Journal

PEB consultation on the proposed changes to final diploma examinations

On Friday 30 September 2024, CIPA submitted its response to the PEB consultation on the proposed changes to the final diploma (‘FD’) examinations in 2025. CIPA’s response includes some general points around the proposed changes, followed by further comments in relation to each of the examinations. CIPA would like to thank members of its Education Committee in taking the time to prepare this response and in particular its chair, Debbie Slater (Fellow).

General points

Information provided for the consultation

Our response to the consultation is based primarily on the information provided, which was limited. We understand that more detailed information and sample materials will be provided after the consultation, and we look forward to considering these and having the opportunity to provide further comment.

Syllabus changes

We support the use of best practice in learning and assessment and, as such, the presenting of learning outcomes and assessment criteria is also supported. However, it is important that candidates and their supervisors/trainers are provided with sufficient guidance and support on the interpretation of learning outcomes and assessment criteria, and how they are applied in practice and linked to the marking and assessment of the examination papers.

It is important that the syllabus be continually reviewed and updated to ensure that content is relevant and up to date.

The removal of content from a paper where it is already assessed in another paper is to be supported. This should reduce the overall burden of examination on candidates and the burden of assessment on the PEB and examiners, while still ensuring that all material is covered.

However, removal of content should not be done because it has been assessed at one level in the Foundation papers. It is important that the content and skills be assessed both at Certificate Level and Diploma Level so that concepts assessed at one level are re-assessed at a higher level, thus enabling candidates to demonstrate that their understanding has developed from their initial basic knowledge.

In addition, many candidates do university courses instead of Certificate papers, and there is some concern that university courses cover the removed material to the same depth; although, of course, part of IPReg’s regulatory role is to ensure that this doesn’t happen.

Moreover, there can be a time gap of several years between sitting Foundation papers and qualification. Therefore, there could be gaps in assessing a candidate’s competency in areas only covered at Foundation level, particularly with regard to core areas of practice.

We have particular concerns about the proposal to remove designs from FD1. Designs are important and, in view of the fact that there is no separate qualification for designs, it is important that patent attorneys are competent to handle them. This is discussed in more detail in relation to our comments on the proposed new FD1 syllabus (below).

The addition and removal of subjects from the syllabus, e.g. the inclusion of Chinese patent law knowledge at the expense of Japanese patent law, appears somewhat arbitrary and it is important that the profession be consulted about such changes to ensure that the subjects being assessed are relevant to current practice.

It is important that reading lists are updated and reviewed on a regular basis.

Mark Scheme

Given the approach to the use of learning outcomes in the syllabus, it would be expected that the assessment would be adapted accordingly. In general, the use of descriptors in assessment, rather than a mere accumulation of marks, should mean that successful candidates are better assessed to ensure that they demonstrate that they have met a minimum level of competency and that they are safe practitioners.

However, this is a significant departure from the historical method of assessment for qualification as a patent attorney. Therefore, it is imperative that examiners and markers are provided with comprehensive training and support to ensure that they are able to mark consistently and fairly.

It is also essential that candidates and their trainers/supervisors are provided with detailed guidance and support to ensure that they understand the way in which the exams will be assessed and what is expected of them to be able to successfully demonstrate their competency.

For transparency, marked assessment grids/marking schemes should be provided to all candidates in their results so that they are able to understand where and how they demonstrated (or failed to demonstrate) the level of competency required. It is also important that the assessment grids/marking schemes are made available in full to candidates and show exactly what has been used by examiners to mark the papers. This is particularly important to assist those candidates that do not pass a paper: candidates need to know why they have failed.

The descriptors must be clear so that candidates can understand what the minimum level of competence looks like and how to determine whether a candidate meets, or does not meet, the required competency. Sample answers could be made available, providing examples of answers that would meet the minimum level of competence as well as some that would not.

