Friday 29 February 2008

Law Firm Superbrand

I was interested to read in Lawweek that Eversheds is now the third placed law firm in the 2008 Superbrands survey, and that Linklaters has now overtaken Clifford Chance as the UK law firm with the strongest brand. I am curious to know what Linklaters and Eversheds have been doing to achieve their positions. Any ideas?
Following Jeremy's comment I am reposting the link here:'08+Superbrands+survey.html
If it still fails to work, then copying and pasting the link into your browser should work. It's worth looking at because there are a number of other related articles which may be of interest.

Wednesday 27 February 2008

How much is your practice worth?

The Scottish Daily Record reports that
"Scotland's Murgitroyd Group have acquired rival European patent and trademark attorney practice Kennedys Patent Agency Limited in a £3.4million deal.

Under the terms of the agreement, £2.4million is being paid in cash, with the remainder being paid over three years.

Kennedys, who have additional offices in Aberdeen and Newcastle, were founded in 1997 by David Kennedy and Neil McKechnie.

With the exception of Kennedy and McKechnie, all of the firm's patent and trademark attorneys are remaining with the company.

Murgitroyd say the deal will boost their patent and trademark practices".
This raises interesting issues concerning putting a price on an IP practice -- an option that a sole practitioner may want to consider when either implementing an exit strategy or going in with another firm. Obviously it's not possible to know the details that drove the valuation in this instance, but it would be good to hear from readers who have had to put a value on their practices recently.

Thursday 21 February 2008

Legal Services Reforms

Nearly a year ago I attended Professor Stephen Mayson’s talk at the College of Law, entitled CATALYST, CATACLYSM OR CATASTROPHE? He focused on the likely impact of the legal services reforms on law firms, and the talk was incredibly thought provoking. Points that have stuck in my mind are that the market will lose as many as half the sole practices that currently exist – as many as 4,000 - and that merging with others in order to grow in size is what may be necessary for survival and success in the new climate, even for niche firms.
In the meantime the Solicitors Regulation Authority - through the new Code of Conduct which came into effect on 1 July – has introduced a number of provisions designed to ensure that law firms are run as businesses – it being recognized that to survive in the new climate, law firms must be well-run, and financially aware.
There will undoubtedly be an impact on trade mark and patent attorneys too under the Legal Services reforms – especially once the multi disciplinary rules are brought into effect. So, perhaps when we next meet as a group the Legal Services Reforms might be a useful topic on which to have a speaker. We could then follow it with a discussion about the likely impact on us small niche firms? Anyone interested?

Wednesday 20 February 2008

The Joys of E-Filing the UK Way

The profession is impatiently waiting for the new and improved electronic trademark filing system. One member, who was suffering posted this to the group:

I tried to file on on-line trade mark application yesterday evening, having failed to do it from the office because our firewall seems to be set so as to prohibit access to anything you might actually need for work. I navigated to the form on the Patent Office (you know what I mean) web site, and up came an error message telling me I had to use Internet Explorer!
I dashed off a quick complaint to the Webmaster, pointing out that not everyone in the world has sold his or her soul to Microsoft and a growing number of eccentrics use Firefox - some people even go so far as to use Apple products (non-PCs, perhaps?). When I think about it, requiring people to use IE amounts to forcing them to use Windows, and it is not the government's job to help Microsoft achieve world

I wondered whether anyone else in this group has faced similar

Mike Hewlett at the Patent Office replied first thing this morning to tell me that the online form will be replaced in April, and acknowledging its limitations at present, which was very decent of him. Perhaps others who feel as I do would like to lobby for the next version to be made a bit more compatible.

Meanwhile back in Newport they are planning their post Easter Workshops to
launch the new system. Details here. Book your
place by email to Online TM3workshops. So see you on Easter Tuesday in London with your Mac Air Book or your Linux Portable and lets see. For those who need Easter hols you can go to Newport

Tuesday 19 February 2008

ITMA CPD Lectures on Film

Dave Musker of Jenkins drew a good crowd to his lecture on Design Law this evening and I wanted to highlight that these lectures are videoed and available for download at

Monday 18 February 2008

The National Phase of a PCT

For patent attorney members of the group, one suggested route to exchanging work occurs on entry into the national phase of a PCT application. For most clients this is an activity of high administrative effort and significant financial input and there is little opportunity to demonstrate any expertise.

