Harnessing Differences Between U.S. and European Patent Education Systems for an International Advantage in Portfolio Strength

Participants in the U.S. and European patent systems face a rapidly changing landscape as the European patent with unitary effect and Unified Patent Court (UPC) are off to a successful start. The UPC has positioned itself alongside U.S. district courts, the International Trade Commission (USITC), and the U.S. Patent Trial and Appeal Board (PTAB) as a leading patent litigation forum. The European Patent Office (EPO) has positioned itself as a central granting agency for European patents with unitary effect for many European countries alongside the U.S. Patent and Trademark Office (USPTO), which grants patents for the United States. Importantly, the EPO examines and grants every European patent that may be used in a UPC proceeding, and the USPTO examines and grants every U.S. patent that may be used in U.S. district court, PTAB and ITC proceedings.

Accordingly, participants in these patent systems constantly engage with U.S. and European patent attorneys, and now interact more frequently with attorneys who can represent them before the UPC (“UPC representatives”). This article describes key differences in the training, development, and skill sets of U.S. patent attorneys, European patent attorneys, and UPC representatives. Understanding these differences—and how to utilize them—can help companies, patent portfolio managers, and other participants in these patent systems capture international value in a patent or patent portfolio.

U.S. Patent Attorneys

There are two types of attorneys involved with patents in the United States: patent prosecutors and patent litigators.

To prosecute patents or represent clients in front of the USPTO, a U.S. attorney must typically meet certain educational requirements and pass two exams. The educational requirement is a bachelor’s degree in a USPTO-recognized field of science or engineering (e.g., chemistry, computer science, mechanical engineering) or an equivalent technical field. Other ways to satisfy the educational requirement exist (e.g., passing the Fundamentals of Engineering exam or taking sufficient college-level classes in engineering, sciences, and math), but the most common way remains the bachelor’s degree.

Next, patent prosecutors must attend law school and earn a Juris Doctor (J.D.) degree from an accredited institution. Upon completion of their J.D., they must pass the bar exam in the state where they intend to practice. Pass rates vary by state, but often range from around 50% (e.g., California) to over 85% (e.g., Iowa). If an individual takes no breaks (including working outside of law) between their bachelor’s degree, J.D., and passing the bar exam, the process typically takes seven years.

In addition to passing a state bar exam, U.S. attorneys wishing to practice before the USPTO must pass the agency’s exam, sometimes called the “patent bar.” This grants individuals the title of “Registered Patent Attorney” and allows them to file and prosecute patent applications with the USPTO. The exam tests knowledge of patent law and USPTO procedures via multiple-choice questions.

Patent litigators represent clients in patent litigation cases in federal court. Any barred U.S. attorney can be a patent litigator, and there is no educational requirement or examination required to represent a client in patent litigation cases. It is, however, more common for patent litigators to have passed the patent bar and have a technical background when representing clients in federal court in a patent litigation case. In particular, patent litigators who practice before the PTAB in inter partes reviews (IPRs) are generally registered with the USPTO, although the USPTO does permit non-registered attorneys to serve as counsel in IPRs on a pro hac vice basis. However, the USPTO has recently proposed rules to modify these requirements (more detail found here).

European Patent Attorneys

To become a European patent attorney, individuals must take the European Qualifying Exam (EQE). Eligible candidates typically hold a science or technology degree from a recognized (technical or classic) university and are citizens of a contracting state to the European Patent Convention (EPC). Individuals without such a degree can qualify to take the EQE by demonstrating significant patent experience, including drafting and prosecuting European patent applications, provided they live and are employed in an EPC contracting state.

Many European patent attorneys are also national patent attorneys in their country of residence and represent clients before the national patent office and/or the national courts (depending on country and national laws). Of note, most European patent attorneys do not have a law degree and focus on drafting patent applications, while some focus on oppositions (defending or attacking a granted patent) at the EPO.

The EQE currently has two parts: a pre-exam and the main exam. EQE candidates must have trained in private practice or in industry under the supervision of a European patent attorney, or as an employee dealing with patent matters in an industrial company established in one of the EPC contracting states, for two years as of the pre-examination test date, and three years for the main exam.

The pre-exam assesses candidates’ understanding of European patent law and their ability to apply it to specific situations. The pre-exam must be passed before advancing to the main exam, in a later year. The main exam is more complex and includes four sections:

• Paper A focuses on drafting patent claims and descriptions based on technical materials, testing candidates’ ability to prepare patent applications.
• Paper B assesses candidates’ skills in arguing rejections during examination, including claim amendments and specific supporting citations (e.g., responding to an EPO communication).
• Paper C involves opposing a patent.
• Paper D evaluates candidates’ comprehensive knowledge of European patent law and their ability to apply these principles in practical patent scenarios.

