THE CHARTERED INSTITUTE OF PATENT ATTORNEYS

THE ROLE AND ORGANISATION OF CIPA.

1. The U.K. has a history of allowing the professional bodies to be self-regulating, with little interference in their internal functions, even the disciplinary procedures, by the government departments which oversee their areas of operation.

2. For CIPA, the government office with which we work is, of course, the Patent Office, which is part of the Department of Trade and Industry. CIPA is responsible for running the qualifying examinations, and for maintaining the Register of Patent Agents. An annual report must be made to the Patent Office on the examinations and the entries and losses from the Register, and the Patent Office must approve the Examination Regulations and the fees for sitting the examinations, and the fee for registration. On the examinations, CIPA is required not to make a profit taken year by year.

3. Although CIPA maintains the Register, it does not have the disciplinary power over registered patent agents as this lies with the Patent Office acting for the Secretary of State for Trade and Industry. In practice, almost all of the 1,400 registered patent agents are Fellows of CIPA, and the Institute's disciplinary process for its members is used for dealing with complaints about the conduct of registered patent agents. However, if the conduct were such that the patent agent should be struck off the Register, the case would have to be sent to the Patent Office. Fortunately such cases are very rare.

4. The legislative provisions relating to patent agents are contained in the Copyright Designs & Patents Act 1988, and the Register of Patent Agents Rules 1990 which are made under that Act. There are similar provisions relating to registered trade mark agents. The Register of Trade Mark Agents was set up in 1990 (the patent agents register was set up in 1889) and is maintained by the Institute of Trade Mark Attorneys.

As patent agents and registered trade mark agents work closely together, and many people are on both registers, there are statutory rules allowing for partnerships of patent agents and registered trade mark agents.

5. As mentioned above, professional bodies are generally self-regulating in the U.K., although there is increasing government control in some areas, principally the financial and legal areas. This applies to CIPA in relation to patent agent litigators where the form of education, the code of conduct and the disciplinary procedures have to be approved and monitored by a government appointed body.

6. Most professional bodies in the UK are granted Royal Charters provided that they can satisfy the Privy Council, the senior advisory body for the Crown, that they are the leading body in their field and that they are set up and run their procedures in such a way that they serve the public interest. CIPA has a Royal Charter dating from 1891, modified by Supplemental Charters in 1937 and more recently. The Charter sets out the framework for the organisation of CIPA, with the details of the organisation and procedures being contained in the By-laws, which must also be approved by the Privy Council before they can come into effect.

7. CIPA's Charter deals with trade marks and other forms of intellectual property as well as patents.

8. In order to change the main procedures of the Institute, for example the classes of membership, it is necessary to prepare a revision of the Charter, which is then open for public comment and must be approved by the Privy Council. This can take a long time to achieve, so such changes happen very rarely. Other changes require amendment of the By-laws; these too require approval by the Privy Council and take several months to achieve, and again do not happen very often.

9. The original Charter was approved in a time when legislation was rather simpler than today, and CIPA has found that it is restricted in the way it can develop its activities. For example, it has been difficult to find a way in which European Patent Attorneys practising in the U.K. can be brought into membership. Consequently, CIPA is working towards a new Charter and By-laws which will allow CIPA to react to development in the IP world. The new Charter will be much simpler, allowing more of the details to be in the By-laws, which are easier to alter, and putting a lot of the details into General Regulations, which will only need the approval of the membership, or Council Regulations, which can be approved by the Council itself.

10. The objects of CIPA as set out in the Charter are:

(a) To carry on the work commenced by the Institute of 1882;

The objects of the Institute of 1882 are set out in the Original Charter as follows:

(a) To form a representative Body of the Patent Agents of the United Kingdom for the purpose of promoting improvements in the Patent Laws and in the Regulations under which they are administered.

(b) To frame and establish Rules for the observance of Patent Agents in all matters appertaining to their professional practice.

(c) To extend their opportunities and facilities for meeting correspondence discussion and interchanging ideas respecting matters connected with their professional practice and generally to aid in the acquisition and dissemination of knowledge appertaining to their profession.

(d) to raise and obtain moneys by subscriptions donations or otherwise for expenditure in accomplishing the objects of the Association and to expend such moneys when raised in accomplishing such objects.

(e) The doing all other lawful things incidental or conducive to the attainment of the above objects or any of them.

