not yet qualified (aside from the extra financial burden that all of this will entail for the partners).

Alex summarises by suggesting that, if the proposal goes through, it will be a wonderful opportunity for other European patent firms to expand their horizons to the French client market. The IPKat tends to agree, as he can only see the French patent attorney profession gradually withering away through a combination of natural wastage, high prices, and a lack of new recruits if the merger goes ahead as planned.

16 comments:

Anonymous said...

La Belle France is prohibited from removing or limiting the entitlement of European Patent Attorneys from Practicing in France. There is only ONE exception to this, an EPC state can only remove the right of a qualified EPA to pratice within its juridiction where this is a matter of "public security and law and order" - Art.134(6) EPC.

However, since this relates to the legal profession governing itself, it may be able to weasel its way out of this requirement through some clever argumentation should any person be courageous enough to start legal action.

However, the Art.134(6) limitation to matters of public security is not qualified in any way. Consequently, it appears that whichever services the Bar Association would like to exclude for independent EPAs, this has no legal basis in the EPC.

Talk about shooting oneself in the foot!

Anonymous said...

As far as I am aware, there is no EPO office in France and therefore A. 134(6) would not apply.

Congratulations though to the French for following the lead of the US where a patent attorney is firstly an attorney at law and secondly authorised to represent at the USPTO.

David said...

I don't follow how the last commenter arrives at that conclusion. France would be in breach of their obligations under the EPC if they prevented someone carrying out their business as a European Patent Attorney (i.e. someone qualified under a134(2)EPC) in France. As far as I understand it, the additional obligations of being a qualified legal attorney could only apply to the requirements under national law, i.e. relating to the right to practice and represent clients before the French patent office. Since most French patent applications are now made through the European route (and a French patent cannot be obtained directly from a PCT application), the effect might in reality be to close the French national route for direct applications too, since there will eventually be too few attorneys available to do the job.

Anonymous said...

David, I think you need to read A. 134(6), in particular the phrase "in any Contracting State in which proceedings established by this Convention may be conducted" i.e. NL or DE. You can consult Visser if you like.

EdT

David said...

Interesting. That's not how I read it (and I've checked Visser). The word 'proceedings' must surely also apply to all proceedings relating to prosecution of a patent application (see a14(2)), and not merely legal proceedings such as appeals, which are held only in DE or NL. I do not believe that a134(6) only applies to DE and NL, but must apply to all member states, since "proceedings established by the Convention" can be carried out by any EPA in any member state, according to a134(1). To construe otherwise would be nonsensical. Visser is therefore a little misleading (although not actually wrong).

Anonymous said...

David, until about a week ago, I would probably have agreed with you, but you might be interested in this:

http://www.ipo.gov.uk/patent/p-decisionmaking/p-challenge/p-challenge-decision-results/o37007.pdf

and para 26 where it says: "...statement made in Parliament by the then Secretary of
State at the second reading of the Patents Bill, and on notes on clauses
produced for the Grand Committee of the House of Lords. ... it was his view that pre-grant
patent examination does not constitute “proceedings” (paragraph 22)."

Now I don't know what to think. Do we have to treat the word "proceedings" differently depending upon whether we're talking about the EPC or national law?

Gerontius

Anonymous said...

Article 134(6) EPC is indeed not applicable because there is no EPO branch in FR. The part "having regard to the Protocol on Centralisation annexed to this Convention" stresses this, as in the very old days some national examiners could act as primary examiner in EPO examination proceedings, and in such a case there would have been EPC proceedings e.g. in the UK, and the UK would thus have to admit (foreign) EPAs in order to communicate with UK examiners acting as primary EPO examiners.

However, with the current FR legislation, the non-applicability of Article 134(6) EPC is no big problem as FR CPIs only enjoy title protection and a monopoly in INPI procedures: L422-1(3): "Nul n'est autorisé à faire usage du titre de conseil en propriété industrielle, d'un titre équivalent ou susceptible de prêter à confusion, s'il n'est inscrit sur la liste des conseils en propriété industrielle établie par le directeur de l'Institut national de la propriété industrielle." and L422-4(1): "Les personnes qui souhaitent se faire représenter dans les procédures devant l'Institut national de la propriété industrielle ne peuvent le faire, pour les actes où la technicité de la matière l'impose, que par l'intermédiaire de conseils en propriété industrielle ..."

So, an EPA is still able to do his work after the merger as long as he does not call himself a FR CPI or wants to act as representative before the INPI.

Only if FR law were to be amended so as to limit counseling activities to members of the new unified attorney's profession, as suggested above, a problem would arise, as counseling is an integral part of a patent attorney's job. Then a situation would arise as in some US states where a "patent agent" can only act as representative before the USPTO and is not allowed to practice law, including giving advice on (IP-)legal matters (not even on patent law!), and only a "patent attorney" can both act as representative before the USPTO and give advice on (IP-) legal matters.

