SOLO Independent IP Practitioners

Do you really matter?

2013-05-07T14:55:00.000+01:00

The hardest message to
get across to a prospective
client ...?

No, this isn't an attempt to be rude or to undermine your confidence -- it's an allusion to a paper which was discussed yesterday in one of the International Trademark Association's Scholarship sessions, "Do Trademark Lawyers Matter?" (you can see the abstract here), in which the authors -- Deborah R. Gerhardt and Jon P. McClanahan -- sought to explain their findings, which were based on getting on for 30 years' worth of filing and grant data from the United States Patent and Trademark Office (a note on this session was published on the IPKat here).

At base, there are three factors that tend to influence the success of a US trade mark application. One lies beyond the control of the applicant, and that is whether the application is opposed or not. Unsurprisingly, unopposed applications fare far better than the other sort. The other two factors are however highly significant: statistical analysis of a vast quantity of data suggests that (i) trade mark applicants who are legally represented tend to fare better than those who do not, and that (ii) experience, in the long run, is as good a predictor of success as is being legally represented.

One challenge for any solo or small practitioner is to explain to an often ill-funded and undercapitalised client why, when trade mark registration is open to all and when trade mark registries are increasingly user-friendly, it may still be necessary to instruct a professionally qualified and, ideally, experienced, representative rather than take the do-it-yourself route. This research by Gerhardt and McClanahan provides much material to strengthen the hand of the practitioner when selling his or her services.

Better than being a penguin? Solos flock to INTA

2013-04-30T11:46:00.003+01:00

Fact: the coat of the adult penguin has
nowhere to store one's business cards

A recent tweet from Twitter diva and SOLO IP Blog founder Barbara Cookson reveals that next month's International Trademark Association (INTA) Meeting -- now seemingly rebranded #inta13 -- has already attracted 166 solo IP practitioner registrants. As well as offering wonderful opportunities for networking with people who aren't going to ask embarrassing questions about how big your litigation and dispute resolution team is, this poses challenges the most important of which is how the 166 (the number may have risen by now) are going to find one another. In this context readers may wish to ponder on the following random observations:

* Many solo and small-firm practitioners look just like people who practise with large firms. Indeed, last year some of them may indeed have been practising with large firms and have not yet ditched last year's Armani suits and Louboutin heels in favour of the altogether humbler attire of the one-man/woman band.

* There is no equivalent of the Masonic handshake that enables those who work in small practitioners to identify one other. Perhaps an app should be developed in time for #inta14 which will enable the hand-held mobile device of a soloist to give off a discreet buzz when another soloist is within a 10 metre radius.

* Speed-dating has been kindly organised for small practitioners, gregarious folk and the merely curious to meet briefly, exchange cards, make eye contact and then terminate the relationship without any sense of awkwardness within the rules of engagement. This facility has proved popular -- but is its popularity based more on the fact that it enables people to meet, or to save time?

* Penguins have demonstrated to generations of wildlife photographers that they have a remarkable knack of finding each other in even the largest of crowds, notwithstanding the fact that they all look pretty much the same. This may be something to do with the fact that their survival depends on it. It would be good to know if IP solo practitioners fare as well in Dallas this year.

If you do, or don't, have success in locating your own kind, do write to us at SOLO IP and let us know your experiences. You may not have found them interesting or valuable, but there's a good chance that you'll strike a chord or two with our readership.

Likelihood of Confucius? How about merging with a Chinese mega-firm

2013-04-28T17:19:00.000+01:00

A recent report in The Lawyer relates the story of a small Israeli commercial and high-tech law firm, Eyal Khayat, Zolty, Neiger & Co. -- a three-partner practice which has suddenly acquired the ability to cast a giant shadow through its merger with Chinese giant Yingke. The Beijing-based firm has offices in more than twenty cities on its home turf and another 16 outside China. Altogether it employs more than 2,000 lawyers. Yingke now has an office in Israel too, in Hertzlia Pituach, within easy reach of so much of the country's high-tech industry.

This blogger was initially fascinated about the 12-month negotiation period which culminated in the merger. After all, a whole year might seem a long time for what has been described as a "brand merger without full financial integration". What lay at the heart of discussions? Was it the decision as to whether the firm should function in Chinese or in Hebrew? Or the struggle to convey the right message through the trilingual logo with its somewhat allusive symbol? No matter, the deal was struck.

It then occurred to this blogger that many a small IP practice might want to consider emulating Eyal Khayat, Zolty, Neiger & Co. by finding a massive Chinese firm with which to partner. In the olden days, IP work generally went in one direction, but now China is filing patents, designs, utility models and trade marks outside its home jurisdiction quicker than you can say "Confucius!" and the prospect of having a small foothold in a small non-Chinese country (and that's pretty well everywhere) might be well sold to an amenable Chinese giant. No more worries about where the next instruction is coming from, either ....

Consultation Marathon

2013-04-21T18:43:00.001+01:00

Since the announcement of the Fast Trade mark Opposition consultation from the UK IPO discussed below, we have the Patent side of the Office starting a consultation on even faster patent prosecution. It must be because they were coming up to today's blessedly peaceful and sunny Virgin London Marathon.

