Tuesday 31 December 2013

Little jewels from The EPO for 2014

More flexibility in dividing your applications
The EPO has been rather busy with its late 2013 Administrative Decisions .Its probably the case that most patents agents will be looking for a spot of CPD to make sure they understand the implications of the changes promised for 2014. The change in divisional practice in October which arrives on 1 April 2014 was greeted with much delight but the additional decisions all need to be read and digested. The whole package is driven by divisional issues. The changes in practice on searches are long overdue and it seems an age since CIPA was trawling for data on these iniquities. They don't arrive till 1 November 2014 so some applicants may be grateful for those prolonged delays in the arrival of their supplementary European searches, even if the renewal fees during that wait are inexorably rising as can be seen on the decision relating to fees. Cleveland have a helpful exposition of the new regime on unsearched subject matter here.
All this and the confusion over how to amend European patent applications now that our hands are tied and everything must be electronic as debated on the IPkat here means that 2014 is going to be an exciting year for the European Patent Attorney.
It is to be hoped that with all these procedural shenanigans that someone will remember that the role of the EPO is to issue valid patents efficiently (this includes timeliness) in the hope that those innovations will be exploited positively to the benefit of the European economy and not just of patent agents and litigators.

Monday 23 December 2013

Lawyer self-projection: when fluff and puff are not enough

Via Nick Holmes' Legal Web Watch December 2013 (this being an email supplement to Internet Newsletter for Lawyers) comes this wonderful diagram on lawyer profiles by Matt Homann (@matthomann).

It has been favourited and retweeted with some fervour, so I apologise for boring readers by showing them what they already know.

What occurred to me is that the sort of information in the left-hand side of the equation, puffed-up and/or irrelevant as it may seem, is the sort of information that is craved, or at least expected, by large corporate or public-sector clients. There, the source of the lawyer's instruction is likely to have a job, a salary and a considerable degree of peace of mind whether Boastful Bertie returns phone calls, does the job well or at least gives the impression of listening attentively or not.  The sort of client who genuinely cares whether the lawyer returns his calls and can do his job is more likely to an individual or small businessman whose number of dinners in the coming year is likely to depend on the outcome of the instruction.  For him, the immediacy of the sole practitioner may be more comforting, till he addresses issues that aren't on either side of Matt Homann's equation, such as "what happens if/when you go on holiday?" ...

Wednesday 18 December 2013

Partying alone

For many of our readers, this week is the week before Christmas Day and various public holidays, office closures and general lapses into domestic bliss and/or idleness.  Traditionally it's therefore the week for office parties.

Now, it is a fact that is not widely appreciated among the more populous realms of intellectual property law and practice that people who work by themselves, very often in their own homes, in a little room at the top of the house or in what used to be the spare bedroom or boxroom, don't have the same opportunities for pre-Christmas office partying.  Some fortunate solo practitioners will find themselves invited to office parties held by clients or, where they practise in leased premises, they may enjoy a little partying with other souls with whom they have nothing in common other than the fact that they are tenants of the same landlord.  For the rest, the Christmas party is a solitary vice, or virtue if you prefer.

Don't despair.  When all else fails and there's not much fun to be had, when you've blown up and then burst your party balloon and sprained a wrist pulling that Christmas cracker against yourself, when you've counted the bubbles in your glass of bubbly -- why not take up writing for SOLO IP? We'd love to hear from you about your travails and triumphs in IP practice, your dreams, your aspirations, your neat tricks for handling those awkward clients and small office management issues.  Remember, we're never more than a blogpost away!

How to have a party by yourself on WikiHow, here
Nothing wrong with being your own party, here

Tuesday 17 December 2013

CPD: something to muse on

CPD: can be a heavy burden but it always
relevant to practitioners' needs?
Earlier today, when casting around for interesting subjects that never get written about in IP journals, I found myself musing about the requirements imposed on IP practitioners in some jurisdictions with regard to continuing professional development -- the magical letters "CPD".  What I found myself wondering was whether the regime for CPD was in need of a substantial degree of rationalisation.  In the UK, which is itself divided as between England and Wales, Scotland and Northern Ireland, four species of practitioners ply their expertise: solicitors, barristers, patent attorneys and trade mark attorneys.  Each profession has its own criteria, its own rules, its own notions as to what counts as training at all.  And the professions in the UK are in competition with those elsewhere in Europe, many of which -- this blogger suspects -- have rudimentary CPD rules or none at all.

