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.
Showing posts with label IPReg. Show all posts
Showing posts with label IPReg. Show all posts

Tuesday, 10 June 2014

CIPA announces how newly qualified kittens can get Basic Litigation Qualifications

The IPKat is delighted to have received this contribution from Vicki Salmon, Chartered Institute of Patent Attorneys (CIPA) council member and Chairman of the litigation committee.  Merpel is likewise delighted to hear news of an issue that she raised recently.  Over now, with great pleasure, to Vicki:

How did Merpel not see
this deadful pun before?
In May, Merpel posted a request as to how a newly qualified kitten was supposed to comply with the requirement for all newly qualified patent attorneys to take a basic litigation skills course and obtain required certificate within three years from going on to the register.  As this only affects those qualifying from 2013, by my calculations, the first group has until the end of 2016.

CIPA has not been idle in preparing for this course, but this has taken longer than originally anticipated.  We are now well on the way to getting the assessment in place and a course ready to roll out.  A notice was placed on the CIPA website on 30 May 2014 and a link was circulated to members at the end of last week.  We hope to finalise our accreditation later this summer and should be rolling out the course later this year, around the country.  More details will be published when we are ready to go.  There are two other providers who also have accredited courses which should be rolled out in the near future – Nottingham Trent University and cpdtraining.

In the meantime, we are also planning to re-run our course for litigating in the IPEC.  This course was run a couple of years ago in relation to the PCC.  The dates for this course are a full day (a very full day) in CIPA on 2 September 2014 and a long weekend (from Thursday morning to mid-afternoon Saturday) on 18-20 September at Missenden Abbey.  HHJ Hacon will be coming along to speak to delegates on the pre-weekend day at CIPA Hall.  Advance information is available here and booking forms will be available soon – open mainly to CIPA members, but with a few spaces available to non-members.

I am receiving a number of questions as to how these different litigation courses relate to the rights for patent attorneys under the UPC.  At the moment, I don’t know the answer, but we are working on this.  The Preparatory Committee published a draft document on the European Patent Litigation Certificate.  The paper contained proposals as to what the course might contain, what other qualifications would count and what might give “grandfather” rights.  This was withdrawn, but we have been speaking to the IPO about the proposals.  We are expecting this paper to be republished shortly.  In the progress report published on the UPC website on 6 June 2014, it stated  “Furthermore, a short consultation (6 weeks) on the Rules of the European Patent Litigation Certificate will be launched via the UPC website shortly. This consultation will allow users to engage on a subject that is fundamentally important to how they operate before the Court.”  We are still waiting for this consultation period to start.  Given how short it is, we are already well advanced in planning an open meeting with the IPO as soon as possible after publication.  We hope this will take place in June, but cannot finalise the date until the Preparatory Committee publish the paper.  Please look out for the date, as we are not able to give much notice.

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.

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...

Wednesday, 30 January 2013

Feeling insecure? IPReg's first disciplinary action

Ever-vigilant for news scoops, the IPKat spotted the following post on the website of London barristers' chambers 39 Essex Street (with comments and hyperlinks added by the Kats):

"On 21st Jan 2013 James Ramsden represented the Intellectual Property Regulation Board (“IPReg”) before the Joint Disciplinary Panel of the Patent Regulation Board and the Trade Mark Regulation Board in the case of:

The Intellectual Property Regulation Board v David John Rickard

This was the first disciplinary case brought under the new regulatory regime for Patent Attorneys and Registered Trade Mark Attorneys under the regulatory objectives set out in S.1 Legal Services Act 2007.

The proceedings have resulted in new and important guidance to the profession to be published by IPReg within the next few days concerning the circumstances in which Attorneys can issue terms of business which give them rights over their client’s property, including intellectual property, to secure payment of fees [this sounds like an attempt to create an entitlement to a lien over intellectual property -- though it may be more like a contractual requirement that the client assign his rights to the attorney.  Further information would be handy ...].

The decision and guidance to be issued by IPReg has implications for many other professionals who are also required in practice to avoid professional and personal conflicts of interest and conduct likely to undermine public confidence in the profession".
At the time of posting of this item, there was no information concerning this case on the IPReg website and a site search for 'Rickard' scored zero hits.

This Kat is of course curious to know what the facts are -- and to discover why this ruling requires the imposition of "new and important guidance to the profession within the next few days".  Is IPReg v Rickard an attempt to nail a single instance of an objectionable practice before it catches on with everyone else, or is it a test case in which a defendant could have been picked out of a hat?  Is this guidance a matter which is so obvious that no consultation is needed between IPReg and the professions it regulates, or is consultation an irrelevance? It would be good to know.

On a separate note, this Kat wonders whether the entitlement of professional IP advisers to obtain rights in their clients' IP in security for fees is something which is (i) encouraged, (ii) tolerated, (iii) discouraged or (iv) forbidden in other countries. Readers: do let us know!

