02 February 2013

Aspiring Attorneys Stand on the Threshold of a Brave New World

Tightrope WalkerThis coming Monday, 4 February 2013, I am giving a three hour lecture on US patent law and practice to a group of Monash University students, many of whom will no doubt be attending the Patent Practice course as part of their requirements to one day become registered Australian Patent Attorneys.

As I have prepared for the lecture, and the number of PowerPoint slides has crept up towards 100 (that’s one every two minutes, folks – strap yourselves in for the ride), I have been contemplating just what it might mean to qualify as a patent attorney in 2013.  This has been lately on my mind for other reasons also, since I have been approached by a number of people seeking advice on how to steer their career paths into this profession.

Profession Faces Challenges

The fact is that there has probably never been a more challenging time to pursue a career as a patent attorney in Australia.  (I imagine that this may well be true elsewhere, as well, although I would not know for sure.)  The ‘traditional’ patent attorney business model is under unprecedented pressure from low-cost specialist operations such as foreign filing and annuity service providers.  The downturn in the global economy will continue to impact patent filing and prosecution work for years to come.  Ironically, the increasing importance and profile of intellectual property – which one might expect to benefit patent attorneys – is what is driving clients to seek more cost-effective services, and to be far more canny in managing their IP portfolios to a budget.

To survive and prosper, firms and individual attorneys are going to have to adapt to these changes, and look critically at the nature and scope of the services they provide.  Yet at the same time, the basics remain unchanged.  A patent attorney must be knowledgeable and competent in her field of technical expertise, as well as in the patent law and procedures of the country in which she practices.  An Australian patent attorney is also expected to have a good working knowledge of the law and practice of a number of this country’s major trading partners, since most domestic clients have business interests in larger foreign markets.  However, it is increasingly difficult for attorney firms to justify the investment in hiring and training people with no existing IP qualifications or experience.

So, in my view, aspiring patent attorneys now bear a greater responsibility for their own training and career management than ever before.  To maximise the prospect of finding quality employment in the profession, the aspiring attorney is well-advised to get a few of the formal courses of study under his belt, and to steer his career, as far as possible, into some role involving contact with, or management of, intellectual property.

New Laws Mean There Is More to Know

At the same time – and this is where my Patent Practice lecture comes in – this year commences a period during which the amount of basic legal and practice knowledge an Australian patent attorney will require in order to practice competently has been significantly expanded.  In March, the remaining substantive provisions of the America Invents Act will come into force, representing the biggest package of changes to US patent law since, perhaps, the passage of the current Patents Act in 1952.  Then in April, Australia’s own Raising the Bar reforms will commence, involving huge changes not only to a range of substantive patent laws and procedures, but also to trade marks, copyright and designs law.

All of which would not be so bad if it was a case of ‘out with the old, and in with the new’.  But of course, it is not.  Until every single Australian and US patent granted under the provisions of the current laws has finally expired, attorneys will need to be familiar with both the old and the new laws, and they will need to know when and how each should be applied. 

This means that for perhaps as long as the next three years or more, Australian patent attorneys will be prosecuting applications to which either the old or new laws may apply, depending upon whether examination was requested before or after 15 April 2013.  For up to twenty years, attorneys asked to advise on the validity of a granted Australian patent will also need to check the examination request date, and apply the appropriate law accordingly.  As if this is not bad enough, existing granted patents are already subject to two different standards for inventive step, depending on whether they were filed before or after 1 April 2002.

The situation is just as bad in the US, where the biggest change in substantive law is the move from a ‘first-to-invent regime’, to a ‘first-inventor-to-file’ regime.  This change significantly alters the scope of prior art that can be cited against a patent claim, and the options available to an applicant in order to overcome a citation.  For applications having an ‘effective filing date’ prior to 16 March 2013 – which includes all applications in which all claims validly claim priority from an application filed in the US or elsewhere prior to this date – the ‘first-to-invent’ rules apply.  However, if even one claim in an application or patent is not entitled to the benefit of a filing date before 16 March 2013, then the entire patent is subject to the ‘first-inventor-to-file’ rules.

So for more than 20 years, once term adjustment is taken into account, attorneys assessing ‘transitional’ patents will not only need to look at the priority date and the nonprovisional filing date of the patent, but they will also need to closely examine the relationship between each and every claim and the disclosure in the priority application.