Beyond that, there are questions of convenience.  Large firms generally self-certify their staff's CPD points, which means that they can gain the requisite number of hours with the inconvenience of leaving their place of work or the risk of meeting interesting people who work for other firms.

Then there is the question of relevance of the continued professional development.  This blogger well recalls attending a one-day conference on IP and Sport some years ago, at which one of the registrants was an in-house solicitor with a public utility.  No, he said, this event had nothing to do with any work he had ever done or was likely to do, but he needed those CPD hours. How far should actual and expected work be allowed to dictate CPD requirements, if at all?

All of this leads this blogger to wonder: do the inconsistencies in CPD requirements as between jurisdictions and as between the IP professions impose greater burdens on the sole/small practitioner than on large firms and those who work for them, and do they have an undesirable effect on competition both within the professions and between them.

Any thoughts?

Wednesday 11 December 2013

Pipe Down

I was speaking to a trainee patent agent and asked what he thought of the new IPREG examination proposals that we have mentioned here and here. He gave me the view of his principal. This shows commendable loyalty and what might reasonably expected of a devoted apprentice who lives in the blissful hope that all wisdom resides in his master.

However it has to be acknowledged that while his master is probably a master of claim drafting and patent prosecution, he may be a mere amateur when it comes to examination and qualification procedures that provide an adequate safeguard for the public. It is true that the students are also amateurs in this eclectic sphere, but if left unpressurised they can provide IPREG with insight into the practical issues they expect may be imposed on them by the new rules.

Regrettably the fact that students are taking the QMW course without training contracts in hope is offering encouragement to  IPREG in their plans. That does of course mean that the profession is restricted to an input filtered by an academic institution or the larger firms capable of sponsoring students.

Is there any evidence of the skills and aptitudes that are needed by business in their patent providers?

Monday 9 December 2013

Alternative Business Structures -- as if we don't have them already

The Legal Services Board -- a strange sort of entity that seems to be there to regulate the regulators, has won the sudden and passionate admiration of the patent and trade mark attorney professions in the United Kingdom, it seems.  The following media release has just reached this blogger:
Legal Services Board announces recommendation that IP Regulator is to be licensed to authorise and regulate Alternative Business Structures

The Legal Services Board (LSB -- nothing to do with the closely similar LSD, much favoured in various Alternative Structures of the 1960s, or the studiously academic environment of the LSE where, well, never mind ...) has announced its decision to make a recommendation to the Lord Chancellor to designate the Intellectual Property Regulation Board, IPReg, as a licensing authority for Alternative Business Structures. This recommendation, if it is accepted, will enable firms of patent and trade mark attorneys to operate under Alternative Business Structures, under IPReg regulation.

“This makes a lot of sense,” said Roger Burt, President of the Chartered institute of Patent Attorneys. “Having IPReg as the licensing authority for Alternative Business Structures will benefit consumers as well as the legal profession. It should remove a potential obstacle to firms of patent attorneys merging with other providers of legal or professional services. This could widen consumer choice and enhance the service provided to business.”

Catherine Wolfe, President of the Institute of Trade Mark Attorneys, congratulated IPReg’s CEO Ann Wright on her efforts which have enabled this important milestone to be reached: “It’s taken the IPReg team many months of hard and good work to get this far,” she said. “It has been a complicated and demanding process and we are delighted to hear that the Legal Services Board is making this recommendation.”
You can read more about the LSB's decision here.

This recommendation says nothing about Alternative Business Structures that combine the practice of an IP professional with those of the diplomat, debt-collector, accountant, social worker, psychotherapist and a few other things besides -- most if not all of which are found in any typical solo practitioner.

Thursday 5 December 2013

Salary survey: stand up and be accounted

Recruitment and management consultancy practice Fellows and Associates has just launched its Annual Salary Survey 2014, sponsored this year by The Patent Lawyer magazine. The questions this year have been modified in order to better gather the most important data. In particular, the survey analysis is said to be made simpler to understand, with a separate section specific to the UK market. According to Fellows:
"The survey will take an average of 5 minutes but should take no more than 8 minutes to complete. As a thank you for your time we will enter you into a draw to win a £100 Amazon Gift Card (or equivalent value in alternative currency) when you provide your name and email address at the end".
You can seize this golden opportunity to depress the survey's findings by telling them how much you earn win £100 in value for no more than eight minutes toil by clicking here. There again, £100 for eight minutes works out at only £750 an hour, far less than we would normally expect to charge ...

