Friday, 29 August 2014

Diversity for Solos

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.

Wednesday, 27 August 2014

Background Copyright troubles Sally Cooper

From time to time I remember the essay question : “Original research = intelligent plagiarism. Discuss”. Particularly, it comes to mind whenever I come across disparate pieces of information and want to link them. The link in what follows is Sunday (day of the week) and buildings (or rather pictures of buildings) : no claim is made to originality (or intelligence).

On Sunday last (so August 2014) I went to the exhibition at the National Portrait Gallery titled “Virginia Woolf : Art, Life and Vision  A few days earlier I had read the exciting post of Eleonora Rosati on IPKat [ Thursday, 21 August 2014 : Taking a selfie inside the National Gallery: a copyright infringement?  ] which brought the news that “following similar moves by a number of other UK institutions .... the National Gallery in London has changed its strict no-photos-(please) policy”.

Was it the case (I asked myself) that the National Portrait Gallery was one of the “other UK institutions” ? Could I (for example) place myself in front of T.S. Eliot in this photograph and take a selfie of Virginia Woolf leaning towards me (replacing T.S. Eliot)?   Alas, the website of the National Portrait Gallery is clear that
“Photography is not permitted in temporary exhibitions or displays with loans”

So no photograph. But two thoughts :
1) on period of copyright : the line (bottom of the photograph on the website) is (C) National Portrait Gallery London. Lady Ottoline Morrell took the photograph of Eliot and Woolf in 1924. She died in 1938. So copyright expired in 2008 ?

20 on Representation of certain artistic works on public display” : Section 62 Copyright,Designs and Patents Act 1988 ('CDPA') applies to “buildings” and provides that “The copyright in such .... is not infringed by ...... making a photograph ... of it”. The follow-on is that “ Nor is the copyright infringed by the issue to the public of copies, or the communication to the public, of anything whose making was, by virtue of this section, not an infringement of the copyright”. So presumably I can take a photograph of the building that is the National Portrait Gallery and include that photograph in a (greetings) card which I post (online) on social media and post (envelope-with-stamp) to family and friends and others WITHOUT risk of an allegation of copyright infringement ?

On Sunday a couple of years ago (September 2012) I visited Spa in Belgium for the F1 Grand Prix and took a seat in the stand at Eau Rouge (being an “uphill corner” on the circuit). So a chord was struck when Lee Curtis published on the Linked In Group of Automotives+ IP news that “ .... Infiniti have applied to register the trade mark EAU ROUGE in the US for cars, despite the fact the mark has been registered in the EU by the famous race track”

The detail that attracted attention was Lee’s reference to “the UKIPO practice on the registration of the names of famous buildings”. The relevant paragraph in the Manual – headed FAMOUS BUILDINGS (Pictorial representations (emphasis supplied) or names of well known buildings) - contains the text :
“traders in the area of a famous building, which is likely to be a tourist attraction, should be free to produce mementos and ornaments bearing the name or representation (emphasis supplied) of the building without infringing the rights of another."
Also the text :
“if the building is a tourist attraction then the objection should be raised”. 
As to where it leads :
A) If I take a photograph of the building that is the National Portrait Gallery and thereafter distribute this photograph – the law of copyright sanctions this activity : section 62 CDPA 1988 (above)
B) If I take a photograph of the building that is the National Portrait Gallery and try to register this (representation) as a trade mark at the UK Trade Mark Registry, there is likely to be discussion with the Registry as to whether the mark applied for is a famous building / tourist attraction : see Manual / UKIPO practice (above)
C) The interests of the National Portrait Gallery lie in the UK Trade Mark Registry coming to the conclusion that the building that is the National Portrait Gallery is a famous building / tourist attraction so that my attempt to register is refused
D) But such a conclusion means (presumably) that an Application of the National Portrait Gallery to try to register a photograph of the building that is the National Portrait Gallery must also fail.

So (I ask myself) will the public-spirited owners of buildings which have a “Photographic Policy” be amending same with the note “This building is a famous building / tourist attraction” in the hope this deflects / reduces the possibility of a photograph (representation) of that building being registered by a third party as a trade mark ?

What do you call a UPC judge?

Unified patent courts (UPCs) will be with our European readers soon, though it's too early to say precisely when. Some lucky person will, when the UPC opens its doors for the first time, become the first human on planet Earth to address a UPC judge face-to-face. This encounter raises a small but intriguing issue: how does one address a IPC judge? Something along the lines of "My Lord" would be grand, and deeply respectful, but is it appropriate for a union of countries of which many have scrapped the trappings of lordship and ladyship. "Your honour" is a possibility too -- but perhaps honour is something that has to be earned rather than accorded in the hope that the addressee may turn out to be a person of honour.  "Your Worship" is definitely a non-runner, and "Your Judgeship" sounds contrived.

