Wednesday, 1 October 2014

a new role for the Treasury Solicitors Department (Bona Vacantia Division) ?

Sally Cooper is feeling compassionate.


There are many good things in the “Orphan works diligent search guidance for applicants” published by the UK Government on 17th September 2014 "
 Its three key documents are
  • “Orphan works diligent search guidance : Film and sound” and 
  • “Orphan works diligent search guidance : Literary Works” and 
  • ”Orphan works diligent search guidance : Still visual art”. 
As and when I’m next involved in circumstances where an owner of copyright is unknown or cannot be located and, in consequence, there’s a suggestion of applying for a licence under the orphan works licensing scheme, I’ll know there’s where to look for a list of sources - and additional sources – that I can review in course of the diligent search recommended as part of the application process.

One additional source that attracted attention is the Treasury Solicitors Department (Bona Vacantia Division). All three documents advise “An applicant would search here in respect of bona vacantia which is the name given to ownerless property, which by law passes to the Crown. The Treasury Solicitors act for the Crown to administer the disposal of assets of people who die intestate (without a will) and without known kin (entitled blood relatives) and collect the assets of dissolved companies (emphasis supplied) ..... in England and Wales”. Emphasis is supplied because – so often – the owner of copyright is not an individual (or group of individuals) but a company because (per section 11 (2) Copyright, Designs & Patents Act 1988) :
“Where a literary, dramatic, musical or artistic work, or a film, is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary”. 

Curiosity on reading about this additional source (relevant to Film and sound / Literary works / Still visual art) took me to the hypothetical client who had seen – at a trade exhibition – a computer game that was of interest but which (sadly) never made it to market as the company designing and developing the game was dissolved pre-release. This hypothetical client is able to establish that the company registered the name of the game as a trade mark [ by consulting, at the time of writing, the website of the Intellectual Property Office at www.ipo.gov.uk ] but cannot discover whether film / sound / literary works (extending to software) / still visual art that were materials on show at the exhibition (and which he wants to buy so as to finish and release the game) happened in house or followed from an agreement with a third party. All he can say is that these may or may not have been assets of the dissolved company.

At first, the website of the Treasury Solicitor’s Bona Vacantia Division looks friendly and helpful : https://www.gov.uk/government/organisations/bona-vacantia  But it soon becomes clear that the Division is focused on “the ownership of assets of people”. For example, its “Social Media at BVD” initiative includes use of @bonavacantia_uk on Twitter as from March 2012 : statistics, at the time of writing, are 293 tweets and 205 followers and (so far as I can see) no reference at all to the Division’s role as collector of the assets of dissolved companies. Moving on to “How to buy intellectual property that belonged to a dissolved company and now belongs to the Crown” it is made clear to the prospective purchaser (my client) that “[ the Division ] will not transfer bona vacantia intellectual property with any title guarantee or provide any representations or warranties in connection with it (express or implied)”. Moreover, the prospective purchaser must understand : “ If [ the Division ] offer to sell they will only do so for the open market value on the intellectual property subject always to the following minimum prices : - for a UK trademark £ 1,000 - for an EU trademark £ 2,000 - for a copyright £ 1,000 - for a patent or other intellectual property £ 1,000. You will have to pay VAT on the consideration. You will also have to pay [ the Division’s ] costs of £ 300 plus VAT for each asset”.

I have not been able to find information on how many transfers of assets of dissolved companies are made by the Treasury Solicitors Department (Bona Vacantia Division) but it occurs to me this might properly be the subject of a “Freedom Of Information” request : https://www.gov.uk/make-a-freedom-of-information-request/the-freedom-of-information-act In the future, perhaps a further “Freedom of Information” request might be made to ascertain the number of requests has [ the Division ] receives (and responds to) in consequence of the Government’s “Orphan works due diligence guidance” ?

This may all seem gloriously academic – but curiosity stays with me as I ponder :
(a) the extent to which there is dialogue between the Intellectual Property Office and the Treasury Solicitors Department (Bona Vacantia Division), and
(b) the role of [ the Division ] in (shall we say) ensuring the availability and re-use of intellectual property (whether as assets of dissolved companies or assets that are orphaned works).

