Should Australian Patent Attorneys Be Allowed to Litigate?

As I regularly remind people, Australian patent attorneys are not generally lawyers.  Of course there are examples of patent attorneys who also have general law degrees, and some of them (though not all) also practice as solicitors.  But, for the most part, patent attorneys (including me) are people with relevant technical qualifications (a mandatory requirement in Australia) plus specialised training and experience in the laws and official practice relating to patents, trade marks and registered designs.

The profession in Australia therefore differs from some other countries.  In the US, for example, the title ‘patent attorney’ is reserved for practitioners who have a law degree, and are registered to practice law before the courts in one or more states.  The term for a practitioner who is qualified to practise before the US Patent and Trademark Office, but not in any broader legal capacity, is ‘patent agent’. 

Even so, it is not quite correct to equate an Australian ‘patent attorney’ with a US ‘patent agent’.  Chapter 20 of the Australian Patents Act 1990 authorises patent attorneys to provide intellectual property advice not only with regard to registered rights, but also ‘related matters’, including advice on validity and infringement of patents.  My understanding is that a US patent agent is not authorised to provide legal advice of this kind.

Unsurprisingly, given the historical connections, the UK profession is organised and regulated similarly to the Australian profession.  However, I recently learned that since 1999 it has been possible for a UK patent attorney to apply for a ‘Litigator Certificate’.  Initially, these were granted by the Chartered Institute of Patent Attorneys (CIPA) to ‘suitably qualified and experienced members’.  Since 2012, however, the Intellectual Property Regulation Board (IPReg) has administered the grant of three levels of practising certificates, based on completion of accredited qualifying courses and ongoing continuing professional development (CPD).  The highest level of IPReg certification confers full rights of audience in the UK High Court, Court of Appeal and the Supreme Court in certain classes of proceedings relating to IP rights.

My question today is: should Australia be looking at introducing a similar system to permit patent attorneys to appear, and to instruct counsel, in proceedings before the Australian Federal Court and the High Court?

Background to the UK Certificates

Although Litigator Certificates were introduced in 1999, registered patent and trade marks attorneys already had a limited right to argue cases in the the Patents County Court (PCC).

the PCC was established in 1990 as a forum in which simpler cases could be dealt with under a cheaper and more streamlined procedure than the High Court.  Since its creation, solicitors and patent attorneys have been able to argue cases at the PCC, saving litigants in less complex matters from requiring representation by counsel.

This meant that by the end of the 1990’s there were a number of patent attorneys who had experience running cases and advocating on behalf of clients in the PCC.

Since 1998, the streamlined procedures developed for the PCC have been available in all UK courts.  Then, as explained on the CIPA web site:

In 1999 the Institute was given authorised body status to grant Litigator Certificates to suitably qualified and experienced members. These give the right to conduct litigation in the High Court, including the Patents Court, and in the Court of Appeal on appeal from the Patents County Court or the High Court in any matter relating to patents, designs, trade marks or technical information. This right means that a Patent Attorney Litigator can conduct the litigation and instruct a barrister to appear before the Court, without the need to use a solicitor for this work. The purpose of the government in granting this right was to give clients greater freedom of choice in selecting their advisers and to reduce the cost of litigation.

Recently, there have been further reforms to the PCC, and to the regime relating to the rights of patent attorneys to conduct litigation:

1. in 2010, new procedure rules were introduced in the PCC, requiring greater detail in the applicant’s particulars of claim, eliminating discovery (or disclosure) and examination in chief of expert witnesses, limiting the issues that go to trial, the quantum of damages (up to £500,000) and the legal costs (up to £50,000) recoverable, and restricting the duration of trials to no more than two days;
2. in 2011, IPReg began a consultation on litigation rights for patent and trade marks attorneys, which led to a number of reforms (discussed below); and
3. from 1 October 2013, the PCC became a specialist list of the UK High Court known as the Intellectual Property Enterprise Court (IPEC), with patent and trade marks attorneys retaining their rights of audience and litigation.

The Current UK Regime

In 2012, a new regime for regulating the litigation rights of patent and trade marks attorneys was established, under the supervision of IPReg.  Litigation Certificates are now granted following completion of specific accredited training courses.  The three levels of certification operate as follows.

1. A basic Intellectual Property Litigation Certificate is required for any patent (or trade marks) attorney to appear before the IPEC, or to conduct appeals from decisions of the UK IPO.  This right was previously automatically acquired upon registration as a patent attorney, but is now contingent upon completion of a Basic Litigation Skills Course.  All registered patent attorneys are required to complete this course within three years of registration.  Certificates at this level were deemed to be granted to all patent attorneys already registered at 31 December 2012.
2. A Higher Courts Litigation Certificate is granted upon successful completion of an accredited Advanced Litigation Skills Course, and confers additional litigation rights, including extensive rights of audience in the IPEC, and rights to conduct some litigation and appeals in the High Court, Court of Appeal and Supreme Court.
3. A Higher Courts Advocacy Certificate confers full rights of audience in the High Court, Court of Appeal and the Supreme Court in any proceedings which may be conducted by an attorney holding a Higher Courts Litigation Certificate (i.e. matters relating to patents, designs, trade marks or technical information).  It is necessary to complete an approved Advocacy Skills Course or Advocacy Assessment to obtain such a certificate.  Pre-existing Patent Attorney Litigators were granted Higher Courts Litigation and Advocacy Certificates when the new regime commenced.

