Scotland's Brave New IP by Sally Cooper

SCOTLAND’S FUTURE – YOUR GUIDE TO AN INDEPENDENT SCOTLAND is is a title that’s descriptive (rather than distinctive) but it may well attract more readers than (say) ASPIRATIONS FOR SCOTLAND IF THERE’S A “YES” VOTE ON 18 SEPTEMBER 2014.

This writer’s regular work involves discussing with (very small) businesses the key matters of (a) the name they might want to adopt for a new company, and (b) the availability (or otherwise) of Domain names, and (c) the availability (or otherwise) of trade marks.

Also, this writer regularly spends time in Cumbria - where legal work leaving the county might go north (maybe Glasgow or Edinburgh) rather than south. Hence, whilst 24 March 2016 (proposed for “Scottish Independence Day” if there’s a “YES” vote) is comfortably in the future, it’s appropriate to find time to scan SCOTLAND’S FUTURE for clues on possible new regimes for (a) company names, and (b) Domain Names, and (c) trade marks.

The Scotland Act 1998 lists “reserved matters” (being matters on which the Scottish Parliament cannot legislate) but, as SCOTLAND’S FUTURE points out, there’s no parallel list of “devolved matters”. A list is provided (viz : matters on which the present Scottish Parliament can legislate) and this includes :

• the creation, operation, regulation and dissolution of types of business association
• intellectual property.

Which this writer reads as saying that the present Scottish Parliament could, if it so wished, set up a Scottish Companies House (governed by local law) or a Scottish Trade Marks Registry (governed by local law) immediately - no need to wait for a “YES” vote and Scottish Independence Day ? Answers in the Comment box please !

SCOTLAND’S FUTURE refers to the new .scot Domain Name applied for by the Dot Scot Registry Limited (a not-for-profit company) which has an estimated launch date in 2015 - after 18 September 2014 but before the date proposed for Scottish Independence Day if there’s a “YES” vote.

Thereafter, hard facts are hard to find.

The press has reported widely both (i) Scotland’s aspiration for transition to independent membership of the European Union, and (ii) Scotland’s aspiration to succeed to international treaties. In the latter context, SCOTLAND’S FUTURE identifies the World Trade Organisation (WIPO) as one of the multi-national organisations in which an independent Scotland will participate.

Further, a passage headed “Intellectual Property” begins with “We will ensure continuity of the legal framework for protecting intellectual property rights” then continues (rather rudely) with “Independence will allow Scotland to offer a simpler and cheaper, more business-friendly model than the current UK system, which is bureaucratic and expensive, especially for small firms”. These same points are made in Questions / Answers which include the grandiose promise that “Scotland will meet [European Union] regulations and directives on IP rights protection, as well as international patent and trademark (sic) protections”.

Otherwise, there are tantalising hints :

• “We might decide to continue to share some services with the UK, at least for a transitional period” : do we infer (contrary to my reading of the Scotland Act 1998 noted above) that both Companies House and the Trade Marks Registry will remain available to businesses in Scotland for the foreseeable future ?
•  “Question : Would companies based in an independent Scotland still be able to float on the London stock exchange ? Answer : Yes …… around 2,500 companies from over 70 jurisdictions are listed on the London Stock Exchange” : do we infer that an independent Scotland will create its own company law and so increase the number of such jurisdictions ?
• “Question : When consumers are harmed, will there be systems in place to help them ? Answer : Yes. We propose …… a more efficient model of trading standards …… “ : maybe good news for brand-owners ?

The website at www.scotreferendum.com suggests comments and questions are sent to referendum2014@scot.gov.uk. But this writer won’t be commenting or questioning as she’s no wish to add to the figure of £ 13,700,000 which is the estimated cost of the referendum !

Responsibility for Training

Jeremy was very quick of the mark yesterday with the announcement of IPReg's consultation on patent agent qualification with his post below. Equally quick was a letter from CIPA condemning the proposals as "tinkering", deploring the "one size fits all" of compulsory taught foundation courses ; and rebelling against the loss of "sovereign" UK qualifications.

Most Solo practitioners don't take trainees. The idea of sponsoring a trainee through an academic training course is unlikely to get much traction amongst us. Even so working for us for a short time might help someone towards the knowledge and skills they need to qualify. However most of us have qualified so what do we want out of the qualification process. Moreover what do the punters need to be assured that we are competent at.

At present most trainees come from Russell Group Universities and are disappointed research students who need to earn a living. This is simply not the right set of competencies for advising entrepreneurs. Serendipity ensures that some entrants have an interest in entrepreneurship and have picked up some commercial  awareness during their university careers. We also need to attract good wordsmiths and good research lawyers. In my opinion we should be opening up routes into the profession not closing them down.