Sally Cooper

Monday, 29 September 2014

Be Prepared for the UK IPO website migration

On the 6th October the UK Intellectual Property Office is scheduled to fall into line with other government
The original result of searching IP on www.gov.uk
departments and feature only on .gov.uk. The ipo.gov.uk URL will be no more and instead we will be headed to https://www.gov.uk/government/organisations/intellectual-property-office. That link will already work for you today. More information on the staggering transition is currently to be found at http://www.ipo.gov.uk/moving.htm but it might move

As trademark specialists we cannot complain about this consistent branding which guarantees authentic origin to the consumer by placing the www.gov.uk in pride of place. Lets hope that the consumer is savvy enough to appreciate this. It should reduce the risk of them being deceived by other on line UK patent and trademark  renewal and trade mark filing services which charge a premium for their "services".

There is a video tour of the website on YOUTUBE.

If you prefer to be introduced to the new website personally, then there is an event on Thursday 2 October at 88 Kingsway, London WC2B 6AA on Thursday 2 October. Sessions will run at 10am, 11.30am, 1.30pm and 3pm. To register your interest, please email david.barker@ipo.gov.uk stating your preferred session time.

Hopefully, all will go well and we won't find ourselves locked out because the data scrapers believe that there is new information to be scraped (I suspect there is no change in the underlying databases).

They promise that they have tried to preserve the links that we may have already stored and I am hoping that is true because I do have a lot of links to the on line registers and it would be a ball if they were all broken but with our experience of the OHIM transition we know that even such a disaster can be accommodated.

In desperation, I sometimes had to resort to searching the whole IPO database to find some piece of information I needed. Fortunately this is still possible on.gov.uk as they kindly show at 2:21 into the e video as you can limit your results to a particular department and who knows something interesting may have popped up when you searched the whole of gov.uk.

For those of us who cannot cope we can live in the National Archives

Tuesday, 23 September 2014

Open Art

One of the most inspirational comments I noted from the pronouncements of the UK's newest intellectual property minister, Baroness Lucy Neville-Rolfe in an early interview was this:
"I want an idea protected, but I want its light to inspire others. "
 The difficulty is defining the line between inspiration and copying and how far an artist or craftsman should restrict access to their ideas. To some extent this is the prerogative of the craftsman. If you keep your art secret then no-one will be inspired.

Walking along a Montreal Street the other day, I encoutered a notice in the window of one gift shop.
"Out of respect for the artisan's copyright, photography is forbidden"
Now inside there would have been contractual consideration for forbidding photography, but this was a display visible to me as a passer by. Out of respect I choose voluntarily not to let you be inspired by the techniques displayed for combining yarn and pottery by showing you a snap. For more thoughts on incidental art photography see Sally's musings here.

My original selection of bands and bloops in the Quadzilla design
Sometimes inspiration is what makes a product fly. RAINBOW LOOM from Choon's Design LLC has inspired both me and hoardes of 8 year old girls to enjoy the creative delights of making and sharing bracelets made out of plastic bands. These would not have taken off, but for the ability to photograph and share instructional videos. Choon's made some but now many more addicts have created and shared their own designs. These often come with dire warnings such as
"Copyright © TutorialsByA, 2014. Please do not copy, remake, or redistribute this tutorial or design."
This is presumably to protect the income YOUTUBE  voluntarily offers them for making a popular video. Others impose no restrictions and are happy to share and delight in the copies and adaptations made by their fans on their facebook pages. The latter help to propagate the principles that addicts need to explore the possibilities of this toy. So how does the law protect the natural teachers who are happy simply to see their videos watched and their ideas propagated from the fulminations of the protectionist designers who seek profit from their work? An artist or craftsman should surely have the freedom to choose whether he teaches or not. However the battle lines can be drawn when a natural teacher is inspired by the work of a protectionist artist. In this area copyright can become a nightmare, even if we have discerning judges in accessible courts as we do in the UK, the damage can be done in social media harassment that creates untold distress and may even cause an artist to shut up shop.

Do we as lawyers have a duty to rein back the overly enthusiastic user of copyright to allow the light of inspiration to shine through and do we need to use the social media, or only those accessible courts for the purpose?