London 21 April 2013

The Law Commission also finally publishing their consultation on groundless threats. This last weighs in at 174 pages so most of us will simply have to rely on the executive summary. I like the prospect that legal advisers will be exempt. The idea we might get an unfair competition tort is interesting too. Possibly not an idea to hide in something as abstruse as a groundless threats consultation though.
Weighing in with a threat of a threats action is often a rather unethical practice. The last letter I received gave me a short time to respond so I did not as it was mostly groundless as we were discussing a service mark.
The super-fast patent paper is reasonably short and hopefully CIPA will be on to it. By the way, this is not for the small inventor or SME - a marathon fee of £3500-£4000 is proposed but you don't have to give reasons for paying it. There do not seem to be many situations where the normal expedited prosecution is inadequate, but if this procedure becomes available there does not seem much incentive for the IPO to do it for free when they could have a fat fee and a few extra home comforts in Newport.

Fast Track UK Trademark Oppositions

2013-03-23T18:05:00.000Z

My 40 UK Oppositions OUT

The UK IPO are running a fast consultation on revising (again) the UK trademark opposition procedure.

I did a little survey of my files. If you can't measure it in UK IP policy, it doesn't exist so we must provide evidence even if its only a measured anecdotal sample. So this is what I can say about UK oppositions over the last several years. I have dealt roughly with twice as many outgoing ones as incoming ones 40:19 and the number I have let go to a decision by the UK IPO is tiny at 5 and only one of those went to an appeal. In OHIM the ratio was 65:49

The parties involved are not all SMEs by any means but a reasonable proportion are and whatever the size of the client it generally makes sense in the UK to settle because going the whole way is costly, slow and not that much fun.

My 19 UK Oppositions IN

How does your experience compare?

This doesn't tell us much about the trademark owners who didn't do anything so its always good to review.

Some Registry ideas are

Lower fee
Proof of Use with TM7
Relative Grounds only
TM8 retained
Separate arguments stage in writing
No hearing
An Appeal Fee to keep appeals down

OHIM can be made to produce fast cheap decisions using a file it and leave it approach using only CTM grounds. My strategy as an applicant is one observation only and you can even forego that with a reasonable prospect of success in some cases.

There is one little diamond lurking in this consultation that I hope will survive and that's the Appeal Fee. £800 would be about right.

My first reaction is that the fast track opposition won't work and just makes life more complicated, but is it worth getting together to have a discussion about it?

Are Injunctions Obligatory in UK Patent Infringement Actions?

2013-03-10T18:01:00.000Z

The title of this post was one of the many questions posed to those of us who spent our Saturday morning in a Cambridge basement a the CIPIL conference entitled 'What's new in IP Remedies' chaired by Mr Justice Richard Arnold. There were many papers but this is the point I wish to do my homework on. Despite belonging to TRIPS the US has lived happily for six years since the patent world was surprised by the eBay MercExchange decision which destroyed the presumption that a patent holder is entitled to an injunction as of right following a successful finding of infringement. Instead, as explained in the presentation by Prof Tomas Gomez-Arostegui of Lewis and Clark School of Law in Portland Oregon, there is no longer a presumption of irreparable harm and the inadequacy of legal (as opposed to equitable) remedies. The balance of hardships and public interest now have to be considered. The prospective pecuniary relief which is provided instead looks hazardously like a compulsory license as our Chairman noted.

Prof Posner and his cat

We also received a very thoughtful and enjoyable people from Prof Paul Heald of the University of Illinois in which he expounded a theory that an injunction was a form of punitive damages. He also offered us the interesting insight that the addition of a cat will send the right sort of message to make even the most austere professor palatable. He set out his thesis in understandable economic terms and made his own theory very palatable without any need for feline assistance. If you are a "patent assertion entity" (the new style for an NPE if you think troll is pejorative) it is easy to understand that the grant of an injunction allows a higher price to be coerced (he did use that word honest) from a defendant who is subject to high switching costs. The difficulty arises with the patentee who is not prepared to licence and would rather put his competitor out of business. Society may find this acceptable if he is a counterfeiter, but what if he is also an innovator.

The question of whether final injunctive relief is a guaranteed remedy was addressed but not answered in the presentation by Joel Smith and Christopher Sharp of Herbert Smith Freehills. Presumably they wish to continue arguing both ways depending on the client.

So what do we need to look at in the UK if we want to follow the US route. The consensus seems to be that you start with Lord Cairn's Act and the Shelfer exception, progress to a detailed study of Article 3 and 12 of the Enforcement Directive (2004/48/EC) which was implemented in the UK by a Statutory Instrument that doesn't think it changed the law but might have. Then ensure your argument can be reconciled with TRIPS which says that The judicial authorities shall have the authority to order a party to desist from an infringement.

The Enforcement Directive offers the best opportunities: Article 3(2) is the general obligation that provides Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse. Article 12 allows Member States to provide alternative measures if the defendant acted unintentionally and without negligence, [and/or?] if execution of the measures in question would cause him/her disproportionate harm and if pecuniary compensation to the injured party appears reasonably satisfactory.

If there is to be any following of EBay here, then you need a case where a final injunction is going to be DISPROPORTIONATE and an "innocent" infringer. Our existing compulsory licensing provision preclude a final injunction and must already fall within Article 12, but can other suitable cases that may not fit into those strait jackets? It seems to me that they can. In the discussion later on reference was made to property cases where damages had been awarded in lieu of an injunction notably the Wrotham Park Estate Company Limited v Parkside Homes Limited (1974) case.

UK Trademark Searching

2013-02-21T10:32:00.000Z

As part of their systems upgrade, that was revealed on 11 February, the UK IPO provided a new trade mark search interface . It is still listed as find by word or image but there are some important developments that make it a whole lot more useful than the previous version. The biggest, and most significant for unrepresented trademark applicants as well as agents seeking to do economical clearance searches, is that there is a new option to search for 'similar' marks. This is now the default and you may be surprised to find that you get pages of hits when you were expecting just a few from an identical word mark search. You can revert to Exact word or Begins with if you are looking for something specific. However the new option ensures you don't miss the vowel changes. There is no information about the particular fuzzy algorithm they are using but it survived my tests, so I am impressed.

