Further thoughts

I was encouraged to see some interest in the topic of my post ‘Food for thought’ in the form of two anonymous comments and a few emails from people, the majority of whom were not looking to join my proposed network – indeed could not qualify given that they were neither UK solicitors nor UK based. But people did raise interesting points which I would like to answer in this post.

One theme that emerged from comments was how much some solos value the solo life with its absence of hassles of managing staff, having to recruit, run offices etc etc. Life is so much simpler just working solo, and the regulatory burdens are not too onerous for many in other jurisdictions. This may possibly be because they don’t operate the equivalent of our client accounts. Without doubt in most jurisdictions operating a client account is what brings into play the full weight of the regulatory burdens. Many also feel that their clients receive a better service from them than from large law firms.

I have to say immediately, that facilitating for solos the sort of lifestyle they currently enjoy and want to maintain is precisely what I’m trying to offer them the chance to continue in the future when it may be less possible to practice as solos – at least in the UK as solicitors. They could do so by joining the Azrights network and working from home.

As to the threats on the horizon that is potentially going to endanger the lifestyle of true solos See for example comments in the Law Society’s Gazette in the July 2008 supplement on Professional Indemnity Insurance (which unfortunately is not available online for me to link to), by Simon Young, a practice management consultant and Law Society Council member who

“predicts that increasing compliance demands are likely to give further impetus to the wave of mergers among smaller firms. He draws a parallel with sole practitioner independent financial advisers (IFAs), who struggled to cope with compliance issues on their own when the amount of regulation affecting their practices grew exponentially. IFAs were either forced to merge, outsource compliance at great cost or be roped in as tied agents…. There are now very few one-man-band IFAs. Compliance for the legal profession is undoubtedly a resources issue and I am afraid it militates against small businesses and sole practitioners in particular"..

By trying to find a way for solo lawyers to exist in peace in future as practising solicitor solos, I am hoping to find a solution that produces a WIN WIN outcome for everyone. Anyone who can see the writing on the wall – namely, that the growing regulatory burdens in the UK are going to increase the costs of operating a law firm, and so make it unviable for solo firms to operate as sole practices in future, will want to look around for possible solutions. The one I mentioned of joining Azrights network is one such possibility. Doubtless there are others. However, burying ones head in the sand is not a sensible option.

In view of the incredulity from some people showed as to whether the Inland Revenue would accept that solicitors operating in this way could be self employed, rather then deemed employees, I can confidently say 'yes' because the model is not a new one. There are many law firms operating this way, and indeed IFAs too. So at the time of writing the Inland Revenue does not have a problem accepting this way of working in the legal profession as anything but self employment. For further information about this and how the lifestyle works, here are some articles relating to a law firm in the UK – Keystone Ltd - here and here

They are by no means the first or only such business, as there have been others before them, such as Woolley & Co who were one of the first virtual law firms.

My hope is to do something interesting using this model for growing an IP and Technology law practice. It remains to be seen whether there will be sufficient interest from small IP practices in the next few years to make it happen. Watch this space as they say!

Thomson summer sale -- someone to speak to

I posted this note last month on the intellectual property titles available in the Thomson summer sale, with a candid review of the various books' applicability and format. Gavin McGivern, on behalf of the publishers, has offered to make himself the point of contact for any readers of SOLO IP who would rather deal with a named human than with the customer service people. Gavin can be contacted by email gavin.mcgivern@thomsonreuters.com or by phone on 07717 340658. If you happen to be a small or solo practitioner, Gavin also turns out to be the human face of Westlaw.

Food for thought for IP lawyers

Times are tough – and in some ways, perhaps more so for sole practitioner solicitors in the increasingly onerous regulatory climate being imposed by the Solicitors Regulation Authority. Running a business for a ‘one man band’ is hard enough – never mind once you add into the equation an extra layer of compliance obligations.

