SOLO Independent IP Practitioners

The Terrors of Taxonomy

2012-01-27T09:14:00.000Z

Order in all things -
these are breakfast cereals in class 30
everyone will accept that

The OHIM British Day hosted at the UK IPO yesterday is usually an opportunity both to hear the latest on the office procedures and IT tools and give our feedback on usability. This year it was not. Instead we did find out about several of the Co-Operation fund projects and in particular received a very enthusiastic presentation from Ms. Inge Buffolo. She waxed lyrical in particular about the work that was being done on the classification tools and creating a common database. She is the Project Manager and as an engineer clearly devoted to the idea of putting the entire classification into a neatly ordered structure so no business man need ever say what his goods and services are in his own words ever again.
The aspect that worries me about this is that trademarks are directed at people, ordinary business people who may get sent registration certificates and be told to stop infringing. These are users too. It may well be that the Advocate General in the IP Translator opinion in Case C 307/10 called such users *economic operators* when he said

65. The second objective is to enable economic operators to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties.

At the coalface of trademark practice it really matters. Recently it was suggested to me that expert evidence would be needed to determine whether a web based application was within the WIPO standard terms in class 42. He meant it. He was confused. Similarly a start up filed its own application by searching software in the OHIM efiling tool and ticking select all. That seems a sensible option when you want to cover software. No, it results in along and chaotic specification and no clarity at all for anyone. However such a specification can be translated at no cost into all official languages. Yes they were a start-up and they were programmers. Since the irresponsible system permits them to protect all manner of software, that's what they wanted but it would have been better had they written just software and overridden the dire warning signs.

The other worrying aspect about this taxonomy is that it is hierarchical and each broad term is supposed to cover all beneath. Does this mean that judges and users are going to have to consult the taxonomy to see what the certificate protects. This flies in the face of good sense however accessible the taxonomy may be.

Acceptable indications are good and work great for breakfast cereals but we must not get carried away into thinking that all goods and services are best described by reference to remote and abstract terms that mean little to the ordinary person.

Fortunately Richard Ashmead was present and in good health.

Did you ever wonder how you compare with the 'average' IP pro?

2012-01-24T14:22:00.000Z

Readers may not be aware that there is a UK patent and trade mark attorney salary survey floating around right now. Organised by some fellows called Fellows and Associates, the survey is hosted by SurveyMonkey and you can access it here. It appears to take the same amount of time to complete whether you are earning a fortune or struggling by on a pittance -- and the closing date for completing it is 7 February.

This survey will provide some handy first-hand information concerning the UK profession which, if nothing else, will give the professions some idea as to how much (or little) is being earned, how far people are prepared to move in search of a position, what their age-range and qualifications look like. Do give it a whirl!

The ABS arrives at last..or does it

2012-01-05T17:33:00.001Z

In this structure in Serjeant' Inn, I once worked
before it took on this alternative form

The Ministry of Justice marked the entry into business of the Solicitor's Regulation Authority as an ABS regulator on 3 January 2012, with an inspirational press release . Amongst other good and proper things, the Minister suggests

"Customers will find legal services more accessible, providing a much more competitive and efficient service."

It is unlikely that many sole practitioners will be transforming themselves into ABS with SRA regulation. Although the SRA team reports that they are ready and waiting, it looks as if the customers may have to wait at least another six months before they can go knocking for real services onto an ABS door, as that is how long it is going to take the SRA to make a decision on your application ( if they don't decide to extend the time to 9 months). Should you be interested in applying this is the link you need along with at least £2000 for the initial fee to get your application looked at.

The awesome regulatory burden is likely to deter existing law firms who merely want to improve and modernise their management structures. The Lawyer magazine reports that the insurance company Admiral might constitute itself as an ABS as a workaround to recover some profits to replace those lost when the referral fee ban was introduced. Frankly, this probably wasn't what the Ministry of Justice had in mind, when they began this well-intentioned initiative to bring modern management practice into the legal world by abolishing the rule that only lawyers can manage lawyers.

Across the Atlantic, I was amazed by this piece in which the IBM Gen Counsel Robert Weber rails against the possibility of such structures being introduced into the US market. In his view investment isn't needed because there already exists global law firms, who are market leaders without having needed external investment. I am sure that his law firm suppliers won't mind the barriers to new entrants remaining high.

IPReg is already applying to the Legal Services Board to become an ABS regulator in its own right and it is likely that any IP practice or new business support firm offering low-cost IP business advice that Hargreaves wants to see (see my earlier post here) will prefer to use that regulator. Incidentally, if you want a closer look at how this whole process works, there are currently vacancies on IPReg for professional members at £320 a day. More information here

Yours sincerely: newly-minted professionals, same old problems

2011-12-23T08:17:00.000Z

Something for newly-minted junior practitioners to chew on

Here's a slow-burner: some four month ago, members of the Canadian Copyright and Trade-mark Law" LinkedIn group were treated to the following practice Question from Kieran Moore: "What is the best way for a newly minted trade-mark agent to build a practice? What are the best sources of trade-mark clients?" Although responses have not been coming thick and fast, the question is still active and readers of this weblog might wish to reflect upon it.

