Reduced UK Trademark Opposition Period

Like me, you may have passed by the notification of the consultation on the Trademark Rules Consolidation as something for the big boys and our professional bodies. However it is more important than that. The UK-IPO want to change the opposition period. This is something I suggested when they proposed a fast-track procedure. With oppositon work on the increase (but still less than 10% of applications), there is a need for SOLO practitioners to be able to provide a cost-effective advice service to their clients.


There are two ideas. Just cut to two months or make it 6 weeks extensible to three. The latter is closer to my idea but what do other people think? A representative of a very non-solo firm told me she was against because their watch service did not always get them the watch notices on time. I was a bit surprised about that for UK marks. I'd change my watch service.

Future of self employment for solicitors

The prevailing view of the likely impact of the Legal Services legislation and the Carter Review on the legal profession’s composition is the disappearance of at least 4,000 small law firms. For example, see here

Having over the years attended conferences and read articles, I know it is generally accepted that the future is big and niche (rather than small and niche). However, I have trouble reconciling this prediction with the other trend in society today, of the rise in the number of the self employed, and people setting up their own small businesses. For many people it is the ultimate dream to generate their own income, and not be beholden to an employer. Solicitors and other professionals are similarly choosing to set up their own practices. So, I have difficulty understanding how the prediction that the future is big corporate entity, can sit alongside the fact that so many people in society nowadays do not want the corporate lifestyle and all that it entails. What is to happen to them in the new climate? Are we likely to see an ever growing increase in businesses like Lawyers Direct that offer lower cost legal services by using solicitor consultants who are self employed? In many ways this might mirror the Financial Services Industry where it is common for a large corporation to take care of professional indemnity and regulatory matters, using a network of self employed consultants. Any future predictions anyone?

A sort of legal singles club?

Having just perused the website of the Solicitor Sole Practitioners Group, I was left with the feeling that there was something rather soulless about it. According to the website,

"Solicitor Sole Practitioners is one of eight Law Society recognised groups which represent particular sectors of the profession. The others are the Young Solicitors Group, Association of Women Solicitors, Commerce and Industry Group, the Local Government Group, Group for Solicitors with Disabilities, the Black Solicitors Network and the Trainee Solicitors Group".

While I'm sure that the SPG is totally worthy in all respects, this defining statement makes it sound as though being a sole practitioner, a legal spinster as it were, is a sort of handicap that really brave people can overcome by attending the Law Society's analogue of a singles club.

A good thing about the SOLO IP group is that it is much more driven by a positive commitment to the subject-matter than by a negative support-group mentality. We also have the advantage that we span different professions -- solicitors, barristers, patent attorneys, trade mark attorneys, independent consultants -- and therefore encompass a wider range of skills, interests and training requirements than a group that is as homogeneous as the SPG.

Sole practice is not forever

I came across a blog which others may find interesting too. It’s called My Shingle, (Inspiring Solos, Small Law Firms & Aspiring Solos Since 2002). There is one article which caught my attention in particular, discussing as it does the variety of reasons why people may be in small practices. The message is that sole practice doesn’t mean forever, and there are a host of reasons why someone may currently be in practice on their own. For example, some of us may be establishing a business and in it for the long haul, others may be in semi retirement, others still may be in transition of some sort. Read it here and why not comment to tell us why you are in sole practice at this point in your life?

Commoditisation as the Dawn of a New Day for Solos

I, too, share my co-bloggers respect for Richard Susskind and I trust he will be earning lots of money from Lyceum Capital promoting the gospel of commoditisation. It was announced that he had been appointed a consultant to them to advise them on how to invest in law firms on March 9. It's a fair bet he won't be investing in any solos but I don't think Azright is going to remain solo for a very long judging by the scope of its recently advertised trademark application .

The opportunity that this approach creates for solo experts is that we can focus on solutions and bring to bear the full weight of our experience and knowledge. The UK IPO already offers a pretty good commodity trademark application product but clients also need insight into how to manage their branding protection and conduct any disputes. These are not issues you can automate - so wise heads will always be in demand.

