SOLO Independent IP Practitioners

The future for small practitioners

2009-10-27T12:07:00.000Z

This morning I held a breakfast meeting for small firms of solicitors to discuss the future under the Legal Services Act 2007, when the rules allowing Alternative Business Structures come into effect in 2011. We had an interesting discussion, and I may post another blog about some of what we discussed, but here I just want to mention the business model of running as a consultant rather than a law firm. This is what is happening in society generally, and is something too few solicitors consider when embarking on life outside large law firms.

It seems to be a clever way of operating as a solo nowadays to set up as a consultant rather than as a sole practice. There is a glut of lawyers, and the danger in setting up a solo practice is that you may find yourself trapped in a situation where you can't close down the firm (unless you're willing to pay 6 times your annual Professional Indemnity insurance by way of run off cover), and yet have to continue unless someone either buys the practice from you, or is willing to take over your liabilities.

Many solo firms lack the business and marketing skills required to create a truly successful business that someone will buy off them. The problem is that they set up their firms for the wrong reasons - redundancy, or for lifestyle reasons, and then find it doesn't provide the income they had hoped for.

If you don't set up your own law firm but instead offer your services on a case by case basis to other law firms (usually the larger ones) at far lower hourly rates than you would need to charge if you had your own law firm, you can still work from home, and get to use your expertise, but you stand to make a lot more money. You make more than you were making as a salaried employee, and much more than many solos make who set up their own firms.

You probably need to 'attach yourself' nominally to one of your client firms, who will put you down on their practising certificate renewal application form, but otherwise you are free to work for a number of different firms, and each assignment you undertake will be covered under the insurance of the client firm.

If you find a prospective client who wants your skills, but perfers to have you contract through a big brand law firm then you can refer the work to one of your bigger law firm clients, (collect a referral fee for this) and do the work at your normal rate. Similarly, if the client wants to pay lower fees you can refer the matter to a smaller client firm, again collect a referral fee, and do the work charging your normal rate. The client gets the same expert either way but gets to choose whether to use a large branded law firm or a smaller, cheaper one. You have none of the headaches about professional indemnity insurance. Your hourly rate is low enough to be affordable by either large law firms or smaller ones.

The wrong choice of business model underlies many of the problems solos face. Increasingly as it becomes more and more expensive to operate as a solicitor because of the regulatory overheads being piled up on law firms, why would anyone starting out want to burden themselves with a law firm? If you are a patent attorney, then it's easy enough for you to continue to practice. But for solicitors who don't want to or have nothing to offer if they drop their solicitor title, the solution is to set up as a consultant.

The time for running a lifeystyle law practice is coming to an end. Unless you've got a unique business proposition to offer clients don't set up your own law firm. The promise of lower fees and a more personal service, which you may or may not be able to deliver on, is increasingly not enough of a differentiating factor to win business for a solo practice.

WIPO Arbitration Training by Mark Anderson

2009-10-20T12:17:00.003+01:00

Last week I attended a WIPO two-day course, in Geneva, on the arbitration of intellectual property disputes. It was one of the best legal courses (12.5 hours CPD) I have attended.

Thanks to Tom Giovanetti of IPI PolicyBytes for this image of the WIPO sign circa 2005

Although the course did consider the arbitration of “pure” IP disputes (eg infringement of IP), most of the case examples that we discussed were concerned with disputes arising under IP agreements, including licences and R&D collaboration agreements.

The course took us methodically through the different stages and processes of arbitration under WIPO rules, looking in some detail at the various rules, treaties and guidance documents. This would have been very valuable in itself. For me, what made the course exceptionally good was hearing the practical insights of experienced WIPO arbitrators (including our own Trevor Cook) in relation to each stage and process. These insights were further enriched by the inclusion of half a dozen panellists from different jurisdictions, who were able to discuss both common law and civil law approaches to dispute resolution, and how these approaches compared with the WIPO arbitration process. Although the panellists mostly agreed on their approach to the various issues discussed, their occasional disagreements (eg as to the best way of handling difficult situations in an arbitration) were extremely valuable in teaching us about subjects where there is no single, “correct” answer.

Several sessions consisted of “case scenarios” where small groups discussed practical problems. It was well thought-out to keep the membership of the groups constant but to rotate the panellists between the groups for each session. This meant that group members were able to develop a rapport and to have an easy discussion, whilst the insights of a different panellist at each session gave us some further light and shade on how best to tackle the practical issues that arise in arbitrations.

