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Judgement call
Law Society Gazette – 24 February 2005

Patent agents and trade mark attorneys want the right to become judges in specialist courts. But are they equipped with the necessary legal skills? Mark Smulian investigates

Judges come in all shapes and sizes, but solicitors can normally be confident that whatever else they might have done, the figure on the bench will have been trained in the fundamentals of English law.

That may change, some say, at least in one legal corner, if patent agents and trade mark attorneys get their way. They want the right to apply to become judges in the specialist courts that deal with their cases, and they see the Department for Constitutional Affairs' review of judicial diversity as a chance to stake their claim.

The Chartered Institute of Patent Agents (CIPA) and the Institute of Trade Mark Attorneys (ITMA) said in a joint submission to the consultation that their members' qualifications equipped them to be judges in the Patents Court and county courts, the latter including the community trade mark courts and Patents County Court.

They received a reply from minister Lord Filkin that said he 'can see that there might be a case' to consider them for judgeships.

In their submission, the two institutes said: 'We consider that experience and a demonstrated ability to act judicially should be the principal criteria [and this] should extend to members of any profession afforded audience rights.

'There should be provision to allow the appointment to be for a limited area of expertise and in specialist courts appropriate to the experience of the candidate.' The institutes often act jointly, and have discussed merger - something Sir David Clementi also speculated on in his report last year when discussing the coming together of professional bodies - but there is a distinction between their members' work, although most firms practise in both fields.

Patent agents deal with the intellectual property of original inventions, while trade mark attorneys deal with the registration and protection of business' names or logos. Last month, many of the key features of the Patents Act 2004, which aims to modernise and improve patent law, came into effect. It also incorporated the updated European Patent Convention of 2000.

Rights of audience have existed for patent agents since 1999, and trade mark attorneys will join them on 1 April, after which the latter will join the former as a 'legal profession' that comes under the auspices of the Legal Services Ombudsman, although only in relation to advocacy work.

If Sir David's reform of legal regulation is taken forward, both bodies are likely to come under the auspices of the proposed legal services board, removing the Patent Office's current regulatory role.

But while no one disputes that patent agents and trade mark attorneys are specialists in their fields, are they really lawyers?

Yes, according to Simon Mounteney, a patent attorney and partner at leading London patent and trade mark firm Marks & Clerk, which last year became the first such practice to brand its associated law firm - previously called Blair & Co - with its name.

Mr Mounteney points out that the term 'lawyer' is 'a colloquialism not a protected title, and a lot of what we do fits the description'.

He says: 'I spend all day getting patent documents which are used by courts to determine legal monopolies. When doing that, we have a very conscious view of how a court will interpret it and also of how it will appear in other jurisdictions, in particular the US, Japan and Europe.

'We also do opinion work, supply advice on whether a patent is likely to have been infringed, and advise very large clients on enforcement of their rights. To me that is very much a legal type of job.'

Mr Mounteney says he 'absolutely supports' the idea that his colleagues should be able to become judges. 'We have full litigation rights; if we can do that, why not?' he asks.

The contrary view comes from Jonathan Radcliffe, a partner in the intellectual property litigation group at City law firm Field Fisher Waterhouse.

'I don't think it is realistic to describe them as lawyers,' he says, noting that the use of 'attorney' for trade mark specialists confuses American clients, who assume the term means a fully qualified lawyer.

Mr Radcliffe says: 'I have no objection to quality patent agents being judges, but the rules say that to be a judge one needs experience in law.

'There are issues in patent cases that are not matters of patent law but of other laws, and it is critical that the judge has a general legal training in areas such as equity, contract and international law.'

Phil Harris can see both sides, because he has been on them. ITMA's senior vice-president started his career in trade marks, dealing with international counterfeiting, then became a solicitor before moving back into trade marks and ceasing to practise as a solicitor.

Now a partner at patents and trade mark firm Gill Jennings & Every in London, he says: 'Younger members of our profession do see themselves as lawyers. We give legal advice as specialists and we have got our rights of audience.

'I don't see the right to sit on the bench as a problem because we are only asking for it in a very specialist area where our knowledge of general law is sufficient. A solicitor might think we couldn't be judges, but he would say that, wouldn't he?' CIPA president Bruce Alexander, a partner at London-based Boult Wade Tennant, says the next step will be for patent and trade mark specialists to seek rights of audience before the European Court of Justice. 'We are looking to run a test case on that, as at present it defines lawyers rather like the UK does.'

He argues that judicial posts are part of seeking an improved status for patent and trade mark specialists in the law, which would make clients more willing to use them, rather than resort to conventional lawyers.

Mr Alexander says: 'Intellectual property is a growing area, although patent litigation in the UK is not growing because this is an expensive place to litigate.

'We need to produce cheaper forms of litigation. The Patents County Court rules are now the same as High Court rules of procedure and that tends to be expensive because the professional costs are the same.'

This is a particular problem for smaller businesses that might be prepared to instruct a patent agent, but which get cold feet at the prospect of paying costs if the other side in a case is successful and has employed solicitors and barristers. Patent agents can qualify in litigation through an LLM course at Nottingham Trent University, from which they gain a litigation certificate.

Trade mark attorneys will have similar qualifications, but after April those who are experienced in advocacy will be able to take a short course at Nottingham Trent, 'which will top up their skills and include a mock trial', Mr Harris says. He declines to speculate on how many attorneys were likely to seek audience rights, but expects numbers to rise steadily.

Whatever the outcome of agents' and attorneys' pursuit of judgeships, there seems little doubt that the legal and intellectual property professions will work more closely together.

Mr Mounteney explains that at Marks & Clerk, agents and attorneys procure intellectual property rights, while solicitors become involved to alter and deal with infringement, enforcement, and commercial work such as securing licensing deals.

Field Fisher Waterhouse uses the title Isosceles for its patent work, but says it too offers clients a one-stop service. It works in association with London patent firm Mathys & Squire.

Mr Radcliffe says: 'We are already seeing what happens, with American firms setting up US-style practices here where everyone is under one roof.

'The boundary between patent agents and solicitors does not serve clients interests, as one may be reluctant to advise people to go to the other. One-stop shops will take off.'

If Sir David's legal disciplinary practices are introduced, this will become even more of a reality as patent agents and trade mark attorneys would be able to go into partnership with solicitors, barristers, legal executives and even licensed conveyancers.

Litigation volumes have 'rocketed' in the US in the past three years, and Mr Radcliffe expects something similar here, with software patents a particular growth area.

Patents and trade marks matter because they keep the wheels of innovation turning.

Two inventors recently displayed their 'intelligent vision' camera on the BBC programme 'Dragon's Den' and so impressed panel members that they secured a 50,000 investment. They were safe to show this to all and sundry on television, because they already had protection obtained by Sheffield patent agents Franks & Co.

Patent work, it seems clear, will keep growing, but who will judge the resulting cases is less certain.

Mark Smulian is a freelance journalist