Friday 29 November 2013

Scotland's Brave New IP by Sally Cooper

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

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

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

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

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

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

Thereafter, hard facts are hard to find.

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

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

Otherwise, there are tantalising hints :
  • “We might decide to continue to share some services with the UK, at least for a transitional period” : do we infer (contrary to my reading of the Scotland Act 1998 noted above) that both Companies House and the Trade Marks Registry will remain available to businesses in Scotland for the foreseeable future ?
  •  “Question : Would companies based in an independent Scotland still be able to float on the London stock exchange ? Answer : Yes …… around 2,500 companies from over 70 jurisdictions are listed on the London Stock Exchange” : do we infer that an independent Scotland will create its own company law and so increase the number of such jurisdictions ?
  • “Question : When consumers are harmed, will there be systems in place to help them ? Answer : Yes. We propose …… a more efficient model of trading standards …… “ : maybe good news for brand-owners ?
The website at www.scotreferendum.com suggests comments and questions are sent to referendum2014@scot.gov.uk. But this writer won’t be commenting or questioning as she’s no wish to add to the figure of £ 13,700,000 which is the estimated cost of the referendum !

Thursday 28 November 2013

Responsibility for Training

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

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

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

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

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

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

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

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

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

Tuesday 26 November 2013

Training patent attorneys: how will streamlining affect small practices?

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

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

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

Pay comparisons and zero hours: of perception and reality

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

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

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

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

Monday 18 November 2013

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

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

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

The posting is reproduced below:

Crowdfunding to Cover the Costs of Filing Patent Applications

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

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

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

Indiegogo -
Peerbackers -
RocketHub -

My Kickstarter campaign hasn't been approved yet.

Any comments or advice would be appreciated. Thanks.

VRTV indiegogo.com
I’m creating a new TV show genre utilizing virtual reality technology for all new fun and exciting TV viewing.
Jon's original post can be accessed here

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

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

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

Thursday 14 November 2013

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

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

... SME legal firms are recovering well from the effects of recession ... 
The chartered accountants’ third annual poll of 75 of SME law firms in London and South East England shows 4.5% growth overall, rising to 10% at the larger end of the ‘small practice’ spectrum [interesting: presumably 'big' small firms can enjoy greater economies of scale and can absorb more work before having to recruit further fee-earning power]. Profits too have risen – with the best performers recording a 17% rise on the previous year. 
But in spite of the brightening outlook, some practices remain cautious about their potential for internal expansion. More than a third (36%) are pursuing outside investment instead, and 43% plan to bring in new non-lawyer partners (a rise against last year’s figure of 33%). A little over a quarter of the firms polled (26%) report having been approached by a legal consolidator. 
The Legal Services Act, which allows such non-lawyer partnerships and mergers to take place, has so far had little impact on the workings of SME practices. An overwhelming 93% of those polled have yet to notice any effect on business.But more than a third (36%) think the situation could change in 2014, as the full impact of the LSA begins to be felt. 
The current economic overview seems upbeat for some small legal firms. Turnover per employee grew to a new average of over £100,000 per employee for the survey period (2011/12) – or a rise of 11% on the previous year, well above that of inflation [goodness!]. 
Litigation work remains a key part of the small practice agenda ..." 

Tuesday 12 November 2013

How to make a mint? Try giving it away first

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

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

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

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

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

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

SPC Regulations and transitional regime: a new article

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

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

Monday 11 November 2013

When Partial means Total : Madrid Trade Mark Minefields

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

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

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

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

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

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

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

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

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

Wednesday 6 November 2013

Pause for Thought: Unlawful Trade Mark Examination

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

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

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

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

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

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

Tuesday 5 November 2013

Are you ready for the New OHIM Communication Revolution

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

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

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

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

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

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

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

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

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

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

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

Thursday 31 October 2013

A matter of record?

Today's the day that the Court of Appeal for England and Wales opened its doors to the television cameras (on which see here, here and here). This blogger doesn't expect the workings of the court to make great viewing, well recalling his previous visit when he watched a man in a wig reading in a monotone to a panel of three elderly gentlemen who appeared to be taking it in turns to keep their eyes open.  Certainly there will be less scope for action replays and snickometers than there might be for a snooze button.

When you come to think of it, most of what we do these days is monitored or recorded one way or another. CCTV footage captures our every public move; every time we deploy a security pass, an Oyster card, Starbucks Loyalty card or whatever, we leave a little electronic footprint as a hostage for all eternity. Even when we phone our banks, utilities, retailers or medical service suppliers, how often are we now welcomed with a message that "This call may be recorded for training purposes/customer care/quality assurance ..."