The course was very well-organised, and this gives confidence that a WIPO arbitration might be similarly well-organised by the WIPO secretariat.

It was fascinating to encounter that rare human sub-species, the IP diplomat. After an introductory talk by Francis Gurry, Director-General of WIPO, we were introduced to Erik Wilbers, Director of the WIPO Arbitration and Mediation Centre, and Ignacio de Castro, the Deputy Director. To be a successful IP diplomat, it seems to be necessary to be a talented IP lawyer (often with experience in a major law firm such as Freshfields), and to have the qualities of “ease and tact” that are necessary for international diplomacy. If you are interested, they currently have several vacancies for IP lawyers.

Understanding Copyright in Patent Prosecution

2009-10-11T11:55:00.008+01:00

One of the biggest problems the governments of the world have in designing copyright laws is making their scope well understood to those who are subject to them. This means keeping it simple. Members of the public need to know when they can copy and when they can not.

You would expect specialist IP practitioners, such as patent agents, to understand how copyright impacts their everyday work.

Sadly the Berne Convention does not prescribe every potential limitation on the scope of copyright, although it does sanction certain free uses that countries may cover in their national legislation. In English law, Copyright is not infringed by anything done for the purposes of judicial proceedings (s45(1) CDPA 1988). So what are judicial proceedings? They are a minor definition in s178 and include proceedings before any court, tribunal or person having authority to decide any matter affecting a person’s legal rights or liabilities. Since the Patent Office or Intellectual Property Office (IPO) affects a person's legal rights when it grants or refuses a patent application, it can copy and communicate copyright material to the public with impunity. However it is arguable whether this exception covers what goes on in the Attorney's office. The practice of the IPO and EPO of offering, for a fee, to provide extra copies of citations suggests that they think we do not enjoy this exemption. It may even be why the IPO oddly posts two copies of their search and exam reports.

During the Gowers review in March 2008, the TMPDF suggested that the IPO was not entitled to publish patent files online, as the EPO and USPTO do, because the copyright exemption under s47 for publication does not extend to the making available right (s 20 as amended).

Neither the Crown, the IPO nor any patent applicant has, to my knowledge, ever objected to the making available (in due time) of their files by asserting copyright. If this ever happened the defendant would claim an implied licence to copy. However, once we rely on an unwritten implied licence, how can we expect a teenage downloader to comprehend the law.

The problem lies in the broad coverage of copyright. It seems that everything has copyright. Perhaps it is time to raise the bar and eliminate copyright from the fields where it does not belong and give it back to artists and authors who need it to live off. Lawyers and businessmen can monetise their work in more direct ways.

If you wondered why I used the image above to illustrate this article, hover you mouse over it. Maybe The Museum of Modern Art or the artist himself might appreciate that copyright law was not so complicated.

Take the Train to Westlaw Training this November

2009-10-02T13:48:00.002+01:00

Free training on the Westlaw IP platform for SOLO practitioners will take place at the Thomson Reuters Towers at 100 Avenue Road Swiss Cottage.

More information to follow but places will be limited so expressions of interest please.

Professor Susskind acknowledges SOLO contribution

2009-09-23T11:47:00.004+01:00

It well worth listening to the College of Law podcast in which Professor Susskind and Mike Semple Piggot engage in conversation about the future of the legal profession.
You will be well aware of Professor Susskind's evangelistic advocacy of all things IT and commoditised that he believes will replace large swathes of lawyers' work in the future. He has seen this future for many years but maybe we are really getting closer now. One of the examples he discusses is a sole practitioner, so it is encouraging to believe we may be part of the future.
Certainly the IT tools I use in my practice for case management, accounting and communication are essential and I could not practice unsupported without them. Indeed they free me to add that strategic advice and wisdom that only an individual brain can add.
I am however less enthused about the idea that we and our clients should outsource entirely. Rio Tinto has taken their patent work offshore. Professor Susskind sees this as extending the team, which is fair enough. I suspect they might have done better to re-examine a strategy that demands they factory file patent applications in the first place.
Another area that concerns me about factory drafted legal agreements is that they tend to be verbose and beyond the comprehension of many clients. So, sadly, do many law firm drafted products. Having learned to draft contracts after I learned to draft patent specifications, I tend to make less use of precedents. My short documents can cause consternation and frequently are substituted by the other side's prolixity. However I keep coming up against problem situations created by misunderstood or missing legal documents:

a negotiation between two small firms held up because one wants a 9 page confidentiality agreement
investment delayed because the proposed investors don't want to spend the entire investment on drafting the shareholder agreement
disputes unsettled as the drafting of the settlement agreement takes forever and the parties forget where they are going
re branding prevented because there is no licence to use the new logo

The less0n must be that we do need to keep some sensible legal advice available at a reasonable price. If the price of the real advice can be reduced by IT and commoditisation then I am a supporter but don't take the lawyer out of the equation.

