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THE MERCER REVIEW
The Mercer Review of the Chartered (UK) Patent Attorney qualification process has recently been published and proposes that a series of changes should be made. However, it remains to be seen whether the Chartered Institute of Patent Attorneys (CIPA) will ultimately accept any/all of the changes proposed by this Review.

Background

Commissioned by the CIPA Council in March 2019, the Mercer Review was intended to determine whether any changes are needed to the training process and exams required to qualify as a Chartered (UK) Patent Attorney.

The Mercer Review was commissioned in response to an issue with the 2018 FD4/P6 exam, which became known as “Gantry-Gate” because the content of this exam paper related to motorway gantries and overhead cables. The “Gantry-Gate” issue centred around the fact that the weighting of marks available between different sections of the exam paper (e.g. construction, novelty and inventive step) differs from year to year. In 2018, an abnormally high proportion of the available marks was accounted for by the inventive step section, and thus many candidates who had prepared more thoroughly for construction and novelty complained they were unfairly disadvantaged. The Patent Examination Board (PEB) received a lot of criticism as a result and the Mercer Review was commissioned to assess if changes to the examination process were needed.

The much-anticipated Mercer Review has now been published, and a summary of its main recommendations is provided herein.

Key recommendations

Content of the Foundation Exams

During the course of the Review, the review group found that many respondents thought the current Foundation Exams (also known as the Foundation Certificate, hereinafter referred to as the “FC exams”) assess too much content that is not overly relevant to practice as a patent attorney, such as law pertaining to trade marks, designs and copyrights.

The Mercer Review therefore proposes that, whilst the FC exams should assess a candidate’s understanding of the law associated with trade marks, designs and copyrights at a basic level, in addition to a more extensive assessment of patent law, these exams should be restricted to assessing what a qualified patent attorney would be expected to encounter in routine practice.

Content of the Final Exams

The Review concludes that the Final Exams (also known as the Finals Diploma, hereinafter referred to as the “FD exams”) are currently too long and that there is a lot of unnecessary overlap between the content assessed in the different exam papers.

The Mercer Review concluded that FD4, in particular, is too complicated and thus proposes that FD4 should be limited to assessing whether a candidate can (i) construe a set of claims in accordance with established UK case law, (ii) determine whether a set of claims is novel and inventive over cited prior art, and (iii) determine whether a party’s actions infringe a particular patent.

Concerning the other FD exams, the Review recommends that the Patent Examination Board (PEB) should aim to minimise overlap between the different exam papers by clearly defining which topics should be assessed in each paper. The Review recommends that a candidate’s ability to draft a patent application should be assessed in FD2, whilst FD3 should assess a candidate’s ability to respond to an official letter from the UKIPO, including drafting a set of claims to overcome any novelty and inventive step objections raised therein. Similarly, the Review recommends that FD1 should not cover topics assessed in FD2, FD3 or FD4 and should include at least one question concerning litigation of patents in the UK courts.

The Mercer Review further recommends that no individual exam paper should exceed four hours (excluding time for breaks and extra time for candidates entitled thereto etc.).

Training

The Review notes that, at present, candidates are required to take either a university course or the FC exams, but not both. However, the Review notes that candidates who sit the FC exams are statistically more likely to pass the FD exams than candidates who took a university course, instead.

Accordingly, the Mercer Review proposes that all candidates should sit the FC exams prior to sitting the FD exams, rather than an exemption from the FC exams being gained upon completion of one of the relevant university courses. It is thought that such an approach may better prepare candidates for the FD exams. However, the Mercer Review still sees a place for these university courses going forwards, namely to be used to help candidates prepare for the FC exams.

In contrast, the Review notes that there is currently only one path to qualifying as a Chartered (UK) Trade Mark Attorney, namely to complete a university course. The Review suggests that only having one path to qualification has resulted in reduced access to the trade mark profession and that CIPA and CITMA should therefore investigate whether it would be appropriate to provide an alternative route to qualification as a Chartered Trade Mark Attorney. In particular, the Review recommends that an exam at the same level as the FD exams could be used as an alternative to the university course.

The Mercer Review also concludes that many employers of trainee patent attorneys fail to utilise the modular structure of the examination process. The Review thus recommends that employers should be better encouraged to make use of the modular exam structure, namely by only entering candidates for exams once the candidate is ready to sit that particular exam paper.

During the course of the Review, the review group also noticed that there are differences in the training programmes offered by different firms. Accordingly, the Mercer Review recommends that IPReg should make it a requirement for its registrants to make details of the training programmes they offer available to any prospective new trainees. The idea behind this is that the prospective trainee would then have an opportunity to decide whether the training programme offered by a particular firm is right for them. The Review additionally recommends that details of such a training programme should ideally be provided in the form of a training contract.

Marking Criteria

The Mercer Review further notes that the current method of marking the exams has led to the practice of “mark gathering” amongst candidates; this is where candidates read the question set out in the exam, then attempt to identify what criteria the marks will be awarded for, and thus write their answers to ensure these criteria are met. The Review suggests such a practice detracts from the purpose of the exam, namely to assess whether the candidate can provide a comprehensive answer to the questions set, therein demonstrating that the candidate is fit to practice as a patent attorney.

Based on the above, the Mercer Review proposes that Examiners should emphasise to candidates that they are looking for answers to the questions set that are worthy as a whole of attaining a passing mark. In support of this, the Review recommends that Examiners should not provide the mark schemes used for previous years’ exam papers for candidates to review whilst preparing for the exams, but should instead provide detailed Examination Reports immediately after the release of the results of any one of the FD exam papers.

Exam Format

The Mercer Review recommends that candidates should be entitled to “read-only access” to a list of materials determined by the PEB prior to the exams, therein allowing better assessment of a candidate’s understanding of the topics covered rather than their ability to memorise relevant information. Examples of reading materials the Review suggests candidates should have access to include the UK Patents Act, the European Patent Convention, the Patent Cooperation Treaty, and the rules associated therewith. It is felt such a “semi-open book” format will better reflect the reality of practicing as a Chartered Patent Attorney.

The Review also notes that holding the exams online during the COVID-19 pandemic seems to have been a success and thus recommends that the exams should continue to be held in this format. The Mercer Review also recommends that CIPA and IPReg should consider using the same software for the FC and FD exams as that used for the European Qualifying Exams (EQEs) in order to make it easier for candidates to familiarise themselves with the relevant software.

Changes to the European Qualifying Exams (EQEs)

Reforms to the content and format of the EQEs are due to be implemented in 2024. With this in mind, the Mercer Review suggests that CIPA, IPReg and the PEB should investigate whether exemption from having to pass FD2 and FD3 in order to qualify as a Chartered Patent Attorney, which is currently awarded to candidates that have fully passed the EQE, should continue to apply following the anticipated changes to the EQEs.

Concluding remarks

The above provides only an overview of the key recommendations made in the Mercer Review but it is nonetheless clear that the review group believe several changes should be made to the current Chartered Patent Attorney qualification process.

However, it is important to remember that the Mercer Review is only advisory, and that it remains the decision of CIPA and IPReg as to whether or not to implement any or all of the recommendations thereof.

To help it make these decisions, CIPA has invited stakeholders to comment on the recommendations of the Mercer Review by 31 December 2021.

It then remains to be seen which, if any, of the above recommendations the relevant organisations will decide to implement.

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