Monday, 21 July 2014

Picture yourself at ... the mercy of LinkedIn

As the moderator of a couple of LinkedIn discussion groups, I find myself logging on to LinkedIn on a regular basis.  Indeed, between approving new members, moderating comments and deleting attempts to post commercial marketing and other unwanted content, I find myself on LinkedIn far more often than on Facebook or other social media.

Picture Yourself at Freshfields Bruckhaus Deringer

  • Jeremy Phillips

Jeremy Phillips

Media and Communication at Freshfields 

This morning, on logging on, I found an image of my own smiling face next to the logo of leading international practice Freshfields Bruckhaus Deringer.  For the benefit of readers whose devices are not downloading images, my portrait and logo were presented beneath the heading "Picture Yourself at Freshfields Bruckhaus Deringer" and the caption beneath them read "Jeremy Phillips, Media and Communication at Freshfields".

While I have the greatest respect for Freshfields and enjoy the friendship and company of several people who work there, I was a little startled by this advertisement. My first thought was that this was not something that I had authorised and that others might see it too. I then decided that, most probably, LinkedIn's software was sufficiently subtle to enable the portrait of the account holder to be displayed only when the account holder logged in. My third thought was that this was presumably a cheap and cheerful way of advertising one's vacant positions only to those people whose interests and skills matched those sought by Freshfields. Clicking through to the link which Freshfields so thoughtfully provided, here, I then discovered that the firm's LinkedIn account has close on 26,000 followers. Who might they all be? Actual and prospective employees? Clients? Hopeful trainees? Information-gatherers from Freshfields' competitors? My final thought, somewhat mischievously, was that I could easily delete the heading, cut and paste the rest on to my email signature and make it look as though I was working for the firm:

  • Jeremy Phillips

Jeremy Phillips

Media and Communication at Freshfields 

All of this leads to the question: how important is LinkedIn to the small and sole practices that make up the core of this blog's readership?

Friday, 18 July 2014

When being 816th just isn't good enough: a response from Who's Who Legal

At the beginning of May I posted an item on this weblog, "Unqualified praise: when being 816th just isn't good enough", which commented on an email which I had received from a publication called Who's Who Legal. It read, in relevant part:
"I am one of a large number of people -- 815, to be precise -- who will by now have received a letter from the Market Manager of Who's Who Legal (WWL). This letter opens with the following text:
"I am pleased to inform you that you have been identified by our independent research with clients and peers as being amongst 815 of the world's leading trademark lawyers".
... I don't suppose that many of the sole or small practitioners who read this weblog will be rushing to spend this sort of cash. They may be wondering if all the time spent qualifying for their professions and honing their skills was worth it. After all, 815 directory entries at even the bottom rate of £1,395 looks pretty much like more than £1.1 million -- more than most readers earn. ...

You may be wondering why this blogger is so cynical about this invitation. It's because he isn't a qualified lawyer, trade mark attorney or indeed anything else -- and has never even come close to practising. He wonders therefore how effective WWL's independent research might be".
April French (Assistant Editor, Who’s Who Legal) has kindly responded to this blogpost. She writes as follows:
"... let me tell you a bit more about how our research process works. Individuals are selected for inclusion based solely on recommendations received from corporate counsel and private practitioners [this may well be the case, but it still begs the question as to which corporate counsel and private practitioners might have recommended me when I'm not a practitioner]. Only those receiving the highest number of recommendations are selected for inclusion. During the research process, your name was recommended to us on several occasions for your trademark work and you were therefore shortlisted for the final edition [at this point I found myself wondering: might the "recommendations" be culled from the increasingly meaningless endorsements that people give on LinkedIn? I've been recommended by many people whom I don't know, for skills I don't have and services I don't provide, according to a regular flow of emails headed "Congratulations, Jeremy! Endorsements help show what you're great at"].

Unfortunately, as you point out in your blog, you are not a lawyer and are therefore not eligible for listing [well, that's a relief]. The aim of the publication is to act as a reference tool and to enable clients to find private practitioners who are available for hire. We will therefore have to remove your current listing from our website – thank you for bringing this to our attention.