Guest Post from Mark Anderson: Sole or SOLO

2009-09-13T13:10:00.003+01:00

My good friend Susan Singleton is a sole practitioner specialising in IP/IT/competition law and a regular correspondent on the letters page of the Law Society Gazette. Her letter in this week’s Gazette comments on the joys of being a sole practitioner. One of the necessary qualities for sole practitioners that she identifies is being “emotionally robust”, which certainly applies to her.

Other qualities that I would identify are:

1. When you start in (sole) practice, it helps to have a steady client base that will stay with you when you go it alone.
2. You need to develop a “gene pool” of contacts who will recommend you or feed work to you to replace the clients who inevitably move on, retire, have no further need of your services, or find someone else whose services they prefer.
3. Linked to the previous point, you need to develop and maintain a reputation as someone who is good at what they do, and a credible alternative to using a larger firm. How you do this depends on your skill-set and temperament.
4. You definitely need to be someone who does not need the social interaction of a large office and can concentrate on work without external pressure.

There are different models of sole practice. Susan has chosen the extreme route of having no support, other than occasionally asking me to baby-sit her clients whilst she is on her holiday island off Panama. My route, as someone who worked at the same firm (Bristows) as Susan for 5 years, and set up my firm about 6 months after she set up hers, has been slightly different. Although still a sole practitioner, I employ six people.

What do readers think are the key qualities for successful sole practice?

Advising SMEs with enforcement issues: can you help?

2009-09-10T10:51:00.008+01:00

The appeal posted here earlier today on the IPKat weblog for volunteers to share their experience with SABIP's researchers regarding IP enforcement by SMEs has already attracted some responses from the 'small litigant' sector. Assistance has also been offered by Own-it, which provides pro bono sessions for micro-businesses with enforcement / infringement issues.

If your practice involves advising SMEs, particularly in circumstances in which cost is a major factor, and you'd like to make yourself available for survey or interview purposes, please email Jeremy Phillips or Robert Pitkethly with the email subject line 'SMEs SABIP', no later than 25 September 2009.

Must we oppose?

2009-09-07T09:35:00.002+01:00

Before investing a client's money on an opposition fee, and mindful of the Trade Mark registry's guidance, I wrote (by fax and post) a while ago to the agents for the application in which my client was interested. Knowing how trade mark agents like deadlines, I asked for a reply by a certain date. When that date passed without a reply I wrote again and asked at least for an acknowledgement, and when that went unanswered too I telephoned.

I spoke to a member of the firm's staff, who told me that because so often a letter-before-opposition was a "try-on", as he put it, it was the firm's practice to ignore them. If a Notice of Opposition then arrived, they would seek an amicable settlement, which he assured me was common practice. I pointed out that this was not an approach conducive to amicable relations, and told him I would refer the matter to the Institute - which I have done. I know that it is not universal practice, because others have acknowledged such letters.

ITMA's Code of Practice deals in section 2 with "relations between members of the Institute". This states in pertinent part: "A Member must behave courteously at all times, irrespective of the issues involved in the matter with which he is dealing". It does not deal with relations between members and other professionals. It seems to me that failing to answer correspondence is about as discourteous as can be (not that I have never failed in timely fashion to acknowledge a letter, but not as a result of a deliberate policy). It also seems to me that obliging the would-be opponent to become an opponent in fact creates an unnecessary cost burden for the opponent and for the applicant, as well as making an amicable settlement unlikely. If my opposition can be settled, it will have to be on terms that include payment of my client's wasted costs, and if that means taking it to a formal decision and costs award then so be it.

What possible purpose does the agent's policy serve? If there is a problem with "try-ons", the same paragraph in the Code surely applies - surely that in itself shows a lack of courtesy.

A goose-step for IP recruitment?

