Thursday, 7 January 2010

Around the blogs: two current issues

1. In a post earlier this week ("IP offices, private practitioners and sponsored videos") the IPKat raised a number of issues, subsequently keenly discussed in readers' comments, relating to the availability of European Patent Office staff and resources as means of actually or hypothetically promoting the interests of private practice firms.

This issue is of relevance to sole and small practitioners who, unlike larger firms, may find the cost of EPO examiners' fares and hospitality disproportionately burdensome to bear. A fellow SOLO IP blogger has suggested that the IPKat's raising of this is a little churlish, also citing her own positive experiences of organising events with the participation of two other organisations -- OHIM and the UK's IPO. Do readers of this blog have any further comments?

2. Joff Wild's strongly-pressed thesis that what SMEs in Europe need is more patent attorneys, and more competition between them, appears on the IAM Magazine Blog here. This too is an issue that has obvious repercussions for solo and small practitioners whose practices depend on certain assumptions concerning predicted income and work-flow. Once again, any comments?


  1. How kind of the EPO. Seems entirely fair to me that large stock-market floated companies can get the services of the EPO for their US-based promotions and small entities can't - what could possibly be wrong with that?

  2. It's impossible to level the playing field that inevitably exists between small firms and large public companies with their greater resources and marketing nous. Filemot has had some success in inviting public body speakers to address the Solo IP group - a group initiated by the IPKAT and so with the benefit of the IPKAT's promotional reach. Whether a small firm would find time to do something similar on their own without the IPKAT's assistance is another matter.
    But the answer for small firms wanting to promote themselves may well be to form some sort of larger group brand, to which they can all belong to, in addition to running their individual firms. This idea was mooted in the early days before Solo IP was born, but no-one had the will or the time to do anything with it. But now, with the impending Legal Services Act changes in the Solicitors marketplace more and more groups of solicitors are emerging who are combining forces to have a website, joint marketing, inter referral arrangements, and even uniform terms of business.
    The writing is on the wall. To be small may only be viable if you are part of something bigger, or if you provide something that the market wants and needs. Unless you have unique skills, or something to differentiate your firm, you are unlikely to survive as a small firm in future.
    So, Jeremy, I think the example you have highlighted of Murgitroyd just shows how much ground small firms have to cover in order to compete.

  3. Joff Wild has also argued that there are not enough patent attorneys in his guest editorial for the CIPA journal of December 2009.
    My experience is that there is little demand for classical patent agency work and indeed I have had to lay off my trainee and he won't be the only redundant potential patent agent. Indeed finding an employed patent attorney trainee may be quite difficult at the moment.
    Joff' thesis however is that there is a need for people to give accurate patent related business advice. Sadly this is not what patent attorneys generally do. They play games with patent examiners to secure grant of Patents. This is usually accompanied by very heavy bills and therefore demand slumps as the big patent filers outsource or deal with their own prosecution and turn to others for their business advice.
    We should perhaps interpret this editorial as a call to arms to create a proper IP strategist profession that will give the much-needed business advice and follow it through in negotiations with the single patent office that is chosen to do the substantive examination. As the five patent offices have realised there is no point in them all doing the same work. They need to learn to respect each other and work to harmonised standards. A thorough examinations by one working with a competent patent attorney should be sufficient. Meanwhile, patent attorneys need to learn something about business and a first-class honours degree from a Russell Group University does not usually include business training. It follows that we need to learn our entrepreneurship elsewhere.

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  5. I completely agree with Filemot. In the past, when acting as a semi-in-house lawyer, I found it difficult to locate a high-quality patent agent who could assist the high-tech client with strategic and commercial questions that also required a detailed insight into patents. The one person I did find, who had previous in-house experience, seemed to find it difficult to advance his career in private practice. I was left with the prejudice that, to get on in the patent agents' profession, it is good to be academically gifted, fastidiously accurate and have great attention to detail. If you are commercial as well, and it doesn't get in the way of the primary qualities, then that may be welcomed in some firms, but possibly not all.

  6. Barbara - many thanks: that is exactly how you should take my comments. Patent attorneys are already in place, though, so in my view are best placed to do the job. What is needed is some way to incentivise them to do it more than they do at the moment. And more competition looks to be the best way from where I am sitting. After all, competition spurs people to find creative ways to find and retain business - in terms of both pricing and offering. Remember, my CIPA piece (rerun in the blog link Jeremy supplies) was about Europe as a whole, not just the UK. Over here, the problem may not be as pressing - though I think it is still a real one - but in a number of very sizeable European countries the paucity of patent attorneys is astounding and cannot be healthy.

  7. I think that this is no different than the TM profession. How many firms actually develop their people as business people?

    How many demand of them that they try to understand their client's businesses?

    I think that part of the value of a lawyer is in recognising with the client that there is a budget, and working that budget to the best effect. Sometimes (horror of all horrors) that actually means telling a client not to apply for some things, but to spend the money elsewhere on monitoring and/or other IP projects. You generally still get the money, but for work which is of more value to the client.

    As regards small firms and large firms.. I think that the small firms CAN do well, as can the very large. I think it is the medium sized firms that will suffer - firms with large overheads and no great economy of scale, who watch as the lifeblood is sucked out of their business by spin-off businesses from the big boys.

  8. I think there is a certain irony in this debate. Although Murgys are now a big established player, they were a start-up in the 1970s and they got to where they are by offering something different to established players. To a large extent they have actually demonstrated that firms can make it through from start-up to major player…

  9. Absolutely. I guess the only issue is that the market has changed a bit since then. I think it would be difficult for a solo to get to that stage - although by no means impossible.