You do hit the buffers, though, if your search wants to deliver more than a 1000 hits.

I did a search for FORTY TWO and got 7 hits but 42 gave me 979 but then that's the meaning of life isn't it?

Another change is that instead of offering you spaces for several words that you could AND or OR together, you can type in a bunch of words and choose to have the search for all of them or any of them.

The search will retrieve you any mark protected in the UK and community trademarks and Madrid registrations are displayed in a new format. There is no link direct to CTM online or Romarin, which is frustrating especially when your CTM hit comes up with a status of OPPOSED very tantalising that.

Have fun

Risky Insurers?

2013-01-31T10:10:00.001Z

Feather the nest to protect the vulnerable?

The Law Society has decided to warn solicitors that they need to check the financial strength of their insurers. Just because they are on the list of qualifying insurers, it doesn't mean that they have passed any financial stability tests.
They have produced a whole new guide to insurer insolvency which you can find here.

Just as with motor insurance, I anticipate that most solicitors regard insurance as an obligation that must be paid for. The idea of actually claiming on it is usually far from our minds. Indeed that's exactly what the insurers want as they exhort us to put in place risk reducing measures and raise the premiums of those with the temerity to claim.

One thing the Law Society press release is silent on is the benefit of inserting limitations of liability into terms of trade. Instead they publish further guidance on top-up and excess layer cover. I begin to wonder if they get commission from these spiralling insurance sales.

Surely the credibility of the *ratings* industry no longer exists in the realms of ordinary men after all those highly rated junk mortgage securities (Remember Northern Rock anyone?). Even so the SRA require that Insurers must now disclose whether or not they have a financial security rating and the provider of this rating. Here is their handy list. Only one firm, Travelers is prepared to deal direct and they even quote their minimum premium, £1,575 though that was last year.

For all the dire warnings, read the full press release.

Feeling depressed? Jealous? It's salary survey time again

2013-01-20T21:32:00.001Z

The Fellows & Associates Salary Survey for 2013 is now up-and-running. All it needs is for sufficient quantities of good souls to give up a few precious minutes of their lives and engage in some harmless box-ticking. As the rubric explains:

The survey is intended to provide transparency to the intellectual property market by collecting anonymous objective data that is then published without bias.

Last year’s survey benefitted from the active involvement of Solo IP [that's us!] and IPKat and the results were published in the CIPA Journal in April 2012.

With the success of the survey last year we’ve decided to bring it back again, bigger and better. This year’s survey takes into account your expectations and optimism for the future in IP to gain a more comprehensive review of the IP market. The survey allows a greater understanding of the sector and we are hoping to make it an annual affair to create a consolidated view of the sector across the years.

The survey is now available and will run until the 18th February 2013. Once completed, participants can request to receive an email copy of the results. Data is provided anonymously in order to protect the confidentiality of participants and allow for a more rigorous result.

You can find the survey, in all its glory, here.

Abuse in the World of Trade Marks

2013-01-17T10:04:00.000Z

From Lakewoodrat on Flickr

I was intrigued to see that ITMA had announced a lecture in Manchester by the renowned London IP QC Michael Edenborough on the intriguing subject of Abuse in Trade Mark Actions. Rather than risk a trip to the frozen North I cast a fly on the wall and this is what it reported.

Michael was his usual cheerful and exuberant self.
His preliminary messages were that

we are all practitioners (so let's find a route to what the client wants to achieve) and
let's appreciate that law is not always "black-letter-law" (clearly clear and right) : it can also be " grey-letter-law " (unclear) and even "white-letter-law" (assumed to be right but, in fact, untested).

Michael had chosen with care examples which built on these foundations :

1) He went back to 2003 and the decision in Omega to explain how inadequacy in a pleading (revocation proceedings : TMA 1994 section 46) resulted in TPN 1/2005 and the Registry's requirement for the applicant (in revocation proceedings based on non-use) to plead expressly the date from which revocation ought to take effect.
But the " rabbit out of the hat " (my expression and not Michael's) is the Sabatier case (No. 82 673 of 31st January 2007) being a Decision of the Registry not (apparently) to be found on the website at www.ipo.gov.uk : it runs counter to TPN 1/2005 in allowing pleadings to claim " rolling " dates as dates from which revocation ought to take effect.

If you have a case pleaded under section 46(1)(b) TMA 1994 and the Registry insists on TPN 1/2005 : do not be afraid to take up your sword and cry " Sabatier " !

2) Omega stayed in the news in the context of a further " go " at pushing back the date from which revocation ought to take effect. This time – the court says " should have been argued in previous (revocation) proceedings " and this new litigation is an " abuse of process ". We have " abuse " as a shield for the defendant (Ed: Omega cases are many: this is 2004 EWHC 2315 (CH) Rimer J)

3) In the context of challenges to a Decision of OHIM, always remember that you need a " point of law " to justify an appeal from (now) the General Court to (now) the Court of Justice. Otherwise, you'll find the Court of Justice providing a " Reasoned Order " as an end to proceedings.

Michael brought the mark PURE DIGITAL into his thinking on this issue. Surely (we all believe) the practitioner can only bring " evidence of use " to the table where that " evidence of use " relates to period prior to the date of Application ? But might this be "white-letter- law"(see above) ?