2009-08-26T16:37:00.015+01:00

If you've been thinking of chucking it all in, abandoning all pretensions of sole practice and getting a real job instead, your thoughts will turn towards the choice of a recruitment firm to aid you. In this context, "Controversial Goose Attack Video Launches Intellectual Property Recruitment Firm; Fellows and Associates" (see Marketing News Today, here) might just influence your decision.

Right: this is not the actual goose, but a lookalike body-double ...

According to the this article,

"Patent and Trade Mark Attorney recruitment firm, Fellows and Associates launches its brand with a YouTube video entitled ‘Goose Attack At Wedding’. The video, which features a photographer in an entanglement with a goose, was released on YouTube, Dailymotion, and other leading sites last week. The photographer’s unconventional approach to problem solving could be seen as controversial.

The video was filmed guerrilla style in Leeds, West Yorkshire, with a combination of professional actors, film crew and extras (including the part of the photographer) recruited via Facebook and Gumtree. Alan Jones who plays the photographer said, “I was really excited to see myself on YouTube but hope my debut is not too controversial. It’s been a real demonstration of what can be achieved and shows businesses that perhaps would not have traditionally advertised on Television that they can produce a fantastic result and be able to distribute their work in an audiovisual format.” There has so far been no comment from the goose.

The film took three months to develop with the majority of that time spent brainstorming ideas with the production team. Concepts that were dismissed included running across cows, beat boxing, large inflatables, kids driving trucks, 1950s style educational films and building a time machine. “The aim was to find an idea that was provocative in order to elicit a response and maximise the video’s potential for spreading virally whilst maintaining a balance of responsible advertising” says Fellows and Associates Managing Director, Pete Fellows.

Fellows and Associates are the first UK recruitment firm in the Intellectual Property sector to experiment with viral video advertising.

“Our competitors in Intellectual Property sector recruitment do not make the best use of the online resources available,” says Pete “we believe a social networking strategy including sites such as Twitter, Linkedin, Facebook and YouTube is now crucial to brand awareness and building on our network of contacts throughout the world ...."

Three months, for a 56-second do-it-yourself-style video? You can form your own opinion if it's worthwhile ...

Feral pigeon was not available for comment.

A surprise in my mailbox

2009-08-24T16:46:00.011+01:00

I got this in my email in-box today. I had no idea that Thomson Reuters had an IP service. Is this something to do with CompuMark, which I believe the same company owns?

Many of our customers are facing budget cuts and some have to abandon their IP. Are your patent maintenance fees costing more that you would like?
- Are you experiencing challenges w. your renewals?
- Is your portfolio managed by external counsels?
- Do you have visibility of your patent portfolio and are they align with your company’s strategies?

Summary benefits of Thomson Reuters’ IP services are:

• Cost savings - receive discounts from our bulk renewals
• Time saving - IP consolidation
• Efficiency - 1 supplier instead of managing multiple attorneys
• Security – robust technology w. 20,000 IP rules, VIP payments to reduce liability
• Quality service - receipt tracking, data audits w. discrepancy reconciliation
Could you do me a favour and forward the material to your team members? Please feel free to contact me to discuss your IP requirements. When would it be convenience to discuss as to how we can assist you?

Thomson Reuters is the largest intellectual property solution provider. We have been in the industry for >35 years, specialising in patent & trademark case management software and payment services. We renew >750,000 patents & trademarks p.a. in >400 jurisdictions for customers such as GSK and Pfizer. Our customers have benefited from reduced patent maintenances fee and streamlined their IP processes.

IPMaster patent portfolio database
http://www.thomsonipmanagement.com/ip-manager.aspx
Patent & Trademark payment services
http://www.thomsonipmanagement.com/ip-payments.aspx

Nothing like a Good Argument

2009-08-12T14:27:00.004+01:00

However well you know the law, a skeleton argument in a trademark opposition looks a bit naked without some authority. Sometimes of course, you need to check your facts and the way the wind is blowing on a patentability issue. Therefore, even for the solo practitioner having access to a legal library is important.

Free resources are always best and I have just discovered some excellent English law stuff that is appearing on the website of Insite Law Magazine. Particularly valuable are the Contract materials, because they are not well covered in other IP-focused resources.

For those of you who are subscribed to our Westlaw IP package, we have a renewal coming up in November so I am looking for any feedback from users. The subscription is for UK-based sole practitioner's (sorry not counsel) and currently includes books (including the CIPA Black Book) cases and magazines on UK and European IP law. If there are other resources on http://www.westlaw.co.uk/cases/index.shtm or http://www.lawtel.com/ that you are prepared to PAY for let me know and we will see what can be negotiated. Having a professional structured interface to access legal materials does represent a significant improvement over bare Internet access to cases.