We take every effort to ensure that our publications are a fair representation of the marketplace and pride ourselves on the integrity and authority of our findings. This has been recognised by our publishing company having been awarded the Queen’s Award for International Trade [here are the guidance notes for businesses applying for the award. A word search was unable to find the words 'integrity' or 'authority']. We can only apologise on this occasion for not having done our due diligence in reference to your qualifications. ..."
I'm grateful to Who's Who Legal for taking the trouble to explain their position, and I'm happy to accept their apology. However, I can't help feeling uncomfortable about the selection process, or about the functional utility of directories of this nature.  Again, readers' thoughts are invited -- particularly from those who have had either good or bade experiences of listing themselves in them (my original post received five comments -- a very small number but pretty high by SOLO IP standards).

Tuesday, 15 July 2014

Trade Mark Roles at CIPA

This tweet caught my eye. When I was young I served on that illustrious committee. It was a long time ago and much of the work was about the 1994 act. It was great fun but I had no idea what we were supposed to be doing.

So let's consider what the role of the trademark committee should be. It might be to impose its members views on UK trademark policy and influence the IPO accordingly. That doesn't quite sound right does it (but its probably true).

If we look at its latest report in the CIPA journal for June 2014 We find a brief report that suggests that they were interested in plain packaging, goods in transit and not at all interested in the trademark fast-track consultation. Not much inkling on the CIPA policies on these issues might be though. [The Duck notices that the same journal contains a report suggesting that trademarks are outside our comfort zone]

It was CIPA who took forward the IP TRANSLATOR case which has led to real changes in trademark law and practice which are of undoubted benefit to business. This is because a specification that means what it says can be understood by a business man. That was very much seen as a personal campaign of Richard Ashmead's (now a SOLO too). Nevertheless, it gives some indication of what CIPA might adopt as a trademark objective.

Trademarks are a very substantial part of intellectual property practice, so much so that agents have their own institute ITMA which duplicates much of the work that CIPA could be doing. This suggests that CIPA should have a clear objective so that it can work in a way that complements its sister organisation and avoids duplication of effort. Our members are all patent attorneys so when we get involved in trademark practice it is more likely to begin with  technically based businesses rather than fast-moving consumer goods and fashion (though once we become expert there is generally no stopping us). Therefore, could the trademark committee of CIPA focus on collection of evidence on those types of businesses in order to present opinions to legislators, OHIM and the IPO?

In my day the trademark committee also had a role in organising seminars and disseminating information on recent developments, but that seems to have been split off.

We have reports of trademark decisions that appear in the journal. These also seem to be purely objective and outside the scope of the committee.

CIPA also collects royalties on the widely unread,scantily publicised and far too expensive Trademark HandBook the production of which is also outside the scope of the committee.

So what does this leave for the committee to do. Should it be reactive and only respond to consultations or should it have an agenda. Maybe its first priority should be to update its page on the CIPA website

Wednesday, 9 July 2014

Who's the source of those infringements? The tale of Wilko v Buyology

The following post was originally composed by Rebecca Gulbul for the IPKat weblog, Rebecca being one of the new crop of guest Kats. However, just before she could post it, another Kat -- David Brophy, to be precise -- beat her to the draw by posting this.  It would be such a pity if all Rebecca's hard work went to waste, so I've posted it here.  Rebecca thinks the decision is a good one; David coyly doesn't say, and I'm left puzzled and uncomfortable with the reasoning.  Writes Rebecca:
Earlier this week Judge Hacon (Intellectual Property Enterprise Court, England and Wales) gave judgment in Wilko Retail Limited v Buyology Limited [2014] EWHC 2221 (IPEC), an action where a request for a Norwich Pharmacal order [note to non-Brits: this is an order that a party disclose details of a person who is not a party to the proceedings] was sought. Using the test of ”balance of irreparable harm”, Judge Hacon refused the request.

The claimant, Wilko, was a retail business offering consumer products in about 370 stores in the United Kingdom and registered proprietor of the WILKO trade mark. The defendant, Buyology, ran 8 stores in the South West of England and in Wales, offering end-of-line products and discontinued stock at a discounted price. As part of its business, Buyology offered WILKO branded products for sale in its stores. Wilko alleged trade mark infringement and passing off. Buyology did not deny selling these products, but said that their suppliers assured them that they could do so.

