Yours sincerely: newly-minted professionals, same old problems

Something for newly-minted junior practitioners to chew on

Here's a slow-burner: some four month ago, members of the Canadian Copyright and Trade-mark Law" LinkedIn group were treated to the following practice Question from Kieran Moore: "What is the best way for a newly minted trade-mark agent to build a practice? What are the best sources of trade-mark clients?" Although responses have not been coming thick and fast, the question is still active and readers of this weblog might wish to reflect upon it.

Leaving aside the two most obvious questions ((i) why would anyone want to build their own practice in a recessionary economic climate, (ii) why would anyone who knows the answers to those two questions want to share them with their competitors in the same economic climate?),  readers of this blog may want to meditate over the words of Bart Cormier as they eat (or, if business is that bad, steal) their Christmas turkey:

"There is no magic source of clients and it's unrealistic to think that anyone can become a rainmaker overnight. In my experience, it's hard for a junior professional to convince a client to trust them with their work.

...[U]se the next few years to become more visible in your local community. Offer to speak to industry groups on trademark issues. Join your local Chamber of Commerce and go to the breakfast events (free coffee and interesting conversation!). Volunteer for causes that you're passionate about. Get to know the industries and businesses around you and meet lots and lots of people. Help the people in your network by connecting them to one another.

Make an effort to meet your opposite numbers at the companies you'd love to have as clients. You currently have much more in common with a junior executive/engineer/marketer/accountant than you do with a Vice President or CEO. Meet these people now while they're on their way up. Learn about their companies and how they work.

Do all these things sincerely, because you're interested in other people; not because you're just looking for referrals ...".

This last point, in my opinion, is crucial. n the same way as many small children instantly detect insincerity in adults, many prospective contacts instantly detect insincerity in people who seek to obtain instructions or referrals from them. The big problem is how to be sincere ...

Lower Cost IP Business Advice

One of Hargreaves's recommendations was that SMEs needed access to lower cost IP and commercial advice. The BIS and IPO announced today that the IPO are going to consult businesses, business advisers and IP specialists on how this might be achieved. I can already see the professional bodies girding up their loins to defend the profession and say there is nothing wrong. FICPI have launched a survey designed to show that almost all firms of patent agents offer some free advice and do their marketing at events where entrepreneurs gather. Its true we do and Hargreaves knew that so his conclusion was not made in ignorance. What we need to work out is how the advice can be delivered in a way that is both trustworthy and usable by individual businesses.

• The call to the IPO. This is the most obvious first step for many. Not a bad idea. It connects you to someone paid £17k pa who has the whole of the wisdom of the IPO to call on.
• The British Library Business and IP section is a great place to go and get information and do your market research.
• Inventors clubs. These allow inventors to get together and share information. Leeds is just one example.
• On line resources such as  a BetterMouseTrap and IdeasUploaded that will link you to designers and others and provide plenty of shared learning experiences.
• University |Tech Transfer or KT offices. UCL and Greenwich have been particularly keen lately to help all local comers.

This is just a sprinkling of the offers for those intrepid enough to do the research. The mix of business and IP varies considerably from almost all IP at the top of the list to almost all business at the bottom. Mix was important to the Hargreaves recommendation and the professional classes are not very good at mixing it. Indeed we barely try.

So why are the start ups on the Silicon roundabout telling Cameron they are unhappy. Free advice is not enough for them. Its either an untrustworthy grant aided offer from the inexperienced (OK that's harsh but one thing an SME knows is that he is not competent to judge quality and price is often the best indicator of value) or pure marketing designed to sell something paid for (the classic offering we professionals make).

A conundrum

Could we design an ABS that would be *for profit* but not at the super margins of the City law firms but still of interest to shareholders. It would need staff and it would need to mix them up a bit and therein is the hard part because the trend today is for lawyers to become ever more specialised and what we are saying no you cannot do trademark oppositions all day, you need to be able to hack some proper advice about where the marketing budget should be spent as well. Its a tall order and people with those skill sets tend to be CEOs of large organisations not settling in the provinces on a £17k salary. Right we cannot staff it with individual super consultants so it has to be a consultancy that brings teams together and works with the classic pyramid of effort. Hey aren't the accountants rather good at their consulting offers. Oh SMEs cannot afford to go to Accenture. If our ABS IP/Business consultancy is to make a profit it either takes a range of clients and very soon - like large patent agencies and grown up venture funds (3i anyone)  - decides that start ups are not worth bothering with, or it takes real investments in the start ups. Might work. Would the start ups want to share their equity with their consultant. its not a novel business model. To some extent ?What If  do it and it might sound a bit like Intellectual Ventures. Anyone in?

Electronics patent attorneys, trees and haystacks

Pete Fellows' latest piece on employment in the patent attorney profession makes interesting reading. In "Electronics Patent Attorneys No Longer Grow On Trees But They Might Be Hiding In Giant Haystacks" (here), he suggests that a pre-recessionary state of affairs has apparently re-emerged:

"Towards the end of 2009 and through the beginning of last year, I noticed a very unfamiliar trend. That was, for the first time in a very long time, there were more patent attorneys with a technical background in electronics looking for work than there were jobs.

That was short-lived. 

In an absolute reverse of where we stood in February 2010, there are now many more jobs than there are people for them. The options for electronics patent attorneys are myriad and there is certainly no shortage of firms clambering over each other to find a new a recruit in this area.
However the picture is not necessarily as simple as it might sound. There do remain some difficulties for this now coveted category of Patent Attorney. ...

It might be easy to move private practices but getting a job in industry is still extremely difficult.... The problem is that there are quite a lot of Attorneys who do fancy moving but are not particularly interested in another private practice. These are the people that seem to appear from nowhere when an industry position arises. Salaries for industry positions are nowhere near what they were (and getting a bonus of any size can be arbitrary at best; as difficult as mowing the lawn with nail clippers at worst) and hence added to the tough competition for in-house positions is a need to compromise on earning potential far more than many are prepared to stomach....

It’s also not necessarily easy for Attorneys who either are, or nearly are Partners and wish to move to a competing firm. There has been an apparent and brutally quick upturn in work across the electronics sector but practices themselves are in many cases still suffering from at least two years of economic uncertainty. This has a few implications: 1) Equity Partners are less interested in reducing their own share of the pot; 2) Firms are less interested therefore in hiring attorneys that might be banging down the door for partnership; 3) This has meant that the surge in demand is really only at part qualified, newly qualified and recently qualified levels. Having a client following does help circumvent the politics to some extent, although as getting work in electronics is not really the problem for many firms it is far less attractive than one might think ....."

Do readers of this weblog agree with this analysis?

Licensing Seminar

Skipped away at lunchtime to the Tower - there to partake of luncheon and a seminar from @IPKat. The law firm, RPC were hosting in their glass castle set beside the water of St Katherine's Dock where once it was suggested OHIM might reside in London.

Jeremy announced as an appetiser that the idea of a small claims track for IP disputes that was suggested by Hargreaves is to be implemented.

