The Patent Attorney of the Future: The Dutch View
A. G. Tangena (NL)
1. Introduction:
This article is mainly based on the training that someone who wants to become a Dutch Patent Attorney receives via the non-profit organization SBO. The skills to be developed by the trainees have been determined in close cooperation by the Dutch Patent Office (part of the Ministry of Economics), the Orde (Organisation of Dutch Patent Attorneys), private patent firms and industry. All these groups are also represented in the management team of the non-profit organisation.
In order to be first rate advisors EPAs should have skills in the following areas:
Technical: think with the inventor to transfer an idea into a patent application
Legal: prosecute patent applications, set-up the right legal framework in cooperations, (cross)licensing contracts, NDAs, advice on IP liability in contracts like purchase/selling contracts.
Strategic: have a vision of the future and structure a patent portfolio to optimally fit in this strategic vision
Commercial: When taking any strategic decisions make sure value for a company is created and decisions fit with business plans.
Communication: EPAs should be able to communicate above mentioned topics both with inventors, business(wo)men and EPO officials
Other IP rights: EPAs should have knowledge on basics of other IP rights: TM, design, copyright
Skills alone are not sufficient. There must also be enough work in the countries to keep the skills at a high level through regularly practicing these skills.
Part 2 will give a more detailed exploration of the skills of the EPA of the future.
Part 3 will give some ideas on how to realize the EPA of the future and how to generate enough work so that EPAs can be found in every EPC country.
2. More detailed exploration of the skills of the EPA of the future:
Technical:
Technical know-how is the basis of the profession. The EQE is now very limited to one technical topic.
As a follow-up to EQE make training available in different technical areas, i.e. how to draft in chemistry, pharma, ICT, mechanics or telecom areas. Courses can be based on decided EPO cases (teach best practice) set up by PEC, EPO Academy and technical working groups of EPPC. epi could hand out certificates when courses have been followed. Courses also serve to build networks in a specific technical field for consulting/outsourcing purposes. This is also in line with the suggestions to provide more training for those EPAs who recently passed the EQE and want to further develop as Magdalena Augustyniak indicated in her contribution to the "40 years epi" booklet.
Inventor should also understand patents (or IP in general), i.e. we should train academics in why patents are important for businesses. There must be a lot of countries who already do this sort of work. Collect material and make a set of best practices available for use in all countries. Focus should be on how patents can be used to create value not on Articles and Rules. Laws change all the time, for that up to date knowledge on laws inventors should consult EPAs. Involve the EPO Academy (they have a section focused on Academics: Giovanna Oddo (IP teaching kit) and IP4inno presentations) and National Patent Offices. This aspect is very important for countries that generate few patents locally. By making technical (and creative) people aware of how they can make use of patents to create value we can increase the local interest in patents (or IP in general).
Legal:
Besides the standard legal knowledge on EPC, PCT and national patent laws, the 4th industrial revolution makes cooperation between companies necessary leading also to open innovation and public-private cooperation. Advice is needed on (cross) licensing, freedom to operate (limitation of IP liability) and how to deal with IP liability in purchasing or selling contracts. Such developments make detailed advise and agreements on what rules are recommended, necessary.
Training on how to structure cooperation, what rules, how to give recommendations, how to draft and deal with patents in contracts.
In NL we discussed a set of rules for cooperation between public institutions (universities, government research institutes) and private companies, i.e. who gets the IP at what costs and what are the rights of other participants. Such rules are essential for a smooth cooperation.
We could also work with the LES to train people in licensing.
Strategic:
When filing a patent application this is (mostly) for the future. Thus companies need to make strategic considerations.
- EPAs should be trained in patent portfolio management, i.e. what questions to ask a company about relevance of (future) technology, what are the internal competences of a firm, do your own research versus insourcing of technology, how is the competitive field, how many patents in what technology area, what countries to file in, possibilities for licensing? Especially for SMEs costs are of utmost importance, so EPAS should be able to advice on what strategic choices cost (in the future).
Commercial:
Patents are a tool that companies should use to further their business goals. Patents should contribute to value creation for companies. Also when buying or selling patents an EPA should be able to advice.
Training on the different methods of valuation of patents.
EPAs should know the basics on ways to acquire extra funds for R&D, i.e. European funds, local possibilities for tax reduction for R&D in the specific countries (done in close cooperation with the national patent office)
Communication:
EPAs need to communicate with inventors, companies and EPO officials.
General training in pleading, i.e. how to structure arguments, make a logical reasoning. In NL we use trainers from the Dutch language institute of a University to do this sort of training on non-patent topics when persons just start in the profession.