Leaving aside the two most obvious questions ((i) why would anyone want to build their own practice in a recessionary economic climate, (ii) why would anyone who knows the answers to those two questions want to share them with their competitors in the same economic climate?), readers of this blog may want to meditate over the words of Bart Cormier as they eat (or, if business is that bad, steal) their Christmas turkey:

"There is no magic source of clients and it's unrealistic to think that anyone can become a rainmaker overnight. In my experience, it's hard for a junior professional to convince a client to trust them with their work.

...[U]se the next few years to become more visible in your local community. Offer to speak to industry groups on trademark issues. Join your local Chamber of Commerce and go to the breakfast events (free coffee and interesting conversation!). Volunteer for causes that you're passionate about. Get to know the industries and businesses around you and meet lots and lots of people. Help the people in your network by connecting them to one another.

Make an effort to meet your opposite numbers at the companies you'd love to have as clients. You currently have much more in common with a junior executive/engineer/marketer/accountant than you do with a Vice President or CEO. Meet these people now while they're on their way up. Learn about their companies and how they work.

Do all these things sincerely, because you're interested in other people; not because you're just looking for referrals ...".

This last point, in my opinion, is crucial. n the same way as many small children instantly detect insincerity in adults, many prospective contacts instantly detect insincerity in people who seek to obtain instructions or referrals from them. The big problem is how to be sincere ...

Lower Cost IP Business Advice

2011-12-08T15:04:00.001Z

One of Hargreaves's recommendations was that SMEs needed access to lower cost IP and commercial advice. The BIS and IPO announced today that the IPO are going to consult businesses, business advisers and IP specialists on how this might be achieved. I can already see the professional bodies girding up their loins to defend the profession and say there is nothing wrong. FICPI have launched a survey designed to show that almost all firms of patent agents offer some free advice and do their marketing at events where entrepreneurs gather. Its true we do and Hargreaves knew that so his conclusion was not made in ignorance. What we need to work out is how the advice can be delivered in a way that is both trustworthy and usable by individual businesses.

The call to the IPO. This is the most obvious first step for many. Not a bad idea. It connects you to someone paid £17k pa who has the whole of the wisdom of the IPO to call on.
The British Library Business and IP section is a great place to go and get information and do your market research.
Inventors clubs. These allow inventors to get together and share information. Leeds is just one example.
On line resources such as a BetterMouseTrap and IdeasUploaded that will link you to designers and others and provide plenty of shared learning experiences.
University |Tech Transfer or KT offices. UCL and Greenwich have been particularly keen lately to help all local comers.

This is just a sprinkling of the offers for those intrepid enough to do the research. The mix of business and IP varies considerably from almost all IP at the top of the list to almost all business at the bottom. Mix was important to the Hargreaves recommendation and the professional classes are not very good at mixing it. Indeed we barely try.

So why are the start ups on the Silicon roundabout telling Cameron they are unhappy. Free advice is not enough for them. Its either an untrustworthy grant aided offer from the inexperienced (OK that's harsh but one thing an SME knows is that he is not competent to judge quality and price is often the best indicator of value) or pure marketing designed to sell something paid for (the classic offering we professionals make).

A conundrum

Could we design an ABS that would be *for profit* but not at the super margins of the City law firms but still of interest to shareholders. It would need staff and it would need to mix them up a bit and therein is the hard part because the trend today is for lawyers to become ever more specialised and what we are saying no you cannot do trademark oppositions all day, you need to be able to hack some proper advice about where the marketing budget should be spent as well. Its a tall order and people with those skill sets tend to be CEOs of large organisations not settling in the provinces on a £17k salary. Right we cannot staff it with individual super consultants so it has to be a consultancy that brings teams together and works with the classic pyramid of effort. Hey aren't the accountants rather good at their consulting offers. Oh SMEs cannot afford to go to Accenture. If our ABS IP/Business consultancy is to make a profit it either takes a range of clients and very soon - like large patent agencies and grown up venture funds (3i anyone) - decides that start ups are not worth bothering with, or it takes real investments in the start ups. Might work. Would the start ups want to share their equity with their consultant. its not a novel business model. To some extent ?What If do it and it might sound a bit like Intellectual Ventures. Anyone in?

Electronics patent attorneys, trees and haystacks

2011-11-27T22:03:00.000Z

Pete Fellows' latest piece on employment in the patent attorney profession makes interesting reading. In "Electronics Patent Attorneys No Longer Grow On Trees But They Might Be Hiding In Giant Haystacks" (here), he suggests that a pre-recessionary state of affairs has apparently re-emerged:

"Towards the end of 2009 and through the beginning of last year, I noticed a very unfamiliar trend. That was, for the first time in a very long time, there were more patent attorneys with a technical background in electronics looking for work than there were jobs.

