CIPA consultation on CPD

CIPA Education Committee have produced a document which is fulsomely described as a Framework for Professional Development. They want our comments on it by 10 March 2017 so do jump to it - they clearly need help. I had hoped it was going to propose the end of the CPD hours culture in favour of results, but no.

The idea seems to be that they need to know what a qualified patent agent needs to learn in order to develop and maintain his professional competence. This will guide the educational provision.

Once one has got over the "Teach Speak Jargon", we find that they believe we need to have skills, knowledge, values and behaviours. I accept that skills and knowledge can be learned taught and developed, but I am not too sure about the last two. Once upon a time lawyers studied ethics which generally dealt with the practicalities of not acting for both sides in an argument and managing the clients funds but such practical issues don't seem to be within the scope of this framework. Least said about "behaviours" the better.

Let me turn to what I do understand. There are lists of skills and lists of knowledge.

At the end of the list on knowledge we have:

2(g) a member should have a sound understanding of the law and practice as it relates to designs, trade marks, copyright, licensing, due diligence, contract and competition law to enable them to identify the implications of such laws and practice for clients and to enable them to refer clients for further professional advice and guidance as relevant and appropriate

Frankly this narrow focus on patent practice is disappointing. Now that CITMA has its charter are we dropping our interest in the core intellectual property fields of trademarks, designs and copyright? I think we need to put Mr Ferrara right.

The list of skills is extremely flowery. Some are the basic drafting skills that are a prerequisite for qualification. Other so-called skills are frankly patronising : do you want to be trained in how to "be able to adapt style and approach to meet the needs of clients".  One skill that seems to be particularly important is managing the expectations of clients who expect their unadapted applications to be examined any time soon by the EPO or UK IPO.

This list does not provide any suitable structure for developing educational offerings.

When seeking education, focusing on knowledge always helps. The core of the CIPA offering needs to be keeping up to date with developments in IP law in our home jurisdictions. The suggestion that the same level of emphasis needs to be placed on ALL overseas jurisdictions is odd. Its all too easy for CIPA to succumb to visiting overseas' professionals desire to give "marketing" updates in the name of education. Education in the laws and practices of the main trading partners of this country is what we need. We need to direct our eager marketing volunteers into discussing practical issues that are likely to be relevant to our local clients.

Item 2(f) : approaches to competitor IP is not knowledge -its a skill.

The values and behaviours are the province of IPREG and codes of conduct.

An educational framework needs to be more skeletal and be a tool that those organising programmes and events can work with. This framework does not seem likely to help.

We need courses and support on:

• keeping up to date on IP law
• improving  skills of drafting and advocacy for preempting and responding to office actions
• developing litigation skills
• listening and receiving feedback from users of IP on what they need
• managing our own businesses - includes ethics

What do you think you need CIPA to provide for you?

New Approach to Trademark Training

Do we need a new approach to continuing professional development for trademark professionals?
ITMA organises an excellent series of lectures. If you are a member and log in you can find recordings here.  There are certain perennial topics. These include last month's "Discussion of Recent OHIM cases'. UK decisions will get reviewed too as will European ones.

However, as the speaker pointed out applicant's argument at OHIM for equal treatment based on state of the register evidence always fail. There is no precedent system that applies either in OHIM  based only on their own decisions (even ones from their Boards of Appeal). The only things that counts as anything like English law precedent are guidance from the European Court of Justice. These days the first instance  decisions from the general court are so numerous as to be of little value as president in any subsequent argument. In short, we are wasting our time studying the individual Board decisions. What we need to study are the principles that can be derived from the decisions and these are neatly distilled in the guidelines published by OHIM. Therefore, wouldn't it be more sensible for us to be running CPD exercises based on how to apply the guidelines to our client's cases. In addition the Convergence programme is producing papers on common practice that will not just be reflected at OHIM but will percolate through to national offices leading to greater consistency if that is possible in a Europe where perceptions in different parts are as different as the languages they use, the food they eat and their various temperaments.

Once of the case discussed last week was sport on the money for the latest Convergence paper "Common Communication on the Common Practice of Distinctiveness – Figurative Marks containing descriptive/non-distinctive words" also available from the UK IPO here.

