Chapter 1 – Skills and Knowledge

Mercer Review: Chapter 1 – Skills and Knowledge

1. Introduction

1.1. The Mercer Review Call for Evidence asked a number of questions regarding the areas of knowledge, understanding or practice in the syllabi for the current examinations, the Litigation Skills Certificate (LSC) and CPD:

Q2b) Are there any additional areas of knowledge, understanding or practice that should be covered by the Foundation Certificate examinations?
Q2c) Are there any areas of knowledge, understanding or practice that should be removed from the Foundation Certificate examinations
Q2e) Do you have any comments about the use of university qualifications, such as those provided by Queen Mary University of London, Bournemouth University and Brunel University, as an alternative to the Foundation Certificate
Q3b) Are there any additional areas of knowledge, understanding or practice that should be covered by the Final Diploma examinations?
Q3c) Are there any areas of knowledge, understanding or practice that should be removed from the Final Diploma examinations
Q5a) Do you have any comments about the current knowledge, understanding and practice covered by the EQE?
Q6a) Do you have any comments about the requirement for newly qualified patent attorneys to obtain a qualification in Litigation Skills within three years of entry onto the Register?
Q7a) Are there any other areas of knowledge, understanding or practice for which CPD should be mandatory following admission to the Register?

1.2. This sub-group was tasked with reviewing the responses to these questions. More generally, we considered whether the current examination system to qualify as a patent attorney in the UK generates registered patent attorneys with the skills and knowledge that enable them to practise as an attorney.

2. Methodology

2.1. We considered the responses to the above-mentioned questions in the Call for Evidence. This may be considered a ‘bottom-up approach’ to determining whether the current assessment arrangements are suitable, as the Call for Evidence asked about potential problems within the current assessment system. A summary of the responses can be found below.

2.2. The more general task above used a ‘top-down approach’, by first generating a list of all the skills and knowledge that it believed a patent attorney should have.

2.3. We then considered when each skill or knowledge item should be acquired. It was recognised that there is a difference between being eligible to become a qualified, registered patent attorney and being ‘fit to practise’ as an independent, highly-skilled and knowledgeable patent attorney. An ‘eligible’ person should be able to work generally unsupervised in a patent attorney firm or patent department but should know that further development is needed. A person may become ‘fit to practise’ after years of experience working as a patent attorney. These two levels can be compared to learning to drive and passing a driving test and becoming a very competent driver who is more confident on the road.

2.4. We then compared the list to what is currently examined, via the PEB examinations and the EQEs. We also compared the list to IPReg’s Competency Framework for patent attorneys.

2.5. Finally, we considered whether any items in the list should be tested via examination, should not be tested via examination, are tested via more than one examination or could be the subject of post-qualification courses. The results of this approach can be found in Annex 3 [page 32].

3. Responses to the Call for Evidence (‘Bottom-Up Approach’)

3.1. A summary of the responses to the questions mentioned above is provided below.

3.1.1. Some of the topics below are discussed again in subsequent chapters. For example, foundation routes and final examinations are discussed in Chapter 2.

3.2. Foundation Routes

3.2.1. A significant number of respondents found it useful to have a variety of routes to obtaining a foundation qualification. To briefly summarise, the routes are the IPReg-accredited Foundation Certificate (FC), and the (IPReg accredited) courses run by Queen Mary University of London (QM-UL), Bournemouth University and Brunel University. The university courses were felt to be a useful means of providing training in the fundamentals of IP in a concentrated space of time and to provide a breadth of subject matter, which was particularly useful for small firms and industrial departments which may not deal with all aspects of IP and hence not have the necessary in-house expertise to train candidates in those areas. The difference in standards between the various university courses was noted; in general the QM-UL course was considered by a number of the respondents to be of a higher standard than those offered by Brunel University and Bournemouth University. A number of respondents noted that the current university courses are all located in the south of England and are therefore not particularly accessible to all. It was acknowledged that the PEB FC examinations are of a high standard and may prepare candidates better for sitting Finals.

3.2.2. This sentiment is supported by the reports analysing statistics on PEB examinations written by Julia Gwilt and published in the CIPA journal in July 2018 and December 2019. The July 2018 report indicated that the candidates who had passed FC1 in the PEB FC examinations were more successful than other candidates in both FD1 or FD4 in 2016 and 2017. The December 2019 report reported similar results.

3.2.3. Suggestions to improve the content and appropriateness of university foundation courses included requiring all trainees, regardless of the training route taken, to sit the FC examinations, thereby encouraging academic institutions to tailor courses towards the PEB FC examinations.