Why not argue that – at each stage – the relevant tribunal (OHIM's Examiner / OHIM's Board of Appeal / General Court / Court of Justice) MUST take account of the post-Application use

of (in the particular case) the mark PURE DIGITAL ?

Why not – in support of this – bring to the Court's attention Paragraph 2.61 of the Max Plank Institute's Report of 15th February 2011 ?

If your client's concern is (dare we say it ?) that the mark stays " live " in the records of OHIM for the maximum period of time and you have such an argument (on a point of law) that's going to achieve this (rather than attract a Reasoned Order on an earlier date) : surely you (again) have a sword you should take up on behalf of your client ?

4) Back to the UK and the case of Special Effects : bringing grounds used in opposition proceedings before a court of law in subsequent infringement proceedings in not a problem.

But – don't forget things may be otherwise in proceedings for invalidity.

The Spam / Spambuster case in 2005 went against the party taking a " second bite of the cherry " (again, my words and not Michael's) when the first attempt at claiming revocation had failed (and this was the case even though the " second bite " was on different grounds).

The Firecraft case in 2010 went against the defendant who wanted to say " passing off was established in opposition proceedings at the Registry " and " we want to argue against passing off now we're defending an action in the High Court ".

For the claimant, what had happened previously was (in these latter cases) a sword for their cause !

5) Threats (per TMA 1994) bring their own " abuse " concerns.

In 2004 Reckitt Benkiser found an action defended and there arose, as part of the counterclaim, the issue of seeking to join solicitors to answer a " threats " allegation : joining solicitors as a party requires permission from the court and permission was refused as an abuse of process.

Without prejudice correspondence is, in this context and others, an area which needs careful consideration :

- some ten years ago, courts refused to consider " threats " issues when " the threat " appeared in without prejudice correspondence [ Unilever v Proctor & Gamble ]

- more recently (2011), a court isolated " the threat " from correspondence that was without prejudice – making " the threat " actionable (and suggestion was made obiter that the rule on without prejudice correspondence (being a rule protecting disclosure adverse to interest) should not provide a shield against the impact of the " threats" provisions of the TMA 1994) [ Best Buy v Worldwide Sales ]

On the future of threats – review is part of The Law Commission's Eleventh Programme of Law Reform and a Report is scheduled for March 2014.

Clearly those Mancunians had a fortifying lunch and my fly deserves hearty congratulations

Dare to Be Free

2013-01-04T14:03:00.000Z

Its great to have some help when you start your business. However is it save to rely on free services like Google for your mail or file storage. When its free there is no comeback if its withdrawn or fails. I recently discovered that the Microsoft service I use (Windows Live Sync) for free to access my office PC when away is being withdrawn. This is disappointing when you discover it has failed just as you intend to leave the office and use it. While there was an alternative that allowed me to get away for Christmas, it does make you realise that you can't complain if you free gift is withdrawn. There is no support line to call. You have no contract. They have no obligations to you.
Of course this blog is hosted for free and you probably didn't get this post by email because that is no longer offered either. There is no picture because I cant upload from my hard disk. The power of the Free Men is more powereful than Copyright law.

Essentially the free service is free to fail you. Lets hope our clients are learning this lesson too.

This may sound a rather dismal note for the start of a New Year. However as the Chancellor has been saying we need to invest to grow so lets look a the best options for investing in creating a reliable infrastructure for our businesses. I'm interested in your recommendations

The new European patent package, SMEs and the solo practitioner

2012-12-17T08:23:00.002Z

The new package: will
there be anything in it
for small IP firms?

Now that the new European patent package is more or less done and dusted, subject only to possible and unexpected sabotage by the French, German or British governments, the time has come to consider what it all means for solo practitioners and small IP practices. The European Parliament, the Commission and other "official" supporters of the new measures have all stressed how much benefit will be conferred on small and medium-sized entities -- businesses which have hitherto provided much if not most of the work for small and medium-sized IP practices. Will the new measures leave this happy correlation unchanged?

It's this blogger's guess that, while the patent filing side of things may remain unchanged, when it comes to litigation many SMEs will find themselves driven into the arms of larger IP practices, particularly where the resolution of the dispute is likely to require travel to two or more overseas destinations, as Lord Justice Kitchin indicated could easily be the case in his speech to the CIPA Congress this October.

This blogger feels sad that the recent experience of the modified Patent County Court for England and Wales, with capped costs, streamlined procedures and some scope for cost-saving through the instruction of patent attorney litigators, has come too late to have been considered as a possible template for a small-scale patent resolution forum under the new European regime. He wonder what others think.

The CIPA Journal: It's a Hard Act to Follow

2012-12-06T17:03:00.002Z

An encounter with Michael Harrison this morning at the excellent Hardwicke Chambers breakfast seminar given by Mark Engleman on Jackson costs, prompted me to pick up my November copy of the CIPA journal - since Michael is now the new editor of this illustrious publication, having taken over from Tibor Gold. If you are a member of CIPA, you will be able to find the journal online here.

The Editor

So much praise has been heaped on Tibor that Michael will need some encouragement in order to implement modernisation and changes in the journal. However, 10 years is a long time in a publication's life and there is always room for evolution.

The fact that we are looking at the November issue and it is already December suggests that a publication cycle for print is no longer in keeping with the demand for immediate information. Perhaps the time has come for less paper and a companion Internet publication to cover more immediate matters on which the membership need to be consulted or at least aware, such as the not so secret diary or upcoming ECJ cases where CIPA might be encouraged to put in a position

Reducing the number of print editions would save some costs allowing for development of the new online version.