Michael said...

"Where will we get our engineers from ?"

China?

More Ph.D. engineers and scientists in China by 2010 than in the US

It is widely recognized that there will be substantially more Ph.D. engineers and scientists in China in 2010 than in the United States, as China produces three times the number of engineers per year.3 In 2001, only 5% of American 24 year olds with a bachelors degree were engineers, compared to 39% in China and 19% or more in South Korea, Taiwan, and Japan. R.E. Smalley, a Nobel Prize-winning scientist from Rice University, recently concluded that by 2010 90% of all Ph.D. physical scientists and engineers in the world will be Asians living in Asia.4 And among Asian Ph.D. engineers and scientists, most will be produced by China.

http://www.voxeu.org/index.php?q=node/1066

Anonymous said...

Does the whole matter have something to do with the proposed European Patents Court and the desire for EPAs to be permitted to represent without the intermediary of a "barrister"? As it is, the legal profession already has the doubtful benefit of being permitted to represent before the EPO, for instance a British client, although this right may be based on admission to the Hungarian bar only. Hopefully these councellors (as the future French, apparently) will have good insurances.

twr57 said...

Do we have abuse of a dominant position here, by any chance?

Daniel said...

I had always thought that EPC 134 (6) meant EPAs were free to practice as an EPA in any contracting state, but perhaps that is not the case.

If not then I suppose the merger would be pretty terrible for the careers of trainees.

Presumably most EPA firms will have a fair number of grandfathered Advocats for the next 10-20 years. It just means that the promotion prospects of trainees are scuppered, as it is an excellent excuse never to make them a partner.

To give a perspective from Asia, in many countries the patent attorney profession is not well established, so even qualified patent agents are referred to as 'paralegals'. They do all of the work, but qualified lawyers sign the client letters (which are written for them by the 'paralegals'). Needless to say the lawyers take all of the profits.

In the long term this leads to a decline in quality as the good people move elsewhere, but in the short term I am not sure the clients mind that much as they still get to work with the same technically qualified people, just someone else is signing the letters.

Anonymous said...

With regard to the (alleged) non-applicability of Art.134(6) in France I am a little perplexed as to the argument that this does not apply in the EPC member states. Proceedings established under the EPC, even if they do not extend to the profession of EPA as carried out in the EPC member states (which they must do), at least the filing of a European application can occur at the offices of the EPC states (except The Netherlands Office and the EPO is in this country anyway) and this is unquestionably constitutes "proceedings" under the EPC (Art.75(1)(b)).

In fact the reference in Art.134(6) to "in any Contracting State in which proceedings may be established according to this Convention [the EPC]" simply refers to the limitation in Art.134(2)that an EPA must have his residence or place of employment in a Contracting State.

Furthermore, Art.134(1) states "Representation of natural or legal persons in procedings established by this Convention...". If this were limited to proceedings carried out at the EPO in DE or NL, then all EPAs would have to carry out their profession in either of these two states, which would then beg the question as to why Art.134(2) indicates that they should reside or have their place of business in any EPC state (i.e. not limited to NL/DE). Both the meaning and the intention of this legislation are clear, the regulation of the profession of EPA is purely and uniquely within the jurisdiction of the EPI in co-operation with the EPO and is regulated by the EPC and the EPC alone.

Furthermore, the reference to the statement by the British Secretary of State is not consistent with the reading of the EPC. For example Oral Proceedings is regulated by Art.116 EPC and this occurs before the Examining Divisions in the pre-grant Examination procedure(Art.116(1)). Art.14(1) refers to languages used in "Proceedings" before the EPO (including pre-grant) and Art.14(3) refers to the language of the proceedings (again including pre-grant). Art.19(2) refers to the "Proceedings for grant". Art.60(1) states "In proceedings before the European
Patent Office, the applicant shall be
deemed to be entitled to exercise the
right to a European patent.". These are just some examples of the 213 separate references in the EPC and its implementing regulations to "Proceedings" which from the above examples clearly covers pre-grant proceedings.

If we take this to its logical conclusion then according to argumentation posted above, EPC states could add additional requirements before allowing a person who has already qualified as an EPA to practice in that country, effectively adding to the exhaustive requirements already listed in Art.134(2) EPC.

Mad_as_a_hatter

athurgood said...

