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I have had quite a few interesting emails and telephone conversations since posting the article I wrote for the latest issue of the CIPA Journal concerning the lack of European patent attorneys on this blog last week.
First of all, I have learned that the problem is far worse than I thought. Around 30% of those people currently entitled to call themselves European patent attorneys are able to do so under the so-called "grandfather" clause of Article 163 of the old European Patent Convention, which has been largely incorpoatted into the EPC 2000 as part of Article 134. This states that anyone qualified as a patent attorney in a country at the time it signs up to the EPC automatically becomes a European patent attorney. This may or may not mean that such people have gone through a stringent period of training (you will need to check the rules in the relevant country), but it will almost certainly mean that they will not have had intensive training in how to prosecute patents at the EPO.
If you want to ensure that the patent attorney you are using in Europe has passed the EPO examinations, you can look at the EPO website here. If your attorney is not named, you can take it that he/she has not.
Be careful, too, of bilateral agreements between European countries. For example, on application any patent attorney in Italy automatically becomes licensed to practise as an attorney in San Marino. As San Marino joined the EPC last year, it could well be that some Italian attorneys have managed to get European credentials by registering in San Marino (I was told that as many as 50 may have done this, but I cannot verify that figure). This example was mentioned to me specifically, but it could well be that there are similar ones relating to other EPC member states.
While I can understand that people will want to ensure that their European patent attorney has passed the European qualifying examination, what I have also found interesting (read worrying) is just how few people are successful in their attempts to do so. A document I was sent shows that in 1998 1,092 candidates sat the exam and 234 passed. By 2007, the numbers sitting had risen to 2,311, while the numbers passing stood at just 407.
Although I have been told that 2007 was a particularly bad year and that pass rates before and after were slightly higher, it is certainly the case that it is incredibly difficult to become a European patent attorney via the examination route. Apparently, papers are set by a board whose members are equally divided between European Patent Office officials and members of the European Patent Institute, the body that represents European patent attorneys. While it is good to have high standards, there is a fine line between being demanding and being unreasonable. After all, we are not talking about any old Tom, Dick or Harry being able to sit these exams in the first place - you have to have "a university-level scientific or technical qualification" or equivalent, as well as having trained "under the supervision of a professional representative or as an employee dealing with patent matters in an industrial company established in one of the contracting states". One correspondent likened the whole process to having to prove you are someone with Formula One credentials in order just to pass your driving test.
The danger with having standards that are too high is that people who could be very good patent attorneys do not get the chance because they fall just short, while others are put off from trying in the first place. You also run the risk of being accused of operating what is essentially a closed shop. I am sure that this is not a deliberate policy, but it is certainly the case that the fewer European patent attorneys there are, the more work there is for those that are qualified and, therefore, the less competition there is between attorneys - meaning less incentive to be flexible with pricing and to develop innovative ways of delivering services to your clients.
On top of all this, it also seems to be the case that the current European qualifying exams do not actually cover strategic issues at all - there is nothing in any of the papers candidates sit that focuses on how companies can or should manage their patent rights, or whether they should be creating them in the first place. In today's European economy, that looks like a startling omission to me. But, again, what incentive do examiners have to change it or even to discuss changing it?
According to the USPTO website, there are currently "9711 active agents and 29493 active attorneys" authorised to prosecute patents at the office. That compares to under 10,000 in Europe (and probably well under that number in active practice). Now, I am not calling for such a dramatic leap in numbers over here, but I do note that US companies are probably the world's most sophisticated in the ways they view and use patents. There are many reasons for this - including, of course, the nature of US patent litigation - but I can't help wondering whether the sheer number of service providers also has something to do with it.
For each one of those close to 40,000 agents and attorneys to make a living, they have to develop businesses in the face of a level of competition that just does not exist in Europe. That puts the onus on them going out and finding clients, and offering them pricing and services they cannot get from elsewhere. I just do not think that this happens enough in Europe. Until it does, we are going to lag behind in our companies' willingness and abilities to use patents to create real value.
IP management, IP politics, Patents, IP business
This whole thread seems predicated on two unassailable axioms, 1. That there is sufficient demand to justify the supply of huge numbers of new European patent attorneys, and 2. Europe and the US have a homogeneous IP culture.
As to 1, how about some utilization figures for EPAs? Are you sure they're not twiddling their thumbs at this precise moment? As to 2, that is simply not correct. If it were then Europe's attorneys would simply borrow their innovative business models from the US and hence no need for more competition here to develop them ourselves.