The case the speaker took was R2713/2014-2 for Yoga for - er yoga kit and classes etc
The decision is not final yet so there may be more to come.



Now it seems very common for Yoga studios to register YOGA plus figurative figleaf marks. Using a TMView search

oc:DE,FR,GB,EM,WO AND tm:yoga AND ty:Combined,Figurative AND nc:28,41 
delivers me 605 YOGA marks some of which do have a genuinely distinctive element. Nonetheless pose plus YOGA seems to have a certain appeal.

The common practice is supposed to deal with situations where the figurative features lift the mark from being descriptive to being distinctive. The practice doesn't apply where other word elements are distinctive. So would my HEART and CURVESOME marks qualify to be considered under the the practice?

One of the important statements in the document is:

it should be noted that an applicant will not obtain exclusive rights on descriptive/non-distinctive words, when it is the figurative element that renders the mark distinctive as a whole. The scope of protection is limited to the overall composition of the mark. 

I wonder whether we are really making that clear to our clients when we suggest they adopt the figurative figleaf. Even so, the cluttered registers don't tell the searcher which element rendered the mark registrable. It isn't at all obvious that mattress and doughnut elements could be distinctive in certain parts of Europe and so would later generations know if HEART and CURVESOME are really the distinctive elements.

The document teaches us that figurative figleaf can work to give a combination distinction as a whole. It relies on BioID C-37/03. See - we are only going to take precedents from the ECJ to get at principles for the future. If you want to rely on typeface and font, it is going to have to be a fairly illegible mark. Looking at the examples in the document, none of my little pictures above is going to qualify on font.  Hey, but they are all coloured. The document is not encouraging. Even using multicoloured Google effects is not going to get you past the finishing post. The document goes on to consider punctuation marks and other symbols. These do not fare much better and we love yoga with its pipe signs is not going to be able to rely on those alone. In fact no distinctive examples are given in this category.

Most figurative figleaves are real graphic elements. The first thing we learn is that it has to be distinctive in itself and large enough to be seen as part of the mark as a whole. Surprisingly, they don't seem to have to hang together with the word elements to make it a whole. This tortoise going the other way seems to make the whole mark distinctive.  The Yoga marks come into what is going to be the most difficult category B.3 where the figurative element is a representation of or has a direct link with the goods and/or services.
The document suggests that C-265/00 Biomild, para. 39 and 40 are your best bet for defining the transitional ground, even though that is a case about a word mark.

The UK IPO was already agreed to implement the convergence practice recognising that it had a considerable influence in the drafting of the document and believes that it represents the standards our courts already apply. If you are going to argue a case before OHIM about the distinctiveness of a sign, best go straight to this document and use these principles rather than try and find precedents amongst the board of appeal series decisions that will be happily disregarded by the board when looking at your case.

The 10th Anniversary Event 26 November 2015

I've been feeling sad lately. My co-blogger, inspiration and mentor, Jeremy Phillips is going to retire. So this solo blog is getting a little more solo every day.

I really hope that you will be able to join me at the best free farewell event that anyone ever organised.  The Journal of Intellectual Property Law and Practice was launched at an event in Staple Inn some 10 years ago. Jeremy sent me an invitation. I had just started Filemot and this was where I met Shireen Smith with whom I started this blog a little later.

As we all know, the IPkat and other blogs driven by Jeremy have kept the intellectual property community from the youngest patent trainee to the most senior barrister (and maybe even a judge or two) informed about issues, developments and matters relevant to their own work and careers. Almost all of it is freely given. Nowadays we call this the "sharing culture". Jeremy was practising the sharing economy way before it became a buzzword. Any farewell event that was just devoted to toasting Jeremy's retirement would be unbearable. However, this is a serious seminar with illustrious speakers sharing their own knowledge of current developments and issues from copyright to second medical use patents with some trademark stories en route. You are bound to benefit in real terms (as well is in those dreaded CPD points).

If you haven't already booked your place, you should do so now. Sadly it is in London and starts at 9:30, but it will certainly be worth the journey.

Today Jeremy is with another of my co-bloggers Michael Factor in Jerusalem at his PCT TeaParty.