But how many of us have the foresight to record a first interview with a prospective client?  This may not be such a bad idea, and it's nothing to do with entertainment value.  After all, while subsequent communications may be recorded as emails, attachments, text messages or voicemail, that first encounter may be evidenced by nothing more reliable, or objectively verifiable, than the lawyer's hand-written scrawl or a notes hastily typed up in real time on a tablet.  Yet misconceptions and misapprehensions acquired by a client at the outset can persist through time and space, leaving a sense of bitterness or betrayal that is quite unfounded.  Perhaps we need more recording, not less ,,,

Tuesday 29 October 2013

If you're reading this, you're probably at work

Just checking the latest bon mot from Filemot ...
Taking a quick look at the data furnished by SOLO IP's web counter, I noticed that around 51% of visits to this blog take place between the traditional normal office hours of 9.00 am to 5.00 pm.  This compares with figures of just 42% for IP Finance, 45% for Art & Artifice, 47% for the IPKat, 48% for the copyright-flavoured 1709 Blog and 49% for the PatLit patent litigation blog.  Of the blogs I checked, only the recondite SPC Blog, with a score of 53% of site visits during normal office hours, scores more highly.

How does one explain this?  After all, one might have thought that solo practitioners and those in small practices would have more flexible habits.  Is it that SOLO IP readers have incorporated the act of checking the blog's content as part of of their daily work routine -- or is it that a visit to this blog represents some sort of work avoidance ritual? Or (perish the thought!) do our readers just have more time on their hands and therefore have less need to read the blog out of hours?

Monday 28 October 2013

Time for a New Word - a Cel(ebrity) Mark

A UK Mark but what is its FUNCTION

This time Sally Cooper has been getting into sport and wondering if some signs (if signs they be) have function as trademarks:

Listening to radio commentary on the Chelsea v Manchester City match yesterday (which Chelsea won 2-1) a commentator made passing comment to something about a player : "it could become his trademark".

I thought immediately of Andre Agassi. Why ? Because it’s some twenty years since I first heard a lecturer pose the question “ what does the general public think of as a trademark ? “ and answering that question with “ Andre Agassi’s trademark cycling shorts “. Checking back this morning, the BBC reports “ In 1991 …… Agassi dazzled an expectant crowd by striding onto Centre Court dressed in pristine white from head to toe, including trademark cycling shorts “.

Checking further this morning (and avoiding articles written by lawyers) other "clothing as trademark" examples include :
  •  Michael Jackson wearing One White Glove – goes back to Jackson as a 1980s pop icon wearing a red jacket and a single white glove
  • Madonna and her Pointy Bra - designed by Jean Paul Gaultier for her Blond Ambition tour (and sold at auction for £14,100)
  • Bjork's Swan Dress - worn at the 2001 Academy Awards.

There is now much learning about "the functions of the trade mark" whether the essential function (indicating the origin of the product or service) or one of the other functions (guaranteeing the quality of that product or service or of communication, investment or advertising). See for example Paragraph 39 in Interflora C-323/09  I’ve yet to come across a "fashion function".

Call me a dinosaur, but "trade"for me has connotations of things-being-bought-and-sold and I’ve never been comfortable with "trademark" being used for (unrewarded) displays of dress of this type. Is it too late to wrench the word “trademark" back from the brink and suggest to football commentators et al that they might want to use another term – like Cel-Mark (being, of course, shorthand for “ Celebrity Mark “) ? Answers in the Comment box, please !

Saturday 26 October 2013

Let there be Grace for Inventors

This post is about the desirability of a grace period in the patent system. A grace period "forgives" an inventor
who has made a disclosure within the grace period before filing his patent application, by excluding from the "prior art" that disclosure and ones derived from it.

There is a grace period in effect for registered design protection at both UK and Community level and in the USA. 

I belong to the British Group of AIPPI.  It is an excellent organisation. It is part of an International organisation. Each year every national group is invited to provide answers to the same questions of interest in Intellectual Property Law. Then all of the papers are considered in a closed caucus at an International meeting and Resolutions are forthcoming. Don't bother going to the expensive International meetings because you can't get into the closed caucus so its all rather frustrating, but they do publish the Resolutions of the "important" people who are allowed in.