Since Buyology did not contest infringement, the sole purpose of the hearing was to determine whether a Norwich Pharmacal order should be made by the court, thus compelling Buyology to disclose the names of the suppliers who had provided them with the WILKO branded products.

Timeline
Wilko sent its first letter of complaint to Buyology on 20 October 2012, asking it to remove WILKO branded products from sale and to disclose name and address of supplier. Being particularly concerned about discovering who Buyology’s suppliers were, Wilko then made two further requests for disclosure – but to no avail.

When Wilko commenced trade mark infringement proceedings in August 2013, it particularised the alleged infringements but made no request for the disclosure of the identity of Buyology’s suppliers. Buyology admitted having sold goods bearing the trade mark in question and undertook to stop doing so unless they received Wilko’s consent to sell the branded products. However, Buyology did sell some further items bearing the WILKO trade mark, which they said were very few in number and accidental. Wilko did not contest this, but said that Buyology’s conduct was ‘excessively casual’.

In November 2013, Wilko sent a further letter to Buyology, complaining about the sales of WILKO branded products in three stores and proposing that the matter be resolved by agreeing to an order, which would then be included in their application to Court. Wilko then provided a draft court order that ontained the relief it sought in its particulars of claim, but which again did not include any requirement to disclose the names of suppliers.

Buyology agreed to the terms of the draft order and to an account of profits, suggesting that they reach an agreement on the amount rather than going through an inquiry. They also told Wilko that, after they filed their defence, they had been offered WILKO products to sell in their stores, without any requirement to debrand the products.

Was there a binding agreement?
Judge Hacon first had to decide whether there was a binding agreement between the parties. Buyology’s counsel argued that the November 2013 correspondence amounted to an offer by Wilko which had been accepted, the draft order laying out the terms of their agreement. No, said Wilko: there had been an offer, and then a counter offer (comprising the additional information that Wilko would collect the goods themselves and that they could agree on quantum for the accounts of profit), which proposed to amend the initial order but which had not been accepted. 
Judge Hacon disagreed with Wilko:  both letters of November 2013 stated unequivocally that the proceedings should be settled as per the draft order. He  saw no counter offer: clarifying that the alternative method of collecting the goods did not change the substance of the agreement, while the agreement as to the amount to be paid was a matter of convenience. He therefore found that there was a binding agreement, which had been fulfilled by the parties coming to court and agreeing to the terms of the draft order. 
Did the agreement stop Wilko seeking Norwich Pharmacal disclosure?
Having found that there had been a binding agreement, Judge Hacon considered whether the agreement precluded WRL from asking for a Norwich Pharmacal disclosure in order to find the identity of Buyology’s suppliers. Wilko’s counsel submitted that a Norwich Pharmacal order was independent of the finding of an agreement and could be made at any point of the proceedings, and was thus unaffected by the finding of an agreement to settle. 
No, said Buyology’s counsel: by agreeing to the draft order, it was understood that it would put an end to Wilko’s claims. Disclosure of the suppliers’ names was beyond the scope of what the parties agreed and the application amounted to an abuse of process. What’s more, it would be contrary to the rule of finality in litigation in Henderson v Henderson (1843) 3 Hare 100, reiterated by Lord Bingham in Johnson v Gore Wood & Co [2002] 2 AC 1.
Despite understanding Buyology’s perspective, Judge Hacon said that it was unlikely that Wilko would be barred from seeking a Norwich Pharmacal order: the Particulars of Claim did not include anything regarding disclosure and Buyology’s letter agreeing to Wilko’s offer did say that they would not disclose the names of their suppliers. Nevertheless, since the request for disclosure had been made as part of the proceedings and not as a separate application after the current proceedings, he found that Henderson v Henderson did not apply, and that Wilko was entitled to seek a Norwich Pharmacal order. 
Should there be an order for disclosure?
Having found that Wilko was not barred from seeking the order, should that order be made? Wilko argued that the court had the jurisdiction to do so on two bases: first under Jade Engineering (Coventry) Limited v Antiference Window Systems Limited [1996] FSR 461 and under Article 8 of Directive 2004/48 on the enforcement of intellectual property rights. However, Article 8 was only implemented in Scotland: the reason for this was explained in the Explanatory Notes of The Intellectual Property (Enforcement, etc.) Regulations 2006:
“By reason of the House of Lords decision in Norwich Pharmacal v Customs and Excise Commissioners [1974] AC 133 no provision is necessary to implement this obligation in England and Wales or Northern Ireland.”
While not seeking to rely directly on Article 8, CounseWilko said that its provisions could provide guidance as to how the law in Norwich Pharmacal disclosure should be interpreted. Buyology’s counsel cited Lord Kerr JSC in Rugby Football Union v Consolidated Information Services Ltd (formerly Viagogo Ltd) [2012] UKSC 55, where he said that the purpose of Norwich Pharmacal orders is to do justice. This involved the exercise of discretion by a careful and fair weighing of all relevant factors, which he then cited. 
In this case, Buyology relied on factor (iv) in particular, which is “whether the information could be obtained from another source”. However, in Judge Hacon’s opinion, what mattered in deciding whether the order should be granted was “the balance of irreparable harm, analogous to the balance applied in the context of an application for an interim injunction” as in Eli Lilly & Co Ltd v Neolab Ltd [2008] EWHC 415 (Ch) which applied the judgment of the Court of Appeal in Sega Enterprises Ltd v Alca Electronics [1982] FSR 516.