Abolishing CPD

The SRA Training for tomorrow WORDLE

The Solicitor's Regulation Authority (SRA) are proposing to abolish CPD. Strangely this has not met with universal delight. Having concluded that the burden of confirming CPD compliance and approving providers was an administrative burden too far, the SRA has been working on abolition. During March there were apparently) events and roadshow to publicise a consultation on the Options to replace CPD. On 21 May, they announced the results .

Despite the lack of support for the favoured Option 1 (only 9% preferred it) and overwhelming support for the status quo (with less knobs - Option 3) (50% or 35 respondents overall but 9 of 13 local law societies and 6 out of 9 of professional representative bodies including the Law Society).

It would seem that solicitors are in the habit of acquiring CPD points with "no real focus on the quality or appropriateness of the professional development that has been undertaken". Despite being professionals the SRA believes that we are box tickers, who have fallen victim to the whiles of the CPD providers including our own professional bodies who generate income by providing box ticking opportunities.

The idea is that the detailed CPD requirements are otiose, since the Code of Conduct already requires regulated entities and individuals to deliver competent legal services and train and supervise their staff.

Most significantly, for me, the Consultation recognises that competence arises from "informal learning through day to day work".  Certainly that is the main way that firms develop and spread competence within their organisations. Once you have gone SOLO though, does that work as well?. It does, but its not as easy as you don't really want to learn from mistakes, but we certainly still learn from experience (or at least I do.)

There is to be "Guidance" that will be of particular use to sole practitioners! We await that.

It seems to me that this new approach is to be welcomed. Do we want IPREG to follow suit?

One of the other options came from the gold plating pen of the micro-managers and suggested a obligation to write a formal reflective log at regular intervals. The image of a mirror finished piece of wood has been with me ever since.

What I would like to happen is that training providers would offer genuine and effective training and not simply hours. There are things I want to learn to do better but I know that sitting in the back of a lecture hall will not help. I envy the pupil barristers who get the opportunity to learn from older members of the bar, for example. Approval of providers has not made them effective. It will be interesting what effect abandoning these restrictions will have on the market.

Looking forward to your  thoughts.

Paying Professional Subscriptions

New Year brings not just fireworks but constant demands for professional subscriptions. The season starts with the solicitors who are smart enough to get in early before we have done the Christmas shopping . You got a window from 16 Sep and 31 Oct 13 to do it on line and confirm your CPD and insurance.

CIPA were pretty smart this year and sent their invoices out on a Wednesday just before the holiday. Then they sent them  again on Sunday. Mine came by email. Its not so easy to spot you are sending things out twice with email as opposed to snail mail.On Monday came an apology.

I am a Chartered Engineer too and the IET send me a postcard in the mail in early December I think it was and direct debit the subscription from my Bank on the first available date in January. They have been doing this for a while. Canny these engineers.

Almost as smart are the European Patent Institute  who allow you to have the obligatory €160 taken from your deposit account with the EPO but not until February.  They send you a nice paper reminder in the post at the end of the year. It is multicoloured and double sided, without that we might get away with €155.

AIPPI who at a modest £110 deliver the best value for money of all send a frantic email early in the New Year hoping you will send the necessary by bank transfer to reach them before 31 January so they can pay the mother organisation. This is a great improvement. They used to need cheques and they will still take such payments.

ITMA have also moved over to the direct debit system and are debiting theirs in January and had it all organised and members warned about the amounts late in November. Sadly at £432 they are only £8 short of being the most expensive honour.

So this just leaves IPREG. They are following the SRA model and want us to go on line. In November they wrote and said we were going to pay on line. We can now go on line to confirm we did our CPD in 2013 and that is a painless experience once you have logged into your IPREG Pro account.  For the rest we are told there will be 4 phases in total. I am going to get a  two week “slot” immediately following issue of my activation code. You see its quite obvious you cannot be a really smart IP practitioner unless you can meet short deadlines set at short notice.

I am debating whether it makes sense to continue paying both CIPA and ITMA. They have a big challenge ahead to justify their continued separate existence. The Law Society has cleverly not yet separated itself from the SRA budget but is still doing a sterling job for its members for example by ensuring recently that solicitors can continue their right of audience in the Enterprise Court

Christmas CPD 15 December 2010

Photograph  by Diamond Geezer

Christmas is a great season for lectures and if you would like some IPReg CPD hours to garnish yours, don't head off to the Royal Institution (that's where the photo on the right was taken) but go instead to the CIPA Hall at 95 Chancery Lane where London IP are hosting a CPD session designed particularly with the needs of IP practitioners in mind.

