Access to Justice Pro-Bono- the Beavis Way

A few days ago (21 -23 July 2015) three days of Supreme Court time were occupied discussing

whether an £85 fine for overstaying in a car park was an unenforceable penalty (which is an important point for all who enter into contracts) or merely unfair under the Unfair Terms in Consumer Contracts Regulations 1999/2083. Those with enough broadband in time can listen to the full argument here.

The Law Society Gazette reported the case here  and it has attracted a great deal of attention from those who comment. Many are concerned about parking, but some are interested in how one deals with unconscionable bargains in the wider world.  The earlier article from the Gazette is here. This discusses the legal issues in more detail. For the answers we will need to wait for the judgement. Even patent and trademark agents are aware of some obvious unconscionable bargains amongst the scam invoices and renewal services offered to their clients unsolicited. Such scammers, though, seldom try to enforce their contracts in the courts like parking contractors do.

Funding the Case

 Mr Beavis, who is said by The Independent to be the owner of the Happy Haddock in Billericay  was fortunate in being able to raise money for an issue that sparked the public interest of motorists at least, by means of a crowd funding appeal. He is not at risk of costs because this was only a "small claim" and he has paid the £85 penalty. Parking operators business models are however in jeopardy. Many other extortionate contracts might also suffer if the Supreme Court decides in favour of Mr Beavis. It should be noted that neither the original judge nor the Court of Appeal were sympathetic to his plight. Even if the Supreme Court decides £85 wasn't unconscionable, it may set guidelines that will keep figures more confined in future contracts.

What if your intellectual property problem does not capture the public imagination like Mr Beavis's car park fine? How will you will obtain economic access to justice if you feel you can't afford to defend your IP or defend a claim that you are guilty of IP infringement? You can become a litigant in person. However, a company does need to be represented. The Chartered Institute of Patent Attorneys now has a working group on pro bono services and if you are interested watch out for an announcement in the CIPA Journal. Meanwhile, your best bet is to work on a pitch for why your case deserves the unpaid help of a professional.

Money Money Money : Court Fees to be Enhanced Again

Are you still reeling from the rise in English civil court fees to £10,000 in March for unquantified damages claims. Flushed with election success, the fees are to be ENHANCED again. For full details you can see the consultation on the Justice site here

"Bundesarchiv B 145 Bild-F080597-0002, Bundesverfassungsgericht, Richterin Karin Graßhof" by Bundesarchiv, B 145 Bild-F080597-0002 / Reineke, Engelbert / CC-BY-SA. Licensed under CC BY-SA 3.0 de via Wikimedia Commons.

The fees for the Unified Patent Court have also been consulted on here . Responses on that consultation are due to be sent to the secretariat by 31 July you are running out of time if you want to comment. Details of how to comment are here . Since the UPC Has to cover the costs of setting up an entirely new pan-European court, it wasn't surprising to find that they wanted to set pretty high fees. We are expecting a quality and responsive service. We are expecting to be able to see documents and to be able to monitor cases online in a 21st-century way unlike our national court systems. All this is expensive. It may be so expensive that modest businesses with modest disputes cannot even begin to think about using it. This is something of a shame as the Intellectual Property Enterprise Court in the United Kingdom has shown that there are modest patent disputes that need access to justice. Many more are I understand litigated in Germany. Since it will clearly take some time for big Pharma to get comfortable with the UPC, it seemed to me that it would have been quite smart for them to take on some of these more modest cases to get the system moving efficiently. I'm suggesting that €11,000 is too much for a modest business on day 1 to start their claim - perhaps not a great deal too much.
However a €20,000 fee for a counterclaim for revocation is really unfair. It means any modestly sized defendant is denied what is usually their best defence. I went away from that consultation reconciled to the fact that I wouldn't be seeing any UPC work at all in my lifetime.

Now we come to the enhanced fees that are likely to be applicable in the Intellectual Property Enterprise Court.  On this occasion, the proposal is to lift the maximum fee from £10,000-£20,000. If there are any Russian oligarchs left wishing to litigate in London, then it's all well and good that they should pay. What I would like to see is a proper fee established for unquantified damages claims. Most intellectual property actions cannot be valued readily on day one. We need to recognise that in the fee structure and provide for an initial fee and a damages dependent court fee that is paid at the end of the day.

It would also be nice if the appropriate "other remedies" fee applicable in IPEC could be definitively set. At present whether you are charged the High Court rate or the County Court rate is purely at the whim of the counter attendant. The proposal is that those fees rise to £528 and £308 respectively. In my opinion that is actually a tad too low in IP cases where no other financial remedy is sought (but not too low if you are also paying £20,000 for unquantified damages). Given that in a typical trademark case the costs of pursuing damages are likely to be disproportionately greater than the damages ordered in cases which have been started early, not making a money claim is pragmatic and at present that is something of a bargain.