Legal profession on brink of fundamental transformation

There is no doubt we are on the brink of huge change in the legal profession. It is not just the Legal Services Act that makes me think we face massive change. The original seed was planted in my mind by Richard Susskind’s book ‘The Future of the Law’ – a book I found unputdownable when I first read it in 1996. He predicted things like the tremendous future importance of e-mail which was then an emerging technology introduced to us during the IT module of the LLM studies I was doing at QMW. The JANET system had been mentioned, and I was all fired up about e-mail’s likely future role in society. So, when I started work at Eversheds I suggested we include a provision in the standard boilerplate clauses about notice sent by e-email, which the partner in question rejected out of hand, no doubt writing me off as having little grasp of security or confidentiality issues.

Naturally I am always interested to read other books by Richard Susskind, and will be buying 'The End of Lawyers?' when it is published later this year. I have read the series of 6 articles he has written about the book for Times Online here In these he develops his theme of standardisation and commoditisation, and expresses the view that what lawyers currently do can be undertaken more quickly, more conveniently and less expensively, and in a less forbidding way, by systems than by conventional work. He mentions document assembly, personalised alerting, online dispute resolution, and open-sourcing as examples of “disruptive legal technologies” in that they do not support or complement current legal practices, but challenge and replace them.

Another theme he picks up is that of the Legal Services Act provisions which will allow non-lawyers to invest in law firms. Such investors are not going to be committed to the ways of the past. They are likely to be introducing call centres, outsourcing to India, online legal services, the automatic generation of documents, and more. The delivery of legal services will be a very different business when financed and managed by these non-lawyers. It is improbable that investors would choose to put cash into the traditional business model of most law firms – hourly billing, expensive premises, pyramidic organisational structures, and the rest.
His conclusion is that the market is increasingly unlikely to tolerate expensive lawyers for tasks (guiding, advising, drafting, researching, problem-solving and more) that can equally or better be discharged, directly or indirectly, by smart systems and processes. It follows that the jobs of many traditional lawyers will be substantially eroded and often eliminated. At the same time, he foresees new law jobs emerging which may be highly rewarding, even if very different from those of today. Any views on these thoughts anyone?

Mediation Skills

I hope you all subscribe to fellow SOLO, Justin Patten's e-zine as his articles are always stimulating and interesting. His latest offering starts:

"Set Aside Your Legal Skills to Become an Effective Mediator

A recent article by Sir Henry Brooke, dealing with his new career as a mediator set me thinking about the different skill sets that mediators and lawyers need to do their jobs effectively.

Sir Henry Brooke is a retired Judge and became a Lord Justice of Appeal in 1996 and Vice-President of the Civil Division of the Court of Appeal of England and Wales in 2003. In the article he wrote about his personal perceptions and experiences:
"The advocate’s skills are to conquer the details of a dispute, to give clients high quality dispassionate advice about the pros and cons of pre-trial settlement offers, and if settlement fails, to place their case clearly and persuasively before the court or tribunal, whether in written or oral submissions.
The skills of a judge, on the other hand, are to conquer the details of a dispute, to read or listen attentively to the arguments on both sides, and then to deliver a judgment, whether orally or in writing, which shows that one understands what the dispute is about and is giving clear reasons for preferring one side’s case rather than the other.

A mediator’s skills are different. Of course he or she also must conquer the details of a dispute in order to secure the trust of both parties. But there the similarities end."

Sir Henry Brooke raises an important point. It’s not a natural switch for someone trained in the law, as a judge or a lawyer, to adopt the completely new stance of a mediator."

It was just the insight I needed to understand a threatening letter I was dealing with for a client. I knew the writer was a trained mediator and the letter positively dripped with mediation cliches, but the legal basis for the claim was dubious and poorly articulated. I realised that mediation organisations were amongst the first to offer training to patent and trademark attorneys and these opportunities were taken up to fill the gap in the patent attorneys' formation for legal and litigation skills.

I question whether mediation training is an effective substitute for litigation training. A fully trained litigator may benefit from mediation training. Certainly most major law firm litigators advertise the mediation qualifications of their members but I wonder how many of them use these skills in the initial assertive stages of litigation. Fortunately the legal training organisations are now making formal training in litigation skills more widely available.