Finally, on the benefit of exams, they are no substitute for experience. Out here in Asia I see many developing jurisdictions introducing IP qualification regimes and at least part of their motivation is simply protectionism.Tom Grek, Rouse Legal on 12 Jan 2010 @ 02:26
Tom - My whole point is that currently there is no real incentive for European patent attorneys to go out and create business, despite the fact that use of the IP system by European companies - and SMEs in particular - is very low. There may well be European patent attorneys twiddling their thumbs waiting for business to come to them. To me that indicates that they are not being proactive enough and are not offering potential clients services that they are willing to pay for. My belief is that competition leads to proactivity, which is why more patent attorneys on the ground in Europe may well be a positive thing. Your point on exams is well made. JoffJoff Wild, IAM Magazine on 12 Jan 2010 @ 09:06
I'm sorry, but you should make sure that you aren't comparing apples and oranges.
US patent attorneys (and agents, which you happily throw into the total, something which I sustect US patent attorneys wouldn't be very happy about) don't just do patent prosecution. US patent attorneys also do litigation, which in most of Europe (Britain being the notable exception) is outside the reach of "mere" patent attorneys. US patent attorneys also have to deal with design patents, whereas the European equivalent (registered designs) is dealt with by trademark attorneys. To make a reasonable comparison, you should at least add the numbers of IP-specialised litigators and those of trademark attorneys working in the area of registered designs to those of European patent attorneys. Then, you'd in my opinion, also have to take the nationally qualified patent attorneys into consideration.
Secondly, I seriously dispute that the EQE is too stringent. It is tough, but its requirements are quite reasonable considering the responsabilities of a patent attorney. It isn't as if the bar is set any lower for US patent attorneys: they have to have a postgraduate degree in law (Juris Doctor) and pass both the Patent Bar and State Bar exams, and neither of these is known for being a cakewalk.
Thirdly, while exams aren't a replacement for experience, the opposite also applies: experience isn't a replacement for the knowledge and understanding that an exam are set to prove. Experience, in and by itself, is quite useless if it is experience in doing things wrong...
Ultimately, I do agree that Europe, or at least some parts of it, should need more patent attorneys. But watering down the qualification requirements is quite the wrong approach in my opinion. Rather, more investment into training and the right incentives for young graduates to take this path should be considered. Otherwise it can't be explained how some countries manage to be very well represented among the corps of European patent examiners, yet hardly produce any European patent attorneys, when the skillsets are quite similar...
Of course, these are merely my own private views, and cannot be considered to represent those of any one of my past, present or future clients or employers.Rodrigo Calvo de Nó, GEVERS on 12 Jan 2010 @ 15:59
Rodrigo - not all US patent attorneys actively prosecute patents at the USPTO, but they are entitled to do so. Most patent litigators in Europe are not authorised to prosecute patents and in the majority of countries would not actually be able to as they lack a scientific/technical background. The same applies to trademark attorneys. So maybe it is more a case of me comparing different types of apple. In any case, my main point is that being a patent attorney should not just be about prosecuting patents. The job should be much more focused on providing clients with IP-related business advice. This is the only way that SMEs in Europe will begin to engage with the IP system. At the moment, however, there is little incentive for attorneys to do this; and, what's more, the EQE does not even cover it. That cannot be right. JoffJoff Wild, IAM Magazine on 12 Jan 2010 @ 16:26
"The job should be much more focused on providing clients with IP-related business advice." Why? The skills required to draft, prosecute, oppose and defend patent applications aren't quite the same as those required for providing business advice (IP-related or otherwise). There isn't any reason why somebody whose job would be focussed on providing clients IP-related business advice should be qualified to practice before the EPO or call himself "patent attorney", for that matter. Indeed, if many US patent attorneys choose not to actively prosecute patents at the USPTO, despite having dedicated very substantial amounts of time, effort and money to be allowed to practice before the USPTO, then shouldn't be rather be deploring their waste?
Division of labour is the basis of the modern economy. There are perhaps reasons for patent attorneys to become more business-savvy, just as there are good reasons for business and engineering and science schools to start treating IP more seriously in their curricula. However, there being 6 bn people in the world, it is also generally more efficient to specialise on rather narrow tasks than to try to do many different things badly (politicians being very good at the latter: see where this brings us). Rather than watering down the qualification requirements to inflate the ranks of patent attorneys, it should better to form teams of specialists, each one focussing on what they can do best.
And because there is already quite a complex division of labour in place, and the boundaries are quite different in the US and Europe, it appears to me disingeneous to try to make such comparisons in numbers without taking these differences into account.
Of course, these are merely my own private views, and cannot be considered to represent those of any one of my past, present or future clients or employers.Rodrigo Calvo de Nó, GEVERS on 12 Jan 2010 @ 18:04
Rodrigo - Patent attorneys already exist. To create a new profession will take time. Europe does not have time. JoffJoff Wild, IAM Magazine on 12 Jan 2010 @ 18:14
that's a short, simple answer. Unfortunately, like most short, simple answers, I believe it has also the significant defect of being wrong. In fact, it is you who is proposing to create a whole new profession of patent attorney instead of the existing one. Where are those 30,000 new patent attorneys going to come from? Isn't their training also going to take some time, especially if you want them to take on more tasks than their current ones?