That was short-lived.

In an absolute reverse of where we stood in February 2010, there are now many more jobs than there are people for them. The options for electronics patent attorneys are myriad and there is certainly no shortage of firms clambering over each other to find a new a recruit in this area.
However the picture is not necessarily as simple as it might sound. There do remain some difficulties for this now coveted category of Patent Attorney. ...

It might be easy to move private practices but getting a job in industry is still extremely difficult.... The problem is that there are quite a lot of Attorneys who do fancy moving but are not particularly interested in another private practice. These are the people that seem to appear from nowhere when an industry position arises. Salaries for industry positions are nowhere near what they were (and getting a bonus of any size can be arbitrary at best; as difficult as mowing the lawn with nail clippers at worst) and hence added to the tough competition for in-house positions is a need to compromise on earning potential far more than many are prepared to stomach....

It’s also not necessarily easy for Attorneys who either are, or nearly are Partners and wish to move to a competing firm. There has been an apparent and brutally quick upturn in work across the electronics sector but practices themselves are in many cases still suffering from at least two years of economic uncertainty. This has a few implications: 1) Equity Partners are less interested in reducing their own share of the pot; 2) Firms are less interested therefore in hiring attorneys that might be banging down the door for partnership; 3) This has meant that the surge in demand is really only at part qualified, newly qualified and recently qualified levels. Having a client following does help circumvent the politics to some extent, although as getting work in electronics is not really the problem for many firms it is far less attractive than one might think ....."

Do readers of this weblog agree with this analysis?

Licensing Seminar

2011-11-15T13:08:00.001Z

Skipped away at lunchtime to the Tower - there to partake of luncheon and a seminar from @IPKat. The law firm, RPC were hosting in their glass castle set beside the water of St Katherine's Dock where once it was suggested OHIM might reside in London.

Jeremy announced as an appetiser that the idea of a small claims track for IP disputes that was suggested by Hargreaves is to be implemented.

Paul Joseph an RPC lawyer took us through the basics and differences between breaches of IP and contract. A bit of contractual interpretation law followed with reference to the leading cases ICS v West Bromwich 1997 on basic principles from Lord Hoffman, followed by AG of Belize on implied terms and finishing with the Supreme Courts Rainy Sky case advicating business common sense (2011 Lord Clarke). Then he tested our attention by seeing what we thought the punch line of a greeting card would be. It was the lesser of two Weevils so the intelligent follower will know he was talking about the Deakin v Card Rax 2011 case.
Trade mark licensing then came under the spotlight with special attention to competition law issues and territorial restrictions. Finally we touched on IP rights in products that turned out to derivative products in Global Coal.

We were then handed over to Neil Wilkof on the subject of sub licensing, a subject which has apparently not troubled the English courts, excusing a diversion into the more beloved US law. The Carey case is from 1964 and attempts to distinguish it from a situation where licensor gets someone else to produce the licensed goods. Next we had an intrinsic definition from Canada as opposed to Carey's comparative view. Next he strove to find a rationale for sublicensing. I wasn't sure why we needed one. We didn't need an excuse to create multi - level goods distribution. That was an aside as Neil is now into the delights of Scandecor and by point 5 he says let's forget the case law. The panic seems to be about never creating an unwanted agency arrangement.
Another of Neil's favourite US case is DuPont 1985 which comes from Delaware. There was a *have made* contract and then a contract to sell back to producer to deal with. This was to get round a prohibition on sub licensing. It was neatly tailored drafting but even so the Appeal decided it was a sublicense neverthless. You want more, ask Neil for the slides. There is no photograph because he keeps walking in front of the bright light.

The End of Representative Bodies

2011-11-14T10:00:00.000Z

Back in April my professional body and that of at least some of you made an announcement seeking any interest for a specialist interest group for SOLO practitioners. I reported it here. In the October issue of the CIPA Journal the Business Practice Committee report that the suggestion is not viable. There is also an announcement that says:

In the April 2011 Journal, page 206, we asked for views from those practising as sole practitioners or in small firms, as to whether CIPA and ITMA could help establish some form of support network.
We received a handful of positive responses, but the overall level of interest was, we feel, insufficient for the Institutes to set up a formal support scheme at this stage.
However, we remain open to suggestions from CIPA and ITMA members should there be a desire to organise something in the future.We will also do whatever we can to support such future initiatives, for example in the ways suggested in our April 2011 note.
In the meantime, we will continue to help individual practitioners who need guidance and support from their representative bodies. Advice on specific business practice issues can be sought directly from the Joint CIPA/ITMA Business Practice Committee; more general information is also available in the Business Practice Guidance Note which is available through the websites of both Institutes.
We would also urge those who work in small practices to join the CIPA and/or ITMA LinkedIn forums. These provide a good way of keeping in touch with, and sharing experiences with, other attorneys, and a convenient mechanism for raising questions and initiating discussions.
If you are ever in need of support or guidance from either CIPA or ITMA, please don’t hesitate to get in touch with either Mick Ralph (MichaelR@cipa.org.uk) or Keven Bader (keven@itma.org.uk).