Inclusion

It is important that any changes to the examination structure be reviewed to ensure that access to the examinations is available to all. Current processes for special considerations and reasonable adjustments should be maintained.

Proposed timing of implementation

There is concern that the proposal to launch the new exams in 2025 is too ambitious a timescale, given that the consultation has only just started. The present consultation closes on 2 September 2024. New syllabi, specimen papers, and mark schemes are expected in late September (after the consultation) according to the PEB’s website, but it is not clear if there will be a further opportunity to comment on the published syllabi and specimen papers. We would hope that this will be the case.

Assuming there will be an opportunity to provide feedback to the PEB on the new material, the PEB will then have to consider this further feedback and make any changes as appropriate.

Following this, papers will need to be written and thoroughly tested, all before October 2025. Given that the PEB are extremely busy during the exam cycle (i.e. from now until results are released in March 2025), we are concerned that there will be a rush to get the new papers written and tested in time, and a consequential risk that the papers will not have been sufficiently tested.

There is concern that the PEB will not have sufficient time to consider feedback carefully and make appropriate changes in response to the consultation.

Furthermore, since registration for the 2024 FD exams closed before the end of this consultation period, candidates had to make decisions on which papers to sit this year before having clarity on the format and syllabi of the new papers. We take the view that an implementation date of October 2026 would be a more realistic deadline.

Open-book assessment at FD level

The preference for an open-book assessment is often raised by candidates. It is understood that views amongst the profession on this are generally split.

We understand that changing to an open-book assessment would require changes to the way that the content is assessed, including the materials that could be used, and has an impact on matters such as the invigilation process. Nevertheless, we take the view that this option should be evaluated as part of an ongoing review of the examination system.

Qualification as a patent attorney in Ireland

As some of the FD exams are required to be sat by candidates for registration as an Irish patent attorney, we assume that the Association of Patent and Trade Mark Attorneys (APTMA) and the Intellectual Property Office of Ireland (IPOI) have also been advised of the proposed changes.

Comments on Proposed New FD1 Syllabus

The following are observations in response to the proposed modifications to the format/syllabus of the FD1 examination, reported here.

At a general level, there is concern as to the sweeping changes in terms of how the marks for the examination are to be allocated. Particularly with respect to the ‘Part B’ portion of the paper, which is proposed to be formed of three 25-mark questions.

It is understood that each of these 25-mark questions is to be marked ‘synoptically’. As far as CIPA is aware, no detailed explanation has been provided as to what this will mean. However, the understanding is that each response to a question will be marked under a banding structure, such that the response as a whole will be allocated a particular mark out of 25, depending on where the response is perceived to sit within such bands. If correct, this approach differs considerably from the current approach of allocating individual marks to particular points which might be expected to be present in the response.

If the above is correct, concern is had as to how such ‘synoptic’ marking will be implemented in practice, and how consistency will be achieved amongst the various different markers under this synoptic approach.

In addition, to the extent a given ‘Part B’ question will be relatively broadly defined, and will cover various issues/topics, to what extent will marking under this ‘synoptic’ approach penalise/reward candidates who focus on areas other than those intended, but who nonetheless present an answer to the question that demonstrates the candidate as being fit-to-practice? Will the proposed synoptic mark scheme allow for such responses to otherwise secure a strong/pass mark in these instances, notwithstanding the fact that the response may have focused on different aspect(s), perhaps to different degrees, than a response from a different candidate?

Clarity and reassurance is thus needed here, along with an affirmation from the PEB that a large number of example/sample answers will be provided to show how the proposed new synoptic mark scheme will be applied in the context of sample Part B question responses – and that this will be provided well in advance of the 2025 examinations.

