The new European patent package, SMEs and the solo practitioner

The new package: will
there be anything in it
for small IP firms?

Now that the new European patent package is more or less done and dusted, subject only to possible and unexpected sabotage by the French, German or British governments, the time has come to consider what it all means for solo practitioners and small IP practices.  The European Parliament, the Commission and other "official" supporters of the new measures have all stressed how much benefit will be conferred on small and medium-sized entities -- businesses which have hitherto provided much if not most of the work for small and medium-sized IP practices. Will the new measures leave this happy correlation unchanged?

It's this blogger's guess that, while the patent filing side of things may remain unchanged, when it comes to litigation many SMEs will find themselves driven into the arms of larger IP practices, particularly where the resolution of the dispute is likely to require travel to two or more overseas destinations, as Lord Justice Kitchin indicated could easily be the case in his speech to the CIPA Congress this October.

This blogger feels sad that the recent experience of the modified Patent County Court for England and Wales, with capped costs, streamlined procedures and some scope for cost-saving through the instruction of patent attorney litigators, has come too late to have been considered as a possible template for a small-scale patent resolution forum under the new European regime. He wonder what others think.

The CIPA Journal: It's a Hard Act to Follow

An encounter with Michael Harrison this morning at the excellent Hardwicke Chambers breakfast seminar given by Mark Engleman on Jackson costs, prompted me to pick up my November copy of the CIPA journal - since Michael is now the new editor of this illustrious publication, having taken over from Tibor Gold. If you are a member of CIPA, you will be able to find the journal online here.

The Editor

So much praise has been heaped on Tibor that Michael will need some encouragement in order to implement modernisation and changes in the journal. However, 10 years is a long time in a publication's life and there is always room for evolution.

The fact that we are looking at the November issue and it is already December suggests that a publication cycle for print is no longer in keeping with the demand for immediate information. Perhaps the time has come for less paper and a companion Internet publication to cover more immediate matters on which the membership need to be consulted or at least aware, such as the not so secret diary or upcoming ECJ cases where CIPA might be encouraged to put in a position

Reducing the number of print editions would save some costs allowing for development of the new online version.

Maybe the time is right to consider making that online version a joint effort with ITMA, or perhaps  making the paper journal of record a joint publication.

It is good that the learned articles that are of value for future students should have a print form. It is also good that these articles should be moderated, fully edited and have enduring quality. There are plenty of prospective authors who want an outlet for their work and I suggested to Michael that liaising with the PR consultants who work with IP firms could well be beneficial in providing new material. Many aspiring authors are rather short of ideas for their articles and I am confident that Michael's wisdom might be exercised in commissioning some pieces that would be valuable for all members of the profession - but with an emphasis on the patent attorney in practice. Casenotes are one thing - and are well covered by exisitng media - but a survey of the case law on a particular topic over a period of time and its relevance to claim drafting, or even the trend taken by a specific judge so that we know how to advise our trademark clients where to put their figleaves, are always excellent article material but they do require the author to undertake some very specific research, so it's always nice to hold a commission for one.

Do give Michael some encouragement to make his mark, innovate and create as only a patent agent can

Reflections on the Entrepreneur Market

As Global Entrepreneurship Week draws to a close for this year, I thought it might be interesting to reflect on the young entrepreneur as a market for intellectual property advise. There is, no doubt, a need but there is no market. The need is satisfied well by The UK IPO who provided lots of resource and encouragement including a special page. Both ITMA and CIPA were represented at the British Library Business and IP Center event. The idea is that by making entrepreneurs aware of the availability of professional advice they will buy it at an appropriate stage and avoid the worst traps in the meantime by using the free search tools for the UK and Europe and advice. Sadly the Business Link combined company name and trade mark checker tool launched in 2008 has now gone the way of all things Business Link. This is a shame it was the best basic starting point but it does leave the Entrepreneur who relies on Google market vulnerable to the factory filers who sell on price but are of necessity more expensive than filing direct with the UK IPO yourself.
The challenge we, as individuals, face in this Internet led market is to emphasise the value of personalised advice and the wisdom of experience and training validated by a professional body.  For this personal networking is a better bet than Google Ads. The ITMA/CIPA non-core skills training team is offering an event which may interest some of you. Its a webinar so you won't see me there and, being such, I don't expect it to cover face to face networking in any great depth. If anybody is willing to offer a review for this blog, that would be great.

Don't Hold Me Back

Dead Wood shackled in NZ by Sarah McMillan

One of the biggest obstacles to leaving your firm and going SOLO is the restrictive covenants in your existing employment contract. Equally if you are taking on staff these contractual terms matter if your firm's book of business is not going to walk out the door. Case law is infrequent so I took note when  Michael Scutt tweeted about his blog on the Farnsworth case.

In this case Mr Lacy had been promoted during the course of his employment but had not signed the new contract that he had been given. He sought to argue that the restrictive covenant, which was for 6 months and prevented him working for a competitor and soliciting defined customers, did not bind him because the contract lay in a draw unsigned.