When I worked in law firms I wanted solicitors to train as patent agents. They had technical degrees but the route seemed onerous and most were unwilling to embark on it and those that did fell away.

A common examination that can be taken by all is the most fair way of establishing qualification. Independent self-examined courses even if accredited by the QAA won't set a consistent standard and IPREG does not have the resource to harmonise them. Therefore I think I favour the idea of exams that everyone takes and you choose the best method to prepare. This may well be a higher education course or self-directed learning. Let the candidate decide.  Exemption was the cause of making the present exams inefficient. Presumably academic institutions like high pass rates. Are any published? Professor Scher recommended that academics set the exams because they were professionals at doing that. I agree. The idea of patent agents setting exam questions was always rather amateurish. What do the illustrious professors of Queen Mary, Bournemouth and

IPreg suggest that an examination system "does not act to provide confirmation that a student has understood a broader taught syllabus to satisfactory level".  Surely that is exactly the point of a well constructed exam. It allows the candidate to demonstrate their knowledge. 

Contrary to the CIPA view, I am not against relying on EPO exams. The EPO have an excellent European Patent Academy. As we move towards the UPC there is a need to increase co-operation. IPReg should be looking to the IPO to support patent agent training too. This needs to be a co-operative affair that brings and keeps us all up to scratch. The knowledge we need is continually evolving. It is important that we make many resources available and that teaching is aimed at achieving learning objectives rather than acquiring CPD points or a good lunch.

The solicitors are also reviewing training requirements. In their case its abolishing the training contract and therefore presumably relying solely on taught skills. Those taught skills courses produce a vast oversupply of candidates as Joshua Rozenberg demonstrated on his recent BBC Law In Action

Is there an appetite for a meeting to discuss a solo response?

Training patent attorneys: how will streamlining affect small practices?

Wannabe patent attorneys learn how to surf
the web for training contracts ...

Thanks to Nicholas Fox I now have this link to a document entitled "Consultation on simplifying and modernising the examination system for qualifying as a patent attorney", a ten-pager issued by IPReg, the regulatory authority for patent and trade mark attorneys in the United Kingdom.   A couple of points to note:

• The consultation does not cover issues around “in office” supervised training although IPReg will shortly be issuing competency checklists in relation to that “in office” element of training.
  
• Of the 25 students who passed P1 in 2012, 22 were based outside London and 3 were based in London. Most of the students were being trained in attorney firms of 5 or more attorneys with only 1 being trained by a sole practitioner and 1 being in industrial practice. 

The consultation closes at 5 pm on 17th March 2014. Please email your response, if you have one, to Ann Wright, Chief Executive, via ipreg@ipreg.org.uk clearly marking the correspondence “Response to Consultation”.

Pay comparisons and zero hours: of perception and reality

A couple of not entirely unrelated items caught this blogger's eye over the past couple of days.  One was a comparison made by ACID CEO Dids Macdonald (here) between the average amount earned hourly by a designer and the average hourly rate of a legal practitioner; the other was a renewed discussion in the UK of the vices and virtues of zero-hour contracts, whereby a worker holds himself available to work if called upon to do so, while the employer need not call him for work and will pay him only for the work done.

Let's start with the comparison of designers' pay with legal charge-outs. There is no meaningful comparison.  What professional representatives charge clients is quite a different thing from what they earn, since that charge has to cover a proportion of all sorts of overheads, not limited to establishment costs, marketing, professional and other insurance, continuing professional education and the taking out of subscriptions to the primary resources without which work is difficult or impossible to do properly.  In addition, the day of any IP professional is inevitably split between those hours which are chargeable and those which are not.  Yes, IP practitioners will generally earn considerably more than designers even on an hourly basis, but the nature and scale of that difference should be understood and appreciated, not used as a stick with which to beat them with.

As for zero-hour contracts, this is effectively the regime under which many if not most solo and small IP practitioners operate.  The IP practitioner is primed and ready to take instructions, but there is no work unless the client calls for it. The client can also take his instructions elsewhere or change his mind about giving his work to someone who can't deal with his issues immediately, whether because he is already working on another job or because he is so foolish as to be going on holiday.

The pay-comparison and the zero-hours issues are unrelated but not quite unconnected.  Both reflect on the conditions under which solo and small practices operate and on the gap between perception and reality. Readers of this weblog have chosen their reality, but sometimes they have to sell it to themselves as well as to others.

When solo practitioners file their own patent applications, can crowd-sourcing be far behind?

This article is penned by Michael Factor but posted by me.