So where does this leave the SOLO practitioner in relation to our alleged representative body. Now that regulation has been separated out, we need to decide whether next year's subscription is really worth it. Most of the work of CIPA and ITMA is carried out by volunteers drawn from the retired and larger firms and its not always at all representative of my thoughts on a topic. It certainly does not do a lot of canvassing of opinion amongst the membership. CIPA membership used to be essential to the student as a primary source of free professional education but all current educational offers are subject to a price tag. So will I pay to use the letters CPA next year?
If you are a member of CIPA what do you think

Mediation, IP practice and the good of one's soul

2011-10-27T14:57:00.000+01:00

If only ...!

When an actor is out of work, he is never said to be unemployed: the polite euphemism is that he is "resting". Euphemisms for "unemployed" extend far beyond the sphere of thespianism, though. Thus a footballer who is no longer selected to play for his team is "regaining match fitness"; a politician who is voted out of Parliament is "considering his options"; IT consultants are "between projects", and so on.

Recent conversations with intellectual property practitioners -- both those who are unemployed and those who are underemployed -- have caused me to wonder whether we too have a euphemism for this condition. It's called "doing some mediation".

It's true that there are some fortunate souls who excel in this area, bringing not only satisfaction to those who engage them but creating and sustaining an income stream that, if not constant, is at least relatively stable and predictable. Many others, it seems, are only really dabbling in mediation as a means of keeping their hands in, retaining their sanity and temporising until something better comes up.

There are some good courses on mediation both within the IP sphere and outside it, and -- while there is little case law on the topic unless you count domain name dispute resolutions --while there is also a small but growing body literature on the subject, it seems to me that there is not much that's available on the subject which is so close to so many people's hearts, and that is their wsallets. How do you bill for your services with genuine conviction and turn IP mediation into a real living? Or is it, like a practice based on a minor IP right like registered designs, always likely to be the icing on the top of the cake rather than the cake itself?

IP/IT lawyers in India

2011-10-15T17:59:00.006+01:00

I am trying to find a reasonably priced IP/IT lawyer in India to review an NDA and later, if my client proceeds with developers in India, a development agreement for an IPAD game. This is essentially just a rubber stamping exercise as the document is written under English law, and drafted by us. I would not expect to pay a lot for lawyer in India to read the drafts in order to let me know whether there are any changes required to comply with local laws. As I myself virtually always works to fixed fees, based on an hourly rate of £250, it came as a surprise to find Indian lawyers charging more like £450 an hour. Does anyone know a commercially minded, less expensive IP/IT lawyer in India?

Ipsum is now facto

2011-10-06T13:08:00.000+01:00

After Ipsum, the IPO's next service is going to be called
Possum. The 'Po' bit stands for 'Patent Office' -- but
readers are invited to guess the rest of the acronym ...

In April, Filemot posted a piece on SOLO IP which mentioned the virtues of Ipsum; she also trialled the Beta version (see IPKat review here). Today there's more news, this time from the IPO, in the form of a media release:

"New online patent inspection service launched

UK business could save nearly £100,000 per year thanks to a free patent system launched by the Intellectual Property Office (IPO). The new online service, called Ipsum, will remove the cost to businesses of requesting patent documents; instead they will now be available for free at the click of a button.

The service is open to anyone, benefiting businesses researching patents, patent attorneys working for clients protecting their IP rights and potential inventors looking for the best way to find information on patent applications. This can help them understand why a patent was granted or rejected or know more about particular patents.

Previously each document requested by a business would cost £5 and by the time it had been delivered it might already be out of date. Ipsum is updated in real time so businesses will now have the up to date information on patent applications they need. ...

The service is available on the IPO website – www.ipo.gov.uk/p-ipsum...".

Important information for SOLO IP readers will be found on the Ipsum website:

"Our search services are usually available 24 hours a day, 7 days a week, except for 2 hours at the weekend, usually on Sunday 20:00 - 22:00 (UK time) [that's a shame, bearing in mind how many sole and small practitioners seem to be online on Sunday evening, playing catch-up or readying their desks for their Monday tasks]

If you have any questions about intellectual property, or if you just need to speak to us, please contact our Information Centre on 0300 300 2000 or +44 (0)1633 814000. Our office hours are 09:00 to 17:00 Monday to Friday, excluding Bank Holidays [how many of our readers have such an easy time of it?].