Further focus on how to do oral proceedings. PEC already offers this sort of training in seminars. Focus should be on training in small groups where you plead yourself and not on listening in classrooms.
Other IP rights:
At this stage focus on this field is not recommended since most EPAs have knowledge of other IP rights from their training for national patent attorney. It is important however to realize when we speak of patents we should often include other IP rights, i.e. talk of Integrated Intellectual Asset Management.
3. How to realize the EPA of the future:
Many of the above topics deal with training. PEC in cooperation with the EPO Academy should take the lead in this training. The words of President Campinos of the EPO: 'EPO would be ready to explore possibilities for supporting epi for instance towards transforming ideas into commercial realities', is in line with the above way of thinking about the EPA of the future.
One major complication is the distribution of EPAs across Europe, especially in those areas where attorneys are widely spread. In such a case a form of blended learning (flipping the classroom) seems very suitable as Magdalena Augustyniak already indicated in her contribution to the "40 years epi" booklet. In short blended learning is a combination of e-learning in a digital learning environment and learning in the classroom:
| Digital learning environment | In the classroom |
|---|---|
| Reading (literature) | Focus on specific topics |
| Looking at videos | More extensive learning |
| Practice (teaching modules) | Share practical experiences |
| Tests (self-diagnostic tests) | Tips and tricks (checklists) |
| Contemplation (read again) | Practice skills |
| Exchange (forum) | Check whether topic is understood |
| Apply (homework) | Discuss homework |
Table after M. von den Bosch, Radboud University of Nijmegen (NL)
Even in the Netherlands with its small size we will transfer the standard 2 year classroom training for Dutch patent attorney trainees into blended learning to make the whole training more effective and better suited for the student of the future, who will have also blended learning at universities.
Who should lecture, organize the training?
In NL we are used to 'polder' model, i.e. we all work together to get the best results. This means that for every topic we find the best teacher available. This can be an attorney at law, an IP judge, a university lecturer or professor, someone from the Ministry and of course a patent attorney. The idea is that we complement each-other and are not direct competitors. For instance an attorney at law can draft a contract but he does not know enough about IP to formulate specific IP clauses in that contract. A Court case regarding infringement needs both EPA's and Attorney at Law's expertise.
What else is needed?
A small group of countries is now doing most of the patent work in Europe. Luckily we already see an increase in local filings in many countries as Luis-Alfonso Durán indicated in his contribution to the "40 years epi" booklet. However, the total numbers are still rather low and this increase may not be enough. The unitary patent will get rid of local validations, presenting a further threat to the profession in many smaller countries.
It is important to stimulate innovations in all EPC countries. This means also to have well educated EPAs in all EPC countries. Without them innovations cannot be properly exploited. It should be an important task of epi to assist in this goal. The Candidate Support Programme established together with the EPO is in this respect a good step forward. But once a group of well-trained EPAs is established they need enough work to remain viable.
This can be done in different ways. One way is that EPC countries with enough work outsource work to colleagues in countries that have not enough work. This is especially important since in many countries there is or will soon be a lack of technical people, who are the basis of our profession. Thus looking across borders and distribute work to EPAs in other countries should be an excellent way to keep EPAs provided with enough work. Our Vice President Barbara Kunič Tešović already took the initiative to create a web based market for exchange of services. This exchange should be build up, so that EPAs get to know each other and gain trust in the quality of the outsource EPA.
Another way is to form cooperations with firms across borders. Such cooperations exist. The cooperation is then presented to firms outside Europe as THE way to go to Europe, since the cooperation has expertise in many countries. Whenever there is a problem in one of the EPC countries there is a local firm in the cooperation that can help solve issues locally. Moreover such a cooperation makes it easier to outsource work to others within the cooperation and distribute work received from abroad.
A further way is to look at (historical) relations of EPC countries with countries outside EPC. It is well-known that the UK gets a lot of work from the US. In the same way PT and ES can exploit their relations with South America. The former East European countries can exploit their relations with the former Soviet Union countries and Turkey can exploit their relation with the Middle East.
4. The end result:
As said in the vision part of this note, an EPA should be a first rate advisor to companies. The result of the following up on the training for skills sketched before will be an EPA, who not only understands patent laws and knows how to get a patent granted, but an EPA who can think with the business to create most value out of inventions and can protect the company from making costly mistakes when dealing with IP, like in an infringement case or when drafting an agreement.
The different training options are also useful to create networks across Europe, so that EPAs get to know and appreciate others, i.e. the training options serve as a quality badge that will help working together or outsourcing across borders.
In general the appreciation of EPAs by the general public can be lifted to a higher level.