Paul Joseph an RPC lawyer took us through the basics and differences between breaches of IP and contract. A bit of contractual interpretation law followed with reference to the leading cases ICS v West Bromwich 1997 on basic principles from Lord Hoffman, followed by AG of Belize on implied terms and finishing with the Supreme Courts Rainy Sky case advicating business common sense (2011 Lord Clarke). Then he tested our attention by seeing what we thought the punch line of a greeting card would be. It was the lesser of two Weevils so the intelligent follower will know he was talking about the Deakin v Card Rax 2011 case.
Trade mark licensing then came under the spotlight with special attention to competition law issues and territorial restrictions. Finally we touched on IP rights in products that turned out to derivative products in Global Coal.

We were then handed over to Neil Wilkof on the subject of sub licensing, a subject which has apparently not troubled the English courts, excusing a diversion into the more beloved US law. The Carey case is from 1964 and attempts to distinguish it from a situation where licensor gets someone else to produce the licensed goods. Next we had an intrinsic definition from Canada as opposed to Carey's comparative view. Next he strove to find a rationale for sublicensing. I wasn't sure why we needed one. We didn't need an excuse to create multi - level goods distribution. That was an aside as Neil is now into the delights of Scandecor and by point 5 he says let's forget the case law. The panic seems to be about never creating an unwanted agency arrangement.
Another of Neil's favourite US case is DuPont 1985 which comes from Delaware. There was a *have made* contract and then a contract to sell back to producer to deal with. This was to get round a prohibition on sub licensing. It was neatly tailored drafting but even so the Appeal decided it was a sublicense neverthless. You want more, ask Neil for the slides. There is no photograph because he keeps walking in front of the bright light.

The End of Representative Bodies

Back in April my professional body and that of at least some of you made an announcement seeking any interest for a specialist interest group for SOLO practitioners. I reported it here. In the October issue of the CIPA Journal the Business Practice Committee report that the suggestion is not viable. There is also an announcement that says:

In the April 2011 Journal, page 206, we asked for views from those practising as sole practitioners or in small firms, as to whether CIPA and ITMA could help establish some form of support network.
We received a handful of positive responses, but the overall level of interest was, we feel, insufficient for the Institutes to set up a formal support scheme at this stage.
However, we remain open to suggestions from CIPA and ITMA members should there be a desire to organise something in the future.We will also do whatever we can to support such future initiatives, for example in the ways suggested in our April 2011 note.
In the meantime, we will continue to help individual practitioners who need guidance and support from their representative bodies. Advice on specific business practice issues can be sought directly from the Joint CIPA/ITMA Business Practice Committee; more general information is also available in the Business Practice Guidance Note which is available through the websites of both Institutes.
We would also urge those who work in small practices to join the CIPA and/or ITMA LinkedIn forums. These provide a good way of keeping in touch with, and sharing experiences with, other attorneys, and a convenient mechanism for raising questions and initiating discussions.
If you are ever in need of support or guidance from either CIPA or ITMA, please don’t hesitate to get in touch with either Mick Ralph (MichaelR@cipa.org.uk) or Keven Bader (keven@itma.org.uk).

So where does this leave the SOLO practitioner in relation to our alleged representative body. Now that regulation has been separated out, we need to decide whether next year's subscription is really worth it.  Most of the work of CIPA and ITMA is carried out by volunteers drawn from the retired and larger firms and its not always at all representative of my thoughts on a topic. It certainly does not do a lot of canvassing of opinion amongst the membership. CIPA membership used to be essential to the student as a primary source of free professional education but all current educational offers are subject to a price tag. So will I pay to use the letters CPA next year?
If you are a member of CIPA what do you think

Mediation, IP practice and the good of one's soul

If only ...!

When an actor is out of work, he is never said to be unemployed: the polite euphemism is that he is "resting". Euphemisms for "unemployed" extend far beyond the sphere of thespianism, though. Thus a footballer who is no longer selected to play for his team is "regaining match fitness"; a politician who is voted out of Parliament is "considering his options"; IT consultants are "between projects", and so on.

Recent conversations with intellectual property practitioners -- both those who are unemployed and those who are underemployed -- have caused me to wonder whether we too have a euphemism for this condition. It's called "doing some mediation".

It's true that there are some fortunate souls who excel in this area, bringing not only satisfaction to those who engage them but creating and sustaining an income stream that, if not constant, is at least relatively stable and predictable. Many others, it seems, are only really dabbling in mediation as a means of keeping their hands in, retaining their sanity and temporising until something better comes up.

There are some good courses on mediation both within the IP sphere and outside it, and -- while there is little case law on the topic unless you count domain name dispute resolutions --while there is also a small but growing body literature on the subject, it seems to me that there is not much that's available on the subject which is so close to so many people's hearts, and that is their wsallets. How do you bill for your services with genuine conviction and turn IP mediation into a real living? Or is it, like a practice based on a minor IP right like registered designs, always likely to be the icing on the top of the cake rather than the cake itself?

IP/IT lawyers in India

I am trying to find a reasonably priced IP/IT lawyer in India to review an NDA and later, if my client proceeds with developers in India, a development agreement for an IPAD game.  This is essentially just a rubber stamping exercise as the document is written under English law, and drafted by us.  I would not expect to pay a lot for lawyer in India to read the drafts in order to let me know whether there are any changes required to comply with local laws. As I myself virtually always works to fixed fees, based on an hourly rate of £250, it came as a surprise to find Indian lawyers charging more like £450 an hour.    Does anyone know a commercially minded, less expensive IP/IT lawyer in India?  

Ipsum is now facto

After Ipsum, the IPO's next service is going to be called
Possum. The 'Po' bit stands for 'Patent Office' -- but
readers are invited to guess the rest of the acronym ...

In April, Filemot posted a piece on SOLO IP which mentioned the virtues of Ipsum; she also trialled the Beta version (see IPKat review here). Today there's more news, this time from the IPO, in the form of a media release:

"New online patent inspection service launched

UK business could save nearly £100,000 per year thanks to a free patent system launched by the Intellectual Property Office (IPO). The new online service, called Ipsum, will remove the cost to businesses of requesting patent documents; instead they will now be available for free at the click of a button.

The service is open to anyone, benefiting businesses researching patents, patent attorneys working for clients protecting their IP rights and potential inventors looking for the best way to find information on patent applications. This can help them understand why a patent was granted or rejected or know more about particular patents.

Previously each document requested by a business would cost £5 and by the time it had been delivered it might already be out of date. Ipsum is updated in real time so businesses will now have the up to date information on patent applications they need. ...

The service is available on the IPO website – www.ipo.gov.uk/p-ipsum...".