At the EPO, they would like us to conform applications with European practice by amending the claims to refer to the closest prior art in the extended international search report, introducing reference numerals and addressing the objections. I do that for my direct clients and find that it has singularly little effect on the term for a response from the EPO. I noted recently that I had some cases where I had entered the European phase 2 years ago on this basis and still I had had no feedback. Now delay in incurring substantial expense is usually something welcome to an entrepreneur, especially if he has a granted UK patent already, so filing clients are not particularly unhappy about this situation. Of course, those asking for freedom to operate opinions are less calm about it. As a result, therefore, no overseas client ever instructs any professional work at this stage of proceedings.

The rise in EPO fees on 1 April 2008 makes me consider the best way of dealing with this business and I was intrigued to see the initiative made by KeyIP to take the professional element out of nationalisation and treat it as a purely administrative exercise.

This seems like a pretty good idea especially when I see that my profile of bad debts is almost exclusively attributable to this type of work. I am therefore not surprised to see that it is a central feature of their service that payment is required in advance.

Friday 15 February 2008

The Independent Voice

At our gathering in London last night, Duncan Bucknell shared his insights withers onto the future of global patent litigation in the pharmaceutical field. You might have thought that the trademarks of vision as would be snoring but his vigour and commercial analysis of the issues kept is interested. In the subsequent lively discussion, we did identify that one unique selling point that solo practitioners have is their ability to show to the world a really recognizable position. Duncan's strength lay in his advance planning of the type of work and clients that he wished to focus on and then making sure that he did things, including giving away copious amounts of free relevant analysis on his website -things like his scorecards- that showed he did have the expertise and ability to help them. We all agreed that it is not enough to say you can do things-that has to be some way of demonstrating it.

Duncan acknowledged that he was a disciple of David Maister a marketing guru who also provides a lot of free information.

Another solo strength lies in being able to adopt ideas and implement plans quickly. None of those tedious law firm approval processes, marketing committees and budget approvals. A little chat with yourself and all is full steam ahead. I am sure that many of us will be pondering this morning whether we should put client guarantees on our bills giving the opportunity for the client to pay what he thinks work is worth if it is not happy with the total. The obligation on the client is to explain in full why he was not completely satisfied with the value received. This is something which allows a client to feel confident about what may be considered to be some sort of risk in taking advice from a smaller organisation.

A big thank you to CIPA for making their hall available to us and, of course, to Duncan for making the time in his schedule.

Thursday 14 February 2008

Recent Money Laundering Regulations

The Money Laundering Regulations 2007 that came into effect on 15 December have in some ways relaxed the compliance burden solicitors used to be under, and in other ways increased them. Under the old rules, firms adopted a tick box approach, and routinely checked identity when initially instructed and that was more or less the end of the matter.
Under the new risk based approach, it is not always necessary to check identity when first instructed (even though as a matter of good practice, firms may want to continue to do so). However, much stricter identity checking and vetting of clients is required when you are doing “regulated” work, and to have an ongoing program of monitoring clients. An example of non regulated business is litigation. As I understand it under the new Regulations if a client initially instructs a firm on a litigation matter the firm need not do identity and other checks. However, if that client then instructs the firm to set up a new company or to carry out conveyancing work, these being both regulated work, a firm would then need to undertake vetting and checks and continuous monitoring. So, it is important to put in place systems and procedures to ensure appropriate checks are done later even if a client has been known to the firm for years. Does anyone know for sure whether patent or trade mark work is regulated?

Monday 11 February 2008

How much is a subscription worth?

The Journal of Intellectual Property Law & Practice, at £448 for 12 hard copies a year and online access to each issue and the archive, is relatively good value for money (it's roughly half the price of the European Intellectual Property Review). However that still places it out of range of most solo practitioners, for whom journal subscriptions are generally going to be a luxury rather than something you really need. The publishers, OUP, are shortly to be launching a 15% reduction -- but it seems to me that isn't likely to achieve anything. Firms that can afford the sub even at 15% off can certainly afford the full price, while the reduction isn't suddenly going to make it attractive to solo IP practitioners anyway since it's too small. I suggested to the publishers that anything less than a 50% reduction was not going to affect soloists' purchasing habits. Any thoughts or comments?