If you notice a problem with this service, please contact us using the form below. Maintenance staff are available 08:30 to 17:00 Monday to Friday. Problems outside these times may not be rectified until maintenance staff are next available".

WIPO 'British Day' for Patents

2011-10-06T10:26:00.000+01:00

WIPO is holding a day of discussions for UK patent practitioners on 13 October - next Thursday. At least it will if enough people sign up for it. The IPKat publicised it this morning, and I'm doing my bit too - having signed up to it myself. Details from http://www.ipo.gov.uk/whyuse/events/events-calendar/events-britishday.htm. It's at teh UK IPO's London place in Bloomsbury Street.

Worliday, Taking Control or Loss of Work Life Balance?

2011-09-29T12:59:00.000+01:00

Worliday is a term coined by Lucy Kellaway, of the Financial Times, in an article earlier this summer. A ‘Worliday is a bit like a holiday and a bit like work. ‘It’s the future for most professional workers, and actually, contrary to what most people would have you believe, worliday is really rather nice’, she states.

Having just come back from my own worliday I entirely agree. As someone running my own law firm, the idea of a holiday without any connection to the office seems both challenging and unnecessary. Modern technology is a real boon in enabling people like me to continue overseeing the office whilst on holiday. As Lucy Kellaway points out ‘the worliday is not family unfriendly at all as families get twice as many holidays.’

However, the idea of taking a ‘worliday’ has received mixed reviews from bloggers.

Chris Abram of ‘Marketing Conversations’, blogged in praise of the worliday, claiming that ‘working at Abraham Harrison is a little like an everyday worliday if you play it right and get your work done’.

On the other hand, Tim Bratton General Counsel of the FT who tweets as @legalbrat likes his holidays to be just that, a holiday. He wrote a blog disagreeing with Lucy’s pro worliday stance. He feels the need for a holiday that is totally work free. He wants to relax and recharge. George Marshall agreed with him, stating ‘Leisure should by default dominate every day of your life with work being a mere sideshow.’

Image b

Although combining a holiday with work may seem the opposite of relaxing for these bloggers, in my view the ability to work remotely whenever we like, whether we are on holiday or travelling on business, represents freedom.

I wonder whether this divergence of opinions has something to do with the fact that women are reportedly (though not scientifically proven) believed to be better at multi tasking than men. Or is it just that people who run their own businesses are never off duty (and possibly don’t want to be)?

Tim Bratton criticises technology for encouraging us to work more, asking ‘is that really what we’re inventing new technology for? To make it easier to work?’

I disagree with this view because I feel that technology enables people to have the freedom to work where they want and when they want. Having the choice is what matters.

Technology gives those of us who run our own businesses the opportunity to go on a relaxing holiday and spend time with our families, and yet not worry about how the business is doing, and whether it is coping in our absence.

I have no problem combining relaxation with work. Indeed, I so love my business, that a worliday presents an ideal opportunity to work ON the business as it gives me more time to think when I'm sitting by the pool, or taking a walk. I come back recharged, with many new ideas for the business, while having spent quality time with my family.

I do find working IN the business less pleasurable, and so avoid doing the actual work as much as possible whilst on holiday. However, even when that is unavoidable, taking a half day to deal with something doesn’t spoil the holiday for me. It doesn't mean I haven’t had “work life” balance. I wonder what fellow IP practitioners think?

Design: Call for Evidence

2011-09-26T11:00:00.000+01:00

These are a few further reflections from the seminar on Wednesday.

As part of its efforts to implement Hargreaves, the IPO has launched a call for evidence and the idea of the seminar was to review and discuss the results of the research ("evidence") that has already been delivered to the IPO.

There is also a survey (not for lawyers, but for our design clients) and then we get a formal consultation which will likely contain some substantive proposals for change to UK design law. Prepare to say a fond farewell to the much mangled Registered Designs Act 1949 and lets look forward to a whole new codification of design law that kicks out copyright and gives a national system that is understandable and consistent with European law.

Design registration in the UK has never had the uptake governments would have expected and the UK IPO would like to know why. I confess I do too. Since we work with clients with an interest in design perhaps we have some insights we can share with the IPO team. Personally I struggle to add value for design clients. Once they have grasped how to get the drawings right then its often better to make the applications themselves as the idea is its supposed to be a cheap and easy process. Getting the drawings right is no mean feat. Some unscientific research on the UK Designs Register shows that most applicants do represent themselves and if you are a litigator you might worry a lot if you were trying to rely on some of these registrations.

Proposal 1 for further research then is to analyse the users of the current system from the UK and see whether they feel they can access the support and help they need to make the system work for them.

The paper based filing system is the first problem area and the purring of the IPkat has already been heard by the IPO team and it got plenty of support at the seminar. However you can understand some reluctance to implement a system if it will be underused. WIPO was represented at the Seminar by Gregoire Bisson who runs the Hague system. He reports that his software came from OHIM but they have improved it. It certainly seems to pass the useability test for the in-house user. If he can get the US to join Hague (and he has it in the sights) then he will have a much more valuable system.

