For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Wednesday, 15 January 2014

IPReg Proposal to Reform UK Patent Attorney Qualification Procedure - CIPA President disagrees

This Kat was a little surprised to receive before Christmas a missive from IPReg outlining proposals for a change in the examination system to become a UK patent attorney.  He had not been aware of any sentiment that the current system was anything less than satisfactory and so a proposal for radical reform was unexpected.

He was even more surprised to receive hot on its tail an email from the President of the Chartered Institute of Patent Attorneys expressing precisely the disquiet felt by this Kat, right down to the same phrase "if it ain't broke, don't fix it" being deployed as had leapt into his mind. Perhaps naively he expected that the support from CIPA Council would have been sought before consulting the entire CIPA membership.

The IPKat considers the
consultation document
He did not blog about it immediately since everyone directly affected would presumably have received the same email as the Kat so it hardly qualified as news (or at least not "new" news). Moreover it seemed more pertinent to write in the New Year rather than before the holiday period when everyone would forget. This post is therefore primarily to remind dear readers who are concerned by the proposal that the deadline for response to the consultation is 5 pm on 17th March 2014. Also, the IPKat supposed that readers may well want a forum to debate this topic and offers this blogpost as a starting point.

Recipients of the CIPA Journal will see both missives published in the December edition that should just have hit your desks.

In summary the proposals upon which IPReg is consulting are:

1) To abolish the "Foundation" exam papers (the first level examinations that are typically taken about a year after beginning in the profession) in favour of accredited courses such as the Queen Mary Certificate in Intellectual Property Law that currently already grant exemption from the Foundation papers.  (This Kat only specifically mentions QM as it is the one with which he is most familiar having taken the course himself back in the last millennium, but Bournemouth and Brunel also offer such courses).

2) In the final papers, abolish P3 (patent drafting) and P4 (patent amendment) in favour of the equivalent papers from the European Qualifying Exam (EQE)  that currently already grant exemption from the corresponding UK papers.

Coincidentally the same edition of the CIPA Journal publishes a letter from Tony Luckhurst disagreeing with the beloved CIPA editor Tibor Gold on a not entirely unrelated idea, floated in the November Journal, to ditch the amendment paper (P4) from the finals papers as being redundant in terms of skills tested.

The opinions of a fictional feline in this regard hardly matter but to get the ball rolling this Kat has some comments.

1) as an expansion of the "if it ain't broke..." point, the UK exams are, this Kat is informed, relied on as a qualification in the Republic of Ireland and Singapore, and the impact on those professions does not seem yet to have been considered.

2) the first proposal is to abolish the foundation level exams and achieve the foundation level qualification exclusively via academic taught courses (or courses offered by commercial providers, explicitly mentioned as an option in the consultation document). This Kat may be old fashioned but he does detect a feeling that the university based courses although excellent are regarded by some as too theoretical. The foundation exams act as a standard against which those can be assessed.  Moreover, while the academic exams are undoubtedly challenging, they are hardly discriminating as practically everyone passes.

3) perhaps surprisingly given the relatively low number of candidates for some papers there does not seem to be a shortage of volunteers from within the patent attorney profession to set and mark the papers. On the other hand once a paper is abolished it is likely to be very difficult to reestablish it.

4) the European drafting and amendment exams can only be sat by people who satisfy eligibility requirements including residence and nationality which do not exist in the UK, and so some people who are currently able to take and pass UK exams will not be eligible to enter the corresponding EQE paper.

5) IPReg has absolutely no mechanism to interact with the EQE process and so if the European drafting and amendment papers become inadequate (or even are abolished in some shake-up of the European process) then there is nothing that IPReg can do about it.  And, as mentioned in 3), they will likely then be difficult to re-establish.

6) This Kat sees in the consultation document little consideration of what the profession requires from the examination system and how better to meet such requirements.  This seems to be the conversation that is worth having and perhaps responses to the consultation can express views on what is required.

7) The consultation document contains the argument that the Swiss national patent attorney qualification system has adopted the approach of foregoing the setting of national drafting and amendment examinations but making the passing of the corresponding European papers an obligatory part of qualification as a Swiss patent attorney.  This Kat can see no merit in this appeal to Swiss practice.

So dear readers, there are some thoughts for consideration.  Over now to you...


SG said...

