Griffith, Philip --- "The Role of Universities In Teaching And Training Patent And Trade Marks Attorneys" [2001] UTSLawRw 12; (2001) 3 University of Technology Sydney Law Review 159

• The Old Scheme
• An Intermediate Stage
• What Can Universities Bring to the System?
• The New Regime
• Online Learning
• The Issue of Standards Again

The Role Of Universities In Teaching And Training Patent And Trade Marks Attorneys— The UTS Perspective[1]

Philip Griffith[1]

THERE IS an old joke in the education industry. An ancient and venerable professor of philosophy set an examination question which asked, ‘Which is more dangerous: ignorance or apathy?’ and one young undergraduate answered, ‘I don’t know...and...I don’t care.’

Presumably present members of the trade marks and patent attorney professions do know about the educational regime they experienced in their progress to registration. But they may not be at all sure about the details, or even the broad aims and objectives, of the newly introduced regime. Indeed, current members of the professions, even if they are familiar with its details, may regard the changes, and possible future changes, with suspicion, because after all the unstamped but tacitly recognised hallmark of many a good profession is the maxim ‘do unto others what was done unto me’. A more detailed knowledge of what is being done, and proposed to be done, under the new regime, may not only dispel ignorance, but also relieve some suspicion and allow a constructive discussion of its strengths and weaknesses.

It is clear that members of the professions do care about something called the ‘educational standards’ of the people emerging from the new regime. The difficulty is that this concept of ‘educational standards’ seems to carry a wide range of diverse expectations. But whatever ‘educational standards’ might be there seems to be a common perception that they have declined since the new system was introduced. It might be worth trying to explore what are the sort of educational outcomes that the professions really should care about.

The Old Scheme

Under the old scheme the Patent Attorneys Professional Standards Board (PAPSB) administered[2] annual examinations in eight subjects[3] but did not provide a course of teaching for candidates. The Institute of Patent Attorneys of Australia[4] (IPAA) did provide two tutorials in each subject.[5] Some individual firms conducted regular tutorials which could be open to candidates from outside the firm.[6]

The Johns Committee Report observed that there had ‘been some criticism’[7] that the tutorials focused around Melbourne and, to a lesser extent, Sydney, and that there had been an ‘inability to provide more support to candidates in other centres’.[8] Candidates in the smaller States were seen as being ‘limited in their access to tutorials, in spite of the availability of the videoconference sessions and audio tapes of presentations’.[9]

There was also a general perception amongst candidates, and perhaps the wider profession, that the last subjects and particularly Preparation of Specifications and Validity and Infringement of Patents were hard to pass[10] and that qualification could take a long time.

The PAPSB also published a ‘syllabus’ for the various subjects it examined. Although called a syllabus the document was usually a form of reading guide listing references to legislative provisions and leading case authorities. Presumably these syllabi were prepared by the primary examiners in each subject and were updated from time to time. It is not clear what use candidates made of these guides but it might be noted that the syllabus did not always reflect the relative importance or weighting given to different topics in the eventual examination. To take the subject Patent Law of Australia and the Practice of the Office as an example, the syllabus provided extensive case references to the traditional legal concepts of manner of manufacture, novelty, inventiveness, utility and so on. However the examinations, while asking about these areas, were often more heavily weighted to technical detail like applications for extension of time, or restoration of lapsed patents or amendments or modified examination. While it may have been the case that these more technical issues were the matters of most concern to the practice of the profession this was not evident from the material published for candidates. A candidate not already immersed in the culture of the system could have failed to appreciate what was being expected.[11]

It is also true to say that in some subject areas it was not at all easy to work out what a candidate was expected to learn. No doubt the examiners knew what they intended to examine but it was difficult to describe for candidates who were teaching themselves. This was especially true, and probably remains true, of the crucial but difficult area of Drafting of Specifications where it is extremely difficult to set out in a syllabus what a student should do to achieve acceptable proficiency. This is a subject which must be taught, not just examined.

The old system was in some ways a remarkable success. A small and highly specialised profession had put in place a demanding system of assessment which was supported by the voluntary labour of extremely busy senior practitioners. Nonetheless it was a system which could be improved. And the major area in which it required improvement was in finding some way to provide candidates with systematic teaching of the required subjects.