Legal Practice Regulation

The Solicitor's Regulation Authority of the United Kingdom just launched a number of consultations on implementation of the Legal Services Act:
This would be a great opportunity to get our point(s) of view across.

The current solicitors accounts rules are a nightmare if you are dealing with the sort of overseas disbursements that arise in international patent and trade mark practice. At present, anyone in the United Kingdom can practise as a trade mark agent and the Institute of Trade Mark Attorneys and the Chartered Institute of Patent Attorneys are supporting a campaign to have trademark agent or trademark attorney become a protected title (that could mean unqualified agents becoming criminals or having to adopt a different name).

I would like to arrange a discussion meeting to which we could invite representatives of the SRA and the Ministry of Justice as well as a UKIPO to discuss what level of regulation is necessary and desirable to protect the consumer whilst encouraging the widest diversity of service offerings from competent providers.

Many of our members who practise overseas may be appalled to learn that helping others with trade mark and patent applications is not a reserved legal activity in England but that's the state of the law as it stands.

Friday 8 February 2008

Recession, what recession?

What do others think of all this talk about recession? In the Law Society’s Gazette this week there are dire warnings for small and medium sized firms. Apparently the legal sector feel the effects of a recession some eight months after the rest of the business world, and should be bracing themselves etc etc. If I knew how to blog I would link you to relevant articles but sadly have yet to learn how to do these things. A lesson from Jeremy seems in order. Well on the other hand I read somewhere that this whole "recession" thing everyone's blathering about is merely fabricated by the US media so they'll have more to, g-r-i-p-e about while they assault us with election propaganda. Apparently ABC, NBC, CBS and CNN have predicted 40 out of the last 2 recessions. I personally think this is going to be a wonderful year for people who make it a wonderful year. If throughout our day we continually ask ourselves the question, "Is there anything in my life that I should do more of, less of, start, or stop?" then chances are good that you can make this the best year yet. Any thoughts from anyone?

Best way to get books for free

Barbara has just commended the forthcoming edition of a book which I have found useful in the past -- but it occurs to me that many readers of this blog do not have large budgets for expenditure on lawbooks, particularly if they can't be 100% sure that they'll need the book before it's replaced by the next edition. BUT ... review copies are free, so long as you write a review.

What this blog needs is a book review editor, who can build up (i) a list of readers who want to review IP books in areas of their interest or expertise and (ii) a list of publishers who want their books to be reviewed. Then all you have to do it put the two together. Any volunteeers?

Thursday 7 February 2008

SOLO Author's new book

Congratulations to Richard Gallafent on the imminent publication of the 7th Edition of
Intellectual Property Law and Taxation - a long running best seller in this esoteric but significnat field.
  • Provides an in-depth analysis of both taxation and intellectual property law and how these two areas interrelate
  • Analyses the recent legislative changes and the impact of those for both IP and taxation practitioners, specifically the Finance Act, Income Tax (Trading and Other Income) Act 2005 and the Income Tax Act 2007

We're all up for the launch party..

Wednesday 6 February 2008

Is Advertising Vulgar?

Advertising in the British legal profession has only been permitted for the last twenty years. With the advent of click through advertising the last vestiges of 1950' style professional decorum have left the trademark agency market. The downside of this type of advertising is that it encourages would be clients to buy solely on price. Would any advertisers care to comment on the value they get?
Of course businesses grew before professional advertising was permitted and they still do in those countries where there continue to be restrictions. The main mechanic is recommendation from clients. If a friend or business contact is prepared to give a wholehearted recommendation of someone they have worked with, it goes a long way. But do prospective clients ask around their friends and contacts any more. Judging by the number of times I have been asked if I know someone in this country or another, they probably do. To give a good recommendation for someone I need to have worked with them before.
LinkedIn allows you to publish a recommendation of a friend you want to support but such an open reference is very difficult to write.
Why not share your best story of how you have benefitted from a personal recommendation