Maybe the time is right to consider making that online version a joint effort with ITMA, or perhaps making the paper journal of record a joint publication.

It is good that the learned articles that are of value for future students should have a print form. It is also good that these articles should be moderated, fully edited and have enduring quality. There are plenty of prospective authors who want an outlet for their work and I suggested to Michael that liaising with the PR consultants who work with IP firms could well be beneficial in providing new material. Many aspiring authors are rather short of ideas for their articles and I am confident that Michael's wisdom might be exercised in commissioning some pieces that would be valuable for all members of the profession - but with an emphasis on the patent attorney in practice. Casenotes are one thing - and are well covered by exisitng media - but a survey of the case law on a particular topic over a period of time and its relevance to claim drafting, or even the trend taken by a specific judge so that we know how to advise our trademark clients where to put their figleaves, are always excellent article material but they do require the author to undertake some very specific research, so it's always nice to hold a commission for one.

Do give Michael some encouragement to make his mark, innovate and create as only a patent agent can

Reflections on the Entrepreneur Market

2012-11-18T13:57:00.000Z

As Global Entrepreneurship Week draws to a close for this year, I thought it might be interesting to reflect on the young entrepreneur as a market for intellectual property advise. There is, no doubt, a need but there is no market. The need is satisfied well by The UK IPO who provided lots of resource and encouragement including a special page. Both ITMA and CIPA were represented at the British Library Business and IP Center event. The idea is that by making entrepreneurs aware of the availability of professional advice they will buy it at an appropriate stage and avoid the worst traps in the meantime by using the free search tools for the UK and Europe and advice. Sadly the Business Link combined company name and trade mark checker tool launched in 2008 has now gone the way of all things Business Link. This is a shame it was the best basic starting point but it does leave the Entrepreneur who relies on Google market vulnerable to the factory filers who sell on price but are of necessity more expensive than filing direct with the UK IPO yourself.
The challenge we, as individuals, face in this Internet led market is to emphasise the value of personalised advice and the wisdom of experience and training validated by a professional body. For this personal networking is a better bet than Google Ads. The ITMA/CIPA non-core skills training team is offering an event which may interest some of you. Its a webinar so you won't see me there and, being such, I don't expect it to cover face to face networking in any great depth. If anybody is willing to offer a review for this blog, that would be great.

Don't Hold Me Back

2012-10-27T16:10:00.001+01:00

Dead Wood shackled in NZ by Sarah McMillan

One of the biggest obstacles to leaving your firm and going SOLO is the restrictive covenants in your existing employment contract. Equally if you are taking on staff these contractual terms matter if your firm's book of business is not going to walk out the door. Case law is infrequent so I took note when Michael Scutt tweeted about his blog on the Farnsworth case.

In this case Mr Lacy had been promoted during the course of his employment but had not signed the new contract that he had been given. He sought to argue that the restrictive covenant, which was for 6 months and prevented him working for a competitor and soliciting defined customers, did not bind him because the contract lay in a draw unsigned.

The obvious lesson for the employers amongst you is not to crack open the celebratory champagne or pay the new salary until the contract is signed.

As always, this case is very much on its own facts. The problem arose out of the take over of Pooles of Wigan as reported here. The Judge was (rather against his inclination ) deciding a preliminary issue as to whether Mr Lacy was bound by his contract and must suffer a few more months of an injunction that was already in place. He does. The Judge ending up relying on the evidence that Mr Lacy had applied for private medical insurance (PMI) for his family, a benefit to which the new contract entitled him.

The law applicable to the case is basic contract law (paragraphs 19 to 31). The judge had to decide whether the offer in the revised contract had been accepted. The Claimant enforcing the contract carried the burden of proof. There needed to be "an unequivocal act implying acceptance" and in accordance with the Solectron test this must be "only referable" to his acceptance of the new terms.

While the Claimant started out with five possibilities: revised salary; provision of a better motor car; enrollment in a profit related incentive plan; movement to a defined contribution pension scheme, and the application for PMI. Only the last was only referable to the contract. Sadly litigants often forget that winning on four points and losing one is still a loss.

Of course if you can't work for a competitor you might be able to set one up, but be wary of any reasonable solicitation covenants as even the legal advice may be expensive and inconclusive.

Selling for Solos

2012-10-23T14:36:00.001+01:00

There is no shortage of marketing advice out there. Everyone seems to be prepared to offer me some service to develop my professional image and bring in new clients. Our Professional Bodies ITMA and CIPA are offering a Webinar that will tell us how to do it and it seems we have come a long way from the days when a brass plate and a tombstone advert in Yellow Pages were considered daring. Even the EPI consider that European Patent Attorneys can advertise

Advertising is generally permitted provided that it is true and objective and conforms with basic principles such as integrity and compliance with professional secrecy.

IPREG insists

Publicity and promotional activity of any kind by regulated persons is permitted if it is fair, honest, accurate and is not misleading and is not otherwise in breach of these Rules.

Networking - some of our bigger competitors are enjoying an #AIPPI2012 trip to Korea at the moment, article writing, and websites are now the norm.

This blog's co-found Shireen Smith of Azrights has gone one further in adding value to advertising material and is selling her educational and informative book to her target audience.

Our competitors are banding together in marketing groups like Quality Solicitors, who are also producing jolly TV adverts that can gain even greater publicity by social media, such as this.

While these methodologies may be perfect if you want to grow your business and recruit, they may not be ideal if you want to maintain a steady workload. For that, perhaps we need to nurture our existing clients and work referrers. Of course if you have been too successful with the marketing techniques, you can perhaps pass some on to another SOLO practitioner.

