Most of those in the patent attorney profession find the career richly rewarding due to the wide variety of complex legal and technical issues involved in commercialising an invention. However, an unfortunate truth is that to enjoy such an interesting career, a series of exams need to be passed to qualify as a UK and European Patent attorney.
Even by professional exams standards, these exams are extremely difficult with most years seeing multiple exams where less than half of those taking a particular exam end up passing it. A further difficulty and a difference from other professional exams where if you fail there are numerous opportunities throughout the year for resits, the exams a patent attorney needs to pass are only held once a year, meaning that the penalty for an off-day or marginal fail is harsh, as one needs to wait a whole year for a chance to take the exam again.
Whilst there is often heavy criticism that the exams, in particular the finals exams, are too difficult and bare very little resemblance to real-life practice, there are very little signs that the exam format will change in the near future. This article gives an overview of the exams that need to be passed and what it is like to prepare for the exams.
Overview
Most UK-based patent attorneys aim to qualify as a UK patent attorney and European patent attorney. To qualify to act as a UK patent attorney and enter the register at CIPA, a series of exams set by the Patent Examination Board (PEB) need to be passed. To qualify to act before the EPO a number of exams known as the European Qualifying Examination (EQE) set by various bodies of the European Patent Office (EPO) need to be passed. The qualification route for each jurisdiction is largely separate. However, there is some cross-over where a pass in the European equivalent of the drafting exam and/or the amendment exam makes an attorney exempt from passing the corresponding UK exam, as described in more detail below.
Although the two exam routes are largely separate, there is a lot of cross-over in the knowledge tested by each set of exams. The exams for UK and Europe are also run in quite a similar format. They are normally taken in an exam hall and answers are handwritten. As the length of the exams ranges from 3 to 5 and half hours, their handwritten nature makes them a pretty serious physical as well as mental task. Despite their lengthy nature, the exams are often very time-pressured meaning that lots of practice is required to develop an exam technique for a candidate to be able to finish a paper in time.
The outbreak of COVID-19 has affected how the 2020 UK exams and the 2021 EQE will be run. Each set of exams will be taken online for the first time. Whilst the details of the 2021 EQE have not been released yet, we can expect them to be run in a similar format to the 2020 UK exams.
In the 2020 UK exams, the big differences are that candidates are taking the exams at a private address or at their workplace, rather than in a large exam hall and are typing their exams to be uploaded to an online portal. Candidates are also being invigilated over Zoom rather than by invigilator in an exam hall.
It remains to be seen whether the online format will be used for the exams in subsequent years.
UK
The UK exams are normally held in October and are structured as a two-tiered system of five Foundation exams and four Final exams. All of the exams (or a corresponding university accredited course, more on this later) need to be passed for one to qualify as a UK patent attorney. Candidates can sit any of the foundation exams at any time, with most sitting a few or all of the foundation exams after about a year in the profession. To sit any of the UK finals exams, a candidate needs to have passed FC1 – UK Patent Law or have passed an equivalent university accredited course. The pass mark for all of the exams is 50% (most of the time, more on this in relation to FD4 below).
Foundations
The five foundation exams are:
- FC1 – UK Patent Law
- FC2 – English Law
- FC3 – International Patent Law
- FC4 – Design and Copyright Law
- FC5 – Trade Mark Law
They essentially cover all the basics of intellectual property (IP) law, with a main focus on patents, but give a knowledge of other areas of IP and the English legal system.
Preparation for the foundation exams is difficult as they require a trainee to study an enormous amount of legal content, mostly directly from legal statutes. Moreover, the UK foundation exams are all closed-book exams, and therefore a trainee needs to memorise a large amount of this legal content in order to pass these exams.
Whilst preparation for these exams is difficult and their closed-book nature is perhaps outdated, being familiar with the legal texts associated with these exams makes a trainee a better attorney. This is particularly true for understanding the legal texts associated with UK and relevant foreign patent law. Whilst designs, copyright and trademarks may not form part of many patent attorneys day-to-day practice, understanding how they can be used to protect a client's products or services is important knowledge to have.
As an alternative to sitting the foundation exams, many trainee attorneys undertake a university course accredited by the PEB where passing the university accredited course makes a trainee exempt from having to pass the foundations. This is an alternative route to qualification, where following passing the university course, a trainee attorney can instead go straight to taking on the UK finals. The University accredited courses are the Postgraduate Intellectual Property Certificates that can be taken at Bournemouth University, Brunel University and Queen Mary University.
At Haseltine Lake Kempner, trainees undertake the UK foundation exams and not any of the accredited UK courses. This is because HLK believe that the foundation exams better prepare trainees for taking on the UK finals, in particular, FD1 - Advanced IP Law and Practice.
Finals
The UK finals are:
- FD1 – Advanced IP Law and Practice
- FD2 – Drafting of Specifications
- FD3 – Amendments of Specifications
- FD4 – Infringement and Validity
These exams are designed to test the key skills of a patent attorney and are based around the types of tasks an attorney may be asked to undertake during their career.
Drafting of specifications and Amendment of specifications (FD2 and FD3, respectively) make up the vast majority of most attorneys day-to-day practice and these exams aim to assess an attorney's ability to handle these core tasks. FD1 – Advanced IP Law and Practice presents candidates with a series of complex legal scenarios where candidates are required to advise on the best course of action accordingly, based on the particulars of the scenario. An attorney is perhaps unlikely to come across many scenarios with the complexity of the ones presented in FD1. However, unusual legal queries often come in from clients and the knowledge tested in FD1 gives an attorney a good ability to address almost any query.