Regarding the suggestion that P3 (patent drafting) and P4 (patent amendment) be abolished in favour of the equivalent papers from the European Qualifying Exam (EQE) that currently already grant exemption from the corresponding UK papers, I've got to say I'm dead against it.

As a trainee patent attorney in the UK, at present I need to have passed all the foundation and higher papers and have a minimum of two years experience to be entered on the UK register.

If the proposed change were to be made, I would require three years experience before I could even attempt to sit the EQE exams. And with the introduction in 2012 of the pre-exam, which must be sat and passed before EQE exams proper may be sat, and which itself requires two years experience, this may be pushed to almost four years, depending on when in the year you began work as a trainee (I suggest that with graduates typically beginning work in September, and the EQEs taking place in February / March, three and a half years would be quite normal).

As a trainee, it's very disheartening to see a proposal to further increase built-in time limits to qualification. Switching to EQEs would require trainees to wait years before even attempting some very difficult exams.

MaxDrei said...

What is the function of the UK patent attorney qualifying exam? Good question. It was the last exam I sat but the first that tested my talent and aptitude. Up till then, examinations were merely to test my memory and my intelligence. Perhaps top people outside our profession (think: civil servants) have never encountered such an examination?

Those of us who train candidates for the qualifying examination know that there are some who have an aptitude for patent attorney work but others who, despite high intelligence and enormous appetite for work and study and pass exams, just don't "get" how to write a claim or advise a client and so don't pass the exam. Those who lack the aptitude, the "gift" will always struggle, and their clients will suffer and be let down.

I suggest that the profession serves the public. So Darren it's not what the profession requires from the exam so much as what the British public needs there to be in the exam, for its own protection.

Or is it? Here in Germany, virtually everybody who sits the German national patent attorney qualifying exam works hard, and passes it! No wonder there is dismay in Germany, that their candidates don't all pass the European exam first time too!

In the relationship between the UK and Europe there is something wrong. These days it is either a case of "We want out" or "It's a fait accompli. We have to go along with it". Where has the pride gone, the desire to communicate our thinking to the European mainland, that (having debated their way) our way has much to commend it, and offers a better path, that other EU Member States might want to follow too?

I think an important reason why the EPO qualifying exam is NOT just another German-style exam is because, back at the beginning, when the EPO exam format was being devised, the British still had strong influence. Not any more, I fear.

Anonymous said...

A long time ago, even before my time, I think CIPA had a three year qualification rule, and can anyone confirm that is was disposed of following regulatory pressure?

Anna Molony said...

It is already possible to become a CPA without passing P3 and P4, using the exemption available for passing EQE A & B. It is some time since I sat all these papers but I do remember being horrified at the apparent lack of moderation in P3 and P4 (coming from a family of lecturers that wasthe only explanation I could reasonably come up with for the wide variation in the difficulty and marking scheme from year to year).

On the point of dropping the foundation papers in favour of taught courses, I believe this could lead to a dangerous drop in the number of students in the profession. Many smaller firms already find the cost of training difficult, if you then make it necessary for them to pay for their students to attend a course like QM I imagine most will decide not to have any trainees at all. And students themselves will, I imagine, not be too keen to pay for the course themselves when they already have so much debt from their undergraduate courses, particularly given the difficulty of getting into our profession.

Anonymous said...

It is worth mentioning that Paper B no longer requires EQE candidates to draft the amendment - they are given the amendment that they need to make. The examination is focussed solely on their argumentation.

This is not equivalent to P4.

Likewise, the EQE drafting paper, paper A, is significantly simpler than P3 - the language of the characterising clause is nearly always found verbatim in the paper, and is often repeated at least twice (three times in the year I passed).

If we wish to maintain standards, rather than doing away with P3 and P4, shouldn't we be doing away with the exemptions altogether?

Anonymous said...

There is a bit of a disconnect here between IPReg viewing this (as they are required to) as a regulatory problem and CIPA’s potentially wider interest.

As noted in the IPReg paper, as far as the Amendment and Drafting papers are concerned the primary concern is one of duplication. It is one of the principles of better regulation that regulators should only ask for information once. At present the same skills are tested both by the EQE and the UK exams. The paper notes that this duplication of testing costs £50K per annum in exam fees alone. Given that IPReg as a regulator should be looking to cut red tape this would seem to be a definite justification for change.