The obvious lesson for the employers amongst you is not to crack open the celebratory champagne or pay the new salary until the contract is signed.

As always, this case is very much on its own facts. The problem arose out of the take over of Pooles of Wigan as reported here.  The Judge was (rather against his inclination ) deciding a preliminary issue as to whether Mr Lacy was bound by his contract and must suffer a few more months of an injunction that was already in place. He does. The Judge ending up relying on the evidence that Mr Lacy had applied for private medical insurance (PMI) for his family, a benefit to which the new contract entitled him.

The law applicable to the case is basic contract law (paragraphs 19 to 31). The judge had to decide whether the offer in the revised contract had been accepted.  The Claimant enforcing the contract carried the burden of proof. There needed to be "an unequivocal act implying acceptance" and in accordance with the Solectron test this must be "only referable" to his acceptance of the new terms.

While the Claimant started out with five possibilities: revised salary; provision of a better motor car;  enrollment in a profit related incentive plan; movement to a defined contribution pension scheme, and the application for PMI. Only the last was only referable to the contract. Sadly litigants often forget that winning on four points and losing one is still a loss.

Of course if you can't work for a competitor you might be able to set one up, but be wary of any reasonable solicitation covenants as even the legal advice may be expensive and inconclusive.

Selling for Solos

There is no shortage of marketing advice out there. Everyone seems to be prepared to offer me some service to develop my professional image and bring in new clients. Our Professional Bodies ITMA and CIPA are offering a Webinar that will tell us how to do it and it seems we have come a long way from the days when a brass plate and a tombstone advert in Yellow Pages were considered daring. Even the EPI consider that European Patent Attorneys can advertise

Advertising is generally permitted provided that it is true and objective and conforms with basic principles such as integrity and compliance with professional secrecy.

IPREG insists

Publicity and promotional activity of any kind by regulated persons is permitted if it is fair, honest, accurate and is not misleading and is not otherwise in breach of these Rules.

Networking - some of our bigger competitors are enjoying an #AIPPI2012 trip to Korea at the moment, article writing, and websites are now the norm.

This blog's co-found Shireen Smith of Azrights has gone one further in adding value to advertising material and is selling her educational and informative book to her target audience.

Our competitors are banding together in marketing groups like Quality Solicitors, who are also producing jolly TV adverts that can gain even greater publicity by social media, such as this.

While these methodologies may be perfect if you want to grow your business and recruit, they may not be ideal if you want to maintain a steady workload. For that, perhaps we need to nurture our existing clients and work referrers. Of course if you have been too successful with the marketing techniques, you can perhaps pass some on to another SOLO practitioner.

I would love to see some comments on how others are managing to control the workflow.

Party time: the Law Society may need you

This blogger understands that the Law Society for England and Wales will soon be recruiting new members for its Intellectual Property Working Party.

If you are interested in joining the Working Party, why not email Isabel Davies for further particulars? It would be good to know that, at a time when IP litigation has trickled down from the Court, through regular Patents County Court to the new small claims track, the experiences and understanding of smaller practices are shared with their bigger brethren.

Driving on the Small Claims Track

The barriers to enforcement of small IP claims will be lifted from 1 October 2012.
If you are an aggrieved designer, photographer or even brand owner, relief is at hand on the Patents County Court Small Claims Track. Question is how do you drive on it.
Are you eligible?:
Your claim must relate to a trademark, passing off, a copyright or unregistered design right and be worth less than £5000 and that presumably includes cases where all you want is an injunction to stop someone trading as you. But note that you must wait for the trial to get that injunction as there is no interim relief on this track.
How do you start?:
First write to the person setting out the problem as you see it and give them time to reply. Tell them what your rights are, what they have done wrong, what you want and when you want it by. The letter should comply with the pre-action protocol and should say so. Be reasonable and polite the court will see this letter.
If you don't get what you want you need to fill in your Claim Form. You need to set out the particulars of your claim and say you want the  claim to be allocated to the small claims track.
What does it cost?:
The fee depends on how much money you are claiming. For a photograph used without permission it only seems likely you will get more than the National Union of Journalist's Guidelines. See a judgement from the Court in Delves- Broughton v House of Harlot. If you want an injunction its £175 and if you want damages it adds from £35 to £120.

Where do I get help?:
From one of the regular readers of this blog who is a solicitor and will offer you a fixed fee deal. However it doesn't have to be a solicitor. You can use pretty much anyone if you are prepared to attend court with them. You can also use the free mediation service provided by the Courts. If you do use a solicitor there is minimal scope for costs recovery so expect to pay a fee for help and do a lot of the work yourself. Finally there is not a lot of court resource for this service so it all may take a bit of time if there has to be a hearing. However because you can have the matter resolved by the Court that is a big incentive for your claim letter not to be ignored as it may have been before.

