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.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 8 May 2014

IPReg Litigation Qualification for Patent Attorneys - how is a newly qualified kitten supposed to comply?

Although she is an International Kat of Mystery, Merpel is getting rather bored of travel to foreign parts, and overseas corridors are losing their allure as places to prowl. So this week, she has decided to stalk some corridors which are closer to home.

Both the IPKat and Merpel have long been perplexed and bewildered by the (somewhat) new IPReg Rule, effective from 1 January 2013, which states:

Individuals who apply to be entered onto the Registers of Patent and/ or Trade Mark Attorneys on or after 1 January 2013 are expected to attend and pass a basic litigation skills course from an IPReg accredited course provider either prior to qualification or within 3 years from the end of the calendar year when they are first entered onto the relevant register.

Merpel looks after her kittens
This begs many questions, in particular from the use of the phrase "are expected to".  Is the provision mandatory or not? Is there a sanction for non-compliance, and if not, is it really a requirement, or just a fond hope?

More pressingly, however, the first litter of kittens affected by the rule will have entered on the Register in 2013, and the second litter will have recently received exam results and so will be arranging for entry on the Register now during 2014. The IPKat has been contacted by a number of patent attorneys who are concerned, not to say surprised, that the rule has come into force without in fact there being any effective litigation course that a newly qualified patent attorney can attend (and, Merpel notes, with so little fanfare or indeed communication:  it appears that some patent attorneys actually affected by the provisions are not yet aware of them at all).

Not sure whether you are a
patent attorney or
trade mark attorney?
Merpel is given to understand that CIPA has submitted a course for accreditation by IPReg (although the latest information published by IPReg dated January 2014 states "We await an application for accreditation from CIPA"), and that this accreditation is in progress. However, no word has emerged as to when any CIPA-organised course may be up and running.  It is the case that the Practice Skills course for Trade Marks at Nottingham Trent is accredited for these purposes because of its litigation module; however, for a patent attorney not wishing to also qualify as a trademark attorney, it seems excessively onerous to take a trademark qualification course only for its litigation module.  The IPKat understands that the litigation module is not (yet) available as a stand-alone qualification, nor is there any immediate indication that it will be.

One might expect the sunrise provisions for a new requirement to be less onerous than the steady-state provisions once the requirement has been up and running for a while. The general requirement is that a newly qualified patent attorney has three years in which to complete the litigation qualification. However, this time is currently effectively curtailed by the lack of availability, so the first group of patent attorneys who qualified last year and this year will effectively have less time in which to complete the qualification. Moreover, the more the courses are delayed, the more crowded and possibly oversubscribed will be the courses at the first time of running.

Members of the profession concerned with training are clearly most anxious about this unsatisfactory state of affairs.  The IPKat and Merpel very much hope for clarification of the position very soon, and (dare it be hoped?) that some actual accredited courses will be available in the near future.

By way of compensation, perhaps IPReg may consider a transitional provision allowing newly qualified patent attorneys more than the currently envisaged period of three years to complete the course in the first instance.

10 comments:

Barbara Cookson said...

panic not, just vote for Vicky in the Elections. She says in her address
New Courses: As part of this new regulation, new patent attorneys now must take a Basic Litigation Skills Course. We ran a trial course in 2012. I am working with the CIPA Head of Education to ensure that we have a CIPA course accredited by IPReg and that we run that several times a year and at different locations across the UK.

Chris Ryan said...

Merpel’s information on this is not quite complete. The Nottingham Trent University course has already been rolled out for trade mark attorneys (it forms part of the pre-qualification requirements for them) and a developed form to satisfy the post qualification requirements for patent attorneys is now going through the University’s internal validation process to approve a proposed launch in the early autumn term of 2014-15. Further information will be available over the next few weeks. Those interested should contact Chris Ryan at chris.ryan@ntu.ac.uk

Barbara Cookson said...

I hear that a London based course was approved by IPReg on Friday again to begin in September - looks like the competition is hotting up. Look forward to the CIPA proposal. The next thing we need to do is ensure that all newly qualified CPAs are funded to go on these courses. Most employers are likely to pay but if anyone feels excluded maybe there should be a scholarship fund. Even if a patent agent does not intend to litigate, understanding what they are writing a patent for and how the English courts deal with them is essential training.
Wonder if anyone is going to offer a Scottish course?

Anonymous said...

Having qualified in March this year, I emailed IPReg to query the "Basic Litigation Skills" course requirement and to ask what the course actually was, and how to get on it.

More than two months later, and despite several chasing emails, I have had no substantive reply.

Thanks to this post, and no thanks at all to our incompetent regulators, I now have at least a clue about what to do.

Anonymous said...

Further evidence that IPREG is populated by buffoons.

Anonymous said...

Having also qualified this spring, I too emailed IPReg for clarification of the consequences of failing to meet their "expectation". I received a reply within a few days explaining that passing a basic litigation skills course (or a higher littigation skills course that leapfrogs the basic level) is effectively now part of the CPD requirement for the first 2 full years post-qualification. The same disciplinary measures apply to failing to complete a basic course in time as to failing to complete enough CPD hours.

Anonymous said...

Speaking from the fortunate position of not having to do this, there does seem to be some tardiness on CIPA's part in, firstly, not getting their course running and, secondly, not alerting their members to what's going on.

David Musker said...
This comment has been removed by the author.
Barbara Cookson said...

IPReg have now announced that getting a Higher Rights certificate will do and that assessment is commercially available now. I would suggest you do some serious work on basic understanding of the CPR and blag the litigation notes from a recent LPC student ebfore you start though.

Anonymous said...

Nottingham Trent University now taking bookings for its Certificate in IP Basic Litigation Skills course. Teaching dates for first cohort of newly qualified attorneys are 15 to 19 September 2014. Further info and link to NTU online application portal at http://www.ntu.ac.uk/apps/pss/course_finder/161761-1/3/certificate_intellectual_property_basic_litigation_skills_-_patent_attorney.aspx?yoe=8&st=1&s=1&sv=law.

See also http://patlit.blogspot.co.uk/2014/08/basic-litigation-course-room-for-patent.html?m=1.

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