Facing the Future

For attorneys, such as myself, who can claim some adequate degree of experience with the current laws, the transition should be manageable.  We have only to learn about the new laws, and try not to forget what we already know about the old!

But I do not envy the aspiring and recently-qualified attorneys facing the prospect of learning both the new and the old laws from scratch, along with the challenge of building a career in a profession that is certain to see significant change and upheaval in the coming years.  And it is not going to get any easier – with the Unitary European Patent coming soon, the totally reformed New Zealand Patents Bill seemingly close to passage, and the increasing importance of new foreign jurisdictions like China, it certainly is a brave new world you face!

Of course, for talented people who like to be challenged, this may be no bad thing.

Image Copyright (c) 123RF Stock Photos


Andy M said...

Thanks Mark!

Being a newly qualified Attorney (still awaiting registration) I couldn't agree more in relation to the upcoming challenges a new Attorney will face.

However, I also look at the challenges as a great opportunity (as you also pointed out) for novices like myself. For example, the new Act provides an equal opportunity for all professionals (old and new) to hone their skills in relation to revised standards of the new Act. The more experienced professionals will not necessarily have a distinct advantage when it comes to at least some of the revised standards.

With a higher standard for patentability (such as "inventive step") under Australia's new Patents Act, we would have to wait for sometime before a few matters go to the Federal Court to assess how the new standards will be implemented. I hope we don't end up in a situation where the Patent Office compiles a collection of their own decisions and interprets those decisions as "law" ("business methods" being a prime example as mentioned in some of your previous articles).

Mark Summerfield said...

Hi Andy

Thanks for your comments. You are right that there are great opportunities for people who are willing to work hard and are adaptable to change, but I am not sure that being on an equal footing with the 'old hands' in relation to the new laws and regulations is a big part of that. Applications will continue to be prosecuted under the old standards for a long time to come, and patents will be litigated under those standards for much longer. You should also bear in mind that the 'new' standards are, for the most part, derived from existing European or US law, so they are not totally unprecedented for those with existing international prosecution experience.

There is still no substitute for experience in this complex and ever-changing profession. You will never be done learning -- I know that I am not!

Laws evolve, by judicial decision-making and by legislation, so there is nothing new in this (even though such major changes in both Australia and the US constitute something of a 'perfect storm' of patent reform). The structural changes in the industry/profession will, in my view, provide greater challenges and opportunities for those prepared to 'think outside the box' of traditional patent attorney services.

Congratulations on qualifying, and best of luck with your career!


Shriraj said...

Nice article Mark.

Good to know that aspiring attorneys, such as myself, have a lot to look forward to.

From what I understand, qualifying is just the first step.

Mark Summerfield said...

Qualifying is always just the first step! I have been in this business over ten years now, and I still learn something new nearly every day.

Stan E. Delo said...

Great article Mark... I forwarded a link to a patent attorney friend of mine, and I hope you don't mind very much. If they use the link, they might actually get a chance to see a few of the comments.
Nicely done-

Manuel S said...

Hi Mark
I've just sent off my application for registration TODAY (and I'm quite excited about it). Since I don't know any different, the current state is my 'normal'. When you talk about the good old times I can only shrug my shoulders. I enjoy my job and my billings are high enough to make the partners pay me a decent salary. What else could I want?

Mark Summerfield said...

Congratulations on qualifying, Manuel. You are quite right to feel excited about registration!

You will note that I deliberately did not refer to any 'good old times'. I hear that they existed, back in the 1980s - days when patent attorneys could afford long liquid lunches, and languid afternoons! The stories may not be true, of course...

The distinction I am making is not between a harsh present, and past that perhaps exists only in memories tinged by nostalgia. It is great that you enjoy your job, and perhaps to your advantage that you have never known anything different. But then again, history has valuable lessons to teach all of us.

The fact is, though, that you will face greater challenges in your career than many of the attorneys who will be retiring over the next few years, and the better you understand the nature of those challenges, the more successful you will be.

One day you may be one of the partners who has to worry about providing a supportive environment in which your staff have the luxury of enjoying their jobs, generating good billings, and earning a decent salary! Registration is just the first step on a long journey. Best of luck to you!

Manuel S said...

Thanks Mark for your wishes. I'm sure we'll bump into each other sooner or later (IPTA conference maybe?) and can have a chat over one or two at one of those liquid lunches.

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