Important information for SOLO IP readers will be found on the Ipsum website:

"Our search services are usually available 24 hours a day, 7 days a week, except for 2 hours at the weekend, usually on Sunday 20:00 - 22:00 (UK time) [that's a shame, bearing in mind how many sole and small practitioners seem to be online on Sunday evening, playing catch-up or readying their desks for their Monday tasks]

If you have any questions about intellectual property, or if you just need to speak to us, please contact our Information Centre on 0300 300 2000 or +44 (0)1633 814000. Our office hours are 09:00 to 17:00 Monday to Friday, excluding Bank Holidays [how many of our readers have such an easy time of it?].

If you notice a problem with this service, please contact us using the form below. Maintenance staff are available 08:30 to 17:00 Monday to Friday. Problems outside these times may not be rectified until maintenance staff are next available".

WIPO 'British Day' for Patents

WIPO is holding a day of discussions for UK patent practitioners on 13 October - next Thursday. At least it will if enough people sign up for it. The IPKat publicised it this morning, and I'm doing my bit too - having signed up to it myself. Details from http://www.ipo.gov.uk/whyuse/events/events-calendar/events-britishday.htm. It's at teh UK IPO's London place in Bloomsbury Street. 

Worliday, Taking Control or Loss of Work Life Balance?

Worliday is a term coined by Lucy Kellaway, of the Financial Times, in an article earlier this summer. A ‘Worliday is a bit like a holiday and a bit like work. ‘It’s the future for most professional workers, and actually, contrary to what most people would have you believe, worliday is really rather nice’, she states.

Having just come back from my own worliday I entirely agree. As someone running my own law firm, the idea of a holiday without any connection to the office seems both challenging and unnecessary. Modern technology is a real boon in enabling people like me to continue overseeing the office whilst on holiday. As Lucy Kellaway points out ‘the worliday is not family unfriendly at all as families get twice as many holidays.’

However, the idea of taking a ‘worliday’ has received mixed reviews from bloggers.

Chris Abram of ‘Marketing Conversations’, blogged in praise of the worliday, claiming that ‘working at Abraham Harrison is a little like an everyday worliday if you play it right and get your work done’. 

On the other hand, Tim Bratton General Counsel of the FT who tweets as @legalbrat likes his holidays to be just that, a holiday. He wrote a blog disagreeing with Lucy’s pro worliday stance. He feels the need for a holiday that is totally work free. He wants to relax and recharge. George Marshall agreed with him, stating ‘Leisure should by default dominate every day of your life with work being a mere sideshow.’

Image by SP Ingram 

Although combining a holiday with work may seem the opposite of relaxing for these bloggers, in my view the ability to work remotely whenever we like, whether we are on holiday or travelling on business, represents freedom.                                         

I wonder whether this divergence of opinions has something to do with the fact that women are reportedly (though not scientifically proven) believed to be better at multi tasking than men. Or is it just that people who run their own businesses are never off duty (and possibly don’t want to be)?

Tim Bratton criticises technology for encouraging us to work more, asking ‘is that really what we’re inventing new technology for? To make it easier to work?’ 

I disagree with this view because I feel that technology enables people to have the freedom to work where they want and when they want. Having the choice is what matters.

Technology gives those of us who run our own businesses the opportunity to go on a relaxing holiday and spend time with our families, and yet not worry about how the business is doing, and whether it is coping in our absence. 

I have no problem combining relaxation with work. Indeed, I so love my business, that a worliday presents an ideal opportunity to work ON the business as it gives me more time to think when I'm sitting by the pool, or taking a walk. I come back recharged, with many new ideas for the business, while having spent quality time with my family. 

I do find working IN the business less pleasurable, and so avoid doing the actual work as much as possible whilst on holiday.  However, even when that is unavoidable, taking a half day to deal with something doesn’t spoil the holiday for me.  It doesn't mean I haven’t had “work life” balance. I wonder what fellow IP practitioners think?

Design: Call for Evidence

These are a few further reflections from the seminar on Wednesday.

As part of its efforts to implement Hargreaves, the IPO has launched a call for evidence and the idea of the seminar was to review and discuss the results of the research ("evidence") that has already been delivered to the IPO.

There is also a survey (not for lawyers, but for our design clients) and then we get a formal consultation which will likely contain some substantive proposals for change to UK design law. Prepare to say a fond farewell to the much mangled Registered Designs Act 1949 and lets look forward to a whole new codification of design law that kicks out copyright and gives a national system  that is understandable and consistent with European law.

Design registration in the UK has never had the uptake governments would have expected and the UK IPO would like to know why. I confess I do too. Since we work with clients with an interest in design perhaps we have some insights we can share with the IPO team. Personally I struggle to add value for design clients. Once they have grasped how to get the drawings right then its often better to make the applications themselves as the idea is its supposed to be a cheap and easy process. Getting the drawings right is no mean feat. Some unscientific  research on the UK Designs Register shows that most applicants do represent themselves and if you are a litigator you might worry a lot if you were trying to rely on some of these registrations.

Proposal 1 for further research then is to analyse the users of the current system from the UK and see whether they feel they can access the support and help they need to make the system work for them.

The paper based filing system is the first problem area and the purring of the IPkat has already been heard by the IPO team and it got plenty of support at the seminar. However you can understand some reluctance to implement a system if it will be underused. WIPO was represented at the Seminar by Gregoire Bisson who runs the Hague system. He reports that his software came from OHIM but they have improved it. It certainly seems to pass the useability test for the in-house user.  If he can get the US to join Hague (and he has it in the sights)  then he will have a much more valuable system.

The focus of the seminar tended to be on the designer and it assumed that copying was bad. We need to test that.  Registration and attempted enforcement of unoriginal design could have a chilling effect on creativity and the London Design Festival, which ended yesterday, certainly shows that the UK has the creativity.   Chapter 3 of the Research a paper based on a small pilot study showed that experience of copying did not increase likelihood of registration. Proposal 2 is that the attitude to copying needs to be investigated and understood. Anecdotally I can say that there seems to be a preference for *muttering*;   getting media attention and even the deplorable practice of sending cease and desist letters with no intention of follow -up enforcement.  Is this because UK business has lost faith in the judicial system or that there is a rationalization that the actual damage does not justify even the management time of serious complaint.  Maybe even its a *do as you would be done by* approach. If I complain will I find myself at the receiving end of complaints.

Design protection needs to be manageable more like copyright protection than patent protection. Maybe we should see the IPO offering more advice and support in the development and implementation of protection strategies. Perhaps the call for evidence can support a pilot workshop or two to give how to file advice to those who should be using the design system so that it is clearer how or whether online filing would help. That is Proposal 3.

What do you think - is there a future for design protection in the UK or should we just leave it to Europe and use this legislative opportunity to delete the UK law on this topic.

IPO Seminar at Design Council

Tony Clayton of the IPO has been bringing economic perspective to IP issues for two years. This is my first mobile post so sorry if it's a bit terse.

Quality Trade Mark Representation

As we face the next Great Depression, most of us are thinking of ways to make sure we have a good client base and an excellent reputation that will see us through. Our problem is to make the relevant public look for us.  Qualified and Professional advisers in trademark matters usually means a specialist IP solicitor or a "Registered" Trademark agent. Anyone can represent a trademark applicant. Its just like will writing. Its not regulated. Unlike will writing its likely to stay that way.