@anonymous
You wrote "However, with the current FR legislation, the non-applicability of Article 134(6) EPC is no big problem as FR CPIs only enjoy title protection and a monopoly in INPI procedures: L422-1(3): "Nul n'est autorisé à faire usage du titre de conseil en propriété industrielle, d'un titre équivalent ou susceptible de prêter à confusion, s'il n'est inscrit sur la liste des conseils en propriété industrielle établie par le directeur de l'Institut national de la propriété industrielle." and L422-4(1): "Les personnes qui souhaitent se faire représenter dans les procédures devant l'Institut national de la propriété industrielle ne peuvent le faire, pour les actes où la technicité de la matière l'impose, que par l'intermédiaire de conseils en propriété industrielle ..."

What you might not know is that there is also a list for those people qualified to represent clients before the INPI but who can not call themselves CPI. So there are already non-CPI on this list that act for clients and offer legal counselling services in relation thereto. When I was for a shortwhile a freelance operator, this was the status I had. It can also be the case for those people working in industry who have actually passed the French qualifying exam.

The whole aim of the current proposed merger, at least in the eyes of the French Bar Association, is to do away with the "competition". The Batonnier de Paris, Mr. Tuffreau, who has published 2 reports on the proposal, has already stated that they (the Bar Association) will ensure that the legislator includes penal sanctions for those looking to provide counselling, advice, etc, outside of the new framework to be implemented, especially for European Patent Attorneys looking to conduct business in France. The barrister community in France has a far greater representation in political circles than anything the CPIs might have (hardly surprising considering the difference in numbers) and, additionally, because they've just had to accept government-forced reorganisation of court jurisdictions, they are likely to be heard by the government as a form of appeasement.

If this reform goes through, then yes, we will have a system akin to some states in the US where the notion of "licensed to practise" will be primordial to what can or can not be offered in terms of legal services.

In response to your second question about representation for the EPLA, yes, one of the reasons this merger appears to appeal to some of the "old guard" of the CPI profession is because it would obviate the thorny question of representation. In the current state of negotiations of the EPLA and the unified European Patents Court, it looked like the French patent attorney profession was going to be excluded from any possible chance of representation (I haven't followed in detail so can't comment).

The question of EP "proceedings" is moot in the sense that at the moment, EPAs would still be allowed to file and prosecute patent applications, but not offer any counselling, FTO studies, dilligence, etc.

Oh, and BTW, in France, those who have passed the French qualifying exam and work in industry will be left up the proverbial creek. Even at present, they can not under current legislation call themselves CPI. There is thus already a pre-existing split in our profession between those working in industry and those working in private practice. The proposed merger, at least as far as I can understand it, because we are still awaiting concrete details, would also exclude industry representatives from becoming Avocats spécialisés en Propriété Intellectuelle.

The fact of the matter is that a third of current French EPAs never set the qualifying exam, and an even greater proportion of CPIs (I'd say possibly 60% or more) never sat the French qualifying exam, but were all admitted when the profession was initially created by the legislator. It is therefore rather unsurprising that many of these are in favour of the merger, since they are often also the senior partners in their respective IP firms, and many, who have a certain "old world" style of HR management (but not necessarily old world IP firms), are only too happy to be able to employ engineers at a pittance.


Alex

ml said...

I get the patent attorney's point of view, and I really don't understand why someone came up with the idea of merging professions (even though it would make sense as far as trade marks are concerned)as there are hardly any avocats with a scientific/engineering background. However, as a French trainee lawyer I perfectly understand why the Bar now lobbies for such restrictions: in France there is no such thing as a "GDL", and there may be a fear that French "converted" patent avocats don't limit themselves to their current area of practice, hence the full legal training requirements.

Anonymous said...

This is very, very late in the discussion, and virtually nobody will see what I write:

I fear that the future service to French industry and in particular to foreign entities engaged in French litigation may suffer from a lack of good language skills in technical matters. Irrespective of the ability to serve French clients in France or aiming for protection in Francophone countries, communication will suffer due to lack of precision. Non-French clients will not be happy.

Anonymous said...

As a patent agent I came to the conclusion many years ago now that I needed to be a lawyer. I therefore became one. The patent agents I worked with at the time took great offence. My actions were percieved as huge criticism of my fellow professionals. Though I said nothing, I was made to feel reviled. Sadly the UK legal profession had no will to provide patent services. Just as my former bosses hated me for acquiring skills they did not feel they needed, the solicitors who ran the law firms felt awkward because they did not understand the work of patent attorneys and with the same pride asserted that I came from a different culture and could not be absorbed into theirs.

All that is history.

If patent agents want to be percieved as lawyers I think they must do the exams and to that extent France is right to follow the US.

However there will always be a role for non-lawyers in the patent business and the EPA qualification is a good way of demonstrating a level of knowledge. Hopefully France will allow EPAs and others to do patent business.

Let the consumer choose.

The UK is about to go the same way. The new regulatory regime means that the patent business is going to divide even more firmly than it is now. Agents who accept they are not lawyers will have plenty to do.

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