Concerning more specific parts of the proposed new syllabus, it is not understood why designs are proposed for removal. The comments from the PEB that this is to eliminate unnecessary duplication with other examinations from the syllabus, where designs are also assessed, cannot be agreed with. Designs are only otherwise assessed in the context of FC4, but this Foundation examination assesses designs separately to patents. So removing designs from the syllabus of FD1 prevents any form of assessment of designs when being used alongside patents – which is an important area that many patent attorneys post-qualification will be expected to advise on. Thus, it is important that designs remain on the syllabus of FD1, so that candidates can be tested on their understanding of how designs interplay with patent protection. In addition, removing designs from the syllabus of FD1 removes any assessment of designs at the advanced/diploma stage of the qualification process, such that any assessment of designs is then restricted to the Foundation stage of the qualification process. This may result in candidates ‘forgetting’ designs (either accidentally, or deliberately) as soon as the candidate has passed the Foundation stage of qualification – in other words, not providing for a qualification regime in which designs are assessed throughout the entire qualification process.

The inclusion of ethics in the syllabus is not necessarily objected to. However, the scope of how ethics might be assessed is perceived as being overly broad, based on the current guidance from the PEB. Clarification is therefore requested on what ethical considerations the PEB is envisaging to assess here, in more detail. For instance, at the current level, such ethics could include any of the issues as annexed below. Examples on the remit of such ethics is thus requested, for providing appropriate steer to candidates in this respect.

The new FD1 syllabus also proposes the removal of Japanese patent practice, but the addition/retention of Chinese/US patent practice. This proposal is not understood, and appears arbitrary, to the extent that Japanese patent practice is set for removal from the FD1 syllabus due to it being assessed elsewhere in the qualification process. If that is correct, how is this not also the same for Chinese/US patent practice, which is set for retention in the FD1 syllabus? Should these territories also be removed from the FD1 syllabus, for the same reason? Clarification is required on this inconsistency, and why this seemingly arbitrary set of overseas territories is proposed for inclusion in the new FD1 syllabus.

The proposed new FD1 syllabus also advises that ‘global patent strategy with reference to China, Europe and the USA will be tested’. The scope of this wording is unacceptably nebulous in its current form. Clarification on what this is intended to cover is therefore required.

The proposed new FD1 syllabus also advises that not all aspects of the syllabus will be assessed every year. We seek clarification in respect of this general statement, to better understand which topics are perceived as ‘core’ competencies and are expected to be assessed every year (i.e. alongside ethics, which has already been noted from the proposal, as being tested every year), and which topics are perceived as less important and hence not proposed for assessment every year. For instance, will European patent practice be assessed every year in FD1, as a core competency? What about PCT practice; will this be perceived as ‘core’, or not?

It is also understood that the proposed new FD1 examination is to remain closed-book. To the extent that a number of candidates have suggested that the FD1 examination be switched to an open-book assessment, which is more reflective of the practice of a patent attorney day to day, an explanation would also be appreciated as to why the PEB has elected for the FD1 assessment to remain closed-book, in spite of such suggestions from candidates otherwise.

Annexed, Example, Ethical Considerations

• ensuring prior art which the applicant is aware of is appropriately cited/declared;
• not enforcing knowingly invalid claims or invalid patents;
• not engaging with clients where a conflict of interest is perceived, or not engaging with new work for an existing client where a conflict of interest might be perceived;
• keeping client’s affairs confidential;
• ensuring clients are objectively advised on all possible options;
• working competently (including turning work away, where the work is outside the competency zone of the attorney);
• ensuring clients are promptly, and regularly, appraised of the progress of matters;
• invoicing considerations – including: “no surprises” when it comes to invoices which are received by the client; that any invoicing is transparent; and that any upfront payments are handled promptly.
• not misleading third parties as to the status of a client’s right;
• not misleading a Court or any IP registry;
• in a merger and acquisition context, not misleading a purchaser about infringement risks being run by the business which a client might otherwise be selling;
• not engaging in work where bribery and corruption issues may be seen to arise;
• money laundering considerations;
• competition law breaches;
• health and safety considerations/offences;
• irresponsible handling of data – such as prior art disclosed, or information obtained inadvertently/maliciously, through breaches of confidentiality agreements, or theft.