Being small is OK, but let's not be small-minded. In one of the LinkedIn groups to which I belong, a sole practitioner has posted an ambitious item about trying to raise money by crowd-sourcing for filing patents on his own ideas.

The posting is reproduced below:

Crowdfunding to Cover the Costs of Filing Patent Applications

L. Jon Lindsay Solo Patent Attorney

Has anyone tried using crowdfunding to cover the costs of filing patent applications? Crowdfunding includes sites like Kickstarter, Indiegogo, RocketHub and lots of others.

If you tried it, did it work? If you didn't try it, why not? What worked? What didn't work? What's the best approach to it? What's the best crowdfunding site for patent applications, if any?

I started some crowdfunding campaigns to cover my patent application costs. And I was wondering if anyone had any advice. My campaigns are at:

Indiegogo - http://www.indiegogo.com/projects/vrtv/x/5316912
Peerbackers - http://peerbackers.com/projects/virtual-reality-tv/home/
RocketHub - http://www.rockethub.com/projects/35467-virtual-reality-tv

My Kickstarter campaign hasn't been approved yet.

Any comments or advice would be appreciated. Thanks.

VRTV indiegogo.com

I’m creating a new TV show genre utilizing virtual reality technology for all new fun and exciting TV viewing.

Jon's original post can be accessed here

We can assume that the solo patent attorney in question is not charging himself to draft and file these applications. He is only laying out the filing fees. And let's put aside the issues of the patentability of TV genres and whether a request for crowdsourcing is a preliminary disclosure. But here's a problem: if any patent attorney/inventor believes in his product, the only reason for him not to pay the small entity filing fees is that he can't afford to, which would be a worrying scenario for any patent attorney with many years' experience.

Having followed the links to crowd-funding, it seems to me that there's another problem.  If crowd-funding hasn't done the trick in the two years since original filing of the first application, and it hasn't produced enough seed money, why should anyone expect that this method will be any more successful in future?

Finally, I know that some of us are more successful than others and times are hard -- but I would advise any professional to take the path of caution before venturing on to a patent forum and telling his or her peers that he believes in his own ideas, that he is happy to write up patent applications, but won't put up the filing fees himself and may be depending on the wisdom of the crowd when seeking to sell the product to interested parties. 

Okay for some: good indications for small, medium-sized practices

Here's some bright news for small and medium-sized IP practices in London and the South-East of England, from chartered accountants HW Fisher &Co's annual legal benchmarking survey:

SME LAW FIRMS EMERGE FROM RECESSION ON THE FRONT FOOT

... SME legal firms are recovering well from the effects of recession ... 

The chartered accountants’ third annual poll of 75 of SME law firms in London and South East England shows 4.5% growth overall, rising to 10% at the larger end of the ‘small practice’ spectrum [interesting: presumably 'big' small firms can enjoy greater economies of scale and can absorb more work before having to recruit further fee-earning power]. Profits too have risen – with the best performers recording a 17% rise on the previous year. 

But in spite of the brightening outlook, some practices remain cautious about their potential for internal expansion. More than a third (36%) are pursuing outside investment instead, and 43% plan to bring in new non-lawyer partners (a rise against last year’s figure of 33%). A little over a quarter of the firms polled (26%) report having been approached by a legal consolidator. 

The Legal Services Act, which allows such non-lawyer partnerships and mergers to take place, has so far had little impact on the workings of SME practices. An overwhelming 93% of those polled have yet to notice any effect on business.But more than a third (36%) think the situation could change in 2014, as the full impact of the LSA begins to be felt. 

The current economic overview seems upbeat for some small legal firms. Turnover per employee grew to a new average of over £100,000 per employee for the survey period (2011/12) – or a rise of 11% on the previous year, well above that of inflation [goodness!]. 

Litigation work remains a key part of the small practice agenda ..." 

How to make a mint? Try giving it away first

How do you get people to remember who you are when you are attending, or indeed sponsoring, a sizeable international intellectual property conference. Not many people spend their time fretting about this and, of those who do, scarcely any are likely to be practitioners who run their own solo or small-size practice.

Our colleague Michael Factor was faced with the "how to make your mark" issue at this week's "From IP to NP (net profit)" conference in Tel-Aviv, which you may have read about via various posts on the IPKat and one (on generating value from patents) on IP Finance -- or which may have crossed your line of vision via the Twitter hashtag #ipnp.

What could he do to conjure up a lasting impression on a hard-bitten audience of conference-goers? Mouse mats are at last out of fashion; pens even more so. Notepads are so low-tech these days and packs of repositionable adhesive notelets are somehow unable to convey the right impression in a world that is increasingly moving towards paperless and electronic documents and materials. Getting your name on the conference carry-bag can be very costly; picking up the tab for a reception likewise.