Finally, FD4 – Infringement and Validity presents candidates with a scenario where they need to advise a client on whether a particular product infringes a claim of a patent and whether that patent is valid based on prior art described in the scenario. Such a task is less common in many attorneys day-to-day practice. However, it something that is becoming more prevalent and is an important skill to assess.
The most challenging part of the UK finals is the time pressure of the exams. Whilst the exams aim to test a trainee's ability to handle real-life tasks, the time pressured nature of the exams often means that their real-life skills cannot be directly applied the finals exams and they need to develop an exam-specific technique in order to pass. FD4 is the biggest example of this and the most contentious of all the papers. It takes many in the profession numerous attempts to pass the paper and they are even some that after so many times of trying, give up and live out their careers as European patent attorneys and do not become UK qualified. The percentage of trainees passing this exam has not been above 50% since 2010 and the average number of trainees passing the exam for the last five years has been 38%. The difficulty of this exam was particularly highlighted in 2018, where the pass mark for the exam was reduced from 50% to 47% due to the "statistically significant fall in the pass rate" with the pass mark at 50%.
EQEs
The EQEs are held in February or March. They also operate in a similar two-tier system where candidates need to pass an exam known as the pre-examination in order to enrol for the EQE. The pre-EQE is very different to the other exams that trainee attorneys sit because it is a true or false style exam. Candidates are presented with scenarios and with a series of statements, where they need to select whether a statement is true or false based on the information in the scenario.
The four EQE exams are:
- Paper A (Drafting of specifications)
- Paper B (Amendment of specifications)
- Paper C (Drafting a notice of opposition of a European patent)
- Paper D (Assesses answers to legal laws relating to the European Patent Convention and other relevant law)
Papers A and B assess similar skills to FD2 and FD3, respectively, described above. The PEB and EQE system have a provision where a pass in Paper A or Paper B makes a candidate exempt from having to pass FD2 or FD3, respectively. This means that a trainee can qualify as a UK patent attorney without having pass FD2 or FD3. However, this provision does not exist the other way round, where a pass in FD2 or FD3 does not make a trainee exempt from passing Paper A or Paper B, respectively.
Paper D is similar to FD1 descried above in that it assesses a candidate's ability to handle complex legal scenarios.
Paper C is assessing a candidate's ability to identify the best ways of attacking a granted European patent through an opposition at the EPO. The provision of an opposition does not exist in the UK and thus paper C is not really similar to any of the UK exams. For paper C, candidates are presented with a mock granted European patent, prior art and often information on the prosecution history of the European patent. Based on this information candidates need to identify the best ways of attacking the validity of the European patent.
The biggest difference between the EQEs and the UK exams, is that all of the EQEs are open book. This means that trainees are able to bring in any reference material they wish to the EQEs, such as text books and legal statutes, which they can refer to for their answers. Whilst on paper, some may feel this makes the EQE exams are easier, it still means that the EQEs also require a level of preparation similar to the UK exams, so that candidates can become familiar with their reference material of choice in time for the exams. The EQEs are also time-pressured and so candidates need to be able to quickly identify where in their reference material they need to look in order to efficiently work through the paper to answer all sections of the exam.
A further difference between the EQEs and the UK system, is that the EQEs require candidates to have trained for a mandatory minimum period of professional activity before they can sit any of the EQEs. This period is two and a half years before trainees can sit the pre-examination. This means that shortly after starting a career as a Trainee Patent attorney, one should register this with the EPO ASAP and at least by the deadline specified by the EPO to ensure enrolment to take the pre-examination, as soon as possible after the two and half year mandatory training period.
Although the preparation for the EQEs is often just as intensive as the UK exams, the EQEs are largely considered a fairer or at least more consistent system where trainees generally do better than for the UK exams. In most years candidates from the UK sitting any of the EQEs typically have a pass rate of greater than 60-70% for a given exam, which very rarely occurs for any of the UK finals.
Training & Support
Internally, many firms run in-house tutorials and seminars to prepare trainees for what each of the exams is testing and advise on how to develop suitable techniques for tackling each exam. Many firms also give candidates study leave to prepare for the exams, to avoid preparation eating into a trainee's holiday allowance.
Externally, there are also several courses, often held over multiple days, where qualified attorneys outside of a trainee's firm provide an intensive breakdown of an exam and provide training on how to approach the exam. These courses are also a good opportunity to meet other trainees from outside your firm and can be useful for comparing how training differs from firm to firm.
Summary
In summary, the exams needed to qualify as UK and European patent attorney are difficult. Finding the time to prepare for the exams and fulfil the commitment of full-time employment is tough, not to mention the various other family or social commitments that a trainee attorney may have as well. The minimum time needed for one to be dual-qualified is three years. However, this is often longer as many attorneys will not pass all exams at their first attempt and resists are very common. The below outlines a rough timeline of when each of the exams described above may be sat. However, this often differs from firm to firm.
Despite the enormous challenge that the exams present, every year many attorneys pass and become UK and/or European qualified, many of which doing this at their first attempt. The rewards that qualification brings are numerous, such as the ability to operate completely independently and not to mention the pretty considerable financial benefits. Many firms like HLK understand that the exam and qualification process is difficult and give their trainees as much support as they can to make passing the exams as achievable as possible.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