Is this the Great Depression?

Reading a recent UK-IPO decision, I noted that the hearing officer had said "This is a case where every step has been unnecessarily protracted, by sniping and nitpicking." One of the parties was unrepresented, the other was represented by a named person, Mr Whyatt, not on the solicitor's register nor on the ITMA list of experts but he is a public access barrister so that should be even better, but nevertheless he got some serious criticism:

"Mr Whyatt would appear to be disingenuous and verbose in his response, and has managed to extend his counterstatements to cover seven pages (2052091) and eight pages (2307158) when both could easily have been answered in two pages."

The impression I get from the IPO is that they are not happy with the quality of representation and I don't think its limited to just this case. Is there anything we can do about it to help clients look for advisers that will offer them an efficient, well-informed service designed to achieve a reasonable result in the least time in order to allow the client to get on with his business. I want to see a quality standard so that an unrepresented person will know he is better of represented. Can we perhaps design a Quality Pledge a contract between client and representative to smooth things along. Maybe

• You will give me all the facts
• I will provide a clear indication of your chances of success
• We will agree capped budgets for every stage
• I will not take any step in the action without your knowledge and approval
• We will look for every opportunity to settle that is consistent with the budget
• I will keep the pleadings short and the evidence focused on the issues
• I will admit the obvious facts and not deny the undeniable
• You will do your very best to get the evidence we need together in a timely manner
•  I will ask you to pay costs orders

Equally there may be things the representatives and clients want from the Hearing Officers , so what about a debate to discuss it?

A couple of quick questions

1. Posting to the members-only Obscure IP Group on LinkedIn, Kayanne Horgan has been speculating as to whether trade mark attorneys might expect to see a surge in registrations once the new Icann gTLD program is launched in January? I'm not sure whether this is a reference to trade mark registrations (hooray!) or gTLD registrations (boo!), but in either case it would be good to know whether a flood -- or even a trickle -- of registration work might be expected to materialise, in which case readers of this blog are warmly advised not to book their summer holidays for January, when everything's a bit cheaper.

2. The IPKat has been mewing about the problem of costs orders for relatively small sums that remain unpaid by unsuccessful opponents at OHIM and indeed in the UK Intellectual Property Office. Some readers have posted comments suggesting that costs should be scrapped entirely, while voters in the Kat's poll -- who were not given the option of scrapping costs orders -- currently favour requiring opponents in office proceedings to be made to give security for costs. Thoughts, anyone?

Advertising Bribery and Sponsorship

Hopefully, we can all recognise that a cash bribe passing under the table is unlawful. However, the publicity surrounding the recent implementation of the Bribery Act in England has called into question normal law firm marketing practices and behaviours. No longer is it possible for an in-house lawyer to go out to lunch without some quip being made as to whether such behaviour could be a bribe. 

Since the media encourages a very judgemental attitude to those who transgress in any way - whether they be MPs in receipt of expenses, newspaper publishers or looters, it's not a good idea to find yourself on the wrong side of the law. However,creating such an environment of angst does make life difficult for those who promote their businesses using sponsorship. Once upon a time, there was some credibility that if you were speaking at a conference you were a legal expert. Now that your contribution is clearly marked as that of a sponsor, its value is much degraded. Have a look at the programme for the Legal Week Corporate Counsel Conference.

Today I received a query from CIPA - the professional body of UK patent attorneys - who are making a risk assessment exercise concerning the activities of the Institute in order to establish a Bribery Act policy. Apart from a few paid staff, all work done for the benefit of the Institute is by volunteer members. The retired ones maybe do it for love because they like to keep in touch, but those who could be earning substantial hourly rates, justify their involvement to their partners by the kudos they receive as a member of Council or as a speaker at a CIPA conference.

Equally, I was rather surprised that ITMA circulated all its members with the suggestion that they should volunteer to speak at the London evening meetings. We thought they invited the best qualified speakers, but perhaps they felt they had to be more open. Even so, if you volunteer, you will be branded a self publicist rather than an altruist - most people would prefer to be invitedas a result of peer-reviewed recommendation and it seems now that invitations are at risk of being considered bribes. Those on the outside are always afraid of a closed shop, especially if they cannot see the door. Just look at the comments on our last post on the supply of intellectual property advice in Northern Ireland.

Maybe the Bribery Act will have the effect of introducing greater transparency into the selection and payment of speakers at allegedly educational events.  Nevertheless, we may find that the absence of good wine and dining incentives, because they might be considered as a bribe, will threaten the whole business model under which professional bodies like CIPA and ITMA operate.  Do you think that's a good thing?

Representation in UK Trademark Oppositions

The clock is ticking at Greenwich rather than the IPO

Two newly published Tribunal Practice Notes from the UK IPO suggest that there may be problems arising due to the reduced numbers of parties taking the opportunity to have professional representation before the tribunals during Oppositions. The first notice TPN 1/2011 concerns editing of specifications where only part of the specification has been opposed; and the second TPN 2/2011 case management and the dreaded extension of time requests.

Dear Trademark Applicant /Opponent:
Yes it is possible to represent your own business. Some business managers even find it fun and challenging. However it is distracting you from your day job and you may be better off seeking out help from one of the many good IP law practitioners out there. If you are confident enough to have a go yourself, then you are clearly competent to negotiate a fixed price deal with a professional. If you must oppose - oppose everything. It can always be cut down later. However a long- winded opposition may not be the best way to deal with a real commercial problem. Spend the time to establish what you want and need and then consult a professional to see if you can achieve it.


Meanwhile are there other solutions the IPO should be looking at. Appointing some legally qualified hearing officers from the junior bar or retired solicitors and using case management more actively to get cases mediated or resolved without evidence. More interlocutory hearings on extensions cannot be the answer as this merely adds to the cost and the acrimony.

And the profession? do we need to go the Quality Solicitors route with Quality Trademark Professionals?

Ploughing a lonely furrow? IP practice in Northern Ireland

Northern Ireland: better known
for its climate than for its IP?

Today's post on PatLit about litigating patents in Northern Ireland set me thinking. While Northern Ireland is governed by much the same statutory provisions covering intellectual property law as is the rest of the United Kingdom, its small population (fewer than 2 million) and largely agrarian economy probably offer less scope for developing an intellectual property-based practice and in building concentrations of expertise.  Also, because of its geographical isolation, IP practitioners must inevitably find it difficult to network with professional colleagues, attend seminars and so on.  The spread of the internet  and the increased use of webinars, Skype and the social media may have ameliorated the position, but being an IP specialist in private practice in Northern Ireland must still be quite a lonely job.

Does SOLO IP have any Northern Ireland readers out there who would like to share their thoughts and feelings with others -- or who can disabuse this blogger of the impression he has painted above? If so, we'll be delighted to hear from you.

