Maybe Oral Exams for Israel Patent Attorneys Should be Scrapped?

After a two-year internship working for a licensed Israel Patent Attorney, a trainee patent attorney in Israel must take a written exam that tests patent drafting skills and an oral exam before a panel of three. The oral exam is supposed to test knowledge of IP Law.

The Exams are held twice a year and there is generally a high failure rate in the oral exam. Failing once or twice due to nerves or lack of preparation is reasonable, but there seems to be a large number of candidates that seem to keep failing.

For the past couple of years I’ve been getting a crop of thank-yous from successful candidates that have found this blog helpful in reviewing the case-law.  I also hear complaints from unsuccessful candidates who feel the system is unfair.

A candidate who knows all the black letter law, the regulations, the Patent Office circulars, the major decisions and recent case-law for patents, plant-patents, trademarks, designs and copyright and who has a fair understanding of US, European and Far East patent law, should get through without any difficulty.

The problem is that hesitating or not knowing some fairly archaic or obscure regulation can result in failure. The system lacks transparency. Different candidates are asked different questions. Firms sending more than one candidate are sometimes surprised by who passes and who fails. As there is no record, there is no appeal.

Because of the close-knit nature of the profession, it frequently happens that a candidate has worked for one or other of the judging panel and a change in judges is required. Different judges will react differently. There appears to be some subjectivity in the procedure.

I note that in the US and in Europe, candidates sit written theory exams. With written exams, particularly short-answers or multiple choice type questions, candidates can be tested more thoroughly on more material. This is how attorneys-at-law are examined.

One could have clear requirements for passing, such as, say, 80% correct answers.

Such a system would be fairer and remove much of the complaints – whether justified or not – from candidates who feel hard done by.

Categories: Israel, Israel IP, Israel Patent, Israel Patent Office, Opinion

4 replies

  1. I took the oral exam three times.

    First I took it simply to find out what it would be like. I failed.

    Based upon this experience, I prepared accordingly for the second exam. I came up against a question relating to certain procedures outside my personal experience and to which I had not paid enough attention during my studies. I failed again.

    A similar unexpected question came up again with my third exam – but I guess I was luckier that time, because they passed me.

    The most frustrating thing for me was the complete unpredictability of the exam. Because I had no way of knowing what kind of questions would be asked I felt that I had no way to be sure I was prepared.

    I don’t think that the problem is the oral nature of the exam so much as the lack of a clearly defined set of requirements.

  2. I took the oral exam 4 times before I passed.

    The first time I took it was one year after I started my internship – I still remember the rather odd opening question from the lawyer on the left of the 3 person panel: “So tell me about the last IP decision that you read …” Huh?

    Based on conversations with other candidates, the general rule of thumb is that it takes 15 minutes to pass if you’re good; 20 minutes to fail; and 25 minutes if you’re borderline. My second exam lasted about half an hour. I won’t go into specifics, but suffice it to say that my boss got a call the next day from one of the members of the panel to apologise for the treatment I received from one of the other members. As part of a trend that would continue, the trouble came from the lawyer sitting on the left of the panel.

    My third exam opened with an absolutely inane question (again from the lawyer sitting on the left): “So tell me about patents …” I assume that I flunked as soon as I instinctively responded with my own question: “On what basis am I supposed to answer that, like someone has approached me at a cocktail party?” When I was told to go wait for them to discuss their decision, I told them that I knew that I hadn’t passed and that they needn’t bother with the pretense.

    After the third exam, I embraced the cold hard truth: the oral exam has nothing to do with anything that more than superficially resembled my job. I draft and prosecute patent applications. The panel, by law, is loaded with lawyers that for the most part consider drafting and prosecution trivial and beneath them. They care about litigation and landmark decisions. So I bought a patent law book for NIS 750 and read the first seven chapters. It took me 12 minutes to pass the fourth time.

    I would of course be in favor of abolishing the oral exam. In a profession that tries so values precision, accuracy and uniformity of treatment it is ridiculous that the certification process is so incredibly subjective. But I’d be willing to settle for two small but critical improvements on the current system:

    First, the entire panel should be licensed patent attorneys. I cannot conceive of any legitimate reason why someone who is not a qualified patent attorney could possibly be qualified to sit on the examining panel. To be quite blunt, in my experience the patent attorneys asked questions about things that patent attorneys should know and do. The lawyers just nibbled around the fringes of the profession in an attempt to make their legal perspective relevant to the proceedings. And let’s be frank here: even if a given lawyer is qualified, why does the law imply that 3 patent attorneys are not?

    Second, establish general quidelines for the exam. As strange as it sounds, the panel members are given no guidance regarding the subject matter of the examination. They are similarly given no guidance regardng the level of competence that they are seeking. The three people behind the desk are like captains at sea, totally free to do as they like.

    The profession deserves better.

    • There is a reason for the committee to include not more than one patent attorney. Section 143 of the law rules that the committee should not include more than one.

      No reason is given, but the logic is probably because there is a tendency for the guild to keep others out when there is not enough work to go round. The basic law, Freedom of Occupation, is designed to make it possible for anyone competent to work in any field. Since the ramifications of poor practice are serious, there is a need to protect the public.

      Having licensing not in the hands of competitors is probably not a bad idea. An examiner contacting your mentor reflects the general incestuous nature of the profession. It is a problem.

      Re caselaw, I think it is important for practitioners to have some idea of major decisions and recent trends. I advise clients and to do so requires knowing what happens in the Courts, even if you don’t litigate yourself. The fact that you follow this blog indicates that you have an interest in knowing what the courts do.

      I advise clients on strategy and this requires understanding the full picture. Today I provided paid consultancy to an Israeli lawyer and to a US patent attorney about protecting products. Without knowing how the courts consider designs and trademarks, how can one advise clients what to do?

      That said, the patent regulations details what the oral exam should test and I spoke to a patent attorney who served as an examiner last year who wasn’t aware of that.

  3. Thanks for providing information on patent attorney in Israel. Failure rates are high at every where in oral exam as it required speech accuracy.

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