Presumably the mode of address will have to sound plausible in whatever language the court operates, and will have to work in terms of gender equality.

Maybe it's time to institute a new word for a UPC judge, just as we had to mint a new word for Europe's most common currency.  Can we come up with something more original than "the Euro", though?  Suggestions?

Monday, 25 August 2014

What are my Chances?

Do you have the sort of client who wants to know the chances of success before you have the facts. Look no further than Darts-IP is the case law database for you. Not only have they collected a multitude of case reports from across the world, they have analyzed them and identified the points of law considered and the outcomes. If you wanted to know your chances of avoiding revocation in class 3 based on proper reasons for non-use, the above chart can give you some ideas but not a lot of hope. Double click on the web image to enlarge. Is it any better for class 5
or perhaps class 9
No for that class your chances are right down in the doldrums, a mere 5% at OHIM! Sample sizes are rather small. If you were a subscriber you would have all this lovely data at your fingertips and you would be able to review the decisions and translate the ones that are not in  English (works best in Google Chrome) and be better informed about the relative generosity of the Czech IPO in refusing to revoke unused marks.

As well as all this amazing but rather raw data, there is also an electronic book called Dixit Curia that gives helpful analysis on the various points of law and explains to me why its proper that proper reasons for non-use should be hard to find, but does not give many examples.

A good many UK practices are using this intriguing tool, so if you would like to join them contact Gary Cook and if you are a true SOLO remember to mention that . The Bodleian Library subscribes but the BL Business & IP Center does not seem to yet but for the less frequent user library access would be very convenient.

By the way there are little yellow stars on some cases and they do seem to be significant ones and colored bars alongside others that are not explained (or I missed it ) in the User Guide.

The databases available cover patents, domains, designs, copyright and unfair competition too.

Thursday, 21 August 2014

Whither WHOIS ?

Sally Cooper writes again ..
Summer is a time for Summer Newsletters and, in the present case, the excellent Summer Newsletter of Com Laude is my inspiration.

A new business will usually review “available company names” and “available Domain Names” before it reviews “available trade marks”. When considering litigation for a trade mark owner, it is often relevant to consider both the Domain Names of the owner and those of the business under attack. These are two of many good reasons for any Trade Mark Attorney to have an interest in WHOIS records.

So when “Rethinking WHOIS” (pages 3/4 of said Summer Newsletter) includes the information
“This means that [ for example ] if you wanted to review the registrant details for an infringing Domain as an IP Attorney, you would need to be accredited .....”
there is (surely) cause for concern.

The conflict between “law enforcement and IP interests” and “civil society advocates” (borrowing again from the Newsletter) is understood : a balance between “tell all” and “say nothing” is never going to be easy – even in the context of Domain Names. The full “present position” information summarised in the Newsletter is available in the Report of ICANN released in June 2014  being “the final report from the Expert Working Group on gTLD Directory Services (EWG), detailing our recommendations to the ICANN Board for a next-generation Registration Directory Service (RDS) to replace today’s WHOIS system”.

So let’s get to grips with the idea that WHOIS may one day be replaced by RDS – acronym for Registry Directory Service. Not an entirely fanciful notion as the “Conclusion and Next Steps” part of the Report of the Expert Working Group says:
“[the Group] unanimously recommends abandoning today’s WHOIS model – giving very user the same anonymous public access to gTLD registration data – with a replacement system, built from the ground up”. 
BUT WHERE DOES THIS LEAVE ME ? I cry with much concern.

The Report poses Question 65 in FAQs “Will WHOIS go away?” and provides the answer “At this juncture, the RDS is a recommended solution, to be considered by the ICANN board, the GNSO, and the community. If the RDS is adopted, a transition plan will be created to address migration from WHOIS to the RDS”. [ How may acronyms can a paragraph accommodate ? I ask myself – recalling a Military Dinner where the speaker mentioned apologetically that “the RAF is an ARE viz : the Royal Air Force is an Acronym-Rich-Environment” ].

And the comfort from the Newsletter is “At this stage the Report has no binding authority ... and at some stage we’ll all get the chance to submit comments”. For me, the Report highlights that I am not alone in my interest in knowing who owns a Domain Name (and something more by way of details of the Registrant) : see the pretty diagram at the top of this post which forms an insubstantial part of the Report.