I would love to see some comments on how others are managing to control the workflow.

Party time: the Law Society may need you

2012-10-04T08:34:00.000+01:00

This blogger understands that the Law Society for England and Wales will soon be recruiting new members for its Intellectual Property Working Party.

If you are interested in joining the Working Party, why not email Isabel Davies for further particulars? It would be good to know that, at a time when IP litigation has trickled down from the Court, through regular Patents County Court to the new small claims track, the experiences and understanding of smaller practices are shared with their bigger brethren.

Driving on the Small Claims Track

2012-09-23T15:07:00.003+01:00

The barriers to enforcement of small IP claims will be lifted from 1 October 2012.
If you are an aggrieved designer, photographer or even brand owner, relief is at hand on the Patents County Court Small Claims Track. Question is how do you drive on it.
Are you eligible?:
Your claim must relate to a trademark, passing off, a copyright or unregistered design right and be worth less than £5000 and that presumably includes cases where all you want is an injunction to stop someone trading as you. But note that you must wait for the trial to get that injunction as there is no interim relief on this track.
How do you start?:
First write to the person setting out the problem as you see it and give them time to reply. Tell them what your rights are, what they have done wrong, what you want and when you want it by. The letter should comply with the pre-action protocol and should say so. Be reasonable and polite the court will see this letter.
If you don't get what you want you need to fill in your Claim Form. You need to set out the particulars of your claim and say you want the claim to be allocated to the small claims track.
What does it cost?:
The fee depends on how much money you are claiming. For a photograph used without permission it only seems likely you will get more than the National Union of Journalist's Guidelines. See a judgement from the Court in Delves- Broughton v House of Harlot. If you want an injunction its £175 and if you want damages it adds from £35 to £120.

Where do I get help?:
From one of the regular readers of this blog who is a solicitor and will offer you a fixed fee deal. However it doesn't have to be a solicitor. You can use pretty much anyone if you are prepared to attend court with them. You can also use the free mediation service provided by the Courts. If you do use a solicitor there is minimal scope for costs recovery so expect to pay a fee for help and do a lot of the work yourself. Finally there is not a lot of court resource for this service so it all may take a bit of time if there has to be a hearing. However because you can have the matter resolved by the Court that is a big incentive for your claim letter not to be ignored as it may have been before.

The above is intended as something of a idiot's guide intended for users rather than our email subscribers. Lots of lovely detailed chapter and verse can also be found on Jane Lambert's blog. Its also worth reviewing the Government responses to the call for evidence on this as published by the IPO in March 2012.

Patent Disputes in Proportion

2012-09-18T12:20:00.000+01:00

The UK IPO is currently pondering how to expand its Opinion Service after the recent closure of the latest consultation.

I also note from the IPkat's recent post that the Patents County Court is still in full-blown self-congratulatory mode as it prepares to launch its small claims track (Legislation here Rule 10 ) so maybe its time to raise some issues.

There is no doubt that the new regime has made it practical and possible to resolve disputes using the court system. However, to deliver the real cost savings in litigation that make the costs proportionate to the dispute, it is necessary to conduct this type of litigation in a new way. The way I have chosen is to do it single-handed - eliminating the costs of communication between members of the team. Indeed, many litigants in the Patents County Court are representing themselves. These are the difficulties we all face:

Communication with the court is a real problem. Phones don't get answered and emails bounce unless the court wants something but not if you do. In-person enquiries tend to be unproductive as well. You are on your own. The best a litigant a person can do is try the Citizens Advice and its current location in the Family Division tends to suggest its focus but they might help you fill an acknowledgement form and there is no-one in the Rolls Building who could even do that for a defendant determined to represent himself this month.
The court filing system. It would be nice if there were one. I have never printed so much paper. It seems a waste that it serves no purpose.
Application procedures don't quite work in the way described in the Patents County Court guide, where the court itself is supposed to decide whether a hearing is necessary. If you can't agree a date or even availability with the other side, it's a dead end or a long wait.
Time lines are long. The period for a defence was deliberately set long because the idea was as that there should be full pleadings (not just long ones). However, in patent cases where there has been protracted pre-action correspondence another 10 weeks can be a bit of a bitch to say nothing of the wait for a trial date. I was so vexed by the boast that a case could be decided in a day I tracked down the patent on Ipsum where you can find some of the pleadings relating to Invalidity in an infringement case CC11P03258 that actually started in September 2011 so a judgement in a year is nice but not seriously different from the timescale in Big Brother Patents Court. It also seems that these timescales are lengthening. Let's hope that the fast-track does not put those who are looking to settle patent and trademark disputes into the long grass of several years. It is inevitable that costs get greater if files are put down and forgotten rather than got on with, to say nothing of the impact on SME business that does not know if it is racking up a damages claim or not.

We might solve some of these issues with a bit of help and collaboration from the IPO. The trademark litigation section cope pretty well with a large number of files and you can contact it by phone and email. Although it doesn't have the ability to post its files to the Internet as the patent side does, hopefully that is coming. Let's see all the Patents County Court documents on line so that we can all know what's going on including the Judge.

Despite this I have managed to achieve quite a lot, but it does help being next door.

Somebody's Here : A Guest Response

2012-08-30T18:01:00.001+01:00

The following is a guest post From Daniel Smart of Colman Smart in Manchester. He is a big IP supporter and once upon a long time ago (you can tell by the size of the computer) he even used to help support me.