The focus of the seminar tended to be on the designer and it assumed that copying was bad. We need to test that. Registration and attempted enforcement of unoriginal design could have a chilling effect on creativity and the London Design Festival, which ended yesterday, certainly shows that the UK has the creativity. Chapter 3 of the Research a paper based on a small pilot study showed that experience of copying did not increase likelihood of registration. Proposal 2 is that the attitude to copying needs to be investigated and understood. Anecdotally I can say that there seems to be a preference for *muttering*; getting media attention and even the deplorable practice of sending cease and desist letters with no intention of follow -up enforcement. Is this because UK business has lost faith in the judicial system or that there is a rationalization that the actual damage does not justify even the management time of serious complaint. Maybe even its a *do as you would be done by* approach. If I complain will I find myself at the receiving end of complaints.

Design protection needs to be manageable more like copyright protection than patent protection. Maybe we should see the IPO offering more advice and support in the development and implementation of protection strategies. Perhaps the call for evidence can support a pilot workshop or two to give how to file advice to those who should be using the design system so that it is clearer how or whether online filing would help. That is Proposal 3.

What do you think - is there a future for design protection in the UK or should we just leave it to Europe and use this legislative opportunity to delete the UK law on this topic.

IPO Seminar at Design Council

2011-09-21T11:42:00.001+01:00

Tony Clayton of the IPO has been bringing economic perspective to IP issues for two years. This is my first mobile post so sorry if it's a bit terse.

Quality Trade Mark Representation

2011-09-15T09:56:00.000+01:00

As we face the next Great Depression, most of us are thinking of ways to make sure we have a good client base and an excellent reputation that will see us through. Our problem is to make the relevant public look for us. Qualified and Professional advisers in trademark matters usually means a specialist IP solicitor or a "Registered" Trademark agent. Anyone can represent a trademark applicant. Its just like will writing. Its not regulated. Unlike will writing its likely to stay that way.

Is this the Great Depression?

Reading a recent UK-IPO decision, I noted that the hearing officer had said "This is a case where every step has been unnecessarily protracted, by sniping and nitpicking." One of the parties was unrepresented, the other was represented by a named person, Mr Whyatt, not on the solicitor's register nor on the ITMA list of experts but he is a public access barrister so that should be even better, but nevertheless he got some serious criticism:

"Mr Whyatt would appear to be disingenuous and verbose in his response, and has managed to extend his counterstatements to cover seven pages (2052091) and eight pages (2307158) when both could easily have been answered in two pages."

The impression I get from the IPO is that they are not happy with the quality of representation and I don't think its limited to just this case. Is there anything we can do about it to help clients look for advisers that will offer them an efficient, well-informed service designed to achieve a reasonable result in the least time in order to allow the client to get on with his business. I want to see a quality standard so that an unrepresented person will know he is better of represented. Can we perhaps design a Quality Pledge a contract between client and representative to smooth things along. Maybe

You will give me all the facts
I will provide a clear indication of your chances of success
We will agree capped budgets for every stage
I will not take any step in the action without your knowledge and approval
We will look for every opportunity to settle that is consistent with the budget
I will keep the pleadings short and the evidence focused on the issues
I will admit the obvious facts and not deny the undeniable
You will do your very best to get the evidence we need together in a timely manner
I will ask you to pay costs orders

Equally there may be things the representatives and clients want from the Hearing Officers , so what about a debate to discuss it?

A couple of quick questions

2011-08-26T17:15:00.000+01:00

1. Posting to the members-only Obscure IP Group on LinkedIn, Kayanne Horgan has been speculating as to whether trade mark attorneys might expect to see a surge in registrations once the new Icann gTLD program is launched in January? I'm not sure whether this is a reference to trade mark registrations (hooray!) or gTLD registrations (boo!), but in either case it would be good to know whether a flood -- or even a trickle -- of registration work might be expected to materialise, in which case readers of this blog are warmly advised not to book their summer holidays for January, when everything's a bit cheaper.

2. The IPKat has been mewing about the problem of costs orders for relatively small sums that remain unpaid by unsuccessful opponents at OHIM and indeed in the UK Intellectual Property Office. Some readers have posted comments suggesting that costs should be scrapped entirely, while voters in the Kat's poll -- who were not given the option of scrapping costs orders -- currently favour requiring opponents in office proceedings to be made to give security for costs. Thoughts, anyone?

Advertising Bribery and Sponsorship

2011-08-19T16:59:00.000+01:00

Hopefully, we can all recognise that a cash bribe passing under the table is unlawful. However, the publicity surrounding the recent implementation of the Bribery Act in England has called into question normal law firm marketing practices and behaviours. No longer is it possible for an in-house lawyer to go out to lunch without some quip being made as to whether such behaviour could be a bribe.