An Intermediate Stage

In the late 1980s the then Commissioner of Patents, Mr Pat Smith, approached a number of universities. Eventually both the University of Melbourne and the University of Technology, Sydney responded by offering courses of study in what was popularly called the ‘first bar’: the areas of Legal Process, Patent Law, Trade Marks Law and Designs Law. These courses were specifically designed to cover the requirements established by the PAPSB in those subjects.[12] A candidate for registration as an attorney, on successful completion of any of these subjects could apply to the PAPSB for exemption from the equivalent Board examination.[13] The universities did not offer subjects dealing with Drafting of Specifications, Validity and Infringement of Patents nor Patent Attorney’s Practice Part I or Part II, the so called ‘second bar’.

Commenting on this system in 1996 the Johns Committee wrote:

it is suggested that the University courses are not as rigorous as the PAPSB examinations since they concentrate on theory rather than practice. Some argued that the Universities often pursue different outcomes than the profession[14]

There are several points to be made about this comment. Firstly the titles of the PAPSB examinations stressed the element of practice: as in ‘Patent law of Australia and the Practice of the Australian Patent Office’. The courses at UTS and at Melbourne University were being taught in law faculties and tended to concentrate on the theory and content of the law. While both Melbourne and UTS courses did include sessions, classes and coverage of practice issues it is indeed likely that the university emphasis differed from the professions expectations.[15]

Secondly it is instructive to note that the comparison is being drawn between university courses and PAPSB examinations. Now it is not useful to draw a comparison between a course on one hand and an examination on the other. The examinations in the university courses were part of a teaching and learning program with stated aims and objectives. Examinations divorced from a teaching regime run the risk of being seen as merely a hurdle for accreditation. The universities were not providing an assessment regime used as a credentialling device, they were providing a program of systematic teaching to assist wider learning and their examinations were integrated into the wider program. Perhaps the proper comparison should have been between the actual content of the university courses and the imagined content of a course which would have been adequate to provide proper educational preparation for the examinations which the PAPSB administered. But since there was no such teaching program one can only guess at its possible content and standard.

The third point to notice is the suggestion that the universities pursued different outcomes from the profession. In one sense this is probably true. University courses are mostly concerned with developing learning techniques and skills in candidates. Establishing the precise particulars of a given field is a different matter. It can be important to establish the minutiae and particulars with close precision in a teaching program as an example of the proper application of skill and technique. However particulars and minutiae will change with time. The precise content and practice of intellectual property regimes are intermittently, but inevitably, subject to evolution, development and revision. The learner must be equipped with ways of continuing to update those particulars and the capacity to form new arguments and draw new conclusions. These are the sort of outcomes pursued by the universities. However a profession may want very high levels of particular knowledge and skill applicable to the immediate demands of practice. Universities are mostly about preparing people to acquire specialised skills. A profession may want people to have those skills immediately.

Of course it is the responsibility of the professions and the Board to set the kinds of outcomes they want to see as the educational background minimums for persons who wish to be registered as trade marks attorneys or patent attorneys. It is the universities’ responsibility to assist in achieving those outcomes desired by the responsible bodies in ways which are consistent with the universities own perceptions of effective educational practice. This should be a matter for fruitful co-operation.

It is not true that universities have a separate agenda and have made deliberate choices to pursue differing outcomes for the patent attorney profession. This was not a necessary field of endeavour for universities. These are specialist courses, difficult to organise and expensive to run, for a small number of students. It is not even a profitable exercise. Universities were responding to an invitation to provide courses of study and they were invited precisely because of their expertise as educators. They accepted the invitation because they wished to assist the professions and the Board achieve their desired outcomes. It appears however that neither side fully appreciated the expectations of the other.

What Can Universities Bring to the System?

The short answer is that universities are institutions whose core activities are the design of courses of study in sophisticated areas of human endeavour and the delivery of programs of teaching designed to enhance the acquisition of intellectual skills, higher learning and critical thinking. Universities have expertise not only in the mechanics of teaching but also experience with the dangers and pitfalls of providing education and training for professions. It could also be an advantage if universities are seen to be neutral organisations. Disappointed candidates may be less likely to accuse universities of having a conflict of interest which might lead them to set artificially high standards in order to restrict the number of people who could qualify for a profession.[16]

Universities have policies developed over years of hard-won experience about neutrality, access, enrolment, equity and accountability. Universities have cultural experience in such matters as the design of courses, the writing of syllabi and techniques of teaching. Universities employ professional teachers with enthusiasm and some expertise in the subject matter. They have experience in designing examinations, which match the syllabus and fairly reflect the material actually taught, marking techniques and scales. They have rules about the right to supplementary and deferred examinations, appropriate responses to plagiarism and cheating and so on. Universities also have plant and equipment like libraries and teaching rooms and administration and record-keeping systems all geared to work with cohorts of students. It makes sense to attempt to tap into these resources and this expertise when seeking to provide a revision of the educational opportunities available to a professional group.