Monday 4 February 2008

History about the group

It is characteristic of Jeremy Phillips to bring IP folk together. He likes to create communities, to get people talking to each other, and connecting them to the wider world of IP. He seems to be driven by his love of IP.
It is hardly surprising in retrospect that it was Jeremy who initiated the first meeting for sole and small IP practitioners back in February 2006. A few speakers were invited along, and a group of us sole practitioners/small practitioners met at the Crown Tavern in Clerkenwell Green. I don’t know how I heard about the event. Was I reading the IPKat blog back then? Certainly it was early days for my business. I was still working from home. So the forum was a wonderful opportunity to meet fellow IP practitioners who were at different stages on a similar journey.
Although many of us were thrilled to meet each other, I realised after a few months that if I didn’t do something about setting up another meeting, we would probably not meet again for a long time. So, I arranged another meeting at the Old Bank of England pub in June 2006. Some of the same faces turned up, and some totally new ones appeared. We sat in a circle and talked. Ideas for pooling resources to buy expensive resources, setting up a CPD club, or a forum to help with business development were aired. But everyone was very conscious of their own lack of time to do anything to progress any of the ideas. So it was that despite the buzz, and the initial flurry of email discussions that ensued, nothing happened again for another year. Then in July 2007 Barbara Cookson organised an event, hosted by Collyer Bristow. Allan James and Mark Jeffries from the UK IPO were invited to talk about the forthcoming changes in the UK Trade Mark examination procedures, and this drew quite a crowd of IP practitioners. It was clear that there was a lot of interest in doing something to form a group, although nothing concrete was decided.
In the 7 months since the last meeting, Barbara has set up a Facebook group, organised a special subscription to Westlaw for those of us who wished to subscribe, and has now organised the forthcoming event on 14th February. It is almost exactly two years from the date Jeremy organised that first meeting. At Jeremy’s suggestion this blog has been set up, and we are hoping to post content and links that are relevant to small IP practitioners, and hope to have lots of comments. Perhaps this blog was what was needed to keep the community alive and to help it to flourish in between physical meetings. I really hope so.

Sunday 3 February 2008

IP Insight: a useful tool?

The UKIPO's monthly e-magazine IP Insight (the January 2008 issue can be inspected here) isn't going to tell practitioners a lot that they don't already know -- but it has its uses. No sole practitioner has enough time to prepare his/her own newsletter, but much of the content of the UKIPO's one is aimed at the interested layman, a class of person that most clients should belong to. So why not email the link to IP Insight to your clients, adding a personal note or two of your own? That way, you keep in touch with them and quite likely give them the sort of basic background information, on a regular basis, that might otherwise take a lengthy phone call (or worse, a letter).

Community of Solo IP Practitioners

This is a blog on which readers are obliged to comment. Its purpose is to create a sense of community for those Intellectual Property Practitioners who practise independently or in very small firms or even as the only IP person in a larger firm or organisation. There is a Facebook group but some members feel uncomfortable on Facebook - please tell me why?
The net is not geographically limited so neither is this blog.
In London we have had several face to face meetings and the next one takes place on 14 February 2008 at the Hall of the Chartered Institute of Patent Attorneys at 95 Chancery Lane. The guest speaker is Duncan Bucknell who is coming all the way from Australia. He is a solo IP Strategist and publisher of the IP Think Tank blog.
He will discuss some recent trends in IP Strategy across the globe and what to watch in 2008. He will give us an insight into how the sole practitioner can promote a practice offering strategic advice to top of the range clients based on expertise, freedom from conflict and the promise that work will not be delegated.
A roundtable discussion will follow. All participants can share their concerns about working alone and the solutions they may have found work to provide the comfort that clients holding the decent legal budgets need to forge their relationship with a network of hands-on solo practitioners rather than Baker & Mackenzie.
We shall also be welcoming Gavin McGivern from Sweet & Maxwell who helped organise the Westlaw subscriptions. He will be showing the Lawtel Precedents and if anyone would like a trial password to see what’s there, just ask even if you can’t come to the meeting.
All this and you can still make it to a romantic venue to meet your beloved for 7:30. For the rest there are some decent drinking establishments in the vicinity to continue the debate.