The above is intended as something of a idiot's guide intended for  users rather than our email subscribers. Lots of lovely detailed chapter and verse can also be found on Jane Lambert's blog. Its also worth reviewing the Government responses to the call for evidence on this as published by the IPO in March 2012.

Patent Disputes in Proportion

The UK IPO is currently pondering how to expand its Opinion Service after the recent closure of the latest consultation.

I also note from the IPkat's recent post that the Patents County Court is still in full-blown self-congratulatory mode as it prepares to launch its small claims track (Legislation here Rule 10 ) so maybe its time to raise some issues.

There is no doubt that the new regime has made it practical and possible to resolve disputes using the court system. However, to deliver the real cost savings in litigation that make the costs proportionate to the dispute, it is necessary to conduct this type of litigation in a new way. The way I have chosen is to do it single-handed - eliminating the costs of communication between members of the team. Indeed, many litigants in the Patents County Court are representing themselves. These are the difficulties we all face:

• Communication with the court is a real problem. Phones don't get answered and emails bounce unless the court wants something but not if you do. In-person enquiries tend to be unproductive as well. You are on your own. The best a litigant a person can do is try the Citizens Advice and its current location in the Family Division tends to suggest its focus but they might help you fill an acknowledgement form and there is no-one in the Rolls Building who could even do that for a defendant determined to represent himself this month.
• The court filing system. It would be nice if there were one. I have never printed so much paper. It seems a waste that it serves no purpose.
• Application procedures don't quite work in the way described in the Patents County Court guide, where the court itself is supposed to decide whether a hearing is necessary. If you can't agree a date or even availability with the other side, it's a dead end or a long wait.
•  Time lines are long. The period for a defence was deliberately set long because the idea was as that there should be full pleadings (not just long ones). However, in patent cases where there has been protracted pre-action correspondence another 10 weeks can be a bit of a bitch to say nothing of the wait for a trial date. I was so vexed by the boast that a case could be decided in a day I tracked down the patent on Ipsum where you can find some of the pleadings relating to Invalidity in an infringement case CC11P03258  that actually started in September 2011 so a judgement in a year is nice but not seriously different from the timescale in Big Brother Patents Court. It also seems that these timescales are lengthening.  Let's hope that the fast-track does not put those who are looking to settle patent and trademark disputes into the long grass of several years.  It is inevitable that costs get greater if files are put down and forgotten rather than got on with, to say nothing of the impact on SME business that does not know if it is racking up a damages claim or not.

We might solve some of these issues with a bit of help and collaboration from the IPO. The trademark litigation section cope pretty well with a large number of files and you can contact it by phone and email. Although it doesn't have the ability to post its files to the Internet as the patent side does, hopefully that is coming. Let's see all the Patents County Court documents on line so that we can all know what's going on including the Judge.

Despite this I have managed to achieve quite a lot, but it does help being next door.

Somebody's Here : A Guest Response

The following is a guest post From Daniel Smart of Colman Smart in Manchester. He is a big IP supporter and once upon a long time ago (you can tell by the size of the computer) he even used to help support me. 

The recent 'Is Anybody There?' post left me thinking. How could I, or we, relieve this feeling of blogging loneliness and provide a contribution?

What is the main difference between large IP practices and solo or small IP practices (including those in-house)?

I suppose the key word here must be resources.

Learning resources are important when you do not have in-house trainings geared towards your specific field. Thankfully, there are talks performed by various professional bodies and even if you are not a member of some, you can often still attend them - and find out about them through the likes of the IPKat. However, external courses and seminars do not come cheap and there are, of course, time factors. Geography is a related factor. Few of us can attend all of them and we need to prioritise. We see the programmes in advance, but choosing the best ones to attend can be a bit hit and miss. Previews of upcoming events and reviews of past events could therefore be useful, perhaps?

Business support services can be a small, but critical, cog in managing a business successfully. Managed offices give you that peace of mind that your post will get taken care of, your phone is answered and the printer will always have toner and paper in (although much of this actually depends on the package you sign up to). However, how much value would you give to this? This should help you determine if the price is right. We have answerphones and we can divert calls to our mobile. Personally, I don't mind a trip out to the Post Office to send letters once in a while. It gets me out (as I am mostly e-mail working, like most of us I imagine). Saying this, arrive at the Post Office on a bad day and the wait can be quite long. I could also add that I am glad I don’t have to venture out today; thunder and rain where I am.

I am interested in what kind of record-keeping, formalities and paralegal support solo and small practices have or need. My interest is an obvious one as my firm specialises in this area. Ensuring you are stocked up on paper and toner may involve a trip to the likes of Staples on a Saturday morning whereas once you've counseled a client, completed searches, finalised a list of goods and established jurisdictions of interest you'd quite like to have someone else arrange for the 10 trade mark applications to be filed around the world? Of course, I've worded this in a biased way but I am merely trying to offer food for thought. You may prefer 'office admin' to be outsourced whilst retaining personal control over anything IP related no matter how routine.