However the current educational practices of universities will bring changes in the old system. One area of potential culture shock is the examination system itself. The old system operated through a very conservative regime of closed-book three hour examinations. Most universities are moving away from this form of assessment and requiring a range of tools like continuous assessment, learning contracts, research essays, and take-home examinations returnable after a number of days. Pass rates at universities are subject to scrutiny and a high failure rate does not suggest that the examiners are gate keeping a high standard of excellence, but that the teachers of the subject are not working successfully with their students. Furthermore university academics tend to mark differently from non-professional teachers and examiners. Professional teachers in universities are encouraged to make use of the full mark scale. While few universities require normative referencing to the classic Bell curve model there is an understanding that the full range of marks should be available. There is a natural tendency for markers to regress toward the mean and the result is a significant distortion of the marking scale. There is a tendency for less experienced markers to concentrate on very particular aspects of an examination answer, and to cluster marks closely around the pass/fail range with few credits and even fewer distinctions and almost never a high distinction.

These cultural practices of modern university assessment may not be compatible with the system people remember and now think made them better men and women and even better attorneys.

The New Regime

The Johns Committee recommended that a new body be established to replace the PAPSB.[17] The new body should have a revised membership going beyond the ranks of senior patent attorney practitioners who served on the PAPSB[18] and should have a more strategic role.[19] The Committee also recommended that a closer working relationship be established between the Board and the universities,[20] and further recommended a system in which the Board should actively accredit courses of study.[21]

The Government accepted these recommendations in principle.[22] However it did signal its intention to place even greater reliance upon outside educational institutions. The Government accepted the Johns Committee Recommendation 13, which had referred to the need for closer relations between the Board and the universities ‘with a view to the universities taking more responsibility for the education and examination process’, but stated that within two years the PSB should withdraw from examinations in core theoretical topics. Furthermore the response went on to state that ‘the Government will be seeking to withdraw from other subjects over a five year period’.

The new Professional Standards Board for Trade Marks and Patent Attorneys (PSB) was established[23] and a subcommittee of the Board was charged with reviewing the education regime. The Johns Committee had suggested redefining and restating the required professional training standards, focusing more effectively on the key competencies required and producing a regime which would ensure that education professionals had input to the system[24]and the Curriculum and Accreditation Subcommittee pursued these objectives.[25]

The Board proceeded by asking what kinds of things a practitioner ought to know and ought to be able to do. It attempted to identify broad aims and objectives for the education regime and finally proposed a set of desired outcomes for courses of study in different areas of intellectual property law and practice. The Board did not design courses. It set out a minimum number of topics that should be covered, and eventually these topic groups were prescribed in the Patent Regulations.[26] Educational organisations could then design and propose courses of study to cover the topic headings and move toward the desired outcomes.

The educational organisation could then make an application to the Board for accreditation of the course. A candidate who passed a subject accredited by the Board as covering a topic group was regarded as fulfilling that requirement for registration.[27] The Board could grant full accreditation[28] or, where the Board had not fully considered the course prior to the start of teaching, provisional accreditation[29] of the course of study. The Board, on considering applications for provisional accreditation, asked the applicant to identify those elements of a proposed course of study which covered listed topic heads and provide a comparison table of topics dealt with in the course. Applicants were also asked to provide details of such things as proposed teachers of the subjects with their curriculum vitae, sample syllabi, proposed contact hours, library facilities, teaching styles and methods, proposed assessment regimes and so on. The expectation was that once a provisionally accredited course had been taught the educational institution should seek full accreditation and provide full details of the teaching and examining of the course[30] to allow the Board to assess its standards and suitability.

The University of Melbourne, Monash University, UTS and the Academy of Education of The Institute of Patent and Trade Marks Attorneys of Australia have all sought accreditation for courses of study to cover either all, or some, of the topic groups.