Since the media encourages a very judgemental attitude to those who transgress in any way - whether they be MPs in receipt of expenses, newspaper publishers or looters, it's not a good idea to find yourself on the wrong side of the law. However,creating such an environment of angst does make life difficult for those who promote their businesses using sponsorship. Once upon a time, there was some credibility that if you were speaking at a conference you were a legal expert. Now that your contribution is clearly marked as that of a sponsor, its value is much degraded. Have a look at the programme for the Legal Week Corporate Counsel Conference.

Today I received a query from CIPA - the professional body of UK patent attorneys - who are making a risk assessment exercise concerning the activities of the Institute in order to establish a Bribery Act policy. Apart from a few paid staff, all work done for the benefit of the Institute is by volunteer members. The retired ones maybe do it for love because they like to keep in touch, but those who could be earning substantial hourly rates, justify their involvement to their partners by the kudos they receive as a member of Council or as a speaker at a CIPA conference.

Equally, I was rather surprised that ITMA circulated all its members with the suggestion that they should volunteer to speak at the London evening meetings. We thought they invited the best qualified speakers, but perhaps they felt they had to be more open. Even so, if you volunteer, you will be branded a self publicist rather than an altruist - most people would prefer to be invitedas a result of peer-reviewed recommendation and it seems now that invitations are at risk of being considered bribes. Those on the outside are always afraid of a closed shop, especially if they cannot see the door. Just look at the comments on our last post on the supply of intellectual property advice in Northern Ireland.

Maybe the Bribery Act will have the effect of introducing greater transparency into the selection and payment of speakers at allegedly educational events. Nevertheless, we may find that the absence of good wine and dining incentives, because they might be considered as a bribe, will threaten the whole business model under which professional bodies like CIPA and ITMA operate. Do you think that's a good thing?

Representation in UK Trademark Oppositions

2011-08-09T10:35:00.000+01:00

The clock is ticking at Greenwich rather than the IPO

Two newly published Tribunal Practice Notes from the UK IPO suggest that there may be problems arising due to the reduced numbers of parties taking the opportunity to have professional representation before the tribunals during Oppositions. The first notice TPN 1/2011 concerns editing of specifications where only part of the specification has been opposed; and the second TPN 2/2011 case management and the dreaded extension of time requests.

Dear Trademark Applicant /Opponent:
Yes it is possible to represent your own business. Some business managers even find it fun and challenging. However it is distracting you from your day job and you may be better off seeking out help from one of the many good IP law practitioners out there. If you are confident enough to have a go yourself, then you are clearly competent to negotiate a fixed price deal with a professional. If you must oppose - oppose everything. It can always be cut down later. However a long- winded opposition may not be the best way to deal with a real commercial problem. Spend the time to establish what you want and need and then consult a professional to see if you can achieve it.

Meanwhile are there other solutions the IPO should be looking at. Appointing some legally qualified hearing officers from the junior bar or retired solicitors and using case management more actively to get cases mediated or resolved without evidence. More interlocutory hearings on extensions cannot be the answer as this merely adds to the cost and the acrimony.

And the profession? do we need to go the Quality Solicitors route with Quality Trademark Professionals?

Ploughing a lonely furrow? IP practice in Northern Ireland

2011-08-04T13:37:00.000+01:00

Northern Ireland: better known
for its climate than for its IP?

Today's post on PatLit about litigating patents in Northern Ireland set me thinking. While Northern Ireland is governed by much the same statutory provisions covering intellectual property law as is the rest of the United Kingdom, its small population (fewer than 2 million) and largely agrarian economy probably offer less scope for developing an intellectual property-based practice and in building concentrations of expertise. Also, because of its geographical isolation, IP practitioners must inevitably find it difficult to network with professional colleagues, attend seminars and so on. The spread of the internet and the increased use of webinars, Skype and the social media may have ameliorated the position, but being an IP specialist in private practice in Northern Ireland must still be quite a lonely job.

Does SOLO IP have any Northern Ireland readers out there who would like to share their thoughts and feelings with others -- or who can disabuse this blogger of the impression he has painted above? If so, we'll be delighted to hear from you.

Hargreaves Response

2011-08-03T12:01:00.000+01:00

Vince Cable was at the British Library this morning to announce the government's response to the Hargreaves review. Naturally, the media is focusing on those elements which relate to file copying, sharing and Internet blocking. See the BBC here, the Next Web here and the Guardian here . It is indeed very welcome to see that there will be proposals for a substantial opening up of the UK copyright exemptions - so maybe there will be some fair use arriving after all.

However, down in the bowels of the Hargreaves report there was a discussion about SME access to IP advice. What does the government intend to do? Well you will be delighted to learn that later this year, the IPO will set out its plans to improve accessability of the IP system to smaller companies, including access to lower cost providers of integrated IP legal and commercial advice.

