Small business clients

One of the challenges of dealing with small business clients is avoiding misunderstandings, which can arise all too easily given that they are less sophisticated. For example, a few weeks ago I was ecstatic when a client emailed to say they wished to go ahead and file both their trade marks across the entire list of Madrid Protocol countries. I raised the requested payment on account invoice (which including a few non Madrid countries) and came out at about £80,000. I had a warm glow inside, which was rapidly blown apart on receiving the client’s email back to say they had nearly fallen off their chairs when they received my request for payment… Apparently, the example price schedule I had sent them showing the filing costs in 3 countries was taken as the price to file in all the Madrid countries. As happens quite often, the client had not read my accompanying letter, and had formed an impressionistic view of the costs from the various documents I had sent them. So, that is why working for the small business client does involve not only trying to convey the law in the simple, black and white terms they prefer, but also involves, a constant refining of ones communications to ensure they are crystal clear.

The IP Profession is Needed for

What with Jeremy's earlier post

suggesting that the IP profession is no longer loved and the talk about the patent profession dying in France because of the plot to merge it with the legal profession, someone has to stand up for patent agents.

Let's see what has happened in a country where there are very few: Eire. Nice place but with very few patent agents there has been no pressure on the patent office to keep up with the times and if you cannot get to Kilkenny you can't file a patent application and pay in cash. In the UK I can file without a fee. I can file by fax and I can file online. I can get a date and go talk in confidence in moments. Not so for the Irish inventor. There are Irish inventors and they get good tax breaks but because most of the Irish patent attorneys are working in England - they are not encouraging their office to implement all the good practical things that WIPO got into the Patent Law Treaty.

Although Ireland has now amended its legislation under pressure from Europe so that you can use an address for service anywhere in Europe,you can't pay a filing fee unless your money comes from an Irish bank.

So if you're reading this in Ireland and you're an IP practitioner - stand up for the profession before it ends in the rubbish. Oh and please don't charge €2000 for submitting the applicaiton to Kilkenny.

To reach the top in IP, employ yourself

One reason why many capable and ambitious IP practitioners prefer to plough their lonely furrow is that promotion to partnership in larger firms seems to be, statisically, an increasingly unlikely event. A descriptively-titled piece by Ben Moshinsky in last week's The Lawyer, "IP and TMT associates left behind in a promotion round to forget", says it all. This seems to be the case not just for firms that see IP as a minority activity but for practices that seemingly have IP at their very core. Lateral hires are apparently preferred ...

Two is company, three's a crowd

Writing in the UK Intellectual Property Office e-zine IP Insight, UK Minister for Intellectual Property Baroness Morgan has a special message for World Intellectual Property Day. There is all the usual concern about under-exploitation of IP rights, damage done to the economy through infringement and piracy, the need for government to provide incentives for creativity etc -- which leaves one feeling that the IP system is somehow a snuggly relationship between a loving government and the deserving creator in which the professional adviser has no place.


Right: not everyone can afford Bird & Bird ... and some people view the IP professions as little more than vultures

The role of professional advisers is not parasitic. Someone has to pay patent and trade mark attorneys, solicitors etc so they must look as though they are feeding off this lovely relationship between government -- which gives the rights and incentives -- and creators who turn them into wealth. But isn't the role of the IP professional creative too? Patent claims and trade mark specifications don't exist in nature, and the cost to a rights owner (or a business affected by someone else's rights) can be catastrophic if things go wrong. And isn't it licensing, distribution agreements, outsourcing contracts and so on which mean that the inventions the government is so keen to promote actually get made in the factories and sold in the shops?

CIPA, ITMA and other representative bodies of IP professionals should waste no time in commissioning some first-rate research into what proportion of gross national product is attributable to their skills and creativity? The results may cause politicians to appreciate that the professions are part of the creative and innovative process, not vultures that feed on the carcase of its aspirations.

Solicitors Regulation Authority Roadshow

I attended a Law Society roadshow on 16 April, which was an eye opener about the SRA's approach to regulation. There are a number of consultation documents in the pipeline, and the SRA was using the roadshows to update the profession on the latest issues. The meeting was attended predominantly by small law firms.