How you manage the data of your IP portfolios can be important to ensuring an efficient running of your practice. I have recently blogged on IP databases - from large and small practice perspectives - so check it out if this might be of interest to you.

In the UK, many large law firms - and patent/trade mark attorney firms are also joining this trend - now provide platforms for independent practitioners to benefit from their support structures in place. They take a hefty chunk of commission for work introduced to you. When you introduce the work, the commission is much less. You benefit from being associated to the bigger firm and the backup systems, additional expertise and record-keeping capabilities. It is arguably more attractive to lawyers in the provinces that can then charge hourly rates closer to that of the City.

Best bank, best mobile phone, best technology, best networking events, etc. are aspects that seem to be ever changing but I believe we would be interested in any recommendations others have. These can also help you manage your business effectively and make best use of your resources.

Is Anybody There?

Small IP practices continue to be started. Some grow big and others stay small. The question that troubles my co-blogger is why, apart from me, no-one is particularly keen about blogging about the experience. Since this blog offers no rewards and has a small but entirely charming following, this is perhaps understandable. Nevertheless is it an excuse to give up?

Sometimes its useful to share news of an event that may not have caught your attention. For example the Bird & Bird associates are promising a most interesting offering on 20 September on the Unitary Patent System - that may well be of value to patent agents who have gotten rather bored of the litigators haranguing about their pet Articles and allow us to get our heads round, what it means for patent applicants.

Or you might want to spend £25 of your training budget with IBIL Questioning the Trademark Judges on 17 October 2012. But details of that and a great many more are to be found on the IPkat's famous forthcoming event's page.

Much of what a SOLO IP practitioner needs to know on the subject of IP is the same as someone in a bigger firm so that does not offer a special need.

There is a presumption that we all act only for small clients - which is wrong - because the best large entities recognise that a SOLO is the best way of getting a specialist on board - and so this blog should deal with the special requirements of the impecunious micro-entity.

Probably the only unique issue for the SOLO is those tools that help us to be uber-efficient. We should perhaps be carrying a review of Dragon Naturally Speaking 12 voice dictation software ; or a comparison of the best offers for Managed or Virtual offices; or the best business bank accounts; or whether its a good idea to join a marketing group.

If you would like to write any of those items or others do get in touch. Meanwhile have a great Bank Holiday

Non-law first degrees: which, if any, is the best buy?

Many people are thinking
about their choice of degree
at a fairly tender age ...

I've just been reading an interesting little piece on the UKSC Blog (UKSC being "UK Supreme Court") on whether it's better to enter legal practice with a law degree or without one. In some areas, getting started is well-nigh impossible without a strong non-law basis. For example, anyone wishing to practise as a patent attorney is pretty well incapacitated without a degree-level science background.  The only people who don't need to know anything about science and technology to make their way in the field of patents are, in the UK anyway, the judiciary, who can sit as Chancery judges in patent cases and indeed hear appeals as far as the Court of Appeal and the Supreme Court without any possessing any specific or general scientific base.  This lack of scientific education is shared by most members of the Court of Justice of the European Union, but that's another story.

What I'm thinking about right now is this: both academic and practical legal education goes out of date pretty quickly; that's why continuing legal education is so important.  Science and technology change too, but within the IP community there is less need to force practitioners to retrain regularly: the nature of their work and the separate need for expert witnesses sees to that.  But in terms of getting a foothold in one of the IP professions and then climbing the ladder, what sort of non-law first degree works best? Does one opt for a white-hot new technology in a rapidly evolving field, where everything is new but practical applications may be uncertain or unknown? Or perhaps a mature technology is best, where things are more stable in terms of markets for products and processes and there's a regular flow of incremental innovation? Or again, something more mathematical, as a better means of cultivating analytical habits of thought?

It would be good to hear from readers as to which non-law degree they reckon to be a "best buy" for the next generations of IP practitioners.

Disposing of your IP practice? Or fancy writing a review?

One of my intellectual property LinkedIn groups sent gentle ripples through the tranquility of my train of thoughts this afternoon, when news of a new discussion arrived in my in-box. It read:

Thinking of disposing of your law firm – well, don’t ripped off.email ray.fox@virgin.net for a free report on how NOT to get ripped off when disposing of your law firm.

Having first noticed the obvious need for editing and then having pondered on whether this was a discussion or -- as it seemed to me -- a marketing promotion, I then started wondering about the condition of many small IP practices.  During the current recession, many such practices must be teetering on the brink, surviving on small amounts of regular work from current clients, bits of outsourced work for other practices, the making of further reductions in overheads and a good deal of (depending on one's personal preferences) praying or cursing.

It would be too embarrassing and depressing to ask readers to write in and give details of how they have been ripped off when selling -- or possibly merging with or even buying -- another practice. It would however be interesting for one of the SOLO IP readers to review the free report which is on offer and to let us have a piece which we can publish on the blog that measures its contents up against any real-life perspectives that readers may have.