(b) To form and maintain a Body representative of the profession of Patent Agents for the purpose of promoting improvements in the Laws relating to Patents, Designs and Trade Marks and other forms of industrial property and in the Regulations under which they are administered.

(c) The doing of all other lawful things incidental or conducive to the attainment of the objects of The Chartered Institute or any of them.

11. Under the Charter and By-laws, the Institute is controlled by a Council consisting of the President, the Vice-President and 24 Ordinary Members, all elected by the Fellows (the class of membership for qualified patent attorneys). The President and Vice-President are elected to serve for one year, and it is customary for the Vice-President to be elected as President for the next year. After his year, the President remains on Council for one year before standing for re-election. 8 Members of Council retire each year, but can be re-elected, so that it is possible for the composition of Council not to change from year to year. Generally, however, one or more members of Council retire each year and new members are elected.

12. The Council meets each month for about 3 to 4 hours to conduct its business. Council appoints about 25 Committees to deal with its business and to report to the Council. The Committees cover law and practice (separate Committees for patents; trade marks; designs & copyright; utility models; biotechnology; computer technology; electronic communications, and general legal issues); internal issues (Finance & House; Education; Business Practice; Disciplinary Panel; Professional Guidance; Constitutional; Social & Programme; Textbooks & Publications; International Liaison; Parliamentary; Protected Titles; Press & Public Relations).

13. Appointments to all Committees are by Council. Most Committees contain both Council and non-Council members, and vary in size from 5 members to 22 members. The President and Vice-President are able to attend all meetings except those of the Disciplinary Panel.

14. There are 10 members of staff in the Secretariat, plus 2 part-time appointments. The senior members of staff are the Secretary & Registrar, Deputy Secretary, Finance Manager, Assistant Secretary (Education), and Publications Manager. The part-time consultants are an independent Secretary to the Disciplinary Panel and a public relations consultant.

15. The Institute holds an Annual General Meeting each year and other meetings where reports are made of activities. However, other than at the A.G.M., or when meetings are called to alter the By-laws or the Charter, and in the election of Council members, the membership plays no part in the organisation or running of the Institute.

QUALIFICATION AS A PATENT AGENT: REGISTRATION AND DISCIPLINE.

1. There is a difference between registration as a patent agent and membership of CIPA. Also the right to practise in patents in the UK is not restricted to those on the Register of Patent Agents.

2. The Copyright Designs & Patents Act 1988, in Section 276, permits any-one to practise before the Patent Office; they do not need to have any qualification at all, technical or legal. However, only those on the Register may call themselves "patent agent" or "patent attorney", but suitably qualified solicitors (lawyers) may also call themselves "patent attorney". Other people have to use a different term for example "patent consultant".

3. A similar situation applies in trade marks, but the Register of Trade Mark Agents was not introduced until 1990, whereas the Register of Patent Agents has existed since 1889. As the term "trade mark agent" has been used for many years by those practising in trade marks, (patent agents and other people), it was not possible to keep that title for those on the new register, so that the reserved title is "registered trade mark agent" or "trade mark attorney".

4. Since many registered patent agents and registered trade mark agents practise together as partnerships, special statutory rules were brought in in 1994 to allow mixed partnerships consisting only of patent agents and registered trade mark agents to use the two titles provided that at least 25% of the partners are able to use the relevant title.

5. In 1986, the Office of Fair Trading, the government department responsible for competition policy, reviewed this profession. It concluded that the requirements for registration at that time were preventing some suitable people from being able to practise.

Those requirements were that you could only sit the examinations if you had undertaken a prescribed training period with a registered patent agent. Also at that time, no-one could practise in patents unless they were registered.

6. Consequently, at the same time as deregulating the profession, the government changed the requirements for registration to separate the examinations from the training or practice period.

Since 1990 it has been necessary to pass the qualifying examination and separately to complete a period of practice of either 2 years under the full-time supervision of a patent agent, or a suitably qualified or experienced solicitor or barrister, or 4 years if not under supervision. In fact, we are not aware of any-one who is practising to any great extent who is not registered, and no-one has qualified for registration who has not received supervised training. Hence the new regulations have made no difference to the mode of practising and training.

7. There is no requirement that the supervisor must have been qualified for any set period. In theory, a patent agent can become a trainer as soon as he or she qualifies.

8. Since the setting up of the Register in 1889, CIPA has been responsible for maintaining the Register, and for setting the examinations. In theory, this is subject to the control of the Comptroller-General of the Patent Office, but he or she does not, in practice, supervise the activities of CIPA, which makes an annual report to the Comptroller.