However for the truly credit- crunched here are some more favourite FREE links

BAILII British and Irish Legal Information Institute decisions of English courts and Nominet
CURIA European Court of Justice and Court of First Instance cases
EPO EPO Board of Appeal Decisions database

It'll cost your client (a little bit) more ...

2009-07-20T16:19:00.010+01:00

A public consultation setting out proposed changes to current patent fees was today announced by the UK's Intellectual Property Office. Among other things,

"Modest renewal fee increases are proposed; an increase in search and examination fees for businesses looking to get a patent is also reviewed, but this is linked to an increased discount for e-filed search and examination requests".

According to the press release,

"The main proposals include:

* Some increases to patent renewal fees, chiefly for mature patents
* An increase in patent search and examination fees but with a larger discount for e-filed search and examination requests
* The introduction of an excess claims fee, and
* The introduction of a litigation fee for contested patent proceedings at the Intellectual Property Office".

You've got till 12 October 2009 to respond, if you fancy doing so. In case you wondered, David Lammy, Minister of State for Intellectual Property is quoted as saying:

"Patent fees must be set at levels which allow innovative businesses and individuals in the UK and beyond to access and enjoy the benefits of protecting their intellectual property.

But I also want to ensure that businesses have a functioning and value-generating IP system that supports and encourages innovation in the UK. The Intellectual Property Office needs a sustainable income to continue providing this service to its customers.

It’s important to realise that UK patent fees are, and would still remain, some of the lowest in the world even if these proposals go ahead. These low fees continue to offer the attractive choice of national IP protection for UK innovators".

The review has also considered and made proposals on changes to IPO fees for handling international patent applications and the fees for recording transactions on designs, patents and trade marks. You have been warned ... This is also a good opportunity for engaging with clients -- it's time to remind them that what they don't do now for less they can do later for more.

Come and hear Julian

2009-07-07T05:56:00.007+01:00

Australian solo IP practitioner lawyer Julian Gyngell is in London next week to speak to the IP Finance Group on "Phonewords and Finance". He speaks at the offices of McDermott Will & Emery on Tuesday 14 July, at 5.50pm to 7pm. Admission free. Full details here. If you're coming, email me here to let me know.

Facebook Fan Pages

2009-07-05T15:03:00.001+01:00

Currently Facebook requires any Page to have at least 100 fans in order to register a username. A week ago they had announced you would need 25 fans, and before that there was merely a 28 June deadline with no minimum number stipulated. Facebook had initially only allowed businesses whose Pages had more than 1000 fans to register their usernames in early June. At that time it was promising others the opportunity to register their usernames on 28 June.

So, unless Facebook has moved the goalposts yet again, if Azrights manages to get another 67 fans, I will finally be able to register Azrights as our Page username.

This is a post to ask you all to become a fan of Azrights. I am more than happy to reciprocate for your Pages. (Incidentally, having a fan page helps in your search engine rankings). Also, I think there is value for businesses to secure their usernames as I suspect Facebook pages for business will become quite important in the future.

Background
Phenomenal publicity was generated by the Facebook user name policy change a couple of weeks ago. There was a flurry of tweets about it on Twitter, and many lawyers raced to advise their clients of the importance of registering their trademarks at Facebook (at least in the sense of notifying Facebook of their registered rights so as to block others registering the name).

It was particularly noteworthy that even INTA took a proactive stance on a ‘private’ matter by emailing all INTA members, a fact that did not go unremarked by Marty Schwimmer of the Trademark Blog.

Currently there is quite a lot of confusion around creating company Pages on Facebook as shown by this page. I suspect now there will be an explosion of Pages being created as more businesses see the opportunities for promoting their brands via Facebook, traditionally regarded as the preserve of purely social networking, and for college kids at that. This video provides a useful insight into how brands can use Facebook to promote themselves. It also explains that the intrinsic difference between Profiles and Pages is that Profiles are private in nature. You have to accept friends into your group. On the other hand, Pages are public, and provide an ideal broadcasting platform for brands. See for example Coca Cola’s Page.

Azrights Facebook Page was created well before 31 May, and the name is trade marked. But lacking sufficient fans means we can do nothing right now to secure Azrights as our username. (Would love to know what Facebook’s thinking is behind this extra layer of delay.)