Mediation Services

The IPO mediation room ?

The IPO is currently making a call for evidence to try and work out why it is not getting any mediation business. Is it because nobody suggests it, or no lawyers want it, or we are all just ignorant that the IPO has a service to offer.  It would be good to know so can we send our input.

From my viewpoint, I have aspired to use mediation far more often than I have ever achieved it. My best results have been with the mediation element of the Nominet Dispute Resolution Service. They have a simple approach and it costs nothing and it uses the pleadings you have already prepared. Best of all it takes place over the phone and is initiated by Nominet not the parties. It would be neat if the IPO were able to have a staff member read the Patents County Court Pleadings and offer a similar approach, though would it be before or after the CMC - ideas?

Other recent reasons why I have not got disputes into formal mediation include:

• the parties are physically too far apart so coming together for a meeting is impossible
• the other side tells me to stop calling and suggesting that settlement might be something we can discuss
• its too hard to decide who will appoint the mediator and who will pay the cost
• the £££ charge of the best mediators are disproportionate to the value in dispute
• you mean we need a suite of three rooms in central London!
• the decision makers are not prepared to come and spend the time on it - they employ lawyers they don't want to do it themselves
• the idea of preparing a bundle and argument for the mediator is too much extra expense
• the client thinks he is going to win
• getting a debate going on the blogs and on twitter about the rights and wrongs of the case is so much more fun
• a mediator cannot invalidate the patent/trademark/registered design

A mediator has to be a certain type of person, who is learned and fair without coming across as judgmental. The IPO has a role that involves making decisions and it may well be that this makes them come across as more on the side of the gamekeeper. However they are not-for-profit, whereas most mediators are working for profit, so its as good a starting point as any. Maybe all they need is a few more Google Ads.

Holy grail or poison chalice? IP and legal services in Wales

One of my most frequent tasks as an editor is to correct terms such as "English Court of Appeal" and "UK Patents County Court". In each case the correct term for the jurisdiction is England and Wales.  The relationship between the two is sometimes similar to that of Switzerland and Liechtenstein -- the larger jurisdiction is dominant, but that does not mean that the smaller is in any sense insignificant.

Why are these reflections of interest to an IP blog? The answer lies in a recent Press Association news release, reproduced in relevant part below:

"The creation of a separate legal jurisdiction for Wales would be a major economic boost for the principality, Plaid Cymru AM Simon Thomas has said. The prospect of Wales having its own legal system could be on the cards following a government consultation.

Although no firm decision has been made, officials say the issue needs to be examined due to increasing differences between the law in England and in Wales following the onset of devolution.

The Welsh Assembly has powers in 20 devolved areas and since last year the institution gained primary law-making powers. However, even if laws passed by the Assembly only apply to Wales, they are still part of the law of England and Wales. ...

Mid and West Wales AM Mr Thomas [said].

"As distinct laws in England and Wales are created, it is inevitable distinct legal jurisdictions will be created eventually. "The question we have to ask now is whether we want to grasp the nettle and proactively work towards the goal of a distinct legal jurisdiction, or do we want to just leave it to evolve in an ad hoc and uncontrolled way? The creation of a distinct legal jurisdiction could be a real economic driver for Wales. Not just the fact that power will be closer to the people, but that the supply of skilled jobs in the legal profession will increase. It would mean more opportunities to keep our talented young graduates in Wales ...".

Thomas cited the precedent of Northern Ireland, where there is already a distinct legal jurisdiction and a justice system that employs around 16,000 people.

Not many Welsh names have been the subject
of applications for GI protection ...

Members of the IP fraternity will be aware that, while Northern Ireland and indeed the larger jurisdiction of Scotland, have their own legal systems, they share their IP statute law with England -- and that is where the vast majority of IP work, both contentious and non-contentious, is handled.

What might be the effect of dismantling of the current jurisdiction of England and Wales? Will it provide exciting new opportunities for small local IP practices to spring up in the hillsides -- or will it create small practices in a more painful manner, by causing more clients to prefer the tried and tested English system to a new, unfamiliar one and reducing some of the Principality's larger IP practices to small ones?

Regulating Client Money

One of the major difficulties I encountered in managing an IP practice as a Solicitor was compliance with the detailed acounts rules. At present those regulated by IPREG have a delightful concise Rule 11.

"Regulated persons shall ensure that their professional finances are managed appropriately."

If you are acting as a litigator it is a little more complex but in either case "money on account for fees or disbursements paid up front" can sit in the Office account. Possibly many patent and trademark agents do not even have a client account. However Financial Matters are one of the areas set to change under the latest proposals and we are beginning to see detail coming in that will make our terms of trade get ever longer and the duties of our Head of Finance ever more elaborate. So we may get:

"In the event that a regulated person receives money from a client, other than by way of payment of fees or disbursements incurred, but including money on account for fees or disbursements paid up front, they should ensure that such money is held on trust for the client in an account which is entirely separate from the regulated person’s or the firm’s professional business accounts.