Responding directly to the points raised:

1) The recognition of exams by IPReg or otherwise does not prevent them being used by other countries if they so wish. IPReg’s remit does not extend beyond the UK

2) The eligibly requirements for sitting the EQEs (as opposed to going on the EPA register) are not dependent upon nationality or residence.

3) Why should it be expected that the EPO would lower their standards to a level in drafting and amendment below that appropriate for admission to the UK register? The EPO standard has been accepted as suitable for the last 20 years, why is it going to change now?

4) IPReg’s current interaction with the JEB is one of monitoring not direct involvement. The same would apply to the EQE’s.

5) If the EPO standards were to slip, why would it necessarily be difficult to set up another exam? The PEB will remain in existence running P2 and P6, why wouldn’t they be able to step into the breach at some time in the future, if this ever became an issue?

6) As for the foundation exams, the main problem which is being sought to be addressed is a perceived need to measure both inputs and outputs. In the case of the QM and other courses IPReg can establish, both that the course runs tests at an appropriate level and that students are exposed to a certain amount of teaching on a prescribed syllabus. There is no monitoring of inputs on the current foundation level exams.

There are really two quite distinct issues going on here.

The narrow issue is how to respond to the IPReg consultation. Here the normal rules of responding to public consultations apply. What IPReg need to be told is:

i) Are any of the assumptions set out in the consultation paper incorrect in a way which makes any of the conclusions made invalid?

ii) Are there any important effects of the proposals which have been overlooked which undermine the assessment against the regulatory principles?

iii) Is there a better (cheaper) way of addressing IPReg’s stated concerns?

Quite separate from the above are the broader issues of what education and testing is it appropriate to ask of patent attorney.

Darren Smyth said...

The IPKat was delighted to receive the comment below from Debbie Slater of Urquhart-Dykes & Lord LLP by email, which he posts below with permission from Debbie (and with his thanks):

I read the CIPA Journal articles you mention and I was struck by the contradiction between the proposals for changing the examination structure, and another article in the same edition about diversity in the profession.

I know one has to be careful about generalising from a specific case but wanted to highlight my own experiences and how the current proposals would have limited my opportunities.

A few years after entering the profession I married and had children. I decided to become the primary carer for my children and, at the time, had the (old style) Intermediate qualification but I studied for and passed the Advanced papers while continuing to do some freelance and casual patent attorney work. As a stay at home mum with two very young children, this suited my personal circumstances ideally.

I would not have been in a position (financially or logistically) to attend a university based course, but with the support of some wonderful ex-colleagues and mentors and good access to text books, past papers and lots of practice I was still able to obtain the CPA qualification. As for EQE examinations, as I didn’t satisfy the EQE eligibility requirements in so far as I wasn’t working directly under supervision of an EPA, sitting the EQE exams was not an option.

A short time later I moved to Australia and worked as a patent attorney and IP management consultant there. To be honest, the CPA qualification was entirely adequate for my purposes during that period.

28 years after entering the profession I am still working without an EPA qualification (although now that I am back in the UK I am looking to change that).

What I am trying to say is that the whole proposal appears to be based on the proposition that all entrants to the profession start, and continue to work, on a full-time basis within a private practice or corporate patent department. It does not anticipate, or take into account, the fact that people will work in a variety of different ways and have other constraints on their ability to sit the EQE exams and/or to attend university courses. This has the possibility to actively discriminate against certain people (women being the obvious one, but what about people who live far from a university that provides the courses, or people who cannot travel perhaps because they have limited mobility?).

If we are to promote diversity within the profession, then limiting the route of qualification is contradictory to this.

The other proposition is that most people work on EPO work. Perhaps, but there are those for whom the EPA qualification is not required. I have worked in IP management consulting, doing freelance work, and outside Europe, for a lot of my career. The UK qualification has been just what I needed – the EPA qualification was not necessary for those purposes.

In essence, the whole proposition is flawed, in part, because it is based on a number of incorrect assumptions about the people who work in the profession, and the way in which they choose to work, and which has the potential to discriminate, and limit diversity, within the profession.

Anonymous said...

The Swiss patent office doesn't examine for novelty or obviousness so that would influenence their decision to use the EQE papers for a national qualification.