3.2.4. There was a feeling that a focus on drafting at the foundation level, both in terms of within the training for the examinations, the courses provided by academic institutions and the FC examinations, would better prepare trainees for the Final Diploma (FD) examinations. Reflecting the view that the patent attorney profession is changing and evolving, a number of respondents expressed the view that some of the content in the FC examinations was less important and over-examined, possibly to the detriment of core areas. In particular, the relevance of the trade mark paper and its ability to prove competence was challenged.

3.2.5. Some respondents expressed the view that the focus on English law was too broad and contained too much detail. However, others felt it was important to examine ethics, the code of conduct and client management at either Foundation or Finals level. The potential overlap between FC2 and litigation skills training was also raised. Similar questions were raised about international law (FC3), in particular whether there were too many jurisdictions referred to in the syllabus, especially in the context of a closed book examination. There were a significant number of suggestions to focus on key countries and international agreements, e.g. US, JP, CN, EP and PCT. A single syllabus and examination on all relevant law was suggested.

3.2.6. There was some support for trade marks, designs and copyright being combined into a single foundation level examination, with advanced modules after qualification for those wanting to specialise.

3.2.7. Some respondents commented that some topics of the FC examinations, in particular, trade marks and copyright/design rights, did not seem overly relevant for a trainee patent attorney depending on their particular firm. There was one suggestion that these topics could be combined with a ‘general IP and law’ examination to replace FC2/FC5.

3.2.8. Several respondents suggested that the content of the international patent law FC examination should be reduced in scope to key jurisdictions as it is currently unfeasible; alternatively, it could be made open book. Similarly, international trade mark law subject matter should be removed from the trade mark FC examination. In addition, the national phase entry requirements for the international patent law examination should be based solely on one source, such as the PCT application’s guide, as other sources are inconsistent.

3.2.9. There were a few comments suggesting a basic understanding of business, accounting and management would be useful at trainee level, and that this could be covered by the FC and/or university courses. In addition, there were suggestions that drafting at an appropriate level and invention spotting should be incorporated into foundation level teaching/assessment.

3.2.10. Some respondents suggested FC5 could be open book to better test understanding rather than just the ability to memorise information. Some thought that Design and Copyright should be considered higher status and moved to FD rather than foundation level. A very small number of individuals thought that competition law should be re-introduced to the foundation level routes.

3.2.11. Several respondents mentioned that parts or questions of the FC examinations often referred to areas that might only be used or seen once in a person’s career, and that the examinations ought to be made more relevant to the day-to-day job of being a patent attorney.

3.2.12. In general, many of those who commented on the FC examinations thought the syllabus was too broad for the examinations being set and either the syllabus should be reduced or the question scope should be revised.

3.3. Final Diploma

3.3.1. There was a lot of confusion over the role of IPReg in accrediting the FD examinations, with a number of respondents asking why IPReg accredits the FC examinations but not FD examinations.

3.3.2. For the avoidance of confusion, we clarify that both the FC and FD examinations are accredited by IPReg. However, there has never been any process or criteria for the FD examinations. When IPReg introduced its Accreditation Handbook in 2016, this was based on the process in place for the university courses and only covered the FC examinations. Thus, whilst the PEB is required to assess its performance for both FC and FD, there are currently no accreditation standards for the FD examinations. We understand that IPReg may be in the process of revising the Accreditation Handbook to include the FD examinations.

3.3.3. On FD1, some respondents queried the need to retain design and copyright in this paper. There were also suggestions to include the key core basics of litigation in FD1. Some respondents felt that FD1 should not be a ‘memory test’ but should rather reflect the real world situation of providing advice to clients. It was noted that the questions tend to focus on ‘small clients’ and may not therefore test the type of issues that arises with larger corporations.

3.3.4. Some respondents asked if there was the scope to have options on mechanical and chemical papers for FD2 and FD3. Questions were raised about potential duplication with parts of FD4 also being examined in FD1 and the LSC.

3.3.5. On FD4, many respondents identified time pressure, content and candidate expectation as the leading factors in the perceived low pass rate. Respondents suggested that the examined technology should be kept simple, so as not to misdirect or ‘trip up’ candidates, the number of claims should be reduced and the amount to read should be standardised. Some respondents felt that the paper does not reflect real-life I&V situations and relies more on examination technique.