Among other things, we heard about the Practise Standards Unit (PSU) and how it has visited half the profession, and intends to visit the remaining 5,000 law firms in the next couple of years. We were informed about some typical breaches that the PSU uncovers, such as charging clients general disbursement of, say £25, which is a breach of the accounts rules (one is hence guilty of making a secret profit) if in fact only £9 were incurred on the file in bank charges, and no specific records were kept of any other disbursements on that client's file. It was not acceptable in such situations to charge £25 for general disbursements. Instead our hourly rates should take care of such overheads. Disbursements are to be reserved for actual expenses that are incurred and recorded on a client's matter. Well now we know. However, judging by the restrained questions (after all we had just been told this was a breach), many solicitors in the room did not already know this.

At the end of the presentations, there were a few murmurs from the floor to the effect that the SRA would regulate many of us out of business altogether with its PSU visits, and overly prescriptive approach. To me this example about general disbursements says it all about the SRA. If the SRA can be so petty as to concern itself with trifling sums, at a time when it is supposedly adopting a light touch, risk based approach, then what hope does it offer as an effective regulator? I am not surprised so many practitioners are planning to cease practising as solicitors in future. Surely, there should be some sort of de minimis figure, to justify the time and expense involved for the SRA to police such rules, not to speak of the time and expense of solicitors who are trying to make a livelihood having to get to grips with all these trivialities. Someone pointed out that banks do not face the burdensome and overly regulated approach that solicitors operate under even though they make far more money than solicitors do, and hold much larger amounts of client funds.
I was amused by the way in which the SRA announced its plans to endorse the practising certificates of sole practitioners to record that they are entitled to practise as sole practitioners. This was announced in a most apologetic manner, suggestive of many a discussion held behind closed doors when disgruntled sole practitioners on the SRA had no doubt objected to these plans. Yet all the time I was wondering why this archaic approach towards how many solicitors are involved in the running of a practise? Does it really matter whether a practise is run by a sole practitioner or by two or three solicitors? A bad egg in even the largest of law firms can do a lot of damage. If statistically most serious breaches of the accounts rules involving the compensation fund are caused by sole practitioners, then surely the approach should be to look at the types of sole practice that such breaches emanate from, rather than to conclude that sole practitioners as a whole present a disporportionate risk to the profession. Size is surely just one issue among many. I would guess that any inefficiently run business will pose more of a risk than whether the practise is owned by a sole practitioner or by several practitioners. So, I wonder what sort of people are running the SRA, and whether the legal profession can do anything to have a more business minded regulator in charge at a critical time like this?

Working Conditions

This very fine copyright free NASA picture of working conditions on the International Space Station inspired me to consider whether being SOLO gets you better or worse working conditions. I fork out for a managed office in the basementof the old Patent Office building. This doesn't give you any social benefits as all the tenants keep themselves strictly to themselves. The reception and telephone staff are absolutely top-notch. In fact it has been said that my switchboard now is rather more professional than it was when I was a lawyer.

Of course, you can't employ anybody if you work in your back bedroom, but you can have a quiet nap.

Quite a few prospective clients don't believe I actually work at my advertised address because they are so used to people using accommodation addresses in London. The accommodation address scheme is ideal for solo practitioners as it avoids your home address being scattered around the world and sometimes we need a little privacy. http://www.pipl.com/ and http://www.zoominfo.com/ and even http://www.192.com/ useful resources when you are tracking down a prospective defendant but it worries me when 192 say that if I pay more money they will give me private data.

Slick gimmick or useful tool?

Here's something worth looking into. A UK edition of Patents, Registered Designs, Trade Marks & Copyright for Dummies has just been brought out by the company run by Trevor (Wind-up Radio) Baylis. It's pretty up-to-date (though it ought to state its date of currency in bold letters so that its rate of obsolescence can be easily tracked) and has been prepared by real IP people -- patent attorney John Grant (ex-Redland/Lafarge), Charlie Ashworth (IP manager with Trevor Baylis Brands) and Henri Charmasson (IP consultant/entrepreneur).

