If you are the client of a patent attorney, you probably expect that your experienced (and, perhaps, expensive) professional adviser is keeping up-to-date with the latest developments in their chosen field. Indeed, in many professions some form of continuing professional education (CPE) – alternatively known as continuing professional development (CPD) – is not just an expectation, it is a mandatory requirement.The Australian patent attorney and trade marks attorney professions are among those in which a mandatory CPE requirement exists. Some outsiders might be surprised, however, to learn that this has only been the case since 1 July 2008, and that regular compliance audits of attorneys only commenced in 2011. It has therefore been just a little over five years that anybody has been monitoring the efforts of Australian attorneys to keep our skills and knowledge current and relevant.
The formal CPE requirements are fairly minimal, being just 10 hours per year in order to remain registered as a patent attorney or trade marks attorney only, or 15 hours for patent attorneys who wish to remain registered as both. Even so, I am occasionally surprised to encounter attorneys who do not appear to be as familiar with recent developments that I would have expected.
I do not imagine that anyone who reads this blog regularly will be surprised to hear that I believe that CPE is incredibly important. Since entering the profession as a trainee in 2002, I have been on a constant learning curve. The Australian law has, of course, evolved over this time through legislative change and through interpretation and development by the courts. Keeping abreast of developments in other major jurisdictions, including the US, Europe, and China, has also been vital, given that many Australian companies wish to pursue IP rights in key export markets. And the patent attorney profession itself has changed considerably, with clients having an increasing expectation that their attorneys will have a sound understanding of their business strategies and objectives, and be able to tailor a IP strategy recommendation accordingly.
The reason I have been thinking about the importance of CPE is a story I read recently out of the US, about a Californian IP attorney who falsely claimed that he had completed his mandatory 25 hours of continuing legal education (CLE) – notably quite a bit more than is expected of Australian patent attorneys, but still not hugely onerous – when he had, in fact, completed none! Which made me wonder, could it happen here?
The Case of the Lying Lawyer
The Californian case has a number of features that make it pertinent to the Australian patent attorney CPE regime. In particular, the minimum continuing legal education (MCLE) system operated by the California State Bar is an honour system: attorneys are expected to truthfully report their compliance, with checking being conducted via a random auditing process. The Australian patent attorney CPE system operates in the same way.The Californian attorney did not deny his wrongdoing. In fact, he agreed with the California Supreme Court that ‘his false report to the State Bar was an act involving moral turpitude, dishonesty, and corruption, in willful violation of California ethics law.’ The court noted that ‘the MCLE program is ‘a consumer protection measure intended to enhance the competency of attorneys practicing law in this state’ and that ‘[w]hen an attorney lies and takes advantage of the honor system ... it undermines public confidence in the legal profession.’
Taking into account mitigating factors, including the attorney’s otherwise unblemished record over a long period of practice, the court imposed a sanction of a one-year suspension, with all but the first 30 days stayed. The attorney was also registered to practice before the US Patent and Trademarks Office (USPTO), which imposed an identical sanction under ‘reciprocal discipline’ rules.
An effective 30-day suspension might not sound like a hugely significant imposition. However, returning to the USPTO patent bar after suspension is not a mere formality. It is necessary to file a petition for reinstatement, along with substantial supporting documentation.
This is another aspect of the California case that is pertinent to the patent attorney registration system in Australia. Under regulation 20.31 of the Australian Patents Regulations 1991 a person wishing to have their name restored to the Register following a period of removal must make an application, which must be accompanied by various documents, including ‘evidence that the [Professional Standards Board for Patent and Trade Marks Attorneys] is satisfied with the currency of the person's knowledge of intellectual property law and practice.’
It is notable that, also in line with the sanctions in the California case, the Professional Standards Board (PSB) is very clear that ‘[g]iving false written statements, or failing to produce records (when requested), will result in removal of the attorney’s name from either or both registers.’
What Counts as CPE?
The PSB does not provide any sort of CPE accreditation for events, seminars or conferences, and it is largely up to each attorney to determine what is appropriate. However, it does provide guidelines as to the types of activities that are likely to satisfy the CPE requirements, including:- delivering and/or attending lectures and workshops, viewing educational videos and participating in on-line activities such as webinars, podcasts, or study programs;
- formal in-house training programs;
- courses of study at educational institutions, relevant to the work of the attorney;
- writing articles, papers or books with substantial technical content; and
- relevant teaching activities.
Attorneys are also expected to achieve balance and breadth in the form and content of CPE undertaken, and preferably not, for example, perform all of their study on one topic, or through a single training provider. There is a specific requirement to perform at least one hour of professional conduct or ethics CPE activities.
Conclusion – How are Australian Attorneys Performing?
Each year following the completion of audits of CPE compliance, the Designated Manager (i.e. the Director General of IP Australia) issues a memo outlining some general observations on the performance of the attorneys randomly selected for audit. The most recent memo, issued on 2 November 2016 (and which can be accessed from this page of the PSB website), includes the following summary:From the audited sample, it appears that all attorneys are making genuine efforts to maintain and improve their professional skills. However, a large number of returns showed that attorneys are doing predominantly patents or trade marks related CPE activities. There was very little evidence of CPE covering in other forms of IP (i.e designs / copyright) or activities that would assist an attorney with their practice. As per CPE guidelines, up to 4 hours of CPE activities in other areas related to an attorney’s practice (e.g. commercialisation, innovation funding, designs, copyright branding, licensing, etc.) can count towards maintaining professional competence.
I have to say that this does not surprise me greatly. Many patent attorneys, for example, still overwhelming practice within the core areas of patent drafting, prosecution, infringement and validity analysis. While there is certainly value to some clients in engaging attorneys with expertise in areas such as commercialisation and innovation funding, most patent attorneys are not formally qualified (or insured) to provide advice on peripheral legal matters such as copyright. It is therefore not clear to me why an attorney would necessarily devote CPE hours to a topic on which they would necessarily be obliged to refer a client to an appropriately-qualified legal practitioner for advice.
Of course, a well-educated adviser is nice to have, and I know that there are many attorneys who keep themselves informed about matters outside their core competencies. But I am sure there are many others who see their role as being largely confined to the narrower areas of practice specifically authorised in the Patents Act and Regulations. And it appears that after just a few years under the current CPE regime, Australian attorneys are performing well in maintaining their knowledge and skills in at least these core areas. Which is good news for the profession, and good news for clients!
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