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Do patent attorneys have the necessary
skills to run litigation?
So
if it is possible for a patent attorney to acquire the theoretical
knowledge to run patent litigation, what about practical experience?
Here I admit that there is a problem. It is difficult to obtain
direct experience of patent litigation. However, lack of opportunity
is not just a problem facing patent attorneys. In 2000, only 105
patent claims were issued in the High Court. The total number of
hearings as to validity and infringement the following year was only
11.
The CIPA survey
found that about 50% of
Patents County Court
cases are abandoned before evidence is actually prepared. It would
be expected that a similar ratio would hold true for High Court
cases. The opportunities for experiencing the peculiarities of
patent litigation are clearly limited.
If
direct experience is difficult to come by, what about indirect
experience? Here I believe that the outlook is much more positive.
Many of the key skills necessary for an effective patent litigator
are exactly those skills that are developed through the practice of
patent agency.
The ability to extract relevant
information
when interviewing people is one vital skill for conducting
litigation. This is possibly the most important skill that patent
attorneys and patent litigators alike must acquire. Whether a patent
is valid and infringed can only be determined against a matrix of
facts identifying what has occurred. Identifying what those facts
are and how they can be established is the first step in generating
a case theory. Similarly, when a patent application is to be
drafted, it is essential that a patent attorney must acquire a full
comprehension as to how the invention works and how it differs from
previously known systems. It is only after complete understanding
has been achieved that a persuasive patent application can be
written.
It is against such a background that patent
attorneys are constantly honing their skills of
information extraction. Many inventors are not natural
communicators. Frequently inventors are not really aware of exactly
what it is that makes their invention an improvement on what is
already known. The skills of directing an inventor to elaborate on
what is actually important, through carefully controlled questioning
are therefore practised whenever a draft patent application is to be
prepared or prior art is discussed with an inventor.
Another vital skill required of patent litigators is the ability to
structure a persuasive argument. One of the central concepts of
litigation as taught on the Nottingham LLM course is the idea of
using a case theory to structure how arguments are presented. That
is to say, the idea that litigation should be run by constantly
trying to identify your best case and organising your arguments to
promote that case. The instruction, “Think case”, is, however,
equally applicable to patent prosecution work. When preparing a
patent application, from the outset the patent attorney must
consider the ultimate monopoly that can be achieved by the draft.
Central to the analysis performed by a patent attorney is always:
“What is my best case that a patent should be granted?” This case
theory then determines how the invention is presented in the
description and claims and also how the application is subsequently
prosecuted.
A
further skill essential to the conduct of litigation is
organisation. One aspect of the necessary organisational skills is
the practical matter of paper and
information management. Even the most effective
advocacy is undermined if the materials presented to a judge are
misfiled or poorly copied. Yet the same skill is also at the core of
patent prosecution. If a page is missing in a trial bundle, that can
be embarrassing for an advocate. Failure to include all the pages in
a patent application, however, will often mean that no patent will
be granted. As a result all patent attorneys are taught to check
everything to make sure that no such error occurs.
Information management also works on a higher level than merely
addressing whether all the papers have been correctly copied. With
the modern trend towards the replacement of examination-in-chief
with witness statements, there is now very little opportunity to add
new facts to a case actually at trial. It is therefore essential
that all necessary facts are proved by the papers filed beforehand.
In order to do so, the patent litigator must first establish what
must be proved and then the evidence must be checked to ensure that
everything is covered.
In
a similar way, a patent application is required to be an enabling
document that supports the scope of the claims of the patent. As
such the patent application must provide the necessary teaching to
implement the invention claimed as well as identify the manner in
which embodiments can be modified so that variants are also covered.
When drafting a patent application, the question must therefore
constantly be asked, “Is the patent description complete?”
Opposition proceedings provide an even
clearer opportunity for patent attorneys to test the skills used in
patent litigation. Before an opposition is launched it is necessary
to identify the evidence upon which arguments are to be based. A
coherent argument based on the available evidence then needs to be
drawn up. Just as in court litigation, the argument needs to
demonstrate that the evidence establishes grounds of invalidity as
identified in the law. A patent attorney must therefore be able to
analyse the legal background to the case and ensure that evidence
necessary to support each argument is present in the grounds of
opposition. Oral proceedings held before the EPO then provide an
opportunity to test advocacy skills in a formal atmosphere similar
to that of the court.
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