If you can swallow the relatively informal and breathlessly animated tone of books in the Dummies series (which I personally find difficult but most readers seem to like), and can factor in the real-life crises the book doesn't mention, such as the occasional traumas one can experiences when navigating the WIPO and OHIM websites, it's actually pretty good. It's not a law book per se, nor is it a slick gimmick: it has lots of checklists and action points that an entrepreneurial client can attend to before he/she consumes precious professional time. For example, it encourages readers to steer away from those flabbily descriptive brand names to which clients are so easily attached and from which it can be so difficult to prise their initial affections. For those readers of this blog whose legal interests run wider than pure IP, it's worth reading the authors' and publisher's 16-line disclaimer on the copyright notice page, in bold capitals (is this copied from Disclaimers for Dummies? I shouldn't think so).

The next edition might benefit from an up-front checklist of IP myths that it can take time and effort to eradicate from clients' minds, such as the notion that you have protected your business name once you've registered it as a domain name or company name, or that the law actually protects people against the theft of their ideas. Something else I'd do next time round is rip out the McLachlan cartoon showing a bunch of inventors sitting outside a door marked 'Patent Office', clutching identical inventions on their laps -- not because it's unoriginal (which it is), not because it's badly executed (which it isn't), and not because it's misplaced (it leads into the Part that deals with copyright) but because it perpetuates another myth, which is that you have to wait till you have rendered an invention into tangible form before you can take it to the Patent Office (or Intellectual Property Office, as we now must call it) in order to secure protection.

At only £16.99 for 326 pages, (or £11.04 if you buy it here from Amazon) it's a good deal, particularly if you are thinking of buying a few as presents for clients, reception reading material or merely to read in the loo.

More details of the book here. Customer review by Ms E. Bunting here.

Building international networks

I am going on a Law Society trade mission/networking event to LA in June. So far there are only about 5 Solicitors booked to go, of which 2-3 are IP lawyers! I am surprised there are so few going, and also surprised that such a large proportion are IP lawyers. I thought I would write this blog to let smaller practitioners know about this trip in case any of you are interested to go too. It seems an excellent opportunity to learn about the Californian legal market and establish contacts with the legal profession in the state. I am particularly interested as I have a number of relatives living in LA, so building connections with firms over there will be useful to me from a personal point of view. I am particularly hoping to identify LA small firms that will also be attending INTA. Charlotte Ford at the Law Society has suggested I put her in touch with someone at INTA so that she can try to identify such firms. Does anyone have any ideas who would be the most suitable person to put her in touch with?

Stress and the singleton

After a couple of days of limited internet connectivity left me in a state of deep panic and mortal gloom, I found myself wondering if there are any reliable contemporary statistics that compare the extent to which conditions such as stress and depression -- which are endemic in modern society in most developed economies -- affect the sole practitioner to a greater or to a lesser extent than they might trouble his more team-oriented colleagues. Presumably there are no available figures concerning sick-leave for the self-employed.

I have secretly envied the facility with which some people, who already get paid for not working over several weeks in the course of the year [ie they have holidays ...], can unilaterally "throw a sickie" and take the day off, secure in the knowledge that the system enables them to do so without the pricking of conscience I experience if I occasionally stray out of clicking distance of my mouse.

Peaks and troughs of business

A few weeks ago things were really quiet at Azrights. As ever the Law Society’s Gazette had carried news reports about how tough law firms were finding it - or was it that they were going to find things tough in future? I no longer remember which. So, naturally I started to wonder what to do if the economy really was set for such a severe recession that all work would dry up! Then suddenly on Friday, the world and his wife wanted to use our services. One client gave the go ahead to file their Madrid Protocol application in every single country, and a few other countries too. We sold an online trade mark search to someone who had not first contacted us by email or telephone – e-commerce is something I am keen to encourage so am always delighted when it works as planned. And a few other clients gave the go ahead to proceed on other types of legal work. Some even asked to see our general brochure to find out what else we could do for them. So, now I am in the enviable position of having too much work! Although it is nice, it is nevertheless really worrying in case we cannot process everything as speedily as usual. Do you take on a new employee, and if so, what skills do they need? What if this is just a temporary blip, and the work does not continue to fly in? I know this is the challenge all businesses face, and the ones that deal with such challenges most adeptly are the ones that grow into the successful businesses of tomorrow. So, I would like to find a locum for a month or so. Does anyone know anyone? If so, please ask them to email me here If you have any stories of your own to share about the challenges of business, why not write a guest blog for us?