So, in conclusion please become an Azrights Fan It is risk free!

A new age Dawns

2009-06-25T09:43:00.010+01:00

I learned yesterday that Dawn Osborne, a partner for 9 years with top international IP outfit Rouse, has made a major career change and gone in with Palmer Biggs Legal, a small IP boutique not far from Gatwick airport in the leafy surrounds of rural Surrey.

Dawn has extensive IP experience which covers litigation, mediation and general advice in IP-busy sectors such as fashion, luxury goods, jewellery, retail and travel. She is also a person who is known for her enthusiasm, involvement and commitment. A Big Name, she lectures, publishes and projects herself with the confidence of a seasoned and leading practitioner of her art. So why take this monumental step at a time when markets are uncertain (as are clients' budgets for legal advice) and the advice most City solicitors are following is one of "sit tight"?

Perhaps the answer lies in the flexibility of the new technologies and the price-competitiveness that can result from ditching City overheads. Most traditional large law firms are based on economies of scale: library resources, secretarial and logistical back-up, security, catering, heating and lighting, insurance -- put a lot of people under the same roof and divide the cost between them and the per-unit cost looks good. But who needs their own library these days? And in the era of broadband, BlackBerries (and their competitors), Skype, search engines and the like, the economies achieved by scale are looking like last century's calculations.

Good luck, Dawn -- a lot of people will be watching you and wondering whether they should be doing the same thing ...

Don't Rush to file Your International Registrations

2009-06-12T18:49:00.002+01:00

A guest blog from the solo known as Cam Trade Marks and IP Services

Just been announced (by Jessica Lewis of OHIM at an ITMA Seminar on IRs in London on 11 June) that the new Madrid fees for EC designations - equivalent to EUR 870 - will become effective on 12 August 2009. For any filings before this date, with payment of the old amounts, the equivalent of the registration fee and class fees will be reimbursed ONLY in case of final refusal. So, if you can hold on, it makes a lot of financial sense to wait until this date before filing any more EC designations via the Madrid system

Paying for Regulation

2009-06-09T07:55:00.003+01:00

No, not that sort of regulator - I mean the one that the Legal Services Act will impose on IP practitioners whether they practice as solicitors or under the protected titles for registered trademark attorneys and patent attorneys. IPREG has a consultation out on how the cost should be shared. Download it here. Naturally it peddles the alleged evidence that SOLO is high risk and will attract the use of most regulation services. Rest assured, Mr Heap, we do not want them. However since the professional members of the Shadow Board are all drawn from big practice, we do not stand much chance. Hopefully lay members who will properly consider the concerns of the consumer will be appointed soon to redress the balance.

The object of regulation is to protect the consumer. What about a payment model based on turnover like insurance premiums. Surely turnover reflects exposure to the market. At the moment we are counting people and regulated bodies. Some SOLO practices employ armies of paralegals and have high turnover. Are these the high risk ones or are the low turnover ones an equal risk? I have asked for the evidence referred to in the Consultation Document but so far the request goes unanswered.

I believe the consumer does deserve the benefit of regulation but at present the Act seems likely to achieve the exact opposite of its intention and the exodus of many business advisers in the IP and wider legal field from the regulated sector. Since the practice of law (other than litigation, probate and conveyancing) is largely an unreserved activity In England, this seems the most likely outcome.

Do our clients deserve more. If they do perhaps we should consider voluntary self- regulation. Oh that was what the profession used to be about wasn't it?

A Book of Inspiration for Free

2009-06-04T18:44:00.002+01:00

Not just a book but a teleseminar as well on Tuesday 9th June. See

http://buildasolopractice.solopracticeuniversity.com/e-book/

Firm Links

2009-05-27T16:59:00.001+01:00

Azrights has set up a networking group for small law firms (of fewer than 5 partners). It is called Firm Links.

Its purpose is to afford small law firms an opportunity to discuss matters of mutual interest. It will provide a perfect environment for generating new ideas, exchanging experiences, hearing other people’s views and therefore gaining a different perspective.

The first discussion forum is taking place at a central London location on Tuesday 2nd June, 2009 over breakfast. The cost to attend is £20 plus VAT. So far we have invited solicitors known to us through networking.

There is no limit to the number of solicitors who may be added to the invitation list. The way Firm Links works is that the first 25 solicitors to accept an invitation for a meeting will attend the meeting for that month. So, there is no obligation to attend regularly.