9. Maintenance of the Register of Trade Mark Agents was given to the Institute of Trade Mark Attorneys when that Register was set up in 1990, again with the Patent Office having ultimate control, if necessary.

10. As patent agents have always been trained and examined in all areas of intellectual property, CIPA and ITMA set up in 1990 a Joint Examination Board to run the examinations which give the qualification for entry on both Registers. The examination system has some papers in common at the Foundation (basic) Level - these being in trade marks, designs and copyright, and law; and separate papers for the patents and the trade marks modules. There are then separate modules at Advanced Level.

The Regulations are included on this website.

11. There are currently about 1,400 on the Register of Patent Agents, and about 900 on the Register of Trade Mark Agents, of whom about 600 are also patent agents.

12. Both CIPA and ITMA run lectures each week for their students. These are in London; the lectures are taped and are made available to those outside London who cannot attend the lectures. At Advanced Level, tutorials are organised with the students each answering a question from a previous examination; these are marked by an experienced patent agent and the answers are then discussed in a group.

There is a 3 months full-time certificate course at Queen Mary & Westfield College, in the University of London which gives exemption from all the papers of the Foundation Level. A similar course has been set up at Manchester University in the north of England. Currently more than half the trainees take these courses, the rest receiving their training in the organisations for which they work, either in private practice or in industrial practice.

13. Because of recent concerns that recruitment to the profession is lower than is needed to replace those patent agents who will retire soon, CIPA has set up a new training course which provides practical skills training, rather than the more academic training currently offered. It is expected that in time many people will take both courses. The skills course does not give any exemptions from the examinations, but will, we hope, give training that employers cannot now themselves find the time to give to their assistants.

DISCIPLINE.

14. Although CIPA controls entry to the Register, it cannot remove someone from the Register for misconduct. That power lies with the Secretary of State for Trade & Industry (a government minister), but in practice it is a senior official at the Patent Office who exercises it. However it is very rare for someone to be removed from the Register for misconduct. There have been only 2 cases in the last 20 years.

15. There is no Code of Conduct for registered patent agents, and it is CIPA's Rules of Professional of Conduct which are used to judge whether conduct is appropriate. CIPA has its own procedures for dealing with allegations of misconduct, and does sometimes remove someone from membership, although there are very few complaints leading to this penalty. If CIPA believes on investigation that the conduct is such that the patent agent should be removed from the Register, it will refer the case to the Patent Office. In any hearing, CIPA is entitled to be represented, so that it can advise the Patent Office of its views on the behaviour of the patent agent. The text of a leaflet on how to complain about a patent agent is available here.

16. CIPA has a Disciplinary Panel of 12 members, three of whom are lawyers and three are lay members. For each case a Disciplinary Board of 6 members is chosen to deal with the case.

17. Up to recently, the Institute has had powers under the Charter only to issue a reprimand or to exclude or suspend the member for a breach of the Rules of Professional Conduct.

18. However, we found that the limitations on the penalties created difficulties in some cases, so that we have recently altered our By-laws to provide additional penalties, including the power to require a member to pay compensation to a client or to forego fees, or to pay a fine, in cases where the client has not received the service expected of a patent agent.

19. The Disciplinary Board has the power to impose these penalties, but if the member does not accept the penalty imposed, the matter must be referred to the Council, which is the body which can to exclude or suspend a member. This is unsatisfactory, as the Council has 26 members, and at least 8 must take part in the disciplinary hearing for the decision to have effect. It is therefore intended to give this power to the Disciplinary Board, subject to appeal to an independent appeal panel. This will require amendment of the Charter; the Institute is currently considering the form of a new Charter.

20. CIPA has recently (November 1999) been granted the right to authorise appropriately qualified members to conduct litigation in the High Court. All registered patent agents already have the right to conduct litigation and to appear as advocates in the Patents County Court, and the new rights will extend the rights of patent agents. Members who wish to obtain the new rights will have to undertake a special training course, but for a 4-year transitional period those with suitable qualifications and experience will be granted certificates without taking the course.

21. Members of CIPA who are granted the Litigators Rights Certificates have to abide by a separate Code of Conduct and there is a separate disciplinary procedure. However, the Institute's ordinary Code of Conduct and disciplinary procedure have been brought into line with the new procedure, so that a single code of conduct will apply to any member when he or she is acting in court.

© The Chartered Institute of Patent Agents, 2000