In the event that money may be held on trust for a client, a registered person’s terms of business should deal with the issue of ownership of interest earned on money held on behalf of a client."



Running Away with Client's Money by Ian Burt et al

It may well be that there is no other way than to require the client account. However money can be recived for a client from the EPO and OHIM as refunds of fees and this necessarily becomes mixed with office money in deposit accounts. Many of us will have different ways of dealing with this and the client will usually be told what they are if and when it arises.   The matter is further complicated by the fact that that money is in Euros and we account in sterling. Nothing so far has appeared in the Code about the vexed question of how to convert unpaid disbursments in foregin currency into sterling. It has been common practice to include a profit cost uplift here. Even if you try to make a genunine pre-estimate of actual cost my rule (Xe rate +5% plus £10) won't be yours and indeed if your charges for currency conversion are higher than £10 nor should it be.

If you are a client where there are substantial disbursments its best to discuss policies in the engagement process. However it is worth remembering that cutting costs in one area often results in them appearing elsewhere so the overall cost is the one that needs to be fair.

Keeping it simple means keeping no client money, but that forces you into valuing disbursments so lets all head of to the Banks looking for client accounts that won't deduct charges. Dont forget to tell your clients that such money accrues no interest due to them.

Of course if IPREG give guidance on all this we are all compelled to operate the same way and that will likley be the Solicitor's way and may be anti-competitive. Remember the Red Book.

Complaints: a matter of give and take

The various branches of the intellectual property professions, at any rate in jurisdictions where legal services are highly regulated and/or highly competitive, on account of there being too many IP professionals in relation to the amount of available work, are very sensitive to their image: are they trusted, are they respected, are they believed by current and prospective clients to be discharging their functions in a satisfactory manner?  The prospect of being reported to one's regulatory body in consequence of having slipped up or -- probably a good more often -- of having been thought to have slipped up, is a miserable one. For small and sole practitioners the discomfort is compounded by the fact that one is exposed and has nowhere to hide.  The small cog in a big wheel can hide behind the image of a large, faceless firm, while the small practitioner may be synonymous with it.

The situation is not much more comfortable when the small or sole practitioner is making a complaint, rather than receiving it.  Compliance with complaints procedures can be tiresomely repetitive, bureaucratic and time-consuming, even if this is for the laudable purposes of ensuring transparency in dealing with it and in seeking to establish whether the complaint is justified.  Where this is the case, and particularly where -- even where the complaint is justified -- no obvious damage can be attributed to the client, it is quite probable that a complaint will simply be left to fester in the mind of its real victim, the frustrated and inconvenienced practitioner.

The European Patent Office is highly conscious of the need to have a quality complaints procedure, and discussion within the profession has led to this week's sidebar poll on the IPKat weblog here.  If you have something to say about the EPO's complaints procedure, you will probably find the poll a little too short and simple -- but its organisers would like to hear from you anyway, whether you feel that the EPO is handling your complaints well or not.  The closing date for responses is this Sunday evening, 24 June, so don't miss the chance!

Let's all be Alternative

The UK Patent and Trademark Attorney's Regulator, IPREG has issued a Consultation on their proposal to apply for ABS licensing status. Being a small regulator and trying to keep things as simple as possible they have come up with the ingenious idea that every entity should be treated the same way, ABS or not.
Every Entity will need a Head of Legal and a Head of Finance and Administration. If they follow the Law Society interpretation of the equivalent SRA provisions these can be the same person, which is essential for the true SOLO.

Two heads are better than one from Paul Mannix

IPReg is also proposing to set up a Compensation Fund (required for ABS licensors). It would be hard to do this if only true ABS were required to fund it so I assume this was a big motivator for the single solution. This funding issue seems to be a problem for the Solicitors Regulation Authority too and they are consulting about it as well.
If you are already regulated by IPReg you should have received the papers directly by email on Friday. We are supposed to respond by 17 September.
Will these proposals encourage you to consider re-joining a partnership or getting into a larger association to ease the regulatory burden?
Will they make trademark only, non-litigation practices opt out of regulation altogether. I want to litigate so accept that there has to be regulation, but if you look in the Journal at the names of agents on UK trademark applications it seems that Google Ad-words are more influential on the market than indications of regulation.

Is facilitating SME access to the legal profession enough to give them the advice they need?

One of the striking, albeit predictable, issues identified in the independent review on intellectual property and growth, carried out by Professor Ian Hargreaves, was the difficulty faced by SMEs in obtaining the advice they need to make effective use of their IP.

When meeting small technology firms at TechHub, Hargreaves found that nine out of ten were interested in “an integrated source of advice which combines commercial and technical insight with legal expertise”.

