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Do patent attorneys have the necessary
knowledge to run litigation?
When asking whether patent attorneys have the necessary knowledge to
conduct patent litigation, it is interesting to note that in fact
patent attorneys are the only professionals who are formally
examined on questions of patent law. Central to any patent
litigation are the questions: Is the claimed invention new or
obvious? Does the alleged infringement fall within the scope of the
claims? These are of course exactly the same questions that have to
be answered when prosecuting a patent application before the Patent
Office and hence are among the core issues tested by the CIPA exams.
Since patent attorneys are equipped with an
intimate understanding of patent law, what then is missing from a
patent attorney’s
education?
Here it is probably easiest to consider the education of patent
solicitors. Like virtually all patent attorneys, many patent
solicitors start with a science degree to provide them with the
necessary technical knowledge to understand the patents that they
litigate. This is then followed by a one-year law course covering
the core law subjects: Criminal Law, Constitutional Law, Equity,
Land Law, Contracts, Law of Torts and EU Law. The LPC then follows
which covers Civil and Criminal Procedure and Civil and Criminal
Evidence. Finally, there is two-year period of articles under the
supervision of a qualified solicitor.
The first thing to note is that the training
of a solicitor is such as to produce a lawyer of general competence.
The law of murder and knowing the differences between restrictive
covenants and easements have little practical application to patent
practice. Although it is true that all study of law develops legal
analysis skills, such skills can equally be developed by studying
matters such as patents, copyright and designs which are directly
relevant to a patent attorney’s work.
Secondly, patent law is a relatively
well-contained area of law. The vast majority of cases in the patent
law reports refer only to earlier patent cases. Although any court
case can involve issues of law far removed from the dispute at the
centre of the case, this does not happen all that frequently in
patent litigation. Thus, for example, a survey conducted by the
Chartered Institute of Patent Agents
found that non-IP issues arose in fewer than 10% of 204 cases before
the
Patents County Court where litigation had been conducted by
patent attorneys. Furthermore, over two-thirds of cases where non-IP
issues had arisen could be accounted for by employment and
contract/licence issues.
The extent to which a patent attorney needs
to acquire a broad knowledge of law is therefore limited. Patent
attorneys are well aware that they are specialists. If in 90% of
cases the only law which is of relevance lies within that competence
then in those cases no additional help is required. In the remaining
cases, it is quite clear that complex issues of, for example,
employment law are not within a patent attorney’s core skills. In
such cases outside assistance would be needed. Such circumstances
would be no different to where a solicitor is faced with a client
who requires patent protection. Any competent solicitor would never
attempt to draft a patent for a client but would rather advise the
client to see a patent attorney.
If general law is not such a problem, what
about civil procedure and evidence? Here it is true that a patent
attorney’s knowledge can be broadly lacking. Most patent attorneys
only experience contentious patent proceedings in the form of
oppositions before the European Patent Office. The procedures
adopted at the EPO have far more in common with procedure in civil
law countries than the British common law tradition. The papers
necessary to initiate a case before the EPO are required to contain
far more detail as to why a patent is invalid than appear on the
face of British pleadings. As to evidence, the EPO’s stated approach
is one of “free evaluation of evidence” which avoids the need for
the arcane rules adopted by the British courts.
However, problems with procedure and
evidence must be placed in perspective. Firstly, this area of law is
taught in detail on the litigator’s certificate course run by
Nottingham
Law
School.
Also it must be borne in mind that rules of procedure and evidence
are only a means to an end rather than an end in themselves.
Particularly in these post-Woolfian days, the judges have little
time for extensive discussions of procedural minutiae. It has been a
long time since a slip of the pen was considered a matter of life
and death in the courts. The core of any patent dispute will always
remain whether a patent is in fact valid and infringed.
In the modern world, civil procedure is
really only a matter of setting out the necessary steps to bring a
case to trial. Of course it is necessary for any competent litigator
to be familiar with the rules and to be able to apply them. However,
the rules of civil procedure are relatively straightforward and much
of their application is largely a matter of common sense.
Similarly, the rules of evidence do not
really present insurmountable problems. In general, the rules of
evidence are of far greater importance in criminal rather than civil
litigation. A patent litigator is unlikely to have to worry about
problems of the admissibility of coerced confessions under PACE or
whether or not to put his client’s character in issue. Neither will
he have to worry about the rules for similar fact evidence. Hearsay
in civil proceedings does present some minor problems, but it is
largely common sense that direct evidence should be preferred over a
string of: “I heard that Tom told Dick that Harry said…” And despite
the official preference for oral testimony, in much patent
litigation documentary evidence is paramount.
In reality the applicable rules of evidence
in patent litigation really turn on the need for an attorney to
prove his or her case. In patent litigation, this will generally
centre on the content of the expert’s report, which establishes how
the man skilled in the art would interpret the patent at issue. Of
course, it is essential for the attorney to ensure that the report
is prepared in accordance with the rules. However, the attorney’s
primary job is to review the content of the report to ensure that
the expert has addressed all the necessary issues and that the
content of the report is sufficient to establish the facts necessary
for his or her client to succeed.
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