SOLO IP needs YOU!

SOLO IP has now been going for seven weeks. In that short time it has already been between 100 and 200 casual hits from readers each week, which is a good start for a niche blog aimed at people who, almost by definition, don’t have much time for reading blogs -- or anything else, for that matter. This readership is boosted by another 30 or so who get their SOLO IP posts delivered by email or via an RSS feed.

The SOLO IP team would like to provide a little more content, however. To this end, we are asking if any of our regular readers would like to join us in writing and posting items and articles on this weblog. If this appeals to you, email Filemot and/or Shireen and tell them why -- and you could find yourself blogging within a fairly short time.

Software as a Service

I am keeping a close watch on the Software as a Service (SaaS) scene, because the IT solutions that a small firm like mine needs are realistically only going to be affordable once suitable web hosted offerings are on offer. These will allow small firms to obtain the sort of IT services that larger firms now enjoy, without incurring the up front costs of investment that sophisticated technology normally entails. I am hoping this will all happen in the next year or two, and have postponed looking at IT solutions in the meantime. So, it was with interest that I read about Microsoft’s plan to offer Sharepoint and Exchange through a subscription service: http://apnews.excite.com/article/20080303/D8V65S782.html later this year. Microsoft appear to be positing themselves in a similar way vis a vis Google as IBM did when Microsoft came along – as the established player that knows what business needs. Clearly with two companies like Microsoft and Google competing to provide us with the most business friendly SaaS solutions, the end products likely to be available to us will be very superior indeed, and unlikely to be matched by any existing small software businesses currently in the market, like Naastar, through whom I currently get a hosted email exchange service. These smaller companies are likely to be bought out and consolidated. If anyone hears of any talks on the topic of SaaS for business or law firms, or has any further information on this topic do please let me know, or comment on this blog

Patent Highway

Isla Furlong, patent attorney at Venner Shipley has been doing some blogging on the CambridgeIP site. I wanted to comment on her piece on the Patent Prosecution Highway which the EPO call the Utilisation Pilot Project.

The whole idea is premised on the assumption that at least some patent applicants don't like the protracted grant procedure. Certainly first-time applicants are usually appalled at the timescales, but they rapidly come to see that delay can have many advantages, not least on the funding requirement.

So much so that I suspect that these highways have little traffic. I took a ride on the EPO/highway recently and was very impressed by the thoroughness of the new search I received. This was a case already accepted in the UK but the EPO were not simply going to use the UK work product. In discussions with some other attorneys, there was some concern that they would lose out on the further search.

When I receive a search opinion. I find it hard to resist diving in to see whether the examiner has a good position or not. I am blessed with clients of similar enthusiasm, which is a bit of a problem in this highway as you can't talk back without stopping to pay at the examination fee toll booth.

I would like to see the Patent Offices offering some incentives to applicants that want to co-operate with them and allowing the examination to continue while the subject is fresh in the mind of both applicant, agent and examiner seems like an efficient thing to do.

I wonder whether patent applicants in general do want speed. Hope is often more attractive and more marketable.

Those impeded by alleged patent risks may, on the other hand, very much prefer their competitor's more ambitious hopes to be dashed quickly so it would be good to have the option of putting them on the highway.

Equality as the Key to Cooperation

I was reading Simon Thorley's obituary of Sir Douglas Falconer in the latest CIPA Journal, I was struck by the note that as a young QC "one of his first acts was to form the Patent Bar Association (now the IP Bar Association) in 1971 and thereafter began to foster the spirit of friendly rivalry and co-operation which now pervades the IP bar".
It suggests that his motives may have been similar to ours in seeking out support and co-operation from his equals. Barristers are of course the very epitome of SOLO independent IP practitioners and quite a number have expressed interest in the organisation. They are extremely welcome to contribute.
Does co-operation work best, I wondered when the parties are of equal standing.
Unfortunately the CIPA Journal does not publish its content online so if you follow the link, you will get the Times obituary not Simon Thorley's.