More about Firm Links

Small practices face unique challenges – particularly in the light of the changes brought about by the Legal Services Act and the likely increased costs of regulation. By getting together and discussing business matters with other law firms we aim to find solutions and generate new creative ways of improving our individual businesses.

Apart from picking up useful information, participants will make new contacts with a variety of other lawyers. The meetings will begin with an opportunity for each participant to give a 1-2 minute ‘elevator speech’ to introduce themselves to the group. We advise bringing plenty of business cards to pass around.

Firm Links will usually meet once a month over breakfast, but we may also arrange other events too. (Only one representative of a law firm may attend the same meeting, although more than one solicitor from that firm may be on the invitation list). There is no restriction on the number of lawyers specialising in a given area of law. The only absolute rule for now is that if a firm grows to more than 5 partners it will no longer be eligible to attend Firm Links.

Topic for 2nd June discussion - Professional Indemnity Insurance

The topic for discussion is Insurance following last year’s difficult PI renewal situation. The Gazette reported on 23 April that this year is also going to be a difficult renewal situation. With the current economic downturn, and the increasingly competitive landscape on the horizon, what impact does another adverse insurance season have on small firms? Does the current insurance problem have the potential to force the closure of yet more law firms? What are your thoughts on what the insurers will be looking out for? Have you developed or implemented any changes that might have a beneficial impact on your insurance renewal experience this year? What preparation can we make? Is Lexcel relevant to small firms? Does it help?

The Law Society has also produced a practice note on a dedicated website and is running CPD seminars, as part of its tool kit to help members “more effectively prepare their firms for obtaining or renewing their PII and developing best practice approaches for the long term.”

If you do not want miss out on the first meeting on 2nd June, then please email us here before 28th May. Email the same address if you would like to be added to the invitation list for future meetings.

Insurance: a baffling proposition

2009-05-21T08:10:00.005+01:00

I was speaking today to a Chicago IP attorney, Jim Faier, who was telling me of the problems faced by a local colleague who was seeking to renew his PI insurance. The colleague in question derived a steady volume of work from a single large corporate client in the healthcare sector which had followed him when he left a bigger firm. The insurance company apparently said that, unless he substantially diversified his sources of income and made himself less dependent on a single client, his insurance premium would be sharply increased.

I thought this strange, since prima facie there appears to be no connection between the number of clients from whom work is received and the likelihood of an insured risk becoming the subject of a claim. Jim agreed with me that there was no obvious actuarial basis for such a premium hike to be levied. I write therefore to ask readers whether this is a feature of PI insurance elsewhere than in the state of Illinois.

Early Assist for Trademark Applicants

2009-05-10T18:44:00.003+01:00

I have been working on a personal response to the UK IPO consultation on credit crunch fee structures which is due in before 1 June 2009. To download the consultation paper go to http://www.ipo.gov.uk/pro-policy/consult/consult-live/consult-feeservices.htm

The overriding objective of the consultation is that businesses should protect their trademarks and inventions. It is also clear that the IPO feel some responsibility to the significant proportion of unrepresented applicants. These may represent a larger proportion of applications abandoned before advertisement and they were certainly a category Gowers cared about. Of course we must point out that there are some very cost-effective qualified trademark professionals available for hire amongst the SOLO group. If you need or want to offer help post a comment.

Amongst the proposals are a new Early Assist program, abolition or suspension of the Fast Track and encouragement for e-filing. The Early assist program appears to replace the recently abolished Search and Advisory Service and would let businesses get help and refunds of some of their fees if they wanted to represent themselves.

If I were an entrepreneur starting a business today with next to no cash, I would not spend what I had on a trademark attorney. I would try the DIY route. I might not bother to protect my mark at all. If I were starting a stay-small business it is not much of a priority, but let's suppose I want to grow my business then protecting the brand is on the agenda and a UK trademark is a good place to start. For such a one, is this Early Assist program the best solution? Can we improve it? I think we can. I think it could be better offered as IP Aid by selected quality approved private practitioners rather than through the IPO. Some of the more innovative filing services such as Trademark Direct are already offering a No TM No fee guarantee. Our entrepreneur does not want to waste his limited cash. In the beginning it is easier to change a name than fight a war.

Therefore I think this idea needs encouragement and I am hoping we can think of ways that would make it work better and ensure that the trademarks registered with such assistance are not just in compliance with the Act and rules, but the right protection for the business as well.