Anyway, rather than fall back on the safe but unexciting recourse to handing out a side of A4, extolling the virtues of his practice, patent attorney Michael chose to insert in each delegate pack a box of PCTea-bags ("for peace of mind with patent services"). Herbal infusions are not everyone's cup of tea, but a box of bags will usually last much longer than a sponsor's bar of chocolate.

This unusually tasty, if not also tasteful, goody is the sort of marketing tool that can do really well: people tend not to throw away a box of green tea and mint infusions, and will be more likely to give them to someone else at work than to jettison them entirely, given the presumption against throwing away anything that can eaten, drunk, stuck on a fridge door or pinned to a wall.  The box is therefore potentially a persisten reminder of Michael's continued existence and indeed of his appearance since his IP Factor caricature image appears on it too.  Whether this memento works, and serves to bring in new business, or whether on the contrary it puts people off green tea and mint infusions, remains to be seen.

Can readers point to any other imaginative and ideally affordable ways of making a mark at a big event?

SPC Regulations and transitional regime: a new article

From our friend and reader Dimitar Batalkiev comes the following message. Writes Dimitar:

"I would like to share with the readers of The SPC Blog information of a recently published article on the transitional regime of the SPC regulations in the IIC journal [a learned and respected title published by the Max-Planck-Institute]. It discusses the rationale and structure of the provisions concerning the initial entry into force of Council Regulation 1768/92, the subsequent enlargement of the EU and the conflict with existing national regimes for extended patent protection. The analysis of the Community legislation is carried out in the light of the national law of the Member States and the case-law of the Court of Justice of the European Union.

The article is also available online through this link".

Thanks, Dimitar, for letting us know.  If you are not an IIC subscriber and pursue the link, you can purchase access to this article via Springer.com for $39.95 / €34.95 / £29.95 (though the final gross prices may vary according to local VAT).

When Partial means Total : Madrid Trade Mark Minefields

WIPO in all sizes

This is a request for information from the world of Trade Mark Agents who deal with International
Designations under the Madrid Protocol.

WIPO has recently updated its website and this includes the  Madrid System Pages. I might have looked for the answer in the Applicant's Guide which is hard to find so writing this blog serves as a good place to leave that bookmark for me and you. However this query is not answered there. It concerns the response of national offices to a partial refusal of protection notified to the IB and to which the Applicant decides to file no response.

In the UK, the application proceeds to advertisement and (subject to no opposition) protection for that part of the specification for which there is no objection. That is set out in the IPO Manual  check page 20. It seems sensible and in conformity with the principles of the Madrid system. However the UK does not examine on relative grounds so maybe there are not many partial provisional refusals. Indeed I was rather pleased to see that they suggest their examiners call WIPO with any translation issues before making a refusal on a translated specification issue.

How many other countries follow this pragmatic approach. I need a table that sets it out because many users of the Madrid system are not prepared for the downstream costs and want to take what they can get for their not inconsiderable up front investment.

In Korea and Japan they expect you to make amendments to remove the goods they don't like (and there seem to be rather a lot of local preferences), but then their office actions say so clearly. It is still a "make work for local representatives" policy but you can pay CHF175 to WIPO and make the limitation direct even for a single territory.

Just at the moment I want to know the answer for Russia.

I can tell you that Israel are amongst those who say nothing but turn a partial refusal to a total one if you don't pay your way with the local profession.

If I were to go to Geneva for their latest Seminar on November 28th and 29th I might (possibly) get the answer before 6pm on day 1. On the other hand we could publish it here for the common good. Add a comment about your national practice or any territory where you have experience.

Addition: this link takes you to WIPO's country by country pages where you can see what they think they will do as designated offices

Pause for Thought: Unlawful Trade Mark Examination

It's often the case that, having filed a UK trade mark application, an applicant is in two minds as to

Pondering whether to Proceed with his Trademark

whether it is prudent to allow a notification to go to an owner of an earlier right. Depending on how close the trade mark is or whether the owner of the earlier right is still in business and indeed possibly a close competitor, it might be a good idea to let him know so that the invitation to oppose from the UK IPO (which is what it feels like, even though it isn't) does not come out of the blue. For this reason, the UK IPO have decided that the application should wait for two months before they go ahead with the advertisement. During that time the applicant can respond and push the application ahead straight away -- or he can ponder.