The recent 'Is Anybody There?' post left me thinking. How could I, or we, relieve this feeling of blogging loneliness and provide a contribution?

What is the main difference between large IP practices and solo or small IP practices (including those in-house)?

I suppose the key word here must be resources.

Learning resources are important when you do not have in-house trainings geared towards your specific field. Thankfully, there are talks performed by various professional bodies and even if you are not a member of some, you can often still attend them - and find out about them through the likes of the IPKat. However, external courses and seminars do not come cheap and there are, of course, time factors. Geography is a related factor. Few of us can attend all of them and we need to prioritise. We see the programmes in advance, but choosing the best ones to attend can be a bit hit and miss. Previews of upcoming events and reviews of past events could therefore be useful, perhaps?

Business support services can be a small, but critical, cog in managing a business successfully. Managed offices give you that peace of mind that your post will get taken care of, your phone is answered and the printer will always have toner and paper in (although much of this actually depends on the package you sign up to). However, how much value would you give to this? This should help you determine if the price is right. We have answerphones and we can divert calls to our mobile. Personally, I don't mind a trip out to the Post Office to send letters once in a while. It gets me out (as I am mostly e-mail working, like most of us I imagine). Saying this, arrive at the Post Office on a bad day and the wait can be quite long. I could also add that I am glad I don’t have to venture out today; thunder and rain where I am.

I am interested in what kind of record-keeping, formalities and paralegal support solo and small practices have or need. My interest is an obvious one as my firm specialises in this area. Ensuring you are stocked up on paper and toner may involve a trip to the likes of Staples on a Saturday morning whereas once you've counseled a client, completed searches, finalised a list of goods and established jurisdictions of interest you'd quite like to have someone else arrange for the 10 trade mark applications to be filed around the world? Of course, I've worded this in a biased way but I am merely trying to offer food for thought. You may prefer 'office admin' to be outsourced whilst retaining personal control over anything IP related no matter how routine.

How you manage the data of your IP portfolios can be important to ensuring an efficient running of your practice. I have recently blogged on IP databases - from large and small practice perspectives - so check it out if this might be of interest to you.

In the UK, many large law firms - and patent/trade mark attorney firms are also joining this trend - now provide platforms for independent practitioners to benefit from their support structures in place. They take a hefty chunk of commission for work introduced to you. When you introduce the work, the commission is much less. You benefit from being associated to the bigger firm and the backup systems, additional expertise and record-keeping capabilities. It is arguably more attractive to lawyers in the provinces that can then charge hourly rates closer to that of the City.

Best bank, best mobile phone, best technology, best networking events, etc. are aspects that seem to be ever changing but I believe we would be interested in any recommendations others have. These can also help you manage your business effectively and make best use of your resources.

Is Anybody There?

2012-08-26T19:04:00.001+01:00

Small IP practices continue to be started. Some grow big and others stay small. The question that troubles my co-blogger is why, apart from me, no-one is particularly keen about blogging about the experience. Since this blog offers no rewards and has a small but entirely charming following, this is perhaps understandable. Nevertheless is it an excuse to give up?

Sometimes its useful to share news of an event that may not have caught your attention. For example the Bird & Bird associates are promising a most interesting offering on 20 September on the Unitary Patent System - that may well be of value to patent agents who have gotten rather bored of the litigators haranguing about their pet Articles and allow us to get our heads round, what it means for patent applicants.

Or you might want to spend £25 of your training budget with IBIL Questioning the Trademark Judges on 17 October 2012. But details of that and a great many more are to be found on the IPkat's famous forthcoming event's page.

Much of what a SOLO IP practitioner needs to know on the subject of IP is the same as someone in a bigger firm so that does not offer a special need.

There is a presumption that we all act only for small clients - which is wrong - because the best large entities recognise that a SOLO is the best way of getting a specialist on board - and so this blog should deal with the special requirements of the impecunious micro-entity.

Probably the only unique issue for the SOLO is those tools that help us to be uber-efficient. We should perhaps be carrying a review of Dragon Naturally Speaking 12 voice dictation software ; or a comparison of the best offers for Managed or Virtual offices; or the best business bank accounts; or whether its a good idea to join a marketing group.

If you would like to write any of those items or others do get in touch. Meanwhile have a great Bank Holiday

Non-law first degrees: which, if any, is the best buy?

2012-07-27T12:37:00.000+01:00

Many people are thinking
about their choice of degree
at a fairly tender age ...

I've just been reading an interesting little piece on the UKSC Blog (UKSC being "UK Supreme Court") on whether it's better to enter legal practice with a law degree or without one. In some areas, getting started is well-nigh impossible without a strong non-law basis. For example, anyone wishing to practise as a patent attorney is pretty well incapacitated without a degree-level science background. The only people who don't need to know anything about science and technology to make their way in the field of patents are, in the UK anyway, the judiciary, who can sit as Chancery judges in patent cases and indeed hear appeals as far as the Court of Appeal and the Supreme Court without any possessing any specific or general scientific base. This lack of scientific education is shared by most members of the Court of Justice of the European Union, but that's another story.

What I'm thinking about right now is this: both academic and practical legal education goes out of date pretty quickly; that's why continuing legal education is so important. Science and technology change too, but within the IP community there is less need to force practitioners to retrain regularly: the nature of their work and the separate need for expert witnesses sees to that. But in terms of getting a foothold in one of the IP professions and then climbing the ladder, what sort of non-law first degree works best? Does one opt for a white-hot new technology in a rapidly evolving field, where everything is new but practical applications may be uncertain or unknown? Or perhaps a mature technology is best, where things are more stable in terms of markets for products and processes and there's a regular flow of incremental innovation? Or again, something more mathematical, as a better means of cultivating analytical habits of thought?