Manging the Unexpected Costs

2009-04-28T07:49:00.003+01:00

The Credit Crunch has an impact on the incoming invoices. I and other SOLO members have noticed an increase in unsolicited ones or larger ones. No, I don't mean those scams our clients get suggesting they should pay extra "registration" fees.
The ones that worry me are from associates. One letter begins "In the absence of your instructions to the contrary, we have reviewed the file ... and here is an invoice" It was small and I paid it.
Another problem is invoices for reporting office actions on long dormant cases. These can be awkward to pass on, but they pose a dilemma. What do I do with a Japanese office action with no invoice but no information either that would help make any decision. On the other hand a thousand dollars for a detailed report on a US trademark action creates a serious case of Bill Shock.
One method is to put in your terms of trade with associates that you cannot be billed without a budget for the work having been agreed in advance. I have accepted that restraint from one of my clients. They are smart. It does share the risk. I have to make a decision when I get an office action. I need to review the matter to create a budget. If it looks hard then the budget might be bigger than if the work had been done on the standard hourly rate but then again it might not. Even after all my years, getting a budget to match actual costs is a cause for celebration.
Another top tip is to avoid asking anything in the nature of an open ended question without a reservation that if the costs will exceed a specified amount please get clearance in advance.
Work creators will always rise up when work falls away. How do you ensure that you and your clients don't suffer?

Fordham in Cambridge

2009-04-15T21:52:00.003+01:00

I was delighted to meet Robert Hurst as another SOLO practitioner taking advantage of the opportunity for serious CPD in Cambridge. Nothing could have prepared me for Professor Hugh Hansen's unique style of presentation. It is traditional for business plan competitions to time out loquacious presenters but I have not seen the same technology employed in a professional conference environment against such eminent speakers. All took it in good part.

The morning was devoted to policy issues. We started global and by lunchtime it seemed more relevant to the real world. Copyright issues dominated the politics but we did learn that there was to be a review of the CTM system by the commission and they were going to look at the relationship with national offices (now likely to be redundant after the fee reductions) and whether it was sustainable to have a CTM validly maintained by use only in Malta or Lithuania. The Community patent is to get one last hard push. Margot Frohlinger of DG Internal Market was hopeful that some sop could be found to trade with those resistant to the proposed no-translations and no-validaton needed proposal. Something like the tomato quotas for which the Portuguese had traded use of their national language at OHIM. The proposed patent court may have a better chance of seeing the light of day, with the ECJ having a very limited role to answer questions strictly limited to European law.

After coffee we had the insights of the judiciary. Lord Hoffman will not be a judge by next Tuesday and he was in relaxed mode. The CFI was not represented and came in for a lot of criticism. William Robinson of Freshfields defended but all those trademark opposition appeal decisions seemed to satsify nobody. Apparently national courts have difficulty understanding the ECJ opinions too. This leaves them scope for interpretation and they don't therefore have to disagree. Such is the diplomacy of judges. The Honorable Randall Rader appointed the whole audience federal circuit judges and showed us that it was impossible not to consider policy in any decision. He said that a judge could not be blind to policy issues but you must be aware of your limitations as you dive into those incredibly deep waters.

At lunch I discussed blogging with some Fordham students who were running the time machines.

The afternoon saw me joing the trademark and design stream, but my Internet is about to dry up so no more for now.

IP and recruitment consultants

2009-04-14T15:45:00.006+01:00

I was chatting to a legal recruitment consultant (head-hunter?) this morning, who surprised me by telling me that his work brought him into contact with firms of all sizes and not just mega-firms. He -- like many others in the field, I suspect -- has noticed that intellectual property still has more movement in it than most other fields of practice. Do readers of this blog, as sole/small practitioners, have any recent good/bad experiences of dealing with recruitment consultants, either when looking for a suitable appointee or when trying to place themselves with another practice?

Website contact information

2009-04-07T14:50:00.001+01:00

Whether you want to include just the bare minimum information that the law requires you to display on your website, or appreciate that more extensive information will increase trust in your site, a useful starting point is to know what the law requires. Organisations need to comply with a number of legislative provisions at both UK and EU level. They will need to consider the E Commerce regulations, the Business Names Act 1985, companies will need to comply with the Companies Acts 1985 and 2006 as well as VAT legislation on displaying VAT numbers on certain documents. If you are interested in reading more, I have written a full post on this issue on the Azright IP Brands blog.