Hargreaves Response

Vince Cable was at the British Library this morning to announce the government's response to the Hargreaves review. Naturally, the media is focusing on those elements which relate to file copying, sharing and Internet blocking. See the BBC here, the Next Web  here and the Guardian here .  It is indeed very welcome to see that there will be proposals for a substantial opening up of the UK copyright exemptions - so maybe there will be some fair use arriving after all.

However, down in the bowels of the Hargreaves report there was a discussion about SME access to IP advice. What does the government intend to do? Well you will be delighted to learn that later this year, the IPO will set out its plans to improve accessability of the IP system to smaller companies, including access to lower cost providers of integrated IP legal and commercial advice.

Does that mean I can advertise on the idea websites for free if I agree to charge less than the market leaders?  Does it mean that they will reinvent the recently abolished Business Link advisers? Since "integrated IP legal and commercial advice" is not a known sector, perhaps we will find the IPO looking more kindly at self-appointed patent strategists. In any event, its a good phrase to put on your letterhead and to include on your website. Get marketing!

Only Connect

The current issue of Internet Newsletter for Lawyers (July/August 2011) carries a feature on Connect2Law, the referral service for solicitors established ten years ago by Pannone LLP and the primary benefit of which -- as Delia Venables explains -- is "to offer member firms the ability to service their clients in areas of law they didn't undertake themselves by referring them to Pannone". There are now some 20 "hub" firms that replicate, in their respective geographical areas, the services offered by Pannone in North West England. Referring firms receive back from the hub firm a proportion of the fee of up to 10% and the protection of clients is underpinned by a no-poaching clause.

There's nothing on the Connect2Law website that indicates which areas of law are covered, though presumably soft intellectual property is likely to be covered even if highly specialist areas such as patent litigation may not be.

I was wondering whether readers of this weblog have any experience of Connect2Law and, if so, what they feel about it.

Changing the Stationery

Logs being floated down the river to make paper for Lawyers

I thought it might be wise to be abreast of the Solicitor's Regulation Authority Outcomes Focused Regulation that comes into effect for firms regulated by the SRA on 6 October 2011. There is a whole new Code of Conduct that was approved only in June. I understood that the aim had been to avoid micro-management and a multitude of detailed rules. The Tag line is Freedom in Practice. From a marketing perspective, that sounds promising and liberating. Great stuff you might think for you and the consumer.

However when I see notices like this from The Law Society demanding that you change your stationery, you wonder if the message has truly got across. Presumably the outcome for a law firm's clients is that they can identify who they are dealing with - but why assume that legal practice requires pre-printed stationery and that firm's must change it. Is the outcome not achieved by adding the information in a signature block added during document creation. It does not need to be printed. Unfortunately the Outcome we are addressing here (Outcome 8.5 no less)  is not an "outcome" at all its a prescriptive rule that defines the wording. No freedom allowed.

For the small legal practice this new Handbook is an implementation nightmare. Fortunately the SRA are offering roadshows to get you abreast of the new regime. There is one in London on 6 September so book in. It's free and there is that lure of free CPD.

IP litigators: you are hereby consulted!

Are you an IP litigator in search of something to read? Have you any personal experience of the CIPA Higher Courts Qualification Regulations or the ITMA Trade Mark Litigator and Trade Mark Advocate Certificate Regulations that you're bursting to share? If so, the Intellectual Property Regulation Board (IPReg) Consultation on Replacement of the CIPA Higher Courts Qualification Regulations and the ITMA Trade Mark Litigator and Trade Mark Advocate Certificate Regulations may be just what you're looking for.

If you want to respond to the consultation document, you can email IPReg Chief Executive Ann Wright here. The consultation closes on 17 October 2011 after which the respective professional regulatory boards  will
consider responses, prepare a draft regulation and then issue a further consultation so that interested parties can comment on the wording of the draft regulation before it is finalised and submitted to the Legal Services Board for approval.

If you don't want to respond, read this document anyway.  It's short (15 sides, inclusive of the bits you don't need to read), well-written and devoid of the unnecessary artwork and acreage of white space that seems to accompany so many print-out-and-read documents emanating from the public sector. It also contains a useful potted history of IP litigation and representation over the past couple of decades or so.

Come and see my mouse mats, or the Bribery Act is here

To avoid accusations of bribery,
law firms are advised to give generic
unbranded mouse mats this Xmas

If other readers of this weblog have had the same experiences as I have, they will have been deluged with circulars, advertisements and warnings of all shapes and sizes, all reminding them that the UK's Bribery Act will be/is/was brought into force and that this will be an apocolyptic acopalytic apuplectic important event in the lives of us all.

In all my years as an intellectual property consultant to major firms, and also in my "own" guise as a person who has given advice and assistance to individuals and impoverished but worthy organisations on matters of IP, I have never come into contact with traditional bribery or the more subliminal sort, such as corporate wining and dining, tickets to prestigious sporting events and so on.  I can however boast an almost unparalleled collection of corporate and law firm ball-point pens, mouse mats, still-unrecycled diaries and calendars and stress balls. Am I in receipt of bribes, I wonder?

On  a more serious note, if any reader has thoughts on the impact of this new legislation on the small and sole practitioner community, please will that person or persons share them.  There is positively no inducement for doing so, or reward for having done so ...

Patent Box

No No not a patent storage box

HM Treasury have recently announced a further consultation on the plan to introduce a *patent box* to allow companies taxed in the UK to reduce their corporation tax liability to 10% on profits arising from patent exploitation. When first announced this was only going to affect licence income for new patents and I suspect most of the patent profession ignored it as yet another empty political gesture - which it was.

The plan today is however very different and now that it covers the embedded income generated by an an innovative business making a profit, it does seem to have the real potential to encourage innovation and the exploitation of patented technology.


It is definitely worth bringing to the attention of your clients. It seems to me that we should also be looking at cooperating with accountants. The consultation is being led by the Treasury with the support of a working group consisting of a number of large patent holding businesses. No doubt they have accountancy teams well able to work out the complex calculations needed to claim this tax relief. To be fair to the Treasury, the approach is delightfully formulaic and probably doesn't require too much academic flair.
However, the truly interesting question is going to be assessing whether there has been  incorporation of the patented invention into the product that is generating the profits. Definitely a role for the patent attorney. Sadly, we have all seen the business that files a patent but sells a product outside the scope of that patent.

Another real issue that I think we need to address is that the proposal is that a patent will qualify for the patent box in full from the date of grant. You can use the UK and EP patent. This is certainly going to create a much greater demand for the early grant of national UK patents and we need to be on to it now. I have long been an advocate of the combined search and examination procedure which results in both early grant and enough information to decide whether PCT and other foreign patent protection is justified. Of course, it's not that often a patented product generates much profit in its very early years. That, surely, is the point of the patent. The innovative company needs the patent to secure a longer term monopoly in order to make a profit. Now, the government proposes to allow innovative companies to keep a good deal more of that profit. Nice.

