The Chartered Institute of Patent Attorneys (CIPA) intends to shake up the class system in terms of its membership – do not worry, it will not be asking what your father did and where you were schooled before accepting you into its membership. Rather, it is proposing a new class, imaginatively entitled “member”, which will fit between associate and fellow of the institute.
The new class could be thought of as an upper middle class, above the part-qualified associates and the lowly students, but beneath the exalted fellows of the institute. Fellows may now have to do something more than pass the fiendish British examinations which result in entry on the register, most likely simply work as a patent attorney with another fellow for a predetermined time and find a couple of fellows as proposer and seconder.
The apparent reason for the new class is that some patent attorneys working in the UK, particularly in industry, are no longer interested in becoming Chartered. Unlike many countries the UK does not require that an agent has any qualification or appears on a register in order to act for a client. Accordingly the Chartered Institute can be seen as a burden both in terms of its cost and Continued Professional Development (CPD) which requires Fellows to document the additional training they carry out to stay up to date.
It is proposed that “members” would include those who do not pay the fee to remain on the register of Patent Attorneys, and those who practice in the UK but decide only to take the European Qualifying Examinations.
In addition, Council is asking the current membership (all fellows) for their opinions on what voting rights “members” should have, whether we believe European Patent Attorneys not practising in the UK should also be allowed on the list, and whether we think Trade Mark Attorneys (who have had a separate institute (ITMA) since 1934) should be allowed as members of CIPA.
There is a lack of legal protection placing restrictions on who may act before the UK Intellectual Property Office. Therefore, it is the writer’s view that membership of CIPA as a “member” or “fellow” should remain limited to patent attorneys who have qualified by passing the UK examinations. Accordingly European Patent Attorneys who are unlikely to have knowledge of British Patent Law (especially post-grant) and Trade Mark Attorneys should not be allowed as members.
However, this may seem quite unfair to Trade Mark Attorneys. The Office of Harmonisation in the Internal Market (OHIM) which administers Community Trade Marks allows those who have passed the British Patent exams (which have only two basic examinations on Trade Marks in the UK and abroad) to be entered on the list of European Trade Mark Attorneys. However, this writer thinks that OHIM’s position is wrong and only those who are registered as Trade Mark Attorneys in national offices and actually practise Trade Mark law should be admitted as European Trade Mark Attorneys.
The rules are different in other countries: many have no distinction between Patent and Trade Mark Attorneys; some have no distinction between Patent Attorneys and other Lawyers. Moreover the current position of CIPA could be seen as out of step with other UK institutions, in which only those who make a significant benefit to the institute can become fellows.
We would welcome any of our readers’ comments on what they expect from a Chartered Patent Attorney (i.e. a fellow of CIPA) and whom they believe should be allowed as a fellow, a member and an associate of the institute.
We would also take this opportunity to remind our colleagues elsewhere that CIPA has a category of “foreign members” (to become “overseas associates”) for Patent Attorneys who are not qualified in the UK, but are interested in British Patent Law. If you would like any more information about becoming a foreign member of CIPA please feel free to contact us.