A key problem Hargreaves notes in his report, along with the complex array of services on offer, and difficulties in determining which are reliable or trustworthy, is that:

At present, long established IP legal advisers (for example, patent attorneys) seldom offer expertise on the commercial aspects of IP.  Conversely, IP advisors with a business focus lack the detailed knowledge to assist SMEs in obtaining [intellectual property rights].

Based on this report the IPO is searching for solutions to facilitate access to this expertise, which can be crucial to the success of new businesses.  Surely, in light of the raft of other changes currently reforming the legal landscape like the introduction of Alternative Business Structures, and given the height of demand illustrated by Hargreaves, legal professionals will take the hint and respond to this need. 

I discuss the problems with the recommendations in more detail in my blog post Hargreaves: Why Internet and Social Media are Key Reasons SMEs Lack Access To The Right Type of Advice.

One issue is how the IPO might use solicitors to educate the public about IP.  Most people will have reason to visit a lawyer’s office at some point, and it could be a better use of the IPO’s time and resources to take advantage of the expertise, connections and sheer manpower that already exists in the legal sector, rather than investing further in developing their own offerings that have so far failed to address the problem.

My own view is that the report conspicuously failed to highlight the need to educate both lawyers and the public in IT.  The world has changed a great deal for businesses recently, and the web is now the main platform SMEs will use to launch new services.  Unfortunately, the lack of IT expertise in the profession means legal advice often fails to adequately account for this.  The report does note a number of positive steps that could improve access to IP advice, such as buddying up law firms with relevant expertise and smaller firms that lack it, or accrediting lower cost providers of integrated IP legal and commercial advice.  However, facilitating access to the legal profession does not address some of the core problems – as the next generation of lawyers come through the ranks, SMEs should be entitled to expect them to understand IT, the web, Social Media and other topics that influence modern business decisions.  I do wonder why such training is not a mandatory requirement of LPC students and trainees, and why the IPO is not spending public money more usefully in educating the professions, rather than trying to find low cost providers of IP/commercial services. 

In for the long haul? Can you compete with the One-Stob-Shop:

One of the most surprising and unexpected news items of the year, if not the century, is the decision of road hauliers and transport company Eddie Stobart to diversify into the field of legal advice. The Stobart Barristers website makes a refreshing change from those of traditional chambers, and presumably the brand image of the underlying business (clean lorries, niftily driven with a view to reaching the desired destination in the minimum of time and at a competitive price) is expected to boost its legal profile too.

This curious development has repercussions for readers of this blog who struggle to earn their humble crust through the practice of intellectual property law: Stobart Barristers is offering legal services in the field of copyright law. At this rate, small and solo IP practitioners may be left with nothing but small cases (below).

Client science

Roaming around the Exhibit Hall at this year's International Trademark Association (INTA) Meeting this year in Washington DC, I came across a neat little paperback published by Oxford University Press out of its New York office and obviously aimed at the US market -- but which looked as though it has plenty to offer non-US readers too, particularly for those with small practice in which the personal side of counselling and client relationships is not merely a bit of expensive veneer but the basis on which a practitioner-client relationship survives or withers.

The book is called Client Science: Advice for Lawyers on Counseling Clients through Bad News and Other Legal Realities, and it's by Marjorie Corman Aaron, Professor of Practice at the University of Cincinnati. According to the book's web page,

"Lawyers know that client counseling can be the most challenging part of legal practice. Clients question and often resist the complexities and uncertainties inherent in law and legal process. Honest advice from the lawyer can make a client doubt his or her allegiance and zeal. Client backlash may be directed at the lawyer who communicates bad news. Thus, the lawyer may feel torn between the obligation to clearly inform a client about weaknesses in legal positions and fear of damaging the client relationship. Too often, the lawyer struggles to counsel a particularly difficult client, but to no avail. 

Client Science is written to provide insight and advice to lawyers on how to more effectively communicate with their clients with regard to legal realities and difficult decisions. It will help lawyers with the always-difficult task of delivering "bad news," which will result in better-informed and thus more satisfied clients. The book explains applicable social science research and insights and translates them into plain language relevant to legal practice and client counseling. Marjorie Corman Aaron offers specific suggestions related to a lawyer's ordering, timing, phrasing, and type of explanation, as well as style adjustments for the lawyer's voice, gesture, and body position, all to impact client counseling and to improve the lawyer-client relationship".

All this stuff about gesture and body language sounds good. If it works with clients, one might even try it on one's colleagues ...

Improving Access to IP Advice

One of the more contentious aspects of Hargreaves was the criticism of patent agent's ability to provide the IP Advice service that SMEs require. In early April the IPO published a discussion paper called From Ideas to Growth: Helping SMEs get value from their intellectual property and the accompanying page now announces some round table discussions in London on 8 May and 22 June and in Newport on 16 May. Chapter 2 of the booklet deals with ideas to get IP advice to SMEs at lower cost.