The period for response to the consultation expires on second of September 2001. However, if you want to be in on the working group nominations for additional members should be sent to corporatetaxreform@hmtreasury.gsi.gov.uk by 24 June 2011.

Closing a practice

Firms cease trading: this is an inescapable fact of life and we are all aware that it can happen to a big firm as easily as to a small one.
Closing a practice cannot be an easy thing to do. It may involve loss of face and a degree of personal embarrassment as well as requiring labour for which it is impossible to charge anyone. Files and records must still be kept, or provision made for them to remain accessible, for such time as they may be needed. Closing accounts must be prepared. Also, anyone closing a practice but proposing to practise as an IP professional in the future, whether as a relocated sole practitioner, a fee-earner in a larger practice or in-house, must prepare a CV or trading prospectus which combines the truth with as much damage limitation as is compatible with it.

I suspect that several readers of this weblog have been through the same, or similar, experiences within their own careers. If any of them have comments, suggestions or advice for handling this sort of situation, this blog is willing to host them.

Representation in court: anyone for some data?

A well-equipped
representative can
attack and defend

I expect that most readers of this blog are far too busy to undertake some research into the quantification of data concerning representation, but it would be good if one or more kind souls could go through the available data -- for example that provided by the UK Intellectual Property Office in the form of posted decisions in hearings on registrability, oppositions, cancellations etc -- and see how frequently the parties are

(i) unrepresented,
(ii) self-represented via an in-house IP department,
(iii) represented by a sole/small practice or
(iv) represented by a big firm. 

 It would be even better if they could check this data against appeals, to see whether, and if so how often, clients retain their original representative at a higher level or change to a bigger/smaller firm, etc.

Is anyone interested in coordinating or participating in such research? If so, do let me know.

INTA: are you going alone?

At MTB, after a couple of drinks everyone
starts to look like this :-)

If you're heading for this year's International Trademark Association in San Francisco and you don't have the security and comfort of the company of your colleagues since you're the sole representative of your firm or office, remember that you're always welcome at the annual Meet the Bloggers (MTB) informal get-together.


This year's MTB takes place on Tuesday 17 May from 8pm till whenever at Swig, 561 Geary Street, San Francisco.  It's free and it's a great place to do some top-class networking too. 

CIPA and/or ITMA proffers a hand?

A piece in the latest CIPA Journal April 2011 caught my eye. It is headed Are you a sole practitioner?
I had been warned that such a piece would appear, but not what it would say. Apparently, the business practice committee were prompted to make the announcement by IPReg.
since I cannot link to the piece, I will reproduce it here so you have an opportunity to comment.

Sometimes it can be a lonely and scary business. How do you organise holiday or sickness cover? Who do you chat to about tricky or unusual cases? Do you struggle to find the information you need about IPReg, indemnity insurance, tax, employment law and other business practice issues? And-an unpleasant but important question-do you have a business continuity planning in case of sudden incapacity?
The Law Society operates a sole practitioners group, which provides representation and supports a solicitor who practice alone. We wondered whether CIPA and ITMA should run something similar. 

However, we recognise that a scheme like this is probably best initiated by sole practitioners themselves, if they perceive a need for it, rather than being imposed by the Institute head offices.
If you're a sole practitioner and you're interested in some form of support network, we like to hear your views. Both seek to end it now will be happy to help sole practitioners to establish their own professional group, and to support the group's activities in whatever ways were felt useful. The institute could for example:

• Set up a directory sole practitioners, and an associated communication network

• Distribute relevant information on request across the network

• If appropriate, help organise mentoring or "buddy" schemes for new starters.

• Help to establish regional networks to which 'on call' holiday or sickness cover could be arranged

• Help to organise meetings at-whether it's cheaper or it might HQ at other venues around the country

• Help administrative backup in preparing publications such as guidance notes are sole practitioners, or even a regular newsletter.

• Assist in establishing resource pooling schemes, for instance the sharing CPD activities of the negotiating discounts from shared suppliers.

• Channel the group's questions direct to the business practice committee and/or to IPReg where appropriate.

This list is almost certainly not exhaustive. The bottom line is, if there is sufficient enthusiasm amongst patent and trademark attorneys sole practitioners, we are keen to do whatever we can to support a special interest group. And some of these ideas might also be relevant, of course, to small practices of say 2 to 10 fee earners. 

If you like the idea of a support network, or have any thoughts about how it might operate, or-even better- you're willing to help set it up, please get in touch with us via your Institute Secretary either Mick Ralph or Keven Bader.

So there you have it. There might be a tiny flaw. As a sole practitioner, there is not a lot of time left over from running the business for running a professional body. This blog with the noble support of the chief @Ipkat is often as much as I can manage. We have negotiated a Westlaw rate that includes the CIPA Black book and the patent and trademark attorneys, for insurance all you need to know about is PAMIA.
Shall we have a meeting to discuss it?

"Patent Attorneys – Let’s save the nation!"

"Patent Attorneys – Let’s save the nation!" -- that's the rousing World IP Day call from Michael Bates (1 Place Patent Attorneys + Solicitors, North Sydney, Australia), who explains as follows:

"As a nation we have everything – we are technologically advanced and we publish peer reviewed papers well above our weight. Who are we? We could be talking about any of the top 15 patent filing nations ... but if we are talking about Australia, we have 

1. enjoyed a relative economic boom whilst most other nations have suffered from the Global Financial Crisis, and yet 

2. slipped most severely as a patent filer per head of population.

Why? We need policy implementation that 

1. address misconceptions about the perceived value of patents; and 

2. involves the patent profession. 

This results in the Australian business community placing relatively little commercial importance on patents. How can we change this? First, there needs to be better policy consideration to improving attitudes to patent protection. Secondly, this policy consideration should take into account the role of patent attorneys. Thirdly, patent attorneys participate in policy formation: have a voice!"

Michael's further thoughts on this theme can be accessed on his own blog, here.

Databases Galore : Patent and Trademark Due Diligence Made Easy

The competition is hotting up between the Patent Offices of the world to produce even better and more accessible databases. Today the UK join with a beta version of  IPSUM a UK patent register that offers access to the documents issued by the Patent Office during the prosecution of recent applications. It also allows easy access to the Espacenet records of citations.

The EPO has also recently updated the EPO Register  and made its alert service (now called Register Alert instead of WebRegMT) much more accessible. The EPO show you the whole file including the correspondence from the agent. Also don't miss the tabs along the top that allow some very sophisticated searches to be carried out directly on the register.


The OHIM have been keeping up too. TMView is celebrating its first anniversary and although not yet comprehensive it is the best way to search for free across multiple country databases. French data is promised soon and we would like see German data so that there is a good prospect of spotting most of the big issues with a prospective new mark in one operation. You won't be able to clear a mark with this alone but you can certainly eliminate some items off a list.

The second OHIM effort is eSearch Plus Beta which combines the ability to search Community Trademarks and Community Registered Designs.  This really is a Beta version and some of the results are not up to date or complete. Representations were missing last week. If you want to see how it should work, here is their nice demo.