There are now nine topic groups[31] and each is more discrete than the old PAPSB examination subjects. Some of the topic groups like Legal Process or Professional Conduct are concerned with a broader legal background. Some like Patent Law or Trade Mark Law are concerned with the legal doctrines and theory of a particular intellectual property subject matter. Some, like Patent System or Trade Mark System, are concerned with the systemic requirements and practice of the legal regimes in Australia and internationally. Drafting of Patent Specifications or Interpretation and Validity of Patent Specifications are about the hands-on professional skills of an attorney. This division is most evident for the patent attorney regime where all nine topic groups must be covered, but is less clearly defined for the combination of topic groups required for registration solely as a trade marks attorney[32].

Legal Process is a general preparatory subject about the legal system. It deals with the sources and institutions and techniques of the legal system, the law-making process, the role of legislatures, courts, precedent, appeal and review. Every law school in Australia teaches a subject which can cover the prescribed topics and meet the desired outcomes. It may be that the topic group should place more emphasis on the development of legal skills like statutory interpretation, case analysis, legal writing and legal problem-solving techniques. But an institution may include these elements in its version of a course which complies with the specified list. Overview of Intellectual Property is a generalised background knowledge subject which allows teachers to introduce candidates to the broad context of all intellectual property subject matters. It is an area which can be taught very well in a university.

Professional conduct is a topic group primarily concerned with assisting a candidate to acquire ‘an understanding of the rights, privileges and responsibilities of a patent or trade mark attorney’.[33] It is about the legal restraints and responsibilities of professional practice and concerned with obligations imposed by contract, tort and fiduciary duty, the discipline regime and the code of conduct. A major issue is conflicts of interest. The patent and trade marks attorneys professions involve a small number of firms, which have a high degree of mobility of partners and employees, servicing clients in relation to relatively long-lived rights. The high risk of conflicts of interest in such a professional environment requires at least some input from an experienced attorney who can highlight the kinds of difficulties inherent in daily practice. However, basically this is a subject which can easily be taught well in universities.

In patents the subjects are Patent Law, which, as its name suggests, is inherently concerned with the concepts and rules of the Australian patent legislation and case law; Patent System, which is concerned with the domestic and international rules and practices for applications and maintenance of patents; and the specialist attorney practice skills of Drafting of Specifications, and Interpretation and Validity of Patent Specifications. The sequential divisions of the subjects, leading from building-block theory, to understanding of the system, to specialist technical skills, are fairly clearly reflected.

In Trade Marks the division is less clear. There was an attempt to divide the field into law and practice but there is an overlap within the topic groups. There has been discussion about the elements of the topic groups by the examiners for the Board and the examiners for the accredited university subjects and this may lead to some revision.

Designs are dealt with in one law and practice subject. So far this has not attracted criticism but there is a chance to review the topic group and the accredited subjects now that the Government has released an Exposure Draft of the Designs Bill and greater attention turns to the field.

All of the accredited universities are seeking to draw upon the perspectives and expertise of the profession. At UTS only the topic groups of Legal Process and Patent Law are taught solely by academics. Overview of Intellectual Property is taught by a team of teachers, some of whom are academics and some of whom are practitioners in the relevant IPR subject matters. Professional Conduct is taught by Dr John McCann, an experienced patent attorney from Sprusson and Fergusson, who has taken a new and detailed perspective upon this area precisely directed at the needs and interests of the patent and trade marks professional. John is a member of the College of Examiners and is the primary examiner for Patent Law for the PSB examinations. Trade Mark Law is taught by Mr Trevor Stevens from Davis Collison and Cave. Trevor is a highly experienced trade mark teacher, having taught the subject for many years at Melbourne University and now at UTS. Trevor is also an examiner in the subject for the Board. Trade Mark System is taught Ms Annette Freeman of Sprusson and Fergusson, while Patent System is taught by Mr Colin Bodkin, Mr Andrew Blattman and Mr Scott Bergen, also of Sprusson and Fergusson. Designs is taught by Mr John McPhail, an experienced legal practitioner with particular expertise in the field.

So university courses are using the skills of the profession and employing those skills in structured comprehensive teaching programs which are accredited by an official body as seeking to achieve defined objectives while covering an agreed list of standard topic heads.

The topic groups of Drafting of Patent Specifications and Interpretation and Validity of Specifications pose interesting challenges. How can these subjects be taught in a way which develops the core skills the profession says are essential? How could those skills be enhanced? How can the subjects be properly assessed?

One organisation which has national and international experience in teaching these two areas is the Academy of the Institute of Trade Marks and Patent Attorneys. Mr Malcolm Royal[34], Chair of the Education Committee of IPTA, has put together teams of teachers drawn from the professions and delivers a structured program involving intensive workshops and practice exercises, followed by an examination. Both the University of Melbourne and UTS have entered into arrangements with the Academy and students enrolled in the university award programs will be credited toward their degree with a pass from subjects conducted and examined by the Academy.