Sunday, 14 September 2014

#AIPPI2014 Canada joins the 21st Century

I am writing this at an airport boarding gate on my way to Toronto for the AIPPI conference. I am mainly thinking trade mark issues as I contributed to the UK response on Madrid system central attack Question 239. You can find all the national Group reports here.

Although Canada is hosting the conference it is one of the few territories that does not use WIPO's Nice Classification or belong to the Madrid Protocol,  but it seems that is all set to change now that the Canadian government has passed its Budget Implementation Act which included the necessary amendments to Canadan law to allow Canada to join Nice, Madrid and the Singapore Trade Mark Treaty. The changes do not include abolition of relative grounds examination or the three year use period. So it's not surprising that the Canadian group support the basic mark requirement in Madrid, but like the idea that dependency should shrink to three rather than five years.

With a five year dependency, late starting Canadian businesses would otherwise have a greater vulnerability to central attacks on their International registrations, than their counterparts in European countries, for example, that require five years to pass before their national marks can be challenged for non-use.  It would be interesting to know how many central attacks have been made on non- use in territories where this could happen now. I can only think of China. Their group report does suggest it may be a concern as they note:
The Madrid filing might focus on worldwide use instead of national use, then non-
use cancellation against basic registration may bring risk of central attack, which
woud be unreasonable to the trademark registrant.
The UK Group also discussed that a three year dependency would be sufficient.

One interesting aspect of many reports s that central attack is little used. This seems odd as in my practice, which is necessarily modest I see several cases a year where it is under consideration. It would be useful if central attackss were required to be notified to WIPO while they are in progress rather than just when they succeed.

I hope I will b able to discuss these and other issues with fellow travelers when you arrive in Toronto

Sunday, 7 September 2014

Grace Periods for Patent Applicants

Safety net by Andrew Skudder 
We have been here before, last year when AIPPI decided to support the idea and more recently when the UK IPO held a round table on the subject on 1 July 2014.  Now the UK IPO is trying to decide which scenario to support and their relative desirability.

We are offered various definitions of a grace period.

A. “All disclosures” grace period: A grace period of 12 months calculated from the filing date, applying to all disclosures, with no mandatory declaration required and prior user rights not applying throughout the grace period.

B. “Non-safety net” grace period: A grace period of 12 months calculated from the priority date (if applicable), applying only to disclosures made by (or derived from) the applicant, with no mandatory declaration required and prior user rights not applying throughout the grace period.

C. 6-month “safety net”: A grace period of 6 months calculated from the priority date (if applicable), applying only to disclosures made by (or derived from) the applicant, with mandatory declaration required and prior user rights applying throughout the grace period.

D. 12-month “safety net”: As above but with a duration of 12 months.

E. 12-month “safety net” with no declaration: As above but with no mandatory declaration required.

What makes it a safety net grace period is the business of prior user rights. While I have used the safety net idea hitherto as a reference to the safety net that a grace period provides for the patentee not the the third party user (sorry about the confusion).

Prior users might be those who have derived their information from the inventor. There is already protection in the UK in section 64 of the Patents Act for good faith prior users, so, I suppose we are saying if at the time you saw something and thought great idea and started to implement it and managed to do so before the inventor got to the Patent Office were you acting in good faith? Now at present when we see a good idea we may not know its in the patent process. Is it any different if we have a grace period? I think not. Lets not mess with prior user rights. Clearly they are needed though if other countries don't have them and we are playing for harmonisation across the IP5

Personally I am totally against declarations. They require full disclosure to the attorney and a burden of enquiry. They suppose there is certainty about whether a particular disclosure is confidential or not. If I speak to a novice inventor, they may tell me about various soundings they have made. Typically these would be with trusted confidantes. Sometimes there is a written NDA but not always. Even for the large IPO customer, completing disclosures is going to be hard for the Patent Department, so let's eliminate them. Who will advocate for them - the prior user not in terribly good faith perhaps. A patentee may want to make a disclosure to emphasise that something is not prior art. I would write that into the specification and it could be considered good practice and I rather like the idea. However voluntary declarations are a very different proposition than a mandatory one. I bet our insurers will advocate against any costly mandatory traps.