See the Origin of the search result. 

 

To complete the novelties we must mention the Global Brands Database which is a SERIOUSLY misleading title because it means Madrid registrations, International Emblems protected by the Paris Convention and Appellations of Origin, which leaves a lot of the globe left out. Moreover its only fair to say that the Emblems are the only thing with anything like global protection.  This tool has some amazing features including the ability to see results shown on a Map. The illustration on the right is for the origin of everything in the database. You could spend all day with this database discovering the most fascinating facts.

Unreliable Evidence: IP law debate

A class of Bears learning about IP

On 30 March the BBC  broadcast a radio programme on Intellectual Property Law in their Unreliable Evidence series hosted by Clive Anderson. You can listen on the iPlayer. A cast of IP experts was in the studio. Michael Fysh, Charlotte May, counsel, Stephen Rowan from the IPO who apparently now rejoices in the title of Deputy Director of the mysterious Copyright and  IP Enforcement Directorate and Paul Stevens from Olswang.

Although the programme was clearly inspired by the Hargreaves Review, the debate singularly failed to highlight potential areas of reform. Indeed during  the section on copyright (16 minutes in) the group seemed placidly to accept that 70 years post mortem was the right term for copyright.  It was left to Michael Fysh to eventually insert a dissenting voice. Clive Anderson - extremely well briefed - made several provocative assertions suggesting there might be copyright in program formats, designer clothing and domain names.

The programme was successful in showing that IP law is diverse and complex. It does not make a good starting point for any business listener but its a worthwhile listen if you are in the business, if only to spot the errors. Perhaps the BBC can commission Clive to produce a series of more educational programmes on the separate areas of IP.

The programme began with a brief introduction piece from Baroness Wilcox. She hit the wrong note for a discussion on whether the law has the balance right,  by drawing attention to a windfall her business had made from an unused trademark  (4 minutes in).

Its great to hear popular radio about legal issues. Keep at it IPO.

The Life of a Regulator

It's all about organisation

The morning's email brought a copy of the recently published Annual Report 2010 from IPReg - the regulator of most patent and trademark attorneys. It is one of the smaller regulators that come under the aegis of the Legal Services Board. 
These smaller professions have proudly boasted that they hardly ever have any complaints and could self regulate very well before this new regime came into force. Therefore it comes as something of a surprise that the report indicates that there have been far more requests for guidance on conduct by attorneys in relation to the activities of others attorneys than from the public. They say:
"We are concerned that we should not to be used as leverage in what may be, essentially, a commercial dispute e.g. over “ownership” of client following.
Whatever the source of the complaint, however, we are obliged to follow the same processes and this is a cost to the profession as a whole."

In short, if you want to keep the fees down, don't come to IPReg to resolve your restrictive covenant problems. Frankly, it is unprofessional for a partnership not to be able to manage its business discreetly when it is necessary for staff and partners to be reduced. Yes the recession is really hitting the IT profession now as decisions to put off maintaining intellectual property can no longer be delayed by our clients. As the EPO office actions become more contentious and the Appeal Board decisions later or arbitrary, it's harder to justify the investment.  Its better for the country if our clients stay in business even if we don't.

Alternative Business Structures (ABS)

The Report also indicates that one of the issues facing IPReg this year is whether it should be an ABS regulator. Personally, I was surprised that the Law Society and the Solicitors Regulation Authority had so much difficulty in deciding that they would regulate ABS. Neil Rose covers the decision very well in his Guardian article. Surely it is now increasingly clear that lawyers are good at practising law but bad at running businesses and that the law like every other business should be professionally managed. In short, it seems to me an ABS is the only legal business a consumer or a business should want to enter into a relationship with. Of course, dealing with a SOLO practitioner or a barrister is the exception because you are buying a personal service. Personally, I hope that IPReg will take the plunge and become an ABS regulator. Otherwise I foresee Patent and Trademark attorneys once more joining the great unregulated and the British Standard won't really help.

IP practice and recruitment: always a good time for musical chairs?

Via PRWeb I've just been reading the always entertaining and well-expressed thoughts of the eponymous Pete Fellows (Fellows and Associates), under the title "UK Intellectual Property Sector Shifts Focus, Says New Review". Pete forecasts "times of change for the private practice Intellectual Property market in the UK". In general terms, the market for recruitment and career moves is looking up, though good candidates for new positions are a bit timid when it comes to contemplating an upward move.

Pete may be right, but I feel that recruitment consultants tend to end up with the same conclusion that there has never been a better time to change jobs, whether the market is booming or contracting. It's just the reasons that keep changing. Thoughts, anyone?

Hargreaves and the SME Litigants

Not many IP Cases get this level of Publicity.
(c) Ben Sutherland 2008

As the 4 March deadline for the submission of evidence to the Hargreaves IP Review, one senses that there may be a bit of concern that real evidence is a bit thin on the ground.  A meeting has been convened on the evening of  23 February at which ITMA and CIPA have been inviting members to fill their respective 30 places. If you pay to be a corporate member of either august institution and want an invite get on to your favoured one at once, since neither is advertising the event on their website.
There are also supposed to be 30 places for SME representatives, who will therefore be outnumbered.  I wonder who is arranging their delegation but I suspect we can expect some criticism about the cost of litigation. It is not reported whether solicitors are invited but since it is in Freshfield's offices, there may be some and so it may not be too easy to say only they are the only expensive ones.
What are the changes in the law that could make litigation more accessible. The Patents County Court looks promising and if No Win No Fee offers are available from litigators, those with strong cases should be able to find representation. Defendants may find it harder to get representation that way. Hopefully no-one will be wasting too much more time talking about insurance. Perhaps Hargreaves can rely on the Amedee Turner report to the European Commission as evidence that that is a dead end.

Groves' Dictionary: available at last!

As a contributor to this blog, Peter Groves is far too modest to blow his own trumpet, but this missive crossed my path the other day and it seemed too good for me not to share it with SOLO IP readers:

"From 1-click and the ActionAid Chip to zwart maken, Peter Groves’ Dictionary of Intellectual Property Law' (Edward Elgar, 28 February 2011, £70) provides IP professionals and other interested parties with over 1,000 definitions covering most of the expressions that they might encounter. 

Dubbed by one lawyer ‘the Dr Johnson of intellectual property’, Groves’ work is not merely informative but also entertaining, erudite and occasionally acerbic.  [Perhaps it would be fairer to say that Dr Johnson was the Peter Groves of lexicography ...] ‘Compulsively readable’, wrote another reviewer, in an email headed ‘Darn you, Peter Groves’, complaining that he was supposed to be studying a patent specification. Law books don’t have to be dry-as-dust, nor do they have to be for lawyers only [I like to think of the oeuvre of John Grisham as 'law books', at least so far as work avoidance rituals are concerned -- and they're not dry]. 