Why Should Australia Consider This?

I believe that Australia should look at the potential benefits of introducing a regime for accreditation of patent and trade marks attorney litigators and advocates.

The key benefits of such a system would be that clients would have access to a greater range of options – particularly lower-cost options – while the country would make better use of suitably skilled and qualified IP practitioners.

As regular readers of this blog will be aware, I have spent some time observing, and participating in, Federal Court patent proceedings in the past couple of years.  I have nothing but the greatest respect for the highly-skilled solicitors and barristers I have worked with on these matters, but there is no question that the costs to the clients in each case have been higher than they might have been had a patent attorney been able to take on some of the tasks for which solicitors are currently required.

My observation has been that any serious Federal Court matter requires at least two solicitors to conduct the case, and at least one barrister to argue it.  Furthermore, a patent case is almost always going to require the involvement of at least one patent attorney.  We are specialists in patent law and, at least as importantly, we have the necessary qualifications and background to be across the technical issues relating to the patent(s) involved.  Often, that information needs to be conveyed to the solicitors and barristers in the course of developing the case on behalf of the client.  Conferences involving three, four or five professionals, each charging hundreds of dollars per hour, become very expensive, very quickly!

If the patent attorney were able to conduct the case before the court, it is likely that the number of solicitors – and, almost certainly, the number of chargeable solicitor hours – would be reduced.  The system could be more efficient, the practitioners with the necessary expertise would be more closely involved in, and connected to, the proceedings, and some highly skilled and effective patent attorneys would be able to apply those skills to an additional aspect of practice.

Overall, it seems pretty clear to me that, with the right training, supervision and experience, there are real opportunities for greater efficiency in the running of patent cases.

What Else Could We Learn From the UK?

Perhaps Australia does not have the population, or volume of patent litigation, t justify the creation of a new court along the lines of the PCC or IPEC.

However, we do already have the Federal Circuit Court of Australia (formerly the Federal Magistrates Court).  As of the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, the Federal Circuit Court now has jurisdiction over a range of IP matters, including disputes relating to copyright, trade marks, and registered designs.  Like the UK IPEC, the Federal Circuit Court offers simplified, and lower cost, procedures relative to the Federal Court of Australia, subject to certain limitations, such as a $750,000 cap on the maximum damages that can be awarded.

To date, the Australian government has shied away from conferring any jurisdiction over patent matters upon the Federal Circuit Court, largely due to the perceived complexity of patent cases, and the relatively high levels of damages that can be involved.  Clearly enough, patent cases benefit from being heard by experienced judges, which might mean bringing in specialists, e.g. from the Federal Court (this would make sense if it kept the case out of the Federal Court, and resulted in the use of less judicial time and other resources).  And if the scope of patent cases in the Federal Circuit Court were to be restricted, as it is in the IPEC, then it could provide a highly cost-effective alternative venue for suitable disputes.

The other reform that might make it more practical to open up the Federal Circuit Court to simpler patent matters would be expanding the range of practitioners considered qualified to conduct cases, and to appear, on behalf of litigants… say, to include patent attorneys!

Conclusion – Opening the ‘Floodgates’?

I can almost hear the alarm of IP lawyers already, concerned about opening the courts’ doors to mere patent attorneys!  OK, so maybe not all lawyers will have that attitude – the other way to look at patent attorneys is as very highly specialised legal practitioners. Yes, many of us would have a lot to learn about court procedure, but we would rarely be working alone, and we would ultimately learn the way any litigator learns – at the side of those more experienced than ourselves.

It is also understandable that IP litigators would be less than enthusiastic about the additional competition.  But that would partly be the point – to give clients more choice.  We are all facing new challenges in a changing professional landscape.  I have written previously about the new enterprises now encroaching upon the transactional (filing, portfolio monitoring and renewals) services traditionally provided by patent attorneys.  This puts pressure on us to ‘move up the food chain’, and provide higher levels of professional services to our clients.  However, regulation limits the scope of advice and legal service that can be provided by patent attorneys.

Even so, I suspect that most Australian patent attorneys would not take up the option of obtaining litigator certificates, if they were available.  In the UK, as of February 2012 when CIPA was still administering the grant of certificates, only 66 attorneys, representing just 44 firms, held Patent Attorney Litigator Certificates.  My guess is that most patent attorneys would have little interest in appearing in court, particularly if additional study, qualifications and ongoing CPD is required!  However, those that were keen to add this string to their bow – me included – might turn out to be quite good at it!

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Tags: Australia, Law reform, Litigation, Patent attorney profession, Public policy