In my previous article I wrote:
Having worked in close collaboration with leading in-house managers, such as Einav Zilber who was the head of the Association of Israel Patent Attorneys in Israel on a presentation for entrepreneurs that was presented in parallel with the AIPPI Conference, I am aware of the lack of familiarity with local law, regulations and case-law that leading In-House Counsel have. to put it bluntly, my role in the preparation of the presentation was to red-line slides that were to have been presented that were simply wrong. To put it another way, none of the in-house members of the committee would have passed the qualifying oral exam to be licensed in Israel without extensive revision.
I intended the in-house members of the committee that put together the presentation for the IPAA seminar held in conjunction with the AIPPI conference held in March 2016. However, I understand from Kim Lindy that the steering committee of her Best Practices conference thought I meant them.
I have the various iterations of the slides and the corrections I made, so fully stand by my contention that the in-house patent attorneys on the ad hoc committee for preparing a presentation for entrepreneurs would not have passed the oral qualifying exam to become patent attorneys in Israel.
Although this blog is opinionated (which is probably the reason that all members of the Best Practice Conference steering committee seems to subscribe), I try to be fair. I would not and did not assert that none of the steering committee of the Best Practices conference would pass the qualifying exam for patent attorneys in Israel for the simple reason that I have no way of judging their knowledge of IP law. There is also an element of luck in oral exams and all practitioners know the answers to some questions. If a group of 10 experienced practitioners who have previously passed the exams were to resit them, I would expect some to pass.
That stated, I note that the presentation given under auspices of the IPAA was on patent basics, and did not cover designs or trademarks. The in-house patent counsels prepared slides that were full of elementary errors. Heidi Brun (who was on the committee) and I do meet with and counsel wannabee entrepreneurs. Not surprisingly, in-house counsel typically do not.
I suspect that many in-house counsel in Israel do not actively prosecute patents in Israel, and most of those that do, do not prosecute designs and trademarks. Some patent attorneys in large service-providing firms do file and prosecute incoming patents and designs from abroad. Others tend to draft and prosecute patents for a small number of clients. Some sole-practitioners and patent attorneys in smaller firms do not handle incoming work from abroad. Others make a living from it and don’t draft new applications. Anyone not actively involved in prosecuting patents or trademarks or designs is unlikely to be up-to-date with the formalities or the substantive law. Nevertheless, those who follow my blog (which apparently includes the entire steering committee of the Best Practices conference) should at least be aware in general terms about the developments.
I do not think that in-house IP counsel are more or less talented that patent attorneys working for IP boutiques. Both groups have a similar distribution of abilities, and each practitioner finds his or her niche. There is a periodicity in perceived ‘best practice’ for industries. Sometimes there is a trend to out-source all but key competences, so computer support, cleaners, accounting and patents are handled by outside companies. Then there is the counter-trend of keeping everything in-house. This, coupled with the occasional take-over of an Israeli company by a multinational, or a decision of a multinational to have the IP concentrated at head-office, results in companies changing policy and in-house counsel sometimes having to find alternative employment. Indeed I know of one in-house counsel who is now an examiner, and have employed another myself, in the past. This is another reason why it is useful for all patent attorneys to keep abreast of developments.
A friend of mine in the Patent Office passed the oral exam first time, but failed and kept failing the written exam that is designed to test patent drafting skills. This is not surprising. He was familiar with formalities and the Israel law but had never drafted patents.
My practice is such that last year 65% of the turnover was from local clients. 35% from abroad. About 8% was generated by designs and about 10% from trademarks. In a small, full service firm such as mine, one gets very wide on-the-job experience in all aspects of the profession. In the larger firms, the cumulative experience is much greater but individual practitioners tend to be pigeon-holed and many patent attorneys will stick to patents and not touch designs or trademarks.
I have advocated instituting advanced training programs for patent attorneys and believe that the proposed Code of Ethics should require participation in annual training events. This idea was not popular with the Reinhold contingent to the meeting at the Patent Office that discussed the proposed Code of Ethics. Their argument was that none of the corresponding professional codes for accountants or attorneys-in-law require this. My contention is that the US does require it from attorneys, and it seems to me to be a good idea.
Kim’s conference is an advanced training program. It does provide ongoing training. where I feel it is deficient is that it has practitioners discussing developments in the US, Europe and the Far East, however not developments in Israel and I see this is a missed opportunity to cover a jurisdiction having importance to companies domiciled or employing locally.