You may not believe this, but patent law just got sexy,’ wrote The Lawyer back in 2004, commenting on a couple of cases in what we then called the House of Lords. To lawyers working in this area, what was hard to believe was that the rest of the world hadn’t already noticed. Compared to most other areas of law, intellectual property law as a whole – copyright and trade marks as well as patents – has been sexy for a long, long time [can we make an exception for supplementary protection certificates and semiconductor topography rights, which defy any categorisation as being sexy?]. 

One reason for its sexiness is the way government and business have embraced the idea that IP is valuable and important.[It's not just a caressing embrace; the sexiness of "three strikes" sounds decidely sado-masochistic] In our everyday lives we engage with IP every day, downloading copyright material from the Internet legally (or not), going for the branded goods in the supermarket (or not) and doing thousands of other little things that involve it. 

Yet to say that there is widespread ignorance about intellectual property is a massive understatement. What is said and written on the subject is more urban myth than solid legal understanding. Ordinary people – those who aren’t IP professionals [and the occasional judge ...?] – often have a hard time telling patents from trademarks from copyright. Many lawyers don’t know the difference, either. There’s no dictionary of intellectual property law to tell them what the words and expressions mean… until now. Peter Groves, a solicitor with 30 years’ experience of intellectual property, several books and many articles to his credit, and hundreds of hours of lecturing under his belt, has spent much of the last few years putting one together. 

Intellectual property has a vast, perplexing and diverse vocabulary, and this enriching Dictionary provides a starting point for understanding new concepts and crafting precise definitions to meet the needs of a particular case. Not only are new words and phrases being coined as technology changes and the law follows, but also the international scope of intellectual property means that IP lawyers will encounter foreign words and phrases. 

With over 1,000 expressions defined clearly and entertainingly, this book should be the first reference point to understanding intellectual property terminology. It will be particularly helpful to practitioners when they encounter expressions they have not seen before which they need to understand the true meaning and definition of. Students finding unfamiliar terminology and concepts will also appreciate the instant explanation available from this essential resource. ...".

We hope that Peter has organised a special discount for sole and small IP practitioners, who will get a particular pleasure reading it while they wait for the next piece of serious client work to come it ...

PS you can buy it from the publisher for just £63 here.

How to Protect Consumers and Regulation - Titles and the Unregulated

Having read the various comments in response to the post The Great Unregulated (why so many anonymous?) I think the issue is not whether there are regulated firms that provide poor value, or unregulated ones that are excellent, so much as whether the area of advice is important enough for society to ring fence in some way to protect consumers. For example, nobody would dispute that only doctors should be let loose on the public to provide certain types of services. So, that is the question, what types of legal services should be reserved activities that only lawyers, patent attorneys, trade mark attorneys, or whatever other discipline is permitted to provide?

Consumer protection?

If the aim of the Legal Services Act is in part, consumer protection, then these sort of questions need to be considered. Fine distinctions between trade mark attorney, and registered trade mark attorney, or trade mark agent, are not going to be easy for the public to understand. The question is, should the public be protected against the clerical assistant who worked for a short stint in a law firm, and who then sets himself up in business as a trade mark agent because they can’t find any other work? Their knowledge may be miniscule, but it will be greater than that of the lay public, so they may well be able to attract work if they price themselves cheaply enough. Does society think that trade mark registration is important enough to become a reserved activity? What about web design, search engine optimisation, marketing and many other areas where anyone can set up in business…. with little experience, and pick up the ropes as they go?

The Unregulated

What is unhelpful in my opinion is the rivalry between professional bodies, and all the protected titles that are devised in order to mark out a particular group as the ones who should be consulted above all others for that particular area of work. Surely, other regulated entities are not the real problem. If the people who should not be allowed to mislead the public by use of titles are the unregulated sector, (possibly those people with little background in law, who may be passing themselves off as suitable to provide legal services), then let's find solutions to stop some of their unregulated activities.

If we thought trade mark registration work should be a reserved activity, then it might be relatively easy to prevent certain people filing trade marks as agents for others. They might still find a role providing help to the public to draft their own applications, but at least their limited capacity to act would mark them out as a different type of trade mark agent. But in the absence of some radical measure like this to distinguish between providers, what is the point of reserving use of titles, if there would be some other title that the unregulated would be able to use in order to provide their desired service?

Protecting Titles

In the meantime, we are in the ridiculous situation where confusion reigns over who may or may not call themselves trade mark attorneys. For example, recently, after verifying on this post that there appeared to be an error in the IPO’s booklet Choosing the Right IP Adviser I wrote to the IPO to point out that solicitors could also call themselves trade mark attorneys and could they please correct the error. To my astonishment this week I received the following reply from ‘Debbie’ of the iPO:

Thank you very much for your feedback on the 'Choosing the Right IP Adviser' booklet which has been forwarded to me from Paolo Senese. Please accept my apologies for the delay in response but I have been absent due to a bereavement.

I can confirm that the point you have raised re: page 7 about Trade Mark Attorneys is being looked at. This issue has also been raised by another Attorney.

The text in the booklet was taken from the CIPA website relating to Trade Mark Attorneys and cleared internally by TM colleagues, but as you rightly state this does not tie in with Section 84 of the Trade Marks Act 1984. Thus, "trade mark agent" and "trade mark attorney" remain open for anyone to use.

I have been discussing with CIPA and I understand that the Protected Titles Committee recently considered the matter and was making a report to Council on 5th January in which it is suggested that the public would be misled now by anyone using the term if they are not on the Register of Trade Mark Attorneys. The reason for this is that the treatment of trade mark attorney is now in all other respects analogous with the treatment of patent attorney and with the "Register of Trade Mark Attorneys" now in place the public is likely to assume that someone using the title is entered on the Register. Thus the Committee is proposing that Council should issue guidance to Fellows that they should not use the title unless they are also entered on the Register. Whether that will be accepted by Council I do not know and am trying to establish the outcome of the report with CIPA.

CIPA has confirmed that they will not be updating their website until the outcome is known with the view that I would amend the publication at that time.

I will be more than happy to provide you with an update when I hear anything further from CIPA.

Thank you for your interest in the IPO publications and if you have any further feedback in due course this would be most welcome.

I was amazed that the IPO seem to think that CIPA have the right to make changes except possibly with regard to their own members. If CIPA wish to issue guidance to Fellows that they should not use the title Trade Mark Attorney unless they are also entered on the Register, I doubt this would have effect on anybody else’s use of this term. It's also surprising that the CIPA website has this statement about the term Trade Mark Attorneys. What happened to consultations with other interested parties?

While I agree with CIPA that all these terms are confusingly similar, I do object as a solicitor, to them effectively trying to deprive solicitors of the use of the title. It speaks volumes about the problems that need to be addressed. I read recently that there is a realisation that greater consideration is needed as to the activities that should be reserved and what Alternative Business Structures (ABS) will be able to provide once legal services are deregulated. Otherwise, consumers are in danger of being misled.

While Jeremy’s suggestion that some further research is needed in this area is correct, it clearly needs to focus on both regulated and unregulated IP providers.