Wilko’s case was that, if they could not identify the suppliers, they would be unable to protect their trade marks adequately and to prevent a secondary market in their branded goods. Judge Hacon said that, since Buyology was now subject to an injunction if it sold WILKO-branded goods, it could be assumed that there would be no further infringing goods reaching the market through them. There had been no assessment as to whether, or the extent to which, there may be other chains of supply and, if there were, whether these would cause irreparable harm to Wilko to a negligible or serious amount.

Buyology explained that the retail industry was a small close-knit community and that, if they were ordered to disclose the names of their suppliers, it would result in a lack of trust towards them, undermining their reputation and resulting in suppliers being worried about future disclosure actions. Judge Hacon concluded that Buyology’s business would suffer irreparable harm.

Judge Hacon pointed out that Buyology readily accepted its wrongdoing in its defence and that it also accepted all the other relief sought by Wilko, who would be adequately compensated for the damage caused by the sale of these goods by Buyology —and that the damage would not recur. He therefore concluded that, on the balance of irreparable harm, no Norwich Pharmacal order should be granted.

Comments 
This blogger agrees with the decision. Considering the size of Buyology’s business and the way the retail industry works, the decision seems fair as ordering the disclosure of their suppliers’ names may have indeed caused Buyology to suffer irreparable harm.

Thursday, 3 July 2014

A Patent Agent's Duty of Care

Avoiding the client getting
its hands on your PI
Claims of professional negligence against patent attorneys are seldom brought to trial. Therefore, I was surprised to see a long-running trial against the Bromhead Johnson firm and their partner Dr Spencer in the lists for 11 days before Mr Justice Birss earlier this year. The decision was issued yesterday It describes the tale of a start-up (DualGlo), that was successful in securing funding. It had filed a PCT application and had patent applications of ambitiously wide scope. A familiar tale to many of my readers - hence the concern caused by this story.  Even though there was no finding of negligence, it is far from being an unblemished success.

Returning to the tale, in 2008/9 with money running out, the DualGlo investors decided to turn troll and try and raise money to fund patent litigation. The judgement sets out the full story including the technical details of the invention DualGlo - a glow in the light and in the dark plastic material first intended for torches

It will be difficult to do justice in a short blog post to the whole sorry story so where you see paragraph numbers mentioned they are to the full decision. The Claimants were the inventors, DualGlo and their investors. DualGlo had spent just £222,700 with Bromhead including disbursements and of that £57,000 was still unpaid. Nevertheless, the disclosure showed that by April/ May 2010 the investors were considering litigation against Bromhead Johnson as a way of raising funds to enable patent litigation (paragraph 191).Much of the proceedings concerned the US patent (Hirotec) DualGlo had acquired for US$550,000. The judge thought it might yet be enforced in the US (paragraph 313)  but stresses in paragraph 245 that his finding are not findings of infringement of US patents under US law.