Clearly the new era of regulation will make it untenable eventually for true sole practices to continue in business. This is already evident from anecdotal stories of lawyers being refused insurance to set up new sole practices. How many of us are now waiting anxiously to find out the new premiums our insurers will impose? It is traditionally one of the worst times of the year for small firms of solicitors. On top of that is the impending difficulty small firms are expected to face in responding to the new questions the SRA will ask at practising certificate renewal time.

So, when a fellow sole practitioner mentioned that he was considering closing his practice, paying run off cover, and re-establishing himself as an IP consultancy, I thought there must be a better way. Surely it should be possible for highly skilled IP lawyers to be able to use their skills and solicitor title without having to run their own businesses, or go and find a job in a law firm. Many lawyers simply want to get on with their client work. They are not interested in running a business, especially one which involves spending more and more time familiarising themselves with and implementing an array of new regulations.

Then it occurred to me that perhaps I could help my friend, and he could help me. I want to grow Azrights into a top notch IP and Technology practice , and would welcome experienced lawyers on board to help achieve this. By joining Azrights as self employed lawyers, my friend and others would be able to continue working as solicitors, based either at home, or in their own offices anywhere in the country. They would continue to act for their own clients, except that they would do so under the Azright brand.

Among the benefits to them would be leaving all the regulatory and client account headaches to Azrights to manage. We would also provide the IT and email infrastructure to enable remote working. An added bonus is our website and blog which will soon appear prominently in search engines, providing an excellent resource for marketing. Lawyers in the network will be part of a firm, and will have opportunities for interacting with each other and giving and getting cross referrals. Further benefits include access to administrative and junior legal staff so that there is the option to delegate work which should be done at a more junior level,.

Clearly there is a huge difference between the network of lawyers I have in mind for Azrights, and some other types of lawyer networks, which are really only agents collecting revenue from the fees generated by self employed lawyers. If any IP solicitors out there are interested in discussing the possibility of joining Azrights network please get in touch.

UK relative grounds opposition changes: did they change your life too?

Way back on 1 October last year, the UK IPO changed its practice regarding trade mark oppositions on relative grounds. Instead of examiners using their own judgment and initiative and deciding that an applicant's mark was confusingly similar to another mark already registered, a notice-based procedure was implemented (see here for details). This change was the subject of a very enjoyable meeting of the SOLO IP group at the rather cosy offices of London law firm Collyer Bristow. Anyway, to cope with an expected tidal wave of inter partes oppositions, some extra Appointed Persons were appointed so that appeals against the extra number of oppositions could be expeditiously dealt with.

Is there any evidence, real or anecdotal, that the number of inter partes oppositions based on relative grounds since 1 October has (i) gone up, (ii) gone down or (iii) gone nowhere? Do let me know, either by posting a comment below or by emailing me here.

Kerly's Law of Trademarks

This blogger is looking for a used but handsome copy of Kerly's Law of Trademarks. Any ideas of where one can get a copy, even those older than 10th Edition would be appreciated.

For those interested in news from another jurisdiction, as reported by Afro-IP here, Uganda's parliament will soon debate the long awaited Trademarks Bill.

Does anyone know?

Here's a quick question for practitioners (two actually, but one is a bit rhetorical): is a Power of Attorney, drafted overseas in a foreign language and intended to be of effect in that foreign country, but signed in this country before an English solicitor, a foreign document or a UK one for apostille purposes? And is there any serious justification for getting documents apostilled in this day and age?

Bank transfers and the fluctuating US Dollar - a view from Uganda

This is my maiden voyage on solo ip so thanks for getting me on board!

I have a relatively different angle I wanted to raise regarding bank transfers as we in Uganda do not have any regulations similar to the new Law society Accounts rules in the UK. My current challenge as a solo ip practitioner relate to the tremendous volatility of the US dollar against our local currency the shilling during the past 12 months. We have had the dollar falling by over 400 Uganda shillings which can amount to a substantial difference when dealing with large trademark filings.

