Should Patent Attorneys Litigate?

(originally published in the CIPA Journal, June 2003)

Patent attorneys have had a right of audience before the Patents County Court since 1990. In 2000, they also acquired the right to litigate before the High Court upon attaining a litigator’s certificate. There are now over 50 patent attorney litigators on the official rolls and more are in training for the litigator’s certificate on the Intellectual Property Litigation course offered by Nottingham Law School. That patent attorneys may litigate, therefore, is no longer in question. What may still be questioned is whether they should.

Certainly, the ability to litigate must have been quite unforeseen as a necessary technical skill by those seeking the grant of patents when the Statute of Monopolies[1] was passed in 1624. In such days, the most important skill for the prototypical patent agent was having the right contacts. The patent system then was an elaborate labyrinth of petitions, fees and palms to be greased, and the grant of a patent could be significantly eased by being a good friend of such dignitaries as the Deputy Chaff Wax.[2] 

Even after the modern Patent Office was founded in 1883[3], its competence, and that of patent agents, initially was limited. In the late nineteenth and early twentieth centuries, the Patent Office merely considered the form of an application, whilst patent agents prepared the technical specifications that fulfilled the requirements as to form. Issues such as whether a patent was novel or inventive could only be raised in the courts, and then only by lawyers, not patent agents.

Gradually, however, the competence of the Patent Office grew, and with it the skills required of patent agents. First of all the power to decide issues of novelty, previously the preserve of courts and lawyers, was awarded to the Patent Office in 1907[4]. Later, in 1949, patent agents were given the power to raise obviousness as a ground of objection in opposition proceedings before the Patent Office[5]. It was no longer enough for patent agents to ensure that requirements as to form were met, and with the growth of the Patent Office’s powers the technical specifiers of the nineteenth century gradually transformed into the patent attorneys we have today.

Although throughout the twentieth century patent attorneys were involved in patent litigation as part of a patent attorney, solicitor, barrister team, it was only with the establishment of the Patents County Court in 1990 that patent attorneys could represent clients independently in court. Finally, the rights of patent attorneys in patent matters in court were put on a par with those of solicitors when the CIPA Higher Courts Qualification Regulations were approved in 2000.

The antiquated fixers and form-fillers of the past are barely recognisable today as the forerunners of the modern, polished patent profession. Yet this most recent achievement, the acquisition of rights of audience and litigation, is one which still fills many members of the profession with uneasiness. So far the majority of patent cases before the Patents County Court and High Court are still conducted by solicitors and barristers instructed by patent attorneys. Many members of the profession cling to the belief that patent attorneys should be concerned only with pre-grant matters, or, if they subscribe to a broader competence, do so without actually taking part in it.

The innate conservatism of any profession is understandable. Professionals are by their very definition not content with merely getting by, but rather consistently aim for excellence. Running litigation is one thing, but doing it competently is another matter. A professional patent attorney would only contemplate litigating on behalf of a client if he or she had the necessary knowledge, skills and resources to run litigation well. If the profession as a whole is to be transformed into one consisting of true pre- and post-grant experts, that knowledge and those skills and resources will need to become widespread.

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