However, the claimants could not frame a case that made the patent agent responsible for their loss, though they had several attempts at setting one out (paragraph 200). Bromhead secured the client from UDL. UDL had carried out searches and filed two patent applications but Bromhead did not have that file. In paragraph 80 the judgement says that some advice from UDL was wrong (though I doubt that would have caused any loss either). The judge found that on taking over the case "There was no reason for Dr Spencer to seek the file from the other firm nor to investigate anything at the patent office" (paragraph 203). [This is an important and useful outcome as more angst is caused by asking for files than any other part of the client take on process]

The next attack was on the basis of the scope of Dr Spencer's advice. The acquisition of the Hirotec patent is a step outside the normal patent prosecution sphere. Late in 2004 he had been asked to edit a letter of advice addressed to his clients but which was in fact used to raise money to buy the Hirotec patent (paragraph 115) but without his knowledge (paragraph 215). Later in 2008 Dr Spencer had written directly to an investment broker.  That letter says that Hirotec was a powerful patent and the judge finds in paragraph 236 that that was reasonable advice. There was also a 'to whom it may concern' letter which was held to be negligently wrong (paragraph 239) because it suggested more products would infringe Hirotec than did. Fortunately the judge held that the were no consequences flowing from this negligence as no investor invested on the strength of it. [Close call there - triple check any of those letters but its tough when your client needs help to raise the funds that will pay you and keep you in business, even more so if you are Solo so bear this warning and 11 days of High Court action in mind when you say no. In the conclusion at paragraph 332 the judge makes it clear that if Hirotec had been worthless the patent agent would have been liable]

Next we come to consideration of whether it is wise to be an optimistic, positive thinking patent attorney as Dr Spencer undoubtedly was (before he became a witness in the High Court where he transformed into being defensive and argumentative or met Mr Hall the new director in 2007 who found him arrogant (paragraph 38)). The judgement contains a detailed analysis of much of Dr Spencer's advice. The direct negotiation of different claims in different territories will be all too familiar to most patent agents. It was only in "happy hindsight" that the claimants felt they had been misled but the judge does conclude that some aspects of Dr Spencer's advice were 'advice no reasonable patent attorney could give' (paragraph 299) but ultimately his clients wouldn't have done anything differently.

A particularly worrying line of argument that many patent agents will find familiar as it is often used to put pressure on us for robust advice is that 'without a portfolio of 'broad defensible patents' the business would not have been able to continue because it would not have been able to secure funding'.  In paragraph 309, the judge dismisses this because the business was a product business and not a putative troll at that stage. It also appears that Dr Spencer was not the only optimist as the inventors themselves had overstated their prospects of securing granted patents.

In discussing the scope of the duty the patent attorney owes to his client, the judge blessedly concludes that we do not  have to advise our client what to do and take responsibility for the commercial risk (paragraph 317). The idea that Dr Spencer had a general retainer and could so be responsible for the failure of the DualGlo business was rejected. However, his involvement in the decision to purchase the Hirotec patent could have led to him being liable for losses flowing from that transaction (paragraph 321). A good thing it wasn't worthless then.

There is a warning bell sounded in paragraph 325. If you know from the outset that your client intends to be a patent troll then your liability may be greater. Indeed you might bear the risk if the business fails. Fortunately that is obiter.

Other useful points:
  • it might or might not be necessary to say that foreign advice is necessary all the time (paragraph 77 and 208)
  • desirability of keeping advice about infringement and prior art affects clearly separate (paragraph 90)
  • stay away from giving advice on commercial issues like acquiring and licensing IP if you don't want to be described as cavalier (paragraph 94) or pay for the consequences
  • there is no need to forward formulaic US attorneys letters to your client (paragraph 109)
  • a two-month delay in reporting EPO third party observations does not reflect well on your business practice (paragraph 144)
  • avoid criticism of your record keeping (paragraph 255) in this case it was not a pleaded ground of negligence but it might be next.

Wednesday, 2 July 2014

Grace as a Safety Net

Tegernsee where the IPOs met

Yesterday I attended a roundtable meeting organised by the UK IPO to discuss how or indeed whether they should take forward proposals for the introduction of a grace period following the research carried out by a group of national patent offices under the romantic name of the Tegernsee user consultation. The report is here.