Otherwise, I’m hoping that interests will, indeed, find some way of getting together and submitting comments with the end-result that RDS (if and when it happens) rises in Phoenix-like style from the ashes of the WHOIS system which (for all its faults) is one many of us have come to know and love. 

The Duck adds: hopefully those people on the clever committees at our professional bodies will be thinking about how restricted access can be used to give CIPA and ITMA members a competitive edge.

Sunday, 17 August 2014

Reviewing the Written SOLO Complaints Procedure

If you are regulated by IPREG you are required to have a written complaints procedure (Rule 12 of the Code of Conduct) if by the SRA, its an indicative behaviour (IB1.22 under client care ) rather than a micro-managed obligation.
Ways to Complain?

Since the only complaint adjudicated and published  by the Disciplinary Board of IPREG concerns the absence of such a document for which the the Board decided on 9 September 2013 that the agent had
"breached his professional obligations over a long period of time in a significant way and the Board therefore imposes a fine of £500 to reflect the serious nature of this breach " ( the Duck says yes really that's what it says - IPREG won't get rich this way especially as it did not ask for costs to the surprise of the Board )

It seems useful to consider what your complaints procedure might look like for a SOLO as opposed to a sole practitioner (who might have complaints arising from work done by his staff).

The client of a regulated SOLO must be able to complain and the only person he can complain to is you so terms of trade need to draw attention to that and indicate that for some clients (individuals and micro-enterprises as defined by the EU) there is a right to refer the complaint to the Legal Ombudsman (LEO) so bearing in mind that the complainer has to give you 8 weeks to deal with the complaint, this is what has to happen:

  • identify the complaint as a formal complaint
  • ask for the complaint to be set out in writing
  • notify your insurer (its not a claim a this stage but its always good to put insurers on notice)
  • acknowledge the written complaint and indicate when you will reply (2-4 weeks would seem to be reasonable depending on what investigation is needed and whether your insurer would like to review it)
  • prepare a written response and resolution proposal including details of his LEO rights if any
  • sleep on it
  • send it
  • follow up within 8 weeks of identification.
Obviously how it goes depends on the nature of the complaint. Larger firms refer the investigation and  response to a more senior partner which offers an independent eye as there can be a tendency for the person complained about to go "head in sand". As a SOLO you simply cannot do that. As well as notifying your insurer you could contact a trusted professional friend. This may well help with the resolution proposal. You might think your professional body could help. At the moment, I doubt it, but its certainly a service they could think about offering to members.

LEO has now handled a number of complaints from the IPREG - regulated but does not publish details.

Since the LEO compensation options are limited, expect a professional negligence claim if the client is after substantial compensation. As can be seen from the published judgement there is not much in it for the client when complaining to IPREG.

There is no copyright in that bulleted list.  I commend it to the public domain, if it is a literary work (which is doubtful). Please feel free to offer your own versions of this apparently essential document.

Wednesday, 13 August 2014

Who is filing the unsearchable UK Patent Applications?

Is the UK IPO flooded with patent applications? That seems to be the implication of the observed backlog and the newly published discussion document on the publication of patent applications. You can find it here and the IPO would like your comments by 26 September : note thats 11:45 pm and not close of business.

The implication of the document is that a lot of people are filing patent applications for the sake of getting a publication which they can be certain will go into the search files of other patent offices properly classified. The IPO think that it is a waste of time them searching these cases. That implies to me that they are software related and perhaps filed directly. The document refers to the practice of action before search (ABS). It's supposed to put a brake (pun intended) on these applications by promising to refund the search fee if the application is withdrawn. That gets rid of 75% of the hopeless cases, but the remaining 25% are a problem.

So I wondered where they come from. I have only ever had one ABS and that was a case which was filed as a priority document and destined to enter the US backlog. Generally I turn away the hopeless cases. The cost of drafting a hopeless case is a high price to pay for a publication.

One solution that struck me on first reading this document was that they could simply give themselves the option of deferring search until examination is requested. The Act already gives the examiner the ability to determine whether or not the search would serve any useful purpose (section 17 (5)). A more aggressive use of this power might enable applications to be published and further action delayed until the applicant requests examination. If he only wanted publication he won't request examination.  That still leaves classification to be done.

I'm writing this blog so that you can tell me where you think these applications come from. The document is a little coy about who the applicants are that don't want a granted patent. Who are they protecting?

I greatly value the prompt and efficient searches carried out at low cost by the UK IPO for my entrepreneurial clients who would like to know where they stand before shelling out extortionate substantial PCT fees. Therefore, if there are problems down in Newport that are overwhelming our examiners, we should look to help them out. Even an increase in the search fee might be tolerated. Could we have a sliding scale for the more hopeless fields?