I think that means I support E - What do you think?

CIPA will no doubt be making representations. If you are lucky enough to have your August CIPA journal you will have the secret diary. Representatives of larger organisations seem to be against grace altogether as it encourages indiscipline among their already spirited inventors. They also cite desire for certainty - but even with first to file there is no certainty when we delay publication as realistically we must.

If we are looking to promote innovation and more specifically the implementation of innovation then the grace period  benefits the eager innovator and some of those eager innovators are the ones who are best for the economy.

Do comment. The IPO also want your help, preferably before Wednesday.

Wednesday, 3 September 2014

So whose non-law job are you supporting?

This blogger's attention was riveted by a media release from the Law Society for England and Wales, which reads in relevant part:
"Every 100 legal services jobs support 67 more in the wider economy

In his first speech [which you can read in full here] as Law Society deputy vice-president, Robert Bourns told an audience of City lawyers, financial services firms and think-tanks that for every 100 jobs in the legal services sector, 67 are supported in other areas of the economy.
... 
Robert Bourns also told delegates that:
· Every £1 of output of the UK legal services sector underpins £2.39 of output in the UK economy as a whole.

· Growth in the UK legal services sector is expected to increase to near pre-recession levels in 2015. ..."
Carrying an extra burden:
some folk just grin
and bear it
The SOLO IP blog has 258 email subscribers.  Assuming that just 50 of them are practising IP as solicitors in England and Wales [having made appropriate deductions from the 258 in respect of patent and trade mark attorneys, practitioners from other jurisdictions, IP administrators, students and people who have signed up to read this blog under a misapprehension that it's to with something completely different], this rather suggests that, while they struggle to earn their humble crust and then extract it from their clients, they are actually paying the wages, national insurance contributions and other outgoings for 33.5 others.

Apart from accountants, book-keepers, sellers of replacement printer cartridges and Starbucks baristas, what callings might these fortunate by-products of even solo IP practice have?  Suggestions, anyone?

Friday, 29 August 2014

Diversity for Solos

Tufty
We have been having ever such fun over on twitter debating diversity in the patent profession. Our newest, youngest, most diverse CIPA council member, Simone Ferrara is concerned about the diversity of the profession. His interest was triggered by the BBC news post about the elitism in British society. Now we are all aware that CIPA is very interested in its role in building up the Status of the profession and other things like Learning and Influence and something beginning with C. That has been debated over on LinkedIn.

IPReg has some duty to understand the diversity of the profession. However, why should our representative body be haranguing us to recruit from other universities. It seems to me that recruitment strategies are something that CIPA could genuinely be interested in because they are interested in Learning training. The purpose of this blog is therefore to provide a platform with a little bit more space so that recruitment experts can have their say. How about it @EIP_Careers?

Students aspiring to be patent agents also need to know what attributes make a good patent attorney. In my opinion, there are some that need to be inherent in the candidate when the kitten arrives. One of those, that is most significant to me, is a quick mind that is receptive to new information. This means looking for high-end academic ability. Strangely, Oxford and Cambridge select on a similar basis. The sloggers of this world are going to have difficulty catching up with our inventors. I'm not looking for super high-end. I have known all too many Ph.D.'s who think they know far more than the inventor about a subject. What I want is a bright enquiring open mind.

On that foundation, many things can be taught. The law for one. An ability to write would be a superb starting point. Even that can be taught. Business issues and Marketing are skills the kitten will need to learn. Client facing skills are an interesting topic and Advocay is dear to my heart for the neglect it has suffereds.

The LinkedIn debate contains a suggestion that there is evidence that nearly all current patent agents have the personality characteristics of INTJ on the Myers Briggs test, which makes them bookish and not inclined to use twitter or social media. This makes getting them to debate a challenge. In many ways this may be the measure of diversity we want to change rather than the names of Univerisites on the CV. A few more outgoing, entrepreneurial members of the profession would be very welcome.

Hopefully the advent of ABS will allow kittens of wider skill sets to find homes within the patent profession. One way of encouraging such diversity would be to encourage patent agents to do a little bit more than boring old agency work, however profitable that might be. We need to open our minds and offer our clients more. In short, you might find that the solos you have excluded have something to say.