The event takes place from 12:30 on 15 December and costs just £50 plus VAT for a full afternoon's entertainment and education. To register just click this link to send your details

There are two components: an update on case law and a couple of sessions on legal issues that are most important to patent attorneys. James Mitchiner, a long-standing member of this group with his own firm in south London is going to take us through the law relating to breach of confidence and non disclosure agreements.  Make sure you know why they are important and be confident in recommending the right one to your client.

Next, we are promised the anatomy of a patent licence from Tim Marshall another solicitor with his own firm in north London 

The case law updates will be provided by Dr Sarah Boxall, a patent attorney and IP strategist who has her own firm in Sandwich . She takes on the recent EPO and patent case law

A little light relief on the trademark case law will also be included. this time, not from a solo but by Dennis Lee of London law firm Silverman Sherliker LLP

As well as being highly economic or, this promises to be a good opportunity to get out of the office and enjoy some challenging intellectual property discussion before the season of mince pies commences in earnest. I hope to see you there.

LES and ITM A combine to present Licensing Seminar

Two professional bodies have come together to create a seminar on Trademark Licensing on 16 November 2010. Cambridge SOLO group member Roman Cholij, an active member of bother the Licensing Executives Society and ITMA  has been busy putting together this promising half day event and it is still possible to book. The programme is laid out on the ITMA website here along with a  registration form.

Paul the Octpus by Tilla from Wikipedia

The location is the RIBA building at 66 Portland Place. A brisk walk up from Oxford Street tube and time over your lunch break before registration to check out the shopping.

So whether you want to draft licences for dead Octopi, Pauline or otherwise - there is a case study on licensing image rights; or extend your client's brands into new territories, this is a good opportunity to hone your drafting skills and make sure your clients are well protected.

Gives you a nice start for the new CPD year if you are a solicitor or a good finish to the account for the IPReg counters. I look forward to seeing a few SOLOs in person as it seems to me those of us truly working unsupported is getting smaller.

Fordham Reaches Out to SOLO practitioners

The big picture is because this is an all time first - a special SOLO practitioner rate advertised to the IP world to show we are wanted, loved and respected. So get on there and register before the Pound drops any further. Barristers and other solos should turn up in force.

The official website is www.fordhamipconference.com The programme is being updated all the time but the key is audience participation and there are many excellent speakers to tempt you to spend some quality time in Cambridge in April. See you there

When I saw the first announcement of this confered

Podcast CPD

Get your CPD on the go with an IP podcast from Peter Groves. The first edition can be found here. I like the idea of listening to the news. Give Peter your feedback and maybe he will let us have a discounted subscription. Be kind - its not so easy to speak to the microphone. When I had them, my secretaries were always telling me how bad I was so kudos for Peter for attempting this new medium.

INTA lets down its Paying Members

I know that many SOLO members find INTA membership at US$850 well beyond their means. In fact one of us regularly attends annual meetings at the non-member rate because that makes better economic sense and the other member benefits are insufficient for a SOLO - unless you are lucky enough to be a Professor when you can join for a mere $75.

I was delighted, therefore, that INTA was organising a Roundtable in London. Something to justify that huge spend to my virtual financial controller. I got an email on Tuesday and replied on Wednesday. So slothful, I admit it. It turns out this event on the protection of well-known marks is limited to 20 and despite my suggestion there are no plans to move to a larger venue.

I absolutely applaud the desire for delegate participation, but limiting delegates to 20 when there are no less than FOUR high quality presenters seems unrealistic. I suspect the email I received was sent at least to the 273 member organisations in London, possibly to the much greater membership in the United Kingdom

According to a recent mailing I got from ITMA the UK IPO say the skills of trade mark agents in the UK have been overtaken. Come on INTA do your bit to help. The picture to the right is Richard Heath of Unilever who is this year's President of INTA. I hope some of the Unilever attornies managed to get a place at the roundtable as they have many well-known brands to protect.