Comments on Proposed New FD2 paper

Question Paper

We are supportive of removing the requirement to annotate drawings.

Comments on Proposed New FD3 paper

Syllabus

There is no information on which legal provisions are to be removed, so we cannot comment on details. However, the comments in relation to removal of content provided above also hold true here. It is not clear which legal provisions will be removed and whether these are provisions assessed at Certificate or Diploma level.

It is important that reading lists are updated and reviewed on a regular basis.

Question Paper

We are supportive of ensuring that the burden of the assessment on candidates is not onerous. Limiting the number of claims should contribute to this aim. However, it is also important that the number of claims be sufficient to ensure that the relevant outcomes will be assessed.

Examples should be available to candidates at the outset of the new assessment regime.

Comments on Proposed New FD4 paper

Syllabus

We take the view that it is a positive step to avoid the advice section becoming a repeat of FD1. It has been noticed that advice marks in FD4 are becoming fewer and that this is addressed in the changes proposed.

It is sensible to discuss sufficiency along with validity, and amendment with either novelty or infringement as appropriate, and advice with infringement. The advice section, in particular, overlaps a lot with FD1. Assessing a candidate’s competency in advising a client is probably more appropriately assessed in FD1. In FD4, the advice section is generally not well-answered, probably because it comes at the very end of a gruelling 5.5-hour exam, at which point candidates are tired and may be running out of time to address the question. In FD1, the questions are shorter, do not depend so much on the candidate’s construction, and therefore it should be easier to determine whether the candidate has demonstrated competence in advising a client.

However, it is not clear whether this proposal would reduce the burden of the FD4 assessment as proposed.

In relation to sufficiency, it should be noted that currently sufficiency is not assessed in any other FD paper. It is a separate consideration for the validity of a patent and so it is not clear why it should be incorporated into other sections. Is this being suggested as a compromise, as a result of the idea that all sections of the paper need to be answered to pass?

Amendment is an important part of infringement and validity analyses, and any papers should ensure that there is enough time for candidates to demonstrate their competency in this area.

Question paper

Reducing the duration of the paper is a positive move, but the paper must be adapted so as to ensure that it can be completed in that time. The use of pre-release material will help somewhat. It is important that this should be rigorously tested (e.g. by having current trainees/examiners/supervisors/recent passers under exam conditions, and their feedback taken into account).

We seek confirmation that additional time will still be available for those candidates that require it.

Without examples of the proposed changes to help us understand how the paper will be trimmed of 1.5 hours of content, it is difficult to make further comment.

Concern has been raised that candidates will still need to re-review the pre-release material once they are in the exam as the patent will provide context as to what is important, and therefore  this will not reduce the time needed to answer the paper to four hours.

The issue of pre-release material containing technical background information approximately two weeks before the examination is generally thought to be a good approach to avoid problems that have arisen in previous FD4 exams.

Setting out clearly the assessment task is supported. It is a positive step to set out exactly what is expected of candidates. However, concerns were raised that the tasks should not be presented in a way that leads candidates to comment on all issues if that is not what is required, as it is assumed that one of the competencies being assessed is a candidate’s ability to identify pertinent issues? As an example, if a candidate is told that they should comment on notices/threats, a candidate is arguably not been assessed on the ability to identify that this is a relevant issue in the context of the paper and the task being assessed.

Mark Scheme

In relation to FD4 particularly, the proposed changes make the issue of timing more important, since there is a greater risk of a candidate failing if they run out of time and do not address the final section fully. In FD4, answering one section depends on the answer to previous sections, so it is less easy to divide time equally between sections. Any new paper needs very thorough testing to ensure that the time allotted is adequate.

Care needs to be taken that this change outlines the descriptors/assessment criteria clearly and is sufficient to understand how to demonstrate achievement of the learning outcomes and competency.