One of the problems associated with this is that we typically communicate our schedule of fees early in the year to our clients. This however becomes difficult when the currency in which we are charging fluctuates so frequently. We have been forced to increase our charges once since the year began but the weakening dollar has also led to an increase in other costs, which we could not reflect in this increase, so as not to destabilize our pricing.

I have considered setting up an online payment system that would enable payments by card which could minimize our loss to some extent. Problem is that the visa costs themselves seem less than humble! Any views from a solo practitioner in this regard would be helpful.

UK Trade Mark Rule Changes

Its back to school for UK trade mark agents to get to grips with the new Rules we will have to work to from 1 October 2008. As discussed earlier in this blog the UK IPO consulted about these housekeeping matters so there are no real surprises. The SOLO approved (we had two comments so that was a big vote of confidence) shortening of the opposition period comes in at two months- extendible for another month. A nice compromise making the fast track that little bit faster.

Non-use actions that succeed because the trade mark owner has moved away from his noted address become that bit more difficult as there is a new Rule 43 that allows decisions to be set aside if the proprietor did not recieve the documents. Lots of discretion and the registrar has to be reasonably satisfied that the form did not arrive not just that it was binned. The rule applies to abandoned applications and oppositions as well.

Of course all our carefully learned numbers change as well. Extensions of time are now Rule 77 and are tinkered with once again. Late extension requests are now limited to two months. This, they say, is to comply with the Singapore Trademark Law Treaty. The "discretionary" standards for extension now only apply to the time limits set out in Schedule 1. These now include the opposition period. Fighting about extensions for evidence now seems to be futile as the rigistrar can do what he likes whatever the other party says, though they do still get a copy. Lets hope the registrar wants to keep proceedings moving otherwise we could be back to evidence at the convenience of the filing party.

We can forget having to file priority documents too. See new Rule 6. This brings the UK into line with OHIM. Sadly the transitional provision means that we still have to file a priority document for cases filed before 1 October 2008.

Perhaps the Registry will be planning workshops to introduce the rule changes. I think it would be nice to have a SOLO one

Protecting IP clients from Bank Charges

The new practice note issued by The Law Society on 30 July 2008 relating to bank charges for money transfers is something that those looking at the introduction of financial regulation for patent and trademark attornies should read with care. The new note reflects the practice as I have always understood and applied it under the Law Society Accounts Rules. Applying it in a UK solicitor's firm while conducting an international law practice puts you at a disadvantage to the unregulated attorney as I know from experience. When financial rules were introduced by the patent and trademark attorney regulator I had hoped they would be more realistic but so far the regulator is trying to avoid making such rules. I personally doubt that this is likely to be acceptable. Why should an IP client be faced with different regimes? If the new regualtory scheme is to work there has to be a level of harmonisation.

Personally I think there is a middle ground particualrly for payment of overseas fees which we may want to bill in advance. Lets tell the client how we calculate and then he can compare terms of trade as between attornies. The cartoon relates to the introduction of bank notes to replace payments in gold by the Bank of England in 1797.

My rule at Filemot is to convert at the rate given on http://www.xe.com/ and add 3% plus £10. I make my payments through TransGlobal's PayFac ® service. If I have money on account then the client gets the disbursment at actual cost which is a tad less because TransGlobal offers very competitive rates. If you use your bank you might need to check whether 3% is enough and of course the £10 charge may vary. Transglobal don't charge you a membership fee. If you want to include an element of risk of currency fluctuations it would be fair in these times to make the percentage more but then you could make a profit.

If you want this procedure to comply with the Solicitors accounts rules you must pay into client account or immediately return any profit you make when the disbursment is paid. You could also include the losses as a disbursment but the Law Society told me once that it was alright to absorb them. It works OK when you are billing the management of an international portfolio on a regular basis.

It would be helpful to know what IP clients think about this. Do they ever enquire how their foreign payments are handled whether they are using law firms, registered attorneys or other agents?