As we introduced ourselves around the table (an extraordinarily long and rectangular one to be construed as "round") I mentioned that I blogged. As a result, when the introductions were complete, someone suggested that the meeting should be confidential. It was conceded that Chatham House rules would apply so that you shall never know who attempted to suppress blogging freedom. Now of course I feel obliged to report extensively on the prospective delights of the grace period.

You may have noted that I find the idea attractive and was very encouraged by the adoption by AIPPI of support for a no declaration grace period in October 2013.

Those around the table included a large number representing CIPA (whose response to the Tegernsee query is here and an undated paper in opposition to grace periods is here)  and some other professional or trade bodies as well as some industry representatives and other practitioners including active patent litigators. I represent no one except the world as I see it informed by my contact with entrepreneurial clients not all of whom are micro-entities as many assume.

The USA and Japan already have grace periods. Most of us are familiar with the US law but there seemed to be some disagreement around the table whether the requirement for an information disclosure statement was the equivalent of a mandatory declaration. The Japanese law is more complex (this 2007 article by a respected friend may help) and does require a declaration at the time of filing. The enthusiasm of the Japanese patent office to make their grace period effective is measured by the fact that they sent a delegate to this roundtable and are organising an event in Tokyo which will be attended by the UK IPO on 10 July (registration closes tomorrow).

Hotly disputed issues included
  • Whether an invention was saved by being patented after a graced disclosure or set free the world to enjoy at an earlier date. Pragmatically this seems to depend on whether you manage a pharmaceutical company (saved) or a university inventor who would prefer a Nobel Prize.
  • Whether the introduction of a grace period would lead to changes in corporate behaviour. For example would companies deliberately make graced publications in order to create novelty destroying prior art against their competitor's application while allowing their own to proceed. There may be some logical flaws in this particular idea but it is certainly worth trying to dream up possible abuses before the legislation is put in place.
  • Whether you need a detailed declaration, a tick box or nothing at all to benefit.
  • Whether an application made using the grace provisions be published immediately.
There did however seem to be a degree of consensus that any grace period should be before the priority date and the more countries that had harmonised legislation the better. In principle, any reasonable amount of harmonisation requires an amendment to the EPC which would necessarily flow through to unified patents, but is nevertheless perceived by all as a monumental obstacle. Let us hope we are proved wrong. Even so, the Japanese approach of looking after their own might be something that the UK government should look at.

What does seem apparent to this commentator is that industry voices (for this read pharma and others who have the ear of the PM and were vociferous at even this table) will have the most influence and the views of open innovators who prefer to eschew the patent system, or indeed start-up companies who need a little more freedom to evaluate their ideas in situations that might be confidential and then again might not be, before deciding whether a patent application is justified, will struggle to be heard.

If you want to make your views known, you are at liberty to contact Sean Dennhey in the IPO

I shall also look forward to hearing what the CIPA policy on grace periods is or is going to be if we are able to create any consensus now that we are led by pharma. 

This is only the briefest of notes and many other roundtablers would probably have a completely different perspective. I would be the first to admit that my reporting is coloured by my position that harmonising with the US grace period (no declaration) would lead to significant benefits for the entrepreneurial culture of the United Kingdom and not necessarily more patents. If your views differ or you are good at crystal ball gazing to envisage potential abuse or other consequences, you are very welcome to comment and advocate your position here.

PS the EPO representative did learn that her organisation's attitude to added subject matter created much disharmony.


Tuesday, 1 July 2014

Good news for some

Looking for a job? You may be
too good for the vacancy ...
"Boost for legal profession as employers commit to permanent hiring" is the happy news from legal recruitment firm Robert Walters. According to a press release earlier today:
"Seven in ten organisations looking to recruit legal staff will be focused on permanent hires, according to a new survey from specialist professional recruiter, Robert Walters.

Asked about their hiring intentions for the second half of 2014, the same proportion - 70% - agree that business growth will have the greatest impact on recruitment.

More than six in ten hiring managers will be concentrating on recruiting junior to mid-level legal professionals, the survey reveals ..."
So if you are fed up with working for yourself as a solo IP practitioner after several recent years of blood, sweat, toil, economic stodginess, collecting your own debts and facing the increasing automation/commodisation of work that used to be more pleasantly billable, and you fancy getting back into the employed sector -- you are probably over-qualified and over-experienced, unless you can shrink down to "junior to mid-level" again.