The Terrors of Taxonomy

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

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

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

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

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

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

Fortunately Richard Ashmead was present and in good health.

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

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

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

The ABS arrives at last..or does it

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

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

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

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

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

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

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

Yours sincerely: newly-minted professionals, same old problems

Something for newly-minted junior practitioners to chew on

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

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

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

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

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

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

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

Lower Cost IP Business Advice

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

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

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

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

A conundrum

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

Electronics patent attorneys, trees and haystacks

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

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

That was short-lived. 

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

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

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

Do readers of this weblog agree with this analysis?

Licensing Seminar

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

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

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

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