How To Answer A Question From The Bar Council On The Pcc

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1 Response of the Legal Services Committee of the Bar Council to IPREG Consultation on the Replacement of the CIPA Higher Courts Qualification Regulations and the ITMA Trade Mark Litigator and Trade Mark Advocate Certificate Regulations (1) Do you agree with the proposal to permit all IP attorneys to conduct IP litigation and appear before the PCC in any field appropriate matter within their competency? If not, why not? In principle we agree as long as IP attorneys are properly trained, competent and subject to appropriate regulation including the requirement to comply with mandatory and litigation specific CPD requirements. However, we have two general concerns: a. First, the many comparisons made in the consultation document between the position of solicitors and IP attorneys pays little regard to the fact that solicitors conduct litigation and exercise advocacy rights only after a lengthy and broad legal training. b. Secondly, the reference to a field appropriate matter obscures the underlying question of what areas of litigation properly fall within the competence and experience of an IP attorney. These concerns are far from academic; IP litigation often involves legal issues arising from contract, tort, estoppel, trusts, together with regulatory and competition matters. In the recent case of Atrium Medical Corporation, Atrium Europe BV v DSB Invest Holding SA [2011] EWHC 74 (Pat) Lewison J held that the rights granted by Arts. 3 and 5 of the CIPA Higher Courts Qualification Regulations 2007 included the right to conduct litigation which concerned contractual matters where there was no question of the infringement of any IP rights. He also stated that in some cases it may be very difficult to say what falls within the definition of Intellectual Property Litigation in Article 3 of the 2007 regulations. One may instance a case of professional negligence in which it is alleged that a patent agent was negligent in drafting the claims or the specification of a patent; or, as Mr Davis suggested, there might be a case of a disputed will which bequeathed a patent which turned on difficult questions of trust law. In addition copyright is excluded from the definition of Intellectual Property Litigation.

2 In such circumstances it is unclear how IP attorneys could consider themselves, or be considered, to be competent if their training was specific to IP and general litigation procedure only. Frequently, the fact that there are such extended legal issues is not immediately apparent at the outset of proceedings; it may, for example, only arise on service of the defence or may simply not be apparent at all to those who are not trained to recognise the wider legal framework. This may result in IP attorneys taking on cases which they later discover they are not competent to handle or in which a difficult judgment, involving a potential conflict of interest, is then required as to what best serves their clients interests. The risk is that the client will not in fact have been in a position to make an informed choice as to representation, may be left with little choice but to continue with a representative whose experience and knowledge is lacking or to instruct a new representative, potentially at a stage when it is too late to change. In the PCC this could be catastrophic as the procedures and case management are focused on early identification of the case to be put forward and the evidence required to support it. Late changes are usually not permitted or if permitted would involve increased costs and may potentially take the case outside the statutory limitation on costs recovery leading to greater costs exposure for the client. We would add that concerns of this nature also suggest to us that training in litigation ethics is a fundamental (but presently unaddressed) requirement. (2) For new entrants to the professions, should the award of litigation rights/a right of audience in the PCC and a right to conduct appeals from Patent Office decisions to the High Court require attendance at a basic litigation skills course? If not, why not? Yes, we agree that a litigation skills course is required. It cannot be in the public interest for untrained persons to be able to conduct litigation or have a right of audience. In addition, it would distort the market for IP related litigation services against other professionals with whom IP attorneys may be competing to offer such services without training. Further, the proposed format of 2 3 days training appears to be based solely on a consideration of the solicitors training course. This seems a very short time to gain competence in the overall skill set required for both the conduct of litigation and advocacy (see the general concern expressed in (1) above). In addition, whilst the desired outcomes of such training are identified, the proposal does not appear to indicate that any assessment of competence would be undertaken. We assume the proposal is that attendance alone would be sufficient; this cannot provide the public with any guarantee that the persons who have undertaken a course have in fact attained the necessary skills. (3) If such a course is introduced should it be obligatory to complete the course as part of the route to qualification as a patent/trade mark attorney? Alternatively should it be obligatory to undertake the course as part of an attorney s CPD within a certain number of years of qualifying? For the protection of the public, the award of litigation rights should be tied to demonstration of competence in the skills required and relevant legal and procedural knowledge. If such litigation rights are to be offered as being equivalent to those

3 provided by solicitors and barristers, then the public must receive equivalent quality or any comparison is potentially misleading. Once acquired, these skills should form a mandatory part of the CPD requirements on an annual basis, especially as, from past experience, they are likely to be used infrequently. Although it may be helpful to acquire such skills, it does not seem to be essential that this requirement must form part of the basic training; not all trade mark or patent attorneys will wish to exercise such rights. However, if the rights are to be exercised there must be a mandatory requirement to obtain the skills, appropriate training and an assessment to verify competence. As long as this is complied with prior to exercise of the right to conduct litigation and to exercise a right of audience and there is no misrepresentation of the experience of the person to the public, there is no obvious need for this to occur within a fixed time after qualification. (4) Are there any further factors regarding a basic litigation skills course that IPReg should consider? No mention is made of the detailed content of the course and none of the teaching of ethical requirements. This information would be required in order to allow us to make further meaningful comments. (5) Do you agree with the proposal to extend the rights awarded to IP attorneys on qualification to include the right to conduct appeals at all levels? We do not agree that the right to conduct appeals should be awarded on qualification; as to which see above. Further, the premise of the proposal is incorrect. Appeals are not usually simpler; they may be factually less complex, but they are often more complex legally, involve different procedures and require an appreciation of the nature of the appeal process which we are not confident can be assumed to exist in those newly qualified. They often lend themselves to more experienced representation and it will usually be necessary to consider whether any apparent advantage from continuity is outweighed by the benefits of a change in advocate. It is not correct to state that a new representative would have insufficient time to grasp the case. This would only occur if the matter was left extremely late. Appeals are usually fixed well in advance of the hearing. There is no mention of comparative cost effectiveness with the other professional alternatives or of any duty to explain the relative costs and skills of the alternatives to the client. (6) Are there any other rights which should be included? No, but there are other obligations, such as the duties to the Court, the client and ethical obligations.