However, the universities may still wish to provide their own programs in these topic groups. UTS believes that it should be in a position to offer all of the subjects in a degree program and not have to rely upon an outside organisation. The Academy pathway may not suit all students. The Academy is not in a position to guarantee a place in its courses for all UTS students enrolled in the Master of Industrial Property program and not all students are able to travel interstate to the Drafting courses which so far have been located in Melbourne. UTS has always maintained that these hands-on skills courses must be taught by members of the profession and furthermore must be taught in such a way and at such a level that the profession can have confidence in the process and outcome.

Validity and Interpretation of Patent Specifications is currently being taught at UTS by an experienced attorney. That attorney devised an approach to the subject and then received feedback, criticism and advice from other attorneys prior to the commencement of semester. Other experienced attorneys have agreed to act as a resource for advice and support for any matter which might arise during the teaching period. A highly experienced attorney, who is a primary examiner for the PSB in another subject, has agreed to act as an external examiner for the final assessment process. Once the subject has been taught and examined for the first time, there will be a thorough review to see what has worked, what has not worked and to plan any changes and refinements which may be required. UTS wants the profession to be able to see that it is pursuing objectives and standards which the profession regards as acceptable.

The teaching of Drafting of Specifications is perhaps the hardest part of the new regime. The major issue is that Drafting is a skill. And it is a refined skill which requires a graduate series of practical exercises and constant practice experience. These are skills which can realistically only be taught by experienced practitioners with particular skills in differing fields of technology. But developing such a course is a major commitment and all senior and experienced practitioners are already very busy with the demands of practice and commitments to the Academy, SEADA or the Board.

UTS believes that it should be possible for a university to make a contribution to developing such a course. It should be possible to draw together a structured set of lectures or classes on common background issues, explanations of differing methods of approach, common techniques and descriptions of common failings. It should be possible to collect and structure a set of useful teaching materials incorporating hypothetical problems, examples of specifications considered by the courts, previous examination papers in Australia and other jurisdictions as well as examiners’ reports and explanations. These tasks can be accomplished by a team of people, each contributing a relatively small amount of time. But the issue comes back to the need for repeated practice exercises.

UTS would like to explore with the profession a practice-based learning approach to this aspect of the subject. In such an approach a candidate who wishes to undertake the subject must find a ‘mentor’ in practice. The candidate, the mentor and the university enter into a learning contract which specifies the sorts of outcomes which are required and the ways that those outcomes will be demonstrated and assessed. The candidate would still be expected to attend the classes, complete exercises set in class and work through the materials, but would also work closely with the mentor. Since most candidates are employed as technical assistants working with an attorney in practice this approach would allow recognition of the practical day to day experience acquired in the firm while placing it within a formal but flexible educational structure. There is an interesting opportunity here for the professions and the universities to co-operate.

Online Learning

One of the perceived weaknesses of the old system was the difficulty faced by a candidate from outside the Melbourne and Sydney centres. Accrediting universities to deliver courses has not automatically solved that problem, since the major providers are still based in Melbourne and Sydney. Universities in capital cities in the smaller states and regional universities are unlikely to be able to devote resources to providing specialist courses of the kind required.

UTS is now involved in a trial of online learning which will allow access to students not just in Australia, but anywhere where there is access to the internet. Each subject has its own website accessible only by an UTS student enrolled in the subject. An underlying objective of the UTS approach was that all students should have access to the same materials, teaching and experiences, whether local students attending classes at university premises or distance students participating online. It was also decided that these electronic resources would be available not only to the distance students, but to all students enrolled in a subject.

In Autumn Semester 2001 UTS had 24 candidates enrolled as distance students in the overall programs. Four candidates were outside Australia. Most were enrolled in early subjects like Legal Process or Professional Conduct but there were four enrolled in Patent Law and that subject can be used as an example.

There is a detailed reading guide listing authorities and references in the same order as the topics are dealt with in lectures. However this reading guide is available not only in hard copy but also in an electronic version on a secure part of the AUSTLII website. All of the references to legislation, decided cases since 1990 in any Australian court, Patent Office decisions and the Patent Examiners Manuals are electronically marked up by AUSTLII software. Double clicking on a reference in the reading guide will bring up the specified material, the precise section of the Act, the regulation, the relevant case or the section of the examiners manual. All of the various AUSTLII tools are available for that accessed material including the ‘noter-up’ function which allows a reader to see all of the cases in which a reference has been cited. This easy electronic retrieval resource does not include articles in learned journals, but references are given to available electronic versions of articles on the web. In the future it may be possible to gather electronic versions of the recommended articles, acquire copyright permissions and make them available.