Who needs a lien if you
can send in the heavies?
Merpel is more concerned with the fact that information concerning this matter, which manifestly concerns the UK patent and trade mark attorneys -- and by implication their professional standing in comparison with their European colleagues and competitors -- should appear first on the website of the barrister involved.  Does IPReg not have sufficient staff and control over its website to be able to post at least a short announcement to be able to warn those whom it regulates that they should expect imminent guidance on one or more important issues?

Thursday, 26 August 2010

Regulating the IP professions: need for more transparency and trust?

The IPKat has picked up scent of a story that IPReg (the UK's Intellectual Property Regulation Board, set up by the Chartered Institute of Patent Attorneys -- CIPA -- and the Institute of Trade Mark Attorneys to undertake the regulation of their respective professions) is meeting on this very day in order to discuss a proposal to increase the fee for regulating practitioners by a handsome and inflation-busting 40 per cent. Cats don't have nests and are not usually sensitive to nest-building operations by regulatory bodies, but a little bird has suggested that this may be the case here and has commented to the IPKat as follows:

"It was expected that IPReg's eye-watering ”startup” costs might reduce after the first year. However, IPReg now wants to employ another person full-time to get the required proportions as between lay and professional members. They also want to set up IT infrastructure to duplicate what is freely available".
The suggestion is also made that the meeting has been timed for today so that CIPA, the senior body within the IP professions in the UK, will have only one council meeting before IPREG's budget has to be approved, so it will be bounced into approving the budget on the basis that there isn't time to query it.

The IPKat does not know whether this is true and hopes that it is not, but feels that this is not the sole issue. He senses that there is a degree of unease or distrust, and some fear, of IPReg within the IP professions; he also feels that all of this can be cured by transparency on IPReg's part, backed by strong and effective public relations. He doesn't know if anyone has any figures, but he wonders whether IP professionals have more complaints about IPReg than the general public has about them.

Merpel is curious to know which countries outside the UK have regulatory bodies for the IP professions that operate in similar ways, and what the experiences of those countries might be.

IPReg's position on fees, and table of current fees, here.

Thursday, 6 May 2010

But who will regulate the regulators?

The IPKat has been hearing some dark rumours with regard to that little patch of the planet which is occupied by the body that purports to regulate the professional conduct of British patent and trade mark attorneys -- The Intellectual Property Regulation Board (IPReg). A little bird has let it be known that yesterday, while all good British souls were either worrying how to vote in today's General Election or grumbling about the unseasonal cold, the Council of the Chartered Institute of Patent Attorneys (CIPA) was handed a document, produced by IPReg. This document, if the IPKat's little bird is to be believed, was intended to be approved without scrutiny at the meeting which proposed several interesting things. Thus

* IPReg would set its own salaries (not that there is any element of self-interest involved, of course, and not that there might be any legal issues to address);

* IPReg would be able to dispose of practice fees at its own discretion (rather than collect them for CIPA and the Institute of Trade Mark Attorneys, ITMA, having been allocated a fixed budget, as provided for in the Delegation Document and statutory provisions);

* A further remunerated new executive member would be appointed by IPReg;
* CIPA and ITMA would be excluded from oversight of IPReg board meetings, contrary to the Delegation Document.
If these proposals, apparently buried in the document, were passed, IPReg might find itself in the enviable position of being able to levy whatever tax it liked on the provision of its services and pay a banker's salary for the public-facing role of key personnel. IPReg might also -- though it is believed to have no plans whatsoever to do so -- conduct monthly additionally remunerated meetings of its conduct committee, to do nothing other than review its own conduct.

IPReg has, at present, no fewer than 9 paid board members, a paid chairman (here) and a paid chief executive . There are fears that this body plans to recruit additional resources in the event it ever has a complaint to deal with. The IPKat, who is always happy to be put right if he's wrong, understands that IPReg is only competent to deal with a relatively small proportion of any complaints it might receive as the overwhelming majority will need to be handled by the Legal Services Board. Before IPReg was born, CIPA handled this function with a mere fraction of a person and, the story goes, had no complaints about its effectiveness.

Says the IPKat, if responsible and respectable members of the patent attorney and trade mark attorney are expressing their disquiet about the manner in which they are to be regulated, and if IPReg has become a genie that has escaped the lantern of CIPA/ITMA oversight, we should at least be alerted to the nature of the problems in question so that they can be addressed. If these rumours, and the substance that lies behind them, can be truthfully denied, no-one has anything to worry about. If however there is some substance to them, can they at least be addressed in a fair, reasonable, cost-appropriate and client-friendly manner?

Adds Merpel, it's election time in the UK and many of us are keen to remove Members of Parliament who have fed themselves handsomely from the public trough of expenses claim funds. Even though the majority of those MPs did nothing wrong and were only playing by the rules -- which they incidentally made for themselves -- the degree of public revulsion last summer was astonishing. IPReg, it is hoped, lies a long way from those excesses, but the principles are the same: accountability, the balance between self-interest and efficient public service, and the ease with which other people's money can be spent.

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