4 (7) Do you agree that the qualification regime for patent attorneys should be harmonised with that of trade mark attorneys, so that qualification as a patent attorney litigator should be open to all registered patent attorneys and not just attorneys who have been on the patent attorney register for at least 3 years? If not, why not? Harmonisation would be sensible, but the reason for the exclusion from the early stages of practice is predicated, as with other professions, on the basis that a newly qualified patent/trade mark attorney cannot be expected to have gained from his or her training all that is required for the conduct of litigation, which is a specialist area, immediately upon such qualification. Accordingly, as with sole practitioners and, currently, direct access for barristers, there should be a consistent period of postqualification and pre authorisation except where an individual can obtain a partial or complete waiver of such requirements on the basis of previous experience or other qualifications. (8) Do you agree that IPReg should move to an outcomes based assessment scheme similar to that adopted by the SRA where qualification is based on completion of an assessment and not dependent upon completion of flying hours? If not, why not? Assessment of candidates is essential so that the public can be sure that the appropriate level of achievement in the necessary skill sets has been achieved. Exposure to real cases and real clients, rather than simulated experience is the most valuable and realistic form of learning; accordingly we consider that qualifying hours in addition to assessment offers the approach most likely to lead to high quality outcomes. (9) If IPReg moves to an outcomes based assessment scheme, do you agree that the level required to pass an assessment should be of a similar standard to that of a newly qualified solicitor acquiring similar rights? If not, what would be an appropriate level of assessment? And why? If the assessment is concerned only with the conduct of litigation rather than rights of audience, this would seem appropriate. However, if rights of audience are also to be granted then in addition, the assessment should be equivalent to that demonstrated by barristers in the specialist area at the same level of experience e.g. 1 3 years post call (see the general concerns expressed at (1) above). (10) Are there any other issues which arise from IPReg s proposal to amend the qualification regime for Litigation Certificates? Again, there is no mention of ethical issues. (11) Do you agree that IPReg should establish a qualification scheme to enable appropriately qualified patent attorneys and trade mark attorneys to acquire rights

5 of audience in the High Court? Yes. We would welcome the opportunity to contribute to a consultation on the content of that scheme. (12) Do you agree that the qualification scheme for acquiring higher rights of audience should be set at the standard of the SRA scheme enabling solicitors to extend their rights in the Higher Courts? If not, what alternative scheme should be established? No, for the reasons set out above we do not consider that a straightforward comparison between the position of solicitors and IP attorneys is appropriate. An assessment tailored to intellectual property issues will be suitable only if that concept is satisfactorily defined and represents the areas in which IP attorneys do in fact exercise litigation and advocacy rights. In addition, the scheme should be adequately supported by mandatory CPD requirements. (13) Are there any other issues which arise from IPReg s proposal to establish a scheme to enable appropriately qualified patent and trade mark attorneys to acquire higher rights of audience? Are any limitations to be placed on the conduct of associated litigation (as to which see above)? What advertising is to be permitted making comparisons with other professionals who are not regulated by IPREG but by other regulators? (14) Do you agree that the grant and maintenance of Litigator or Advocacy Certificates should independent from membership of CIPA or ITMA? If not, please explain why. As long as the funding required for the regulation and maintenance of such rights does not fall on other professionals, we have no other comment. (15) Do you agree that the approach proposed in this paper is the right approach to enable qualified and partially qualified patent and trade mark attorney litigators to apply for certificates under the new regulation? If not, what alternative approach should IPReg consider? This is predicated on the assumption that all the IPREG proposals are accepted. We do not consider that the approach is right without the safeguards referred to above. Existing, qualified attorneys should be able to continue to conduct litigation as before for an interim period but suitable CPD must be integrated into the CPD requirements for the future to maintain such rights. Part qualified attorneys should be required to complete the full training that will be required, (including flying hours etc). To the extent that they cannot demonstrate competence, no qualification should be granted.

6 (16) Do you agree with this graduated approach to CPD? If not, how should the CPD levels be amended and why? No. It is clear that litigation is a specialist area with specific skill sets which patent and trade mark attorneys do not routinely obtain. As such there should be a mandatory requirement to maintain the certification based on specific litigationrelated CPD. (17) Do you have any suggestions as to how IPReg should define the scope of intellectual property litigation to achieve these aims? As set out above, there is a real risk that Intellectual Property Litigation will be too widely construed leading to cases being conducted by persons in areas and on issues on which they are not trained and/or not competent. It is not clear that the public would be protected in such circumstances (especially as no litigation ethics training is proposed), and this would also lead to disruption and increased costs to the parties (including the other party to the litigation) and to the Courts, in terms of the administration of justice and general Court administration and case management. For this and the other reasons given a narrow definition is required. Such litigation should be limited to the conduct of cases exclusively dealing with the registration, validity and infringement of IP rights within the special jurisdiction of the Patents County Court i.e. patents and designs, and in addition, trade marks within the Trade Marks Act. Attorneys conducting litigation/exercising advocacy rights should be required to identify whether a case falls within the parameters set or may involve any significant additional legal issues and to consider specifically whether their clients interests would be better served by instructing a lawyer. For and on behalf of the Legal Services Committee Derek Sweeting QC Jacqueline Reid 17 October 2011