Lovable low cost Advice or a Home Office from CitrixOnline

Let's face it this is not going to be an easy discussion in which to get the mainstream patent profession to participate. The report was a direct attack on the existing profession. We are not providing the required service at the right price or at all. The initial response to these new proposals is likely to be defensive rather than  constructive.
IP advice is not regulated, nor is patent drafting. Only qualified people can call themselves patent agents, so there is plenty of scope for advisers to enter the market if they choose to. Many have, so the first proposal the IPO have put forward is to publish an online directory that provides names and qualifications so businesses can pick and choose what they think they need. That seems to be about the extent of the proposed involvement of the private sector.
The next section deals with getting advice into public sector programmes which seems to be more awareness related and something the IPO itself will take on.
There is a short section on the Technology Strategy Board's Catapult Centres. They sound interesting places and it would be very interesting were they to contain some patent resources. Are there any jobs or even office space going in these organisations? Some SOLO members might find it fun to be based in one.
The PatLib Library Network gets a welcome boost and maybe some much needed resources.  See its blog which highlights some of its members activities. Note that business can have a free one hour consultation with a patent agent if they are prepared to wait up to 6 weeks.
Local Enterprise Partnerships may have a role.
An Independent IP Advisory service is then proposed which suggests what many SMEs want is patent advice on a subsidised basis. The ides is that this might be associated with or linked to the Manufacturing Advisory Service

So far I don't see any proposal for a Business Masterclass for patent agents to make them more commercially aware of how IP really develops within a business. Only occasionally do patent agents get full feedback on the impact of IP on the long term business cycle and never if they work in firms who major on the profitable agency work, so access to real business school training might be welcome.

The effort needs to go to support those businesses prepared to accept some level of risk, who aim to develop businesses on a decent scale and can attract and manage significant levels of investment. Those are perhaps businesses likely to apply for TSB grants, rather than those who walk into a library. It is to be hoped that this project really helps to boost the benefits of working with competent IP advisers. Perhaps I will see you at the IPO's new Westminster office on the afternoon of Friday, 22 June to toss these ideas around a bit more. Question is how do you reserve a place?

Happy World IP Day

26 April is World IP Day.   Let's celebrate this momentous day when all should be pondering the great contribution that Intellectual Property makes to our society and civilisation. At the same time let's remember:
You can't own Information

Information or knowledge was made to be shared. It is a basic building block of civilisation and when we don't share and teach, knowledge and wisdom is lost and has to be rediscovered. The misunderstanding that you can own it leads to all sorts of trouble.
It leads to to wasteful treaties on traditional knowledge when all that is necessay is to give originators proper credit;
It leads to confusion as illustrated by this CNet story when Google Drive say they need a licence to copy your data for storage, which they do but it can and should be very limited indeed;
It leads to Force India believing it "owned" far more than it had kept secret and a court hearing before Mr Justice Arnold over 14 days and a 122 page judgement on 21 March 2012 very concisely summarised for commercial purposes here by Wragges;
It leads to the idea that just by paying a lawyer to spend time on patent searches you can avoid patent disputes;
It leads to the UK IPO failing to understand why many design based businesses get on with life and dont feel the need to protect their design work but allow it to be shared;
It leads to Twiter creating an Innovator's Patent Agreement so that it can obtain business method patents that it will not enforce

Countries including the UK do create Intellectual Property Rights that are usually limited in time and always in scope that allow their holders to control certain information. The idea is usually to facilitate investment and the wider disseminatation and use of the Information. If you use IP I do hope that its for the greater good of society and that you have a happy World IP Day.

The OHIM Annual Report: talking statistics

For Trademark Representatives whose business is based on efficient dealing with OHIM, the Annual report has not generally been regarded as essential reading. However it may well help you to be a more informed representative in terms of managing client expectations. This year (for 2011) it comes in an audiovisual format and a print format. The words come in any of the five languages but I can only hear the interviews in English.

Some of us may have suspected that OHIM is raising the bar on absolute grounds now that it is an established player in most brand owner's trademark portfolios. There have been more appeals 65% more compared to two years ago according to the Paul Maier interview, but we don't know if these are absolute grounds or oppositions. The decisions of the office on absolute grounds that comply with OHIM quality standards are now said to be at 100% suggesting the bar is exactly where they want it, but is it where we want it? is it where the consumer needs it? If we rely on the data provided in the database of refused trademarks this shows that in 2009 there were 1884 refusal letters, 1794 in 2010 but 2659 in 2011, so its possible I have a point.  Nevertheless the trademarks, like the times are a-changing. Class 16 has dropped out of the top 5 classes and class 9 now head the show according to the interview with Director of Operations Juan Ramón Rubio. Does this new online oriented word use more descriptive signs as trademarks?

We also hear a lot about the strategic plan but in terms of impact on representatives we are still looking, though I sense that it has had a lot of internal effect. I shall be looking forward to some technological changes soon and do hope these will include an e-filable MM2, as well as finding out if eSearch Plus will ever come out of Beta. For those of us making our way to Washington for the INTA annual meeting Booth 323 should be worth a visit