Does that mean I can advertise on the idea websites for free if I agree to charge less than the market leaders? Does it mean that they will reinvent the recently abolished Business Link advisers? Since "integrated IP legal and commercial advice" is not a known sector, perhaps we will find the IPO looking more kindly at self-appointed patent strategists. In any event, its a good phrase to put on your letterhead and to include on your website. Get marketing!

Only Connect

2011-07-21T08:56:00.000+01:00

The current issue of Internet Newsletter for Lawyers (July/August 2011) carries a feature on Connect2Law, the referral service for solicitors established ten years ago by Pannone LLP and the primary benefit of which -- as Delia Venables explains -- is "to offer member firms the ability to service their clients in areas of law they didn't undertake themselves by referring them to Pannone". There are now some 20 "hub" firms that replicate, in their respective geographical areas, the services offered by Pannone in North West England. Referring firms receive back from the hub firm a proportion of the fee of up to 10% and the protection of clients is underpinned by a no-poaching clause.

There's nothing on the Connect2Law website that indicates which areas of law are covered, though presumably soft intellectual property is likely to be covered even if highly specialist areas such as patent litigation may not be.

I was wondering whether readers of this weblog have any experience of Connect2Law and, if so, what they feel about it.

Changing the Stationery

2011-07-15T10:00:00.005+01:00

Logs being floated down the river to make paper for Lawyers

I thought it might be wise to be abreast of the Solicitor's Regulation Authority Outcomes Focused Regulation that comes into effect for firms regulated by the SRA on 6 October 2011. There is a whole new Code of Conduct that was approved only in June. I understood that the aim had been to avoid micro-management and a multitude of detailed rules. The Tag line is Freedom in Practice. From a marketing perspective, that sounds promising and liberating. Great stuff you might think for you and the consumer.

However when I see notices like this from The Law Society demanding that you change your stationery, you wonder if the message has truly got across. Presumably the outcome for a law firm's clients is that they can identify who they are dealing with - but why assume that legal practice requires pre-printed stationery and that firm's must change it. Is the outcome not achieved by adding the information in a signature block added during document creation. It does not need to be printed. Unfortunately the Outcome we are addressing here (Outcome 8.5 no less) is not an "outcome" at all its a prescriptive rule that defines the wording. No freedom allowed.

For the small legal practice this new Handbook is an implementation nightmare. Fortunately the SRA are offering roadshows to get you abreast of the new regime. There is one in London on 6 September so book in. It's free and there is that lure of free CPD.

IP litigators: you are hereby consulted!

2011-07-15T09:31:00.000+01:00

Are you an IP litigator in search of something to read? Have you any personal experience of the CIPA Higher Courts Qualification Regulations or the ITMA Trade Mark Litigator and Trade Mark Advocate Certificate Regulations that you're bursting to share? If so, the Intellectual Property Regulation Board (IPReg) Consultation on Replacement of the CIPA Higher Courts Qualification Regulations and the ITMA Trade Mark Litigator and Trade Mark Advocate Certificate Regulations may be just what you're looking for.

If you want to respond to the consultation document, you can email IPReg Chief Executive Ann Wright here. The consultation closes on 17 October 2011 after which the respective professional regulatory boards will
consider responses, prepare a draft regulation and then issue a further consultation so that interested parties can comment on the wording of the draft regulation before it is finalised and submitted to the Legal Services Board for approval.

If you don't want to respond, read this document anyway. It's short (15 sides, inclusive of the bits you don't need to read), well-written and devoid of the unnecessary artwork and acreage of white space that seems to accompany so many print-out-and-read documents emanating from the public sector. It also contains a useful potted history of IP litigation and representation over the past couple of decades or so.

Come and see my mouse mats, or the Bribery Act is here

2011-07-05T18:30:00.000+01:00

To avoid accusations of bribery,
law firms are advised to give generic
unbranded mouse mats this Xmas

If other readers of this weblog have had the same experiences as I have, they will have been deluged with circulars, advertisements and warnings of all shapes and sizes, all reminding them that the UK's Bribery Act will be/is/was brought into force and that this will be an ~~apocolyptic acopalytic apuplectic~~ important event in the lives of us all.

In all my years as an intellectual property consultant to major firms, and also in my "own" guise as a person who has given advice and assistance to individuals and impoverished but worthy organisations on matters of IP, I have never come into contact with traditional bribery or the more subliminal sort, such as corporate wining and dining, tickets to prestigious sporting events and so on. I can however boast an almost unparalleled collection of corporate and law firm ball-point pens, mouse mats, still-unrecycled diaries and calendars and stress balls. Am I in receipt of bribes, I wonder?

On a more serious note, if any reader has thoughts on the impact of this new legislation on the small and sole practitioner community, please will that person or persons share them. There is positively no inducement for doing so, or reward for having done so ...