Lectures are delivered in classes held on the Haymarket Campus of UTS. However these lectures are tape recorded using a digital microphone and machine and then uploaded onto a special server. Students may now access the lectures as sound stream files. Any questions asked by a member of the class are recorded and uploaded, as is any answer or discussion. Any overhead transparencies or Power Point presentations are put onto the subject site as graphic files. Any drawing or illustration written on the board by the teacher is either photographed with a digital camera or reproduced by the technical assistant and uploaded as a graphic file. The idea is that whatever a student attending the class can see or hear in the classroom can be seen or heard by a student online.

Student feedback shows that so far students really like the sound stream lectures. Students comment that they like the flexibility of being able to access the lectures at a time of their own choosing, listen to as much or as little as they want to at any time and to be able to repeat parts of the lecture at their own convenience.

There are accompanying notes on some topics which are available online. These are detailed explanations analyses and comment on such issues as patent history, international treaties relevant to patents, the threshold requirement of newness, novelty, inventiveness, utility and false suggestion. These notes are not the text of the lectures. Usually they are more detailed than the lectures and more highly structured. The objective is to allow the lectures to become more discursive while still providing systematic coverage of the topic area.

An element not used in Patent Law in 2001 but which will be introduced in 2002 is an online discussion facility. UTS, like many universities, uses computer-assisted learning with a centrally operated system known as UTS Online. This is a very flexible educational interface. Each subject has its own online address. Students may address questions and comments to the teacher and receive individual private replies, or the teacher may post answers on a public part of the site which all students can access. Students may be divided into subsets. Students may hold discussions with other students online and teachers can monitor the discussions and participate either with individuals or with the whole class or with any part of it.

Assignments and work exercises may be posted on the website and answers submitted electronically. In June 2001 the Patent Law students had a choice of collecting a printed version from the faculty office or accessing the examination on the website. Similarly students could either submit a written answer document to the faculty office, or lodge a file in a secure electronic ‘drop box’ operated by UTS Online. The paper copy would be date and time stamped on receipt at the office. If a student used the drop box the moment of submission would be recorded by the computer program. Only the examiners can check the contents of the drop box and can do so from any location. On this occasion the program co-ordinator was in Vanuatu, while the examiner was in Sydney, but both had equal access to the online answer papers from the moment they were submitted. Obviously the examiner could send feedback to each individual student, or place general comments on an open segment of the site.

UTS co-ordinators wish to make as much as possible of the basic information contained in the lectures, notes and reading guides available online so that the classes can play a reduced role in ‘information giving’ and can be conducted to focus on examples of problem solving and practical exercises. There can then be a continuation of discussion through the electronic interface and all assessment exercises and examinations can be conducted online.

The Issue of Standards Again

It is perhaps natural for the profession to want an outcome from the education regime in which a person emerges as a fully formed, finely skilled attorney capable of performing every task with faultless professional expertise. It is also natural for the profession to look back to the past and make the judgement that when candidates qualified under the old system they had more skills than people qualifying now and conclude from this comparison that the university system leads to a lowering of standards.

However, there may be more to the situation. In the past it took many candidates four or five years, or even longer, to complete their sequence of passes in all of the examinations. During that time they usually worked in an attorney’s office as a technical assistant, learning and living the day to day skills. Their actual knowledge and understanding of the broad range of intellectual subject matters and issues may have been uneven and patchy, but they could still be highly effective in their particular practice specialty. Candidates who complete passes in the current range of subjects may do so in two years through the university courses and may not acquire the same level of practical skills at the time they pass all subjects. However, the appropriate time to compare the standards of the two groups is not at the time they actually complete the sequence of subjects, but at the time each has been in the system for five years. It may prove that the combination of five years of practical on the job experience plus exposure to systematic learning in actual courses of study will produce a most effective practitioner with acceptable standards.

Firms need to take on people who have been introduced to a range of skills, learning experiences and background knowledge during their university courses and build upon that as a foundation. They need to develop in them the particular skills required in the individual firm in a way which suits that firm’s culture, style of practice and concept of client service. There needs to be a form of in-house training and consolidation.