A common theme referenced in almost all EQE papers is the “problem-solution” approach. This approach is a cornerstone of European patent law and is the standard employed by the EPO for assessing the “inventive step” (equivalent to “obviousness” in the United States) of patent applications. Because the problem-solution approach is so heavily referenced in the EQE, candidates must demonstrate considerable understanding of it to pass. Only about 30% of candidates pass all papers the first time they take the EQE. Most candidates take the papers multiple times or take one or two papers of the EQE per year.

The EQE is expected to change significantly in format in the next few years but will likely remain very challenging and continue to focus on the core skills of European patent attorneys like the problem-solution approach.

UPC Representatives

Any lawyer authorized to practice before a court of a contracting member state of the UPC (currently 17 members) qualifies as a UPC representative. Attorney qualifications will vary by contracting member state. The vast majority of these lawyers who are authorized to practice before a court in a contracting member state do not have a technical background, as this is not a required part of the legal education system.

In addition, European patent attorneys who have appropriate qualifications can be UPC representatives and may use the title “European Patent Litigator.” These qualifications usually include the European Patent Litigation Certificate, designed specifically for the UPC, which takes a few weeks or months to complete. The certificate course ensures that attorneys have met specific educational and practical experience requirements that enable them to offer specialized legal representation at the UPC. While many European patent attorneys register as representatives at the UPC, most will team up with an experienced patent litigator who is also a UPC representative when representing a client as the procedures, rules, strategy, and writing style of the UPC are all different than those of the EPO in the patent granting process.

UPC representatives may be assisted by national and European patent attorneys (and those who are not European Patent Litigators), who are allowed to speak at hearings of the UPC.

Using These Differences as an Advantage

In light of the diverse requirements of these systems, companies should strongly consider assembling a mixed team of U.S. patent attorneys, European patent attorneys, and UPC representatives to develop a strong worldwide patent strategy. Specifically, the UPC representatives should be experienced patent litigation attorneys in one of the contracting states of the UPC (e.g., a German attorney who practices patent litigation in Germany), and more ideally have some experience in litigation at the UPC. Each type of attorney can bring different skills to the table, as described in the following example scenarios.

Patent Drafting and Examination. Involvement of both U.S. and European patent attorneys in drafting patents is helpful, as they are required to have strong technical backgrounds and pass examinations showing understanding of patent regulations. Involving a UPC representative at the end of the drafting process can also help the claims be prepared for scrutiny in that court. Regardless of legal education, there is no replacement for a good technical understanding of an invention, and a patent attorney who can draft a patent application that includes broad and narrow technical details is a boon for patent quality. Furthermore, U.S. and European patent attorneys have a good understanding of the law at the USPTO and EPO, respectively, which is key to getting patents allowed and drafting strong patent applications. In an ideal world, companies should endeavor to include European patent attorneys who have represented clients in opposition proceedings before the EPO, which are heavily influenced by civil law approaches to litigation in Europe and share many similarities with revocation proceedings before the UPC. European patent attorneys can use their knowledge of oppositions from practical experience and from the EQE to draft a high-quality patent application that can withstand an opposition challenge with the aforementioned similarities.

Patent Litigation. During or before a patent litigation case, U.S. and European patent attorneys can work with a UPC representative to evaluate the strength of a case and develop strategy. Many issues in a patent litigation case relate to complex technology, mapping claim elements to an infringing product, mapping claim elements to prior art, and reviewing the file history of a patent, which are skills U.S. and European patent attorneys have developed. The UPC representative, in turn, can ask the U.S. and European patent attorneys technical questions that can be used to help develop strategy and even explain things to a judge. Importantly, UPC proceedings include legally and technically qualified judges; a UPC representative can likely handle questions from a legally qualified judge, but a European patent attorney may help provide good answers or arguments that a technically qualified judge can appreciate.

Evidence Gathering. U.S. and European patent attorneys and UPC representatives all can work together to gather evidence. A key issue in many patent litigation cases is finding evidence that a patent claim is infringed. The UPC requires a statement of claim to initiate a case that must include the evidence relied on to support infringement allegations—a requirement that places a heavy burden on a UPC claimant. In some instances, U.S. patent attorneys can work with UPC representatives to consider filing a U.S. case first and use discovery to gather evidence because U.S. discovery laws are more productive for discovering information than the UPC, and evidence found in a U.S. case can be used in a current or future UPC case. Another U.S. discovery tool—28 U.S.C. § 1782—may also assist in finding evidence for a case at the UPC. Section 1782 authorizes a federal district court to order U.S. discovery of parties residing in the U.S. for use in a foreign proceeding upon satisfying certain factors. Here, U.S. patent attorneys’ legal knowledge of the discovery process will be valuable for UPC representatives.

Ensure the Best Team for the Job

Acquisition and protection of intellectual property is a worldwide effort for many companies, with an increasing number of patent disputes entering a multinational dimension across the United States and Europe. To prepare an effective defense for this new reality, it is first important to understand how the education, roles, and expertise of U.S. patent attorneys, European patent attorneys, and UPC representatives—the major legal “players” in these jurisdictions—complement each other so you can assemble the best team when the need arises.

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