Practice before the EPO and UK IPO is not the same. It is surprising to me that the IPREG proposal suggests otherwise.

Having alternative routes to qualify via EQE papers A and B or the Advanced papers is really not 'confusing' or unduly complicated. However, if we must only have one set then I would opt for the current national Advanced papers. It is inconceiveable that a national qualification would not actually address national practice.

Rich L said...

I have a similar view to SG and Ms Slater, and for similar reasons. My qualifications and experience are from New Zealand and Australia, and as I have now moved back to the UK, I am working my way through the UK qualification process. While not exactly happy to be sitting a whole bunch of exams all over again, I'm not complaining (well, not too much), and there has been a lot of value in refreshing certain skills. The UK process has been relatively straightforward, insofar as it is possible to sit the exams without having to jump through and additional 'apprenticeship' hoop, as in Europe. In my experience, there are plenty of people moving between different territories over the course of their career (my pool of ex-colleagues and professional contacts stretches over the UK, Singapore, Hong Kong, Australia, and New Zealand, the ladies and gentlemen in question having a pot-pourri of qualifications to match the territories). Doing the day-to-day work isn't a problem, because the underlying principles are, broadly speaking, universally the same. Further, when I did the Bournemouth IP course in 2012, the majority of attendees were from industry, not law firms, and didn't necessarily report to a European attorney. Unless the European 'apprenticeship' requirement is dropped or amended, anyone who works in industry, or who moves around or wishes to move around during their career, will be significantly disadvantaged. Personally, I've more or less dropped the idea of ever sitting the European exams: I don't work for or report to a European attorney, and don't particularly want to change my current career direction to spend three years just to get the opportunity to spend another few years on top of that sweating to get the additional rubber stamp. I'd happily sit the exams to demonstrate capability, but the serving-time-for-the-sake-of-serving-time factor is a big issue.

Anonymous said...

The IPREG proposal says that 25 or so trainees a year do not attend a course but go via the exam system. However, the numbers given in the table for P1 are the numbers who pass the exam and not the number who take it.

In 2012, the numbers sitting the exams were: P1 - 34, P5 - 32, D+C- 33, Law-34, P7-26. In 2011 the respective numbers were 38, 35, 32, 30, 29. 2010 figures were mostly lower (perhaps because of the recession):19, 20, 37, 25, P7(T1, T5) 37 and 25. I haven't looked at earlier years.

The proposal states "80% of trainee patent attorneys already attend an accredited training course". This is incorrect because as the figures for those sitting exams is wrong.

What were the numbers of students on each of the three courses for these years? I assume IPREG has them in order to be able to state: "80% of trainee patent attorneys already attend an accredited training course" (which is based on the incorrect numbers for those sitting the exams). I have a suspicion that IPREG is actually using the "Students joining CIPA" data set out in the table, which would not give a meaningful answer.

Anonymous said...

With regard to the Swiss, it should be remembered that, up to recently (1 July 2011 to be precise), there was no Swiss qualifying exam. In addition, most Swiss applications are EP validations, meaning that many, if not most, Swiss practitioners are primarily EP practitioners. The EQE thus plays a major role in Swiss patent life, much more so than it does in the UK or Germany, so the use of the EQE is logical for Switzerland. (Germany has the most EPAs, the UK second and France third, but if my memory serves me correctly, little Switzerland comes fourth!

Anonymous said...

I'm not sure that requiring a university course will decrease the number of students in the profession. The number of students who self-fund the university course is not inconsiderable. What I fear is that self-funding the university course before gaining a traineeship will become the norm, which can only have a negative impact on diversity.

I would be interested to see the numbers that attended the courses. However, care must be taken with those figures too - on the Bournemouth course there were quite a number of people who were not, and had no intention of becoming, trainee patent attorneys.

patently said...

Does this not highlight the problem in creating an additional layer of bureaucracy to oversee the profession?

All such organisations eventually start to look for things to fix. And if they cannot find anything that is broken, they will start fixing things anyway...

Anonymous said...

Are there figures for how many people on each course were employed/funded by a patent department or patent attorney firm? That might give a better approximation.

Anonymous said...

Absolutely. There are no ends in administration, only means. Give me one example of a campaign group, a development programme or a govenment department that was wound down because it had achieved its aims.

Anonymous said...