Furthermore, because the law will change, because the procedures will change, because professional skills will change and because the range of services and the styles of services required by clients will change, there needs to be an ongoing lifelong continuing professional education system.

The Johns Committee discussed continuing education[35] and recommended that the Board should develop continuing education programs.[36] Indeed the Board recommended a system of compulsory continuing education[37], drawing analogies with the systems established for lawyers and actuaries. The Government however did not accept either recommendation, responding with the terse notation: ‘Leave continuing education to the profession: which it is doing already.’[38]

There is clearly a need for a system of continuing education, whether it is compulsory or not and whether it is centrally organised by the profession as a whole or is left to individual firms. If the professions and the universities can build upon the relationship being developed through the partnership emerging in the delivery of the first seven topic groups, and then extend it into closer co-operation in finding new ways to teach Drafting of Specifications and Interpretation and Validity of Patent Specifications, perhaps drawing on the potential of new electronic educational tools and practice-based learning techniques, it would be sensible to look toward co-operative development of continuing professional education.

[1]Associate Professor of Law, UTS; member of the Professional Standards Board for Trade Marks and Patent Attorneys, 1998—2001. This is an edited version of an address given, p.the Institute of Patent and Trade Marks Attorneys of Australia Annual Conference, Carlton Hotel, Darwin, 31 May 2001.

[2]Review of the Regulatory Regime for Patent Attorneys. A Report to the Hon. Peter McGauran MP. Minister for Science and Technology. June 1996 DIST 019/96 (The Johns Committee Report) 6.11, p.p.65.

[3]Legal Process, Patent Law of Australia and the Practice of the Patent Office, Trade Marks Law of Australia and the Practice of the Trade Marks Office, Designs Law and Related Intellectual Property Laws of Australia and the Practice of the Designs Office, Preparation of Specifications, Validity and Infringement of Patents, Patent Attorney’s Practice, Part I, Patent Attorney’s Practice, Part II. Sch 5 Patents Regulations prior to 1999. Regs 20.3, 20.6, 20.8, 20.9 and 20.16. See Johns Committee Report 6.1 p.64.

[4]As it was then called.

[5]These tutorials were referred to as ‘confravision tutorials’. They were conducted by a senior practitioner who was usually the responsible primary examiner in that subject as appointed by the PSAPB. The tutorials were taped and tapes made available to candidates on application to the IPAA.

[6]Johns Committee Report 6.1.1, p.p.65.

[7]Ibid 6.1.1, p.p.66.

[8]Ibid.

[9]Ibid.

[10]See the table of pass rates for the various subjects in the Johns Committee Report for examinations held between 1991 and 1995 inclusive. Table 4. 6.1, p.p.65. The Johns Committee Report noted objectively, p.p.64, ‘The last four subjects are considered practically oriented and the pass rates are considerably lower.’ However the report does note that some people attributed the low pass rates in these subjects to a system in which there were no barriers to the number of times candidates might sit exams and low entry fees often paid by an employer. The suggestion seems to be that this may have encouraged candidates to sit for examinations in subjects for which they were poorly prepared with little real expectation of success but ‘in case they can pass’. This suggestion does not seem to adequately explain why failure rates in two particular subjects might be especially high.

[11]Note the comment by the Johns Committee: ‘Those who work closely with the examiners tend to gain a better understanding of their line of thinking and appear to have

a natural advantage.’ Johns Committee Report 6.3, p.68.

[12]Johns Committee Report, 6.1.2 p.66.

[13]Although these two courses were specifically created to permit candidates to apply

to the Board for exemptions there was no automatic accreditation of the courses. The candidate seeking an exemption would apply with supporting documentation and the Board would consider each application on its merits. Equally the Board would consider

an application for exemption based upon completed courses of study or other qualification any other institution in Australia or abroad. See the Johns Committee Report, 6.1.3, p.

p. 67.

[14]Johns Committee Report , 6.1.2 p.66.

[15]It is likely that the amount of time devoted to issues of practice in the university courses, p.least matched and probably exceeded the time devoted to these issues in the two IPAA tutorials. Presumably candidates could still participate in any in-house training or tutorial programs offered in the firms.

[16]See the far more discreet comments in the Johns Committee Report, p.the top of p.69 in response to the AMPICTA submission.