Application fees are also set to rise. The proposal is that £50 becomes 100 for uncontested applications and £155 becomes £255 if contested. The consultation document says that they do not anticipate that the increases will have any significant impact on demand. This is, of course, looking at civil proceedings across the board. In intellectual property cases, it might be a good idea to decrease the demand for general applications.

Hopefully the CIPA Litigation Committee and the Law Society IP committee  will be looking at preparing a response to draw attention to the IPEC issues.

UK Patent Office goes Digital View (Beta)

The UK Intellectual property office is going digital and is running a trial of its new UK IPO View Patent Cases and Documents services - its IPSUM for unpublished and pending cases with a more descriptive branding.

Obviously, as soon as I heard about it, I had to beg to be in the trial. Apparently all them big firms have been trialling it for a while so I was expecting it to be super already.

You need a EPO smart card to use the system and the IPO have to register that on their system. This is good. It gives you a nice sense of security because after all you are going to be seeing details over the web of unpublished patent applications. Next they send you an email with a one-time password and a snail mail letter with the user name. You trot off to https://www.patent.service.gov.uk/ViewMyCases/ and attempt the intelligence test of resetting your password. Being of limited intelligence, I failed at my first attempt but seem to have succeeded at the second and was rewarded with a nice list of all my pending UK patent applications on the crisp white background that we are now accustomed to seeing on new .gov applications. It doesn't actually say that there are 20 on each page but that's how many there are. It's nice to know because it helps to reconcile with your home database. If you haven't paid the application fee, the case isn't listed. The default order is the UK serial number so your PCT national phases come in unexpected places.

There are 2 hyperlinks on each record. The one connected to the number shows you a little register entry and the one on the left shows you the documents the IPO have generated. Yours aren't there as they are in IPSUM. You might not notice but lurking on all the screens under the title in that big black bar is a menu That allows you to switch between the case list, recent documents and notifications. The notifications option is simply to allow you to demand an email every time they supply a new document. I suggest you do unless you have someone to check it every day.

It seems that one of my cases in the case list doesn't have a reference. I can't add one in this interface.

I was hoping that my search reports would include a link to the documents in Espacenet, but they don't. When you look at the document it is just a nice crisp PDF. This is nice as now I don't have to scan the paper that comes into the office so I am a happy bunny.

The interface is simple, straightforward and easy to work with. You don't get a manual. You don't need one.

I have some issues with the statuses in the case list. They don't quite seem to reconcile with my database, but I suspect that that is partly because there is a limited number of choices.

There are no communication facilities associated with this application. It is simply passive and a way of delivering documents from the IPO to your desk without using the Royal Mail.

Presumably cases disappear on grant which might be a little disconcerting. I shall watch out to see what happens.


One of the problems I can foresee for the IPO is deciding which of the feedback suggestions they get from agents to implement. Hopefully we can all agree that the document should include the citations. Is there a CIPA committee looking at this. What are they saying on our behalf.  For agents working solo this is a very useful tool and hopefully all of you who want it will be able to get it.

Seeing thing that aren't there: all part of a lawyer's duty

Luffeorm Ltd v Kitsons LLP, a 2 July decision of Jonathan Acton Davis QC sitting in the Queens Bench Division, Bristol, throws light on every lawyer's nightmare -- getting into trouble for not spotting something that isn't there.

Highwayman's Haunt

In this case, the client was a company run by a couple who were, as the Lawtel note puts it, "experienced in the hospitality industry". The company was buying a pub, the Highwayman's Haunt, from its owner, the pub's chef. After the pub was sold, the chef took over a pub in a nearby village (the Claycutter's Arms, just three miles down the road) where, attracted by the magnetic force of his goodwill, a significant proportion of the old pub's clientele took its business. The couple's takings were far lower than predicted and they sold the business at a substantial loss. Said the couple, their solicitor was negligent because he had not spotted the fact that the contract to purchase their pub did not contain a non-compete covenant that would have protected them from the damage caused by the old chef opening up so close by.

Not only had the solicitor not spotted the absence of a non-compete covenant, but might not even have had the time to do so since the couple were in a great rush to sign up and get the pub in time to cash in on the trading opportunities represented by Easter, Mothers' Day and the May bank holidays.

Claycutter's Arms

Yes, said the judge, the solicitor had been negligent. While he was not under a duty to advise on the commercial wisdom of a transaction, particularly where the client was an experienced business person (as was the case here), that principle was not to be taken too far. If a solicitor becomes aware of a potential risk to the client, he is obliged to inform the client of that risk. In this instance, while it wasn't his job to warn the couple of the commercial risks inherent in the transaction -- which this blogger suspects they would have known anyway -- he should have spotted the absence of any covenant in restraint of competition and drawn that absence to the couple's attention. Failure to do so was both negligence and a breach of contract.