3.3.6. Notwithstanding comments on scope of the FD1 syllabus and issues with FD4, there was an overall consensus that the FD examinations are the appropriate way of obtaining qualification as a UK patent attorney. In view of the considerable practice element required, there was no support for the FD examinations to be provided by an academic body.

3.4. Litigation Skills Certificate

3.4.1. Many respondents referred to the LSC, but there was no consensus as to whether this should be compulsory for entry on the register or a subject for a further qualification.

3.5. The EQE

3.5.1. The European examinations were generally regarded as more straightforward/simpler than the Final Diploma examinations – some respondents felt this was the appropriate level for fitness to practise, others that the EQE’s alone did not properly prepare for practice before the IPO.

3.6. General Remarks

3.6.1. Some respondents also questioned whether there should be an element relating to professional ethics in the examination system. It was questioned whether candidates would benefit from having to follow a stripped-down version of the IPAC course, with an examination at the end. It was also questioned whether IP commercialisation should be examined.

4. Results of ‘Top-Down Approach’

4.1. The detailed results of the analysis are provided in Annex 6. In summary, it can be seen that most of the skills and knowledge items which we identified as being important are either already examined by the PEB examinations (and, in some cases, by the EQE) and/or are mentioned by IPReg in the Competency Framework. It is noted that the Competency Framework is very general and is not intended to be a ‘must do’ list of topics and IPReg acknowledges that different types of work are undertaken in different working environments and within different businesses.

4.2. The Annex also includes a number of skills which are obtained by experience of working practices and are not examinable as such, e.g. time management.

5. Conclusions and Recommendations

5.1. We have noted the responses regarding the scope of the syllabuses for the PEB FC examinations. We recommend that:

The FC examinations should focus on the core knowledge and skills required by a patent attorney. This will include some basic knowledge of trade mark, design and copyright law, but this should be commensurate with what a patent attorney is likely to face in day-to-day practice.[1] However, the syllabus should include all the ‘black-letter’ law (basic standard elements or principles) which is relevant for the LSC, so that this law does not need to be duplicated by the LSC.
The scope of the International Law syllabus be revised to focus on core areas (EP, PCT, US, JP, CN) and instances where there are significant/important differences in patent law (e.g. 30 vs 31-month national phase entry, allowability of method of treatment or second medical use claims, allowability of computer programs as such). Questions should be structured to give sufficient choice for candidates working in different sectors, where the relative importance of countries may differ. We also questioned to what extent it is necessary to examine international law relating to trade marks, designs and copyright.
All candidates should have a good knowledge of professional ethics prior to registration, and before undertaking the LSC.
All candidates should a good knowledge of evidence for the UK court system as it applies to patents and before undertaking the LSC.

5.2. We considered whether the Foundation Certificate should include any elements of drafting or invention spotting, but concluded that:

candidates were unlikely to have obtained much practical experience by the time of sitting the examinations;
it would increase the amount of subject matter examined at this stage; and
it can be adequately examined at Finals/EQE level.

5.3. On the basis of the responses, we concluded that the FD examinations generally cover the relevant areas and are set at an appropriate level, but that they have become overcomplicated and too long, in particular FD4. Thus, we recommend that:

FD2 should be limited to drafting a patent application, relating to generally-accessible technology, suitable for filing at the IPO in a form where the claims are clear, novel and arguably inventive over the prior art presented in the question and where the description is sufficient;
FD3 should be limited to answering an official letter from the IPO which raises novelty and inventive step objections and providing a set of claims which deals with the objections and which does not add matter or lack clarity;
FD4 should be limited to requiring the candidates to demonstrate that they can construe a set of claims according to the case law in the UK, evaluate prior art, determine whether the claims as construed are novel and inventive over that prior art and determine whether the activities of a potential infringer are infringing acts under UK law and should not require detailed advice on points not relevant to the main topics;
FD1 should not cover any of the areas covered by the other examinations but should include at least one question about a situation which could arise in litigation of a patent in the UK courts, involving application of the black-letter law on litigation which should be part of the FC syllabus (see above); and
Similarly, FD2, FD3 and FD4 should not require advice on points which are examined in FD1; there should be less overlap between the content of the syllabi and examinations.

5.4. Any changes to the syllabi for the Foundation and Final examinations should be reviewed to ensure that, as far as possible, they encourage an increase of diversity and inclusion in the profession.

Footnote

However, for attorneys wishing to develop further knowledge in these areas, additional training should be provided by way of non-examined courses, e.g. e-learning modules or in-person training courses.

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