[17]Johns Committee Report, 5.8, p.p.60. ‘Recommendation 12: A new body, the Professional Standards Board for Patent and Trade Marks Attorneys (PSB) be established to replace PAPSB, with a revised membership and a more strategic role.’ In the Government Response to the Review of the Regulatory Regime for Patent Attorneys the Government accepted this recommendation and stated that the ‘representation on the new body will include legal profession, tertiary education sector and independent representation and or representatives from consumers of patent, trade marks and design services.’

[18]Johns Committee Report. 6.1, p.p.65. The report recommends that the PSB be a relatively small body which should have as one of its strategic goals the establishment of a subsidiary body, to be called the Education and Examination Committee. It seems to have been envisaged that the membership of this new committee could be larger and wider than the Board itself and act to advise the Board on all educational matters. See discussion, p.pp. 74—76. The report recommended that the membership of the proposed Education and Examination Committee of the new Board be ‘drawn from the patent attorney, trade marks attorney, the legal and education professions’, see Recommendation 20, p.p.75. In practice the PSB finally appointed was perhaps a somewhat larger body which included members of these interest groups, and a number of subcommittees of the Board were formed from the membership of the Board. One such subcommittee, the Curriculum and Accreditation Committee, took on many of the tasks envisaged or the proposed Education and Examination Committee.

[19]Johns Committee Report, 5.8, p.pp. 60—61. The goals and aims the Johns Committee envisaged for the new Professional Standards Board are summarised on these pages.

[20]Johns Committee Report, p.67. ‘Recommendation 13: Closer working relationships be developed between the body responsible for the education and training of patent attorneys and the universities with a view to the universities taking more responsibility for the education and examination process.’

[21]Johns Committee Report , Recommendation 14, p.p.67.

[22]Government Response to the Review of the Regulatory Regime for Patent Attorneys.

[23]Patent Act 1990, s 227A, Patent Regulations 1991 reg 20.32. Membership of the Board was: Professor Raoul Mortley, (Chairperson), Mr. Malcolm Royal, Mr. John Slattery and Ms. Caroline Bommer (Patent Attorneys), Ms Odette Gourley and Ms Ann Dufty (Solicitors), Professor Michael Blakeney and Associate Professor Philip Griffith (Academics),

Mr Peter Walker (Institution of Engineers), Mr Andrew Bain or Mr Ric Gould (ex officio Patent Office). The Secretary to the Board was Mr John Swift assisted by Mr Stuart Atkins. The first meeting of the Board was held in Sydney on 30 April 1998.

[24]Johns Committee Report, 5.8, p.p.60.

[25]The Chair of the Curriculum and Accreditation Sub Committee was Mr Malcolm Royal and his intimate knowledge of the profession and the issues of importance in patent attorney training was of invaluable assistance to the committee.

[26]Sch 5 Prescribed Topics Patents Regulations 1991 (regs 20.2A, 20.2B, 20.3,20.6, 20.8, 20.9 and 20.16).

[27]Patents Regulations 1991 reg 20.3, Patents Act s 198.

[28]Patents Regulations 1991 reg 20.2B (1). Full accreditation lasts for five years or such shorter period as determined by the Board. See reg 20.2B (4).

[29]Patents Regulations 1991 reg 20.2B (3).

[30]The Board set itself a list, consisting of ten points, of matters that it wished to consider prior to granting full accreditation and applicants were requested to provide information against all ten points to assist the Board in its deliberations.

[31]Group A Legal Process and Overview of Intellectual Property, Group B Professional Conduct, Group C Trade Mark Law, Group D Trade Mark Practice, Group E Patent Law, Group F Patent System, Group G, Drafting of Patent Specifications, Group H Interpretation and Validity of Patent Specifications, Group I Designs.

[32]The Johns Committee had proposed that there be a completely separate educational stream for people wishing to seek registration as trade marks attorneys. See discussion, p.pp. 69 and 70 and Recommendation 16. The Government in its Response to the Review of the Regulatory Regime rejected this for patent attorneys. The Governments response was: ‘Trade marks attorneys should not be a separate stream; should be recognised as a minor qualification on the way to the qualification of patent attorney.’

[33]This outcome for Topic Group B is set out in Sch 5 of the Patent Regulations 1991.

[34]Of Phillips Ormonde and Fitzpatrick.

[35]Johns Committee Report pp. 75 and 76.

[36]See Recommendation 21.

[37]Recommendation 22 and preceding discussion, p.Johns Committee Report, 6.8, p.p.76.

[38]Government Response to The Review of the Regulatory Regime for Patent Attorneys, p.5.