That was the bad news. After that, things took a turn for the better. Said the judge, since the couple were determined to proceed with the transaction as quickly as possible and were convinced that they would make a success of the business, taking no advice from any professional valuer of either the business or the premises before making an offer, it was clear that even if the solicitor had drawn to their attention the absence of any restraint of trade covenant, they would still have gone ahead with the acquisition. He added that they would neither have tried to negotiate for a covenant nor withdrawn from the purchase. In other words, his negligence had not caused their loss.

This blogger is sure that readers need no reminder that we are all -- lawyers and clients alike -- working to a great extent under the pressures of time. Some of these pressures are imposed from outside, such as the duty to file responses in trade mark and patent office actions and in litigation, attending to tax returns, paying utility bills, renewing insurance policies and the like.  Other pressures are of our own or our clients' making: here the pressure was caused by the client's desire to take over a business in time to cash in on a lucrative trading period. Sometimes it can be the need to clear one's desk ahead of a long-planned holiday (or the need to get something done before a colleague or secretary goes away). Either way, pressure of time is bound to fall hardest on small and sole practices, where there is little or no assistance or margin of error.

CIPA as an Entity of Intellectual Property Influence

The Chartered Institute of Patent Agents is holding a web cast of a meting at 16:00 on July 8th to discuss updating its Bye Laws.

The impetus was the need to modernise the admission regulations which, due to the demise of the OGM, were slowing up the admission of new members. However the opportunity was also taken to review the types of members we admit.

The 25 page report of the Bye-Laws working group can be downloaded here .

Membership Structure

The core of CIPA is practising patent agents and at present you can become a FELLOW as soon as you qualify. This means there is no progression or recognition of seniority within the profession after that. Even so the working group is not considering adding another illustrious lawyer for rich senior partners - an opportunity lost. ITMA is smarter than that.

To be a body of influence, it seems to me we need a wide and large membership. Clearly CIPA has most to offer to those who want to practise as pure patent agents but other Intellectual Property Rights and Patent Litigation are very important too. At the moment Barristers and other Litigators are excluded from the Fellowship and this is a loss to CIPA's influence. If our industrial members want clout on issues such as the Unified Patent Court we need to recognise the central function of those who do litigate. We cannot suggest they join as "Affiliates". Its clearly not very attractive as only 35 have apparently done so. If you are a QC at the patent bar you should be a Senior Fellow. If you are a patent solicitor working on High Court litigation Fellowship is the minimum respectable rank.

Creating a more inclusive structure will also make a more attractive career path and a broader pool to make effective policy considerations. At present CIPA is stuck in securing patent rights and its scope stops there. It needs to recognise that its members work in the wider world where those patent portfolios influence share prices, business success and failure, disputes, licensing and much more. There is only so far Ministers are likely to listen to people who only seem fit to fill in forms.

There should also be Trade Mark Fellows and please can we get rid of the divisive Overseas members. If you are an EPA resident anywhere you can surely join as an EPA member (and why not a Fellow) and if you are a US patent lawyer then are you really so different from a UK one. Can we make it even simpler.

Titles

There is a proposal that the 288 members who are on both registers could call themselves Chartered Patent and Trade Mark Attorney. I am saddened that I am one of so few. Surely many more folk within patent firms practise trademarks. It seems that very few can now manage the labour/cost of both Trademark exams and  Patent exams. Again we are narrowing our specialism so that influence can be ignored. We need to facilitate not limit the acquisition of a broad range of skills by our members and give them the opportunity to move between practises that provide a range of services.

The title PATENT AGENT is about being on the register and therefore now outside the gift of CIPA. Lets not worry about titles nobody uses them but we do say in our CVs what exams we have passed, what qualifications we enjoy and what influential professional bodies we are proud to belong to.

Committees

An interesting proposal is the empowerment of committees to act without the approval of Council in respect of delegated powers. A lot of policy is decided by committees so we might be losing control here. However getting fast responses to consultations does requiresome delegation. The Council members on Committees might need to be more accountable to Council and everyone should be more accountable to the membership.

Elections

Not much changes here. Is this an opportunity lost. Elections need to be a bit more inclusive. Maybe we should have constituencies to be represented. At present the influence of the Council is being suborned to big business who use the patent system for one purpose. Council needs to represent a cross section of membership and we need to have SOLO members and not too many retired ones, as well as EPA ones . Therefore I foresee a need to amend 11.1 so that it is not just Fellows who can be on Council.

Do attend the webinar and ask questions. We need your Influence.