I think most people will agree that if there's something there isn't any shortage of in Europe, it's business consultants. That's an existing profession, one without many (or any) barriers to entry, and which is at least supposed to do the job of proferring sound business advice. Shouldn't it be easier, safer and faster to train at least some of those business consultants in IP, and to have them join efforts with patent attorneys? I know I already do.
Of course, these are merely my own private views, and cannot be considered to represent those of any one of my past, present or future clients or employers.Rodrigo Calvo de Nó, GEVERS on 12 Jan 2010 @ 18:46
Rodrigo - I would be very happy if business consultants were to become part of the offering patent attorneys put in front of their clients. Unfortunately, though, not many do. So the question is: how do we encourage it to happen? If there are more patent attorneys (not 30,000 more by the way, another few thousand would probably do the trick), there is more competition, so more incentive for patent attorneys to think about what they offer their clients - actual and potential - and how much they charge them. JoffJoff Wild, IAM Magazine on 12 Jan 2010 @ 18:56
Being a German patent attorney having gone through a very stringend and focussed education (in engineering as well to become a patent attorney) including quite a bit of practical work on German as well as European patent applications, oppostion procedures, appeals and so on concluding with an exam (at least the oral part of it) that included questions on European patent law it seems somewhat unreasonable not being allowed to represent before the EPO. The "normal" German attorney as well as e.g. his Greek colleague not necessarily even knowing what the EPO is and most likely having never even seen a European patent application or the slightest clue how to prosecute a European patent application is allowed to represent before the EPO... .
Isn't there something wrong with the system as it stands since that is the case?
The issue for me is not so much the tough EQE (most parts seem somewhat reality born but are really mere tests on how fast an intellectually not overly challenging task can be accomplished) and the bottle neck becoming a European patent attorney but the fact that all "normal" (none patent) attorneys in EPC member states are allowed to represent before the EPO prosecuting patent applications without being educated in the patent field at all. Maybe that is why in German the term "European patent attorney" officially does not even exist. if you pass the exam and get registered you become a "certified representative before the EPO"! All in all simply ridiculous...Daniel Papst, Papst Licensing GmbH & Co KG on 18 Jan 2010 @ 10:52
Dear Mr. Papst,
I'm afraid that you are wrongly informed as to the requirements for representation before the EPO. It is wrong that "any" attorney-at-law may represent before the EPO. According to Art. 134(4) EPC, a legal practitioner qualified in a Contracting State may indeed represent before the EPO "to the extent that he is entitled in that State to act as a professional representative in patent matters". Since this isn't really the case in many, if not most member states, and even despite some rather creative interpretation of national rules for representation by the Boards of Appeal in J18/99, I'd say that your criticism is at least partly misguided.
Partly, mind you. At the root of the problem are wildly differing rules for representation before NPOs. As somebody who has passed the EQE, but isn't (yet) nationally qualified, I find the situation at least as frustrating as you, especially since some member states put up other barriers than merely making the examination very difficult (for instance, there's a certain country which quite simply hasn't held a national qualification exam since 2006), whereas in others, being allowed to represent before the NPO is merely a matter of paying a registration fee. In some countries there's also a clear separation between patent and trademark attorneys, whereas in others these are two different professions.
A first step would thus be to harmonise the requirements for national representation. How this is to be done rationally over the very substantial vested interests in some countries, is of course the one-billion euro question.
A couple of things. Have a look at my post here http://tinyurl.com/yyjkns3 on the earlier thread on this topic.
The local national regulatory issue as flagged by Rodrigo is a major barrier to competition... as is language..... as is geography. But the focus on the patent profession size/competition/attitude/service offering is a major red herring.
I live in the world of supply and demand. The vast majority of European SMEs do not give a hoot about IP despite the best efforts of the stakeholders and professions over the past 20 years. There are some very aggressive (in terms of marketing) non-professional IP consultants in the market now whom I know very well. They seriously struggle to sell the IP value approach and their services. They freely admit that there is no room in the market for others like them. I have worked at this non-traditional interface for 5 years now. It's difficult enough to get companies to consider filing patents never mind getting them to think about IP value. It’s a bit like trying to sell IP litigation..not easy!
So mucking about with the supply side would have absolutely no effect on the market for IP services in Europe and is largely pointless.
Here is the problem. No demand and lack of commercial IP awareness in EU. US companies get it EU companies and there management simply don't. That's why there are 40,000 very busy but expensive US IP attorneys and somewhat fewer European attorneys. There is also a very active and growing IP consultancy market in the US.Nicholas White, Tangible IP on 21 Apr 2010 @ 15:54