In my view, it is because the UK Profession maintains ist rigorous examination System that the pass rates before the EPO exams is so high compared with other countries. Start tinkering with the UK system and a follow on result will be a decline in the average performance in the EQ exam.

Anonymous said...

I agree, I believe the reason the UK does so well in the EQE is a result of the rigorous qualification system here. The objective of the qualification system is to produce good attorney's who are knowledgeable and understand the practicalities of doing the best job for their client. It is not to get as many people through some exams as quickly and cheaply as possible.

I am also dismayed at the proposal to abolish the foundation papers. I would not have been able to attend the QMW course when I was training due partly to cost and partly to logistics. For those not resident near a course provider, this would be a very restrictive change.

As others have also commented, the question ought to be what training do our students need to be the best attorneys?

Anonymous said...

While the the UK's stringent requirements are not in dispute, I think part of the reason for the UK success in the EQE is that the EQE is a British-type exam. The German Patentanwalt exams, a mixture of oral interrogation and written papers, are tough - BUT they are only legal exams. There is no drafting paper nor any infringement and validity-type paper, in which a candidate is expected to respond to an actual situation.

Anonymous said...

With regard to the logistics of attending the university course, the Bournemouth course at least is distance learning and only requires attendance for three 2.5-day sessions. In principle it is quite a flexible approach. For example, the ongoing distance learning 'homeworks' are assigned as a block and you can submit them at any time over a period of several weeks. If you weren't also working full time (or if work would let you do all the Bournemouth study at work like one lucky attendee), it would be very suited to accommodating other commitments.

However, the several coursework deadlines and fixed weekend attendance mean that it is probably less suited than foundations to accommodating the combination of full time work + study + other commitments. You can't spread studying out over a longer time by studying fewer hours per week, or take the qualification over two years, like you could with foundations.

Paul said...

It is reassuring to note that Darren's reaction to the proposed changes were practically on all four paws with my own.
A point not mentioned above, but which was I think raised in the president's letter, is the impact the implementation of this proposal is likely to have on diversity within the profession. It is not difficult to envisage this leading to a de facto requirement for any would be patent attorney trainee to have -passed the "foundation" academic qualifications before they can hope to actually join the profession with all the attendant expense and risk. How many of those who actually have some years of experience in engineering or science could or would afford that risk? This would no doubt be profitable for the universities providing training but I am not confident it benefits the profession.

Sarah B said...

As a passionate tutor of trainees and supporter of the UK exams in general, I am horrified to read that IPREG is suggesting only a university course instead of Foundation exams. The Foundations are good exams that test practical knowledge, not simple regurgitation of law and theory. In addition, not all practices can afford either the time or expense of an external course. I may be a bit biased because I sat Foundations. However, I believe they put me in good stead, together with enough working experience, to sit and pass Finals.

I am an Examiner for P3 and confess to struggling to know how to respond to the suggestion to abandon the exam. Over 100 candidates sat the exam in 2013 so there is still a demand for it. The ability for attorneys to qualify never having passed a drafting paper, as a result of the EQE compensatable fail system, makes me very nervous.

If there is a need to cut costs, then it would be sensible to cut or streamline P3 and P4. But I can see no rationale for abandoning these papers otherwise.

MaxDrei said...

Of course the thing about examining drafting skills is that deficiencies in this skill are hardly ever exposed, only when the issued patent becomes a hot potato or a blockbuster, most often only at the end of its 20 year term. Only then does the customer find out he's been sold a dud.

Like any jurisdiction, the UK bangs on about its being uniquely good. But I have lived in Germany for 20 years. Don't ask me any longer to confirm that the NHS beats the German healthcare system into a cocked hat please.

But I do confirm, most vehemently, that the UK qualifying exam system for patent attorneys is uniquely good. Tell me another country (apart from The Netherlands, and UK-linked countries such as Rep. Ireland) that tests this fundamental skill of the patent attorney. Not Germany, not the USA. No wonder they grudgingly concede that UK patent attorneys are well-trained.

Like Joni Mitchell cautions, you don't know what you've got till it's gone. But in the case of training patent attorneys, you find out only 20 years later.

Nevertheless, the question from IPREG, in what way is the EPO test of claim-drafting skill inadequate, is the key one to answer. How come we have accepted it for 20 years as good enough?

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