Spoofing Frustration

When you get spam it seems to come from a real e-mail address. Its frustrating to find that other people are getting spam email with your name on it. The first you know about it is the System Undeliverable messages that start appearing in your Junk mail folder, or sometimes and more worringly an irate reply from a real person. It is gratifying to know that even Nominet can't do anything about it. See their news item from a few days ago.

Hopefully responsible ISPs will think of ways to prevent this activity as it threatens one of the main means of communication for the solo practitioner. However some ISPs like AOL seem to be so protective of their clients that I cannot communicate with them at all.

No image with this post because I was going to use one fron Flickr which said it was public in a prominet green notice and then has a faded copyright notice saying all rights reserved. There are pics on Flickr available for non-commercial use but....

INTA for first-timers

Taking up Shireen's challenge, I thought I'd say a little about the International Trademark Association's Annual Meetings. Since they are massive and potentially ruinous events, they are best planned ahead. The following are a selection of random points that may be of help:

* don't waste your time worrying about which events, talks and receptions are best in terms of maximising your chances of networking -- with 8,000+ people around, all of whom have a high degree of interest, commitment or expertise, you can hardly fail to meet and talk to the 'right' people;

* it is regarded as quite normal at the INTA Meeting to do some things that one might not do at home. For example (i) speaking to strangers and (ii) wandering round the streets wearing a large badge bearing the INTA logo (right) and one's own name;

* if you're working solo and not as part of a large firm, remember to factor in enough time between meetings etc to freshen up and/or take the occasional break;

* if you've nothing particular to do and nowhere in particular to go, the hospitality area near the exhibits is a good default place -- there are always people wandering round, coffeeing and often looking for a chat too;

* make sure you have enough pens, a roaming phone, detachable adhesive notelets, paracetamol, throat lozenges and other staples -- it can be disruptive and annoying so sort these things out in the middle of INTA when there's so much else going on;

* have three or four prepared professional trade mark-related conversation-pieces lined up for when you run out of chatlines concerning the flight in, the hotel accommodation, whether you've been to Berlin before, the weather etc.;

* have opinions on some mainline trade mark topics even if they don't impinge immediately on your work or your interests. These topics might include parallel trade, cyber/typo-squatting, internet auctions and comparative advertising;

* if necessary, make discreet notes on the backs of incoming business cards after you've spoken to someone - but don't trust your memory since you may find that conversation fatigue sets in and you can't remember who said what;

* bring plenty of business cards (not that so many people use them these days) and always have something to read -- it's often difficult to navigate efficiently and remain punctual, so you'll often by kept waiting by people whom you've arranged to see;

* make sure your website is up-to-date before you leave for INTA;

* the larger 'fringe' hospitality events are notionally private; it is however a widely-accepted convention that anyone can gate-crash so long as he/she leaves a card (the efficacy of these events is measured in terms of how many cards are gathered in);

* always be positive: it creates an impression that you are on top of things;

* be a good listener: it can be much less exhausting than always talking, and the person you're listening to will think you're really good for as long as you keep listening with the attentive face you learned to wear at tutorials as a student;

* don't schedule any work that requires serious thought and deep commitment for the day after your return.

If anyone else wants to add any comments and suggestions below, please feel free to do so.

INTA Berlin May 17-21

I am attending INTA for the first time this year, and am looking for advice from those who know more about these things, whether the Gala dinner is worth attending. Perhaps my fellow bloggers who are experienced INTA attendees might like to write a post for those of us who need to know how to approach this annual marketing event. I am keen to meet with people who will be there – possibly in the designated Hospitality Areas, so if you are interested in setting up a meeting with me why not email me here