Things aren't quite the same with OHIM. There, they are very competitive and love to be able to advertise that applications are published within hours or, at the very least, days. I think this race to register began with the dot-com boom and the need to have a trade mark to get into the sunrise period for new top-level domains. Such joys have now passed. Efficiency is good -- but should it be in disregard of the law? In the summer, the IPKat drew attention to the fact that OHIM are regularly publishing applications less than a month after they have sent out the search report. This contravenes Article 38(7) of the Community Trade Mark Regulation (CTMR), which was designed to give applicants an opportunity to ponder their search results by delaying the publication for a month from delivery of the search report.

One of the improvements OHIM have offered in their new website (see post below) is an opportunity to do a search at the point of filing, so you can decide whether to pay your fee. This looks very promising -- though I haven't had an opportunity to try it (being small and not impacted by new websites (sob!)). So I asked the OHIM team whether they were going to continue ignoring Article 38(7). The question was well understood -- but it wasn't answered.

Efficiency! Speed! Those are the objectives, and they can be measured. No doubt the revision of the CTMR, if and when it happens, can be made to remove this embarrassing provision. However, it hasn't happened -- and it doesn't bode well for the rule of law if European institutions are able to boast about disregarding burdensome provisions while asking the CJEU in great ceremony to interpret others less inconvenient.

Many professional trade mark attorneys use a deposit account. The rules of deposit accounts require the the fee is not deducted until one month after the filing date. This fits nicely with the anticipated delay before publication, and these applications don't seem to be fast-tracked as they can withdraw during this period of grace and recover their Euro. However, it seems that the credit card users pay their money straight away so their applications are advertised faster. In many cases, it may be the credit card users who are best advised to ponder.

I don't like to criticise OHIM. Mostly speed is good but maybe the Oppositions and Appeals process could get the benefit of acceleration while the applications comply with the law.

Are you ready for the New OHIM Communication Revolution

This will soon be the face of OHIM

Will OHIM's new website come as a shock to you on Monday 25 November 2013? If you are a big firm you would have been offered a home visit and you might even have been part of the user group that tested the new user interface. Two were in London I am told, but I have not seen anything from ITMA on this topic. However if you missed the UK_IPO announced workshops that took place yesterday and today, you may be in for a shock when you come to do an on line filing on Monday 25th.

MY Page log ins are being migrated so you will be able to log in to the glitzy new User Area but its going to feel strange.  Remember its intuitive, so engage the inner child. You can still send a paper application by fax but there is no pdf form on the website anymore so get accustomed by going in and trying it.

If you want to do anything significant you will need to Sign Up - top right. However if you are not quite solo log in credentials can be shared and multiple log ins are allowed. If you have a deposit account the balance will be accessible from the User Area.

There are many good things. όλα είναι διαθέσιμα σε 23 γλώσσες. OK you can have it in any of the 23 European languages.

The Search looks promising but I am betting my carefully garnered direct links into CTM-Online are all going to be redundant, which is sad. Better access to the documents on the file (Sign Up now needed as OHIM think they need to know who is inspecting files) and a weird new Time line may be compensation. Cute is the idea that you can re-arrange the sections drag and drop style. Tabs have appeared too.

The Mailbox is new and allows bigger attachments for some actions. If you open a communication you can save the pdf or email it on to someone else. For Solo practitioners the new Communications look much improved and I think at last I can see what I am sending. Not sure, because there was no hands on access at yesterday's workshop.

One sad loss is that existing watches are all going to be scrapped and burned. Instead you can set them all up again in an eAlert system that integrates with the eSearch so you can be notified of any new results to your sophisticated query. The basic watch with RSI inducing boxes to tick for a specific mark is also available.

For the main online filing, we now have a form for transfers and a host of other recordals - very clever and it will make it much easier to do some of those that need several bits of information. There is also some handy integration with TMClass and TMView. As part of filling in your applicaiton form you can do a search that uses a similarity algorithm to give you an idea of problems ahead. Methinks this may be the same as the one those quick of the mark search examiners at OHIM use. It makes a useful tool to identify any imminent disaster areas that might cause you to abort a filing.

IPTranslator has left its mark here too. Gone is the tick box to put everything in the alphabetical list into your specification. You are encouraged to use the taxonomy but you are warned that using a group heading term does not necessarily cover everything underneath it. Just depends how a business man would understand it. Manual goods insertion is possible too, but you may have to look carefully. Priority informaiton can be imported from TMView (seniority too perhaps?)

If you can't wait head over to the IPO of Finland where it is alleged the online filing tool has already been implemented.

If you need to Be More Prepared I suppose we have to beg from one of those big firms that are part of the Beta. I have asked to join and if they let me in, you are very welcome to come and have a preview here in my basement.