It would be good to hear from readers as to which non-law degree they reckon to be a "best buy" for the next generations of IP practitioners.

Disposing of your IP practice? Or fancy writing a review?

2012-07-23T18:17:00.004+01:00

One of my intellectual property LinkedIn groups sent gentle ripples through the tranquility of my train of thoughts this afternoon, when news of a new discussion arrived in my in-box. It read:

Thinking of disposing of your law firm – well, don’t ripped off.email ray.fox@virgin.net for a free report on how NOT to get ripped off when disposing of your law firm.

Having first noticed the obvious need for editing and then having pondered on whether this was a discussion or -- as it seemed to me -- a marketing promotion, I then started wondering about the condition of many small IP practices. During the current recession, many such practices must be teetering on the brink, surviving on small amounts of regular work from current clients, bits of outsourced work for other practices, the making of further reductions in overheads and a good deal of (depending on one's personal preferences) praying or cursing.

It would be too embarrassing and depressing to ask readers to write in and give details of how they have been ripped off when selling -- or possibly merging with or even buying -- another practice. It would however be interesting for one of the SOLO IP readers to review the free report which is on offer and to let us have a piece which we can publish on the blog that measures its contents up against any real-life perspectives that readers may have.

Mediation Services

2012-07-10T15:39:00.002+01:00

The IPO mediation room ?

The IPO is currently making a call for evidence to try and work out why it is not getting any mediation business. Is it because nobody suggests it, or no lawyers want it, or we are all just ignorant that the IPO has a service to offer. It would be good to know so can we send our input.

From my viewpoint, I have aspired to use mediation far more often than I have ever achieved it. My best results have been with the mediation element of the Nominet Dispute Resolution Service. They have a simple approach and it costs nothing and it uses the pleadings you have already prepared. Best of all it takes place over the phone and is initiated by Nominet not the parties. It would be neat if the IPO were able to have a staff member read the Patents County Court Pleadings and offer a similar approach, though would it be before or after the CMC - ideas?

Other recent reasons why I have not got disputes into formal mediation include:

the parties are physically too far apart so coming together for a meeting is impossible
the other side tells me to stop calling and suggesting that settlement might be something we can discuss
its too hard to decide who will appoint the mediator and who will pay the cost
the £££ charge of the best mediators are disproportionate to the value in dispute
you mean we need a suite of three rooms in central London!
the decision makers are not prepared to come and spend the time on it - they employ lawyers they don't want to do it themselves
the idea of preparing a bundle and argument for the mediator is too much extra expense
the client thinks he is going to win
getting a debate going on the blogs and on twitter about the rights and wrongs of the case is so much more fun
a mediator cannot invalidate the patent/trademark/registered design

A mediator has to be a certain type of person, who is learned and fair without coming across as judgmental. The IPO has a role that involves making decisions and it may well be that this makes them come across as more on the side of the gamekeeper. However they are not-for-profit, whereas most mediators are working for profit, so its as good a starting point as any. Maybe all they need is a few more Google Ads.

Holy grail or poison chalice? IP and legal services in Wales

2012-07-06T16:40:00.001+01:00

One of my most frequent tasks as an editor is to correct terms such as "English Court of Appeal" and "UK Patents County Court". In each case the correct term for the jurisdiction is England and Wales. The relationship between the two is sometimes similar to that of Switzerland and Liechtenstein -- the larger jurisdiction is dominant, but that does not mean that the smaller is in any sense insignificant.

Why are these reflections of interest to an IP blog? The answer lies in a recent Press Association news release, reproduced in relevant part below:

"The creation of a separate legal jurisdiction for Wales would be a major economic boost for the principality, Plaid Cymru AM Simon Thomas has said. The prospect of Wales having its own legal system could be on the cards following a government consultation.

Although no firm decision has been made, officials say the issue needs to be examined due to increasing differences between the law in England and in Wales following the onset of devolution.

The Welsh Assembly has powers in 20 devolved areas and since last year the institution gained primary law-making powers. However, even if laws passed by the Assembly only apply to Wales, they are still part of the law of England and Wales. ...

Mid and West Wales AM Mr Thomas [said].

"As distinct laws in England and Wales are created, it is inevitable distinct legal jurisdictions will be created eventually. "The question we have to ask now is whether we want to grasp the nettle and proactively work towards the goal of a distinct legal jurisdiction, or do we want to just leave it to evolve in an ad hoc and uncontrolled way? The creation of a distinct legal jurisdiction could be a real economic driver for Wales. Not just the fact that power will be closer to the people, but that the supply of skilled jobs in the legal profession will increase. It would mean more opportunities to keep our talented young graduates in Wales ...".

Thomas cited the precedent of Northern Ireland, where there is already a distinct legal jurisdiction and a justice system that employs around 16,000 people.

Not many Welsh names have been the subject
of applications for GI protection ...

Members of the IP fraternity will be aware that, while Northern Ireland and indeed the larger jurisdiction of Scotland, have their own legal systems, they share their IP statute law with England -- and that is where the vast majority of IP work, both contentious and non-contentious, is handled.

What might be the effect of dismantling of the current jurisdiction of England and Wales? Will it provide exciting new opportunities for small local IP practices to spring up in the hillsides -- or will it create small practices in a more painful manner, by causing more clients to prefer the tried and tested English system to a new, unfamiliar one and reducing some of the Principality's larger IP practices to small ones?