This year one of the questions, Question 233 concerned Grace Periods for patents. I and another SOLO James Peel were  part of the group. Initially the group was very much in favour of maintaining the legal certainty that the existing UK system provides. However I managed to make some points that remained in the final UK report, in particular the submissions says

There is some suggestion that SMEs would find an economic benefit from a wider grace period. This is primarily said to be due to the grace period providing a review period between disclosing the invention and filing a patent which may allow the SME to seek investors and/or assess the likely commercial success of the patented product before incurring the professional fees associated with filing a patent. It may also avoid the risk of SMEs making decisions about patent filings before carrying out effective market research and testing in order to ascertain whether the patent would be of value to them.
In any event, over in Helsinki the Resolution was passed in favour of an Internationally harmonised one year grace period without a requirement to make a declaration that the inventor is relying on the grace period.

How, though, are we to convince Vince Cable to put some political force behind the idea? The Unitary Patent Regulation does not provide for a grace period and implementing that and its associated Tribunal against the majority will of the professions, is absorbing all the patent related enthusiasm of the government. Still it would be nice if the grace period were not forgotten. Who else supports it?

Thursday 17 October 2013

The Grass may not be Greener

One of the worst things about being a solo practitioner is that there is no one to help when you are  under the weather or need a holiday. However, judging by today's report about Nestlé's trademark lawyer, Joanne Ling who qualifies as  TIMES  Lawyer of the Week for her role in suppressing the colour purple as a sign (discussed here), things are not always better when you work in a large organisations for large clients. This is what she says about her worst day as a lawyer - in case you do not subscribe to The Times
Solo support from Boots
What was your worst day as a lawyer?
The day I went to work with flu because I had an evidence deadline. I fainted on the train and had to be carried off, which was embarrassing. Nonetheless I was at my desk by 8.30am, without a voice and feeling dreadful. The client signed the evidence at 5.30pm and I left the office after 6pm.
 So maybe we should all be rushing off to get our flu jabs so as not to let our clients down. It might not be a bad idea to plan ahead so that the deadlines are not quite so deadly. If you don't have an expensive docketing system you can always afford a Marco trial to see how knowing the deadlines can help you manage the load. Managing the client may be another matter. Ringing another Solo in times of need has been known to work too.

I am hoping some big firm employers will step up and explain how they support their staff in times of stress too. Surely you can't all suffer like this?

Tuesday 15 October 2013

The Fantastic Mr Fox

If you liked the film,
you'll love the patents ...
The following, penned by our colleague Michael Factor and with a response from Steve Fox, should be of considerable interest to those readers of this blog whose expertise lies in patents. Michael writes:
Steve Fox is a sole practitioner in the US. He has an interesting business method. He is prepared to file a US provisional application for clients as a free service (see http://www.foxpatent.com/).

As I am not licensed in the US, I don't file provisional applications directly. I don't help clients fill out the forms but can refer them to an associate. However, most associates take $250 or more for filing a provisional application. Steve's offer to do it for free therefore represents good value for money.

So is Steve Fox merely a bright-eyed, bushy-tailed member of the genus vulpes, or is he a competent practitioner?

Well, US 8,521,592 is a patent he drafted and prosecuted for a business method invention. The claimed invention is almost pure software, but it still issued. It seems that Steve is competent at drafting and prosecuting this type of invention in the US, which is not easy. "
Steve comments:
"I have been a patent attorney for over 24 years. My Reg. No. is 33,237. Unfortunately, there are not many people below that number left. I am attempting to offer this service for several reasons:

(1) Any inventor can file his/her own patent application if he/she knows how to use the USPTO system -- which is not difficult for anyone reasonably competent with a computer. As part of my Representation Agreement, the client agrees that I will file the application without any review, especially, as to whether or not the specification would enable claims filed in a subsequent non-provisional utility patent application. Now that the US is a first to file system, it is even more critical to file a provisional application that completely discloses the invention as it will be claimed.

(2) After receiving an explanation as to what US law requires, I believe most inventors will wish me to review and revise the provisional application for a reasonable fee, depending upon the complexity of the invention;

(3) When the time comes to file a non-provisional application, I hope that some clients will have me handle the work; and

(4) I need work. Sole practitioners are losing so much work to companies like Legal Zoom. I do not feel my approach is a bait and switch. Actually, it is my way of doing a pro bono service if the inventor wishes with full knowledge of the consequences, and at the same time, attracting work at a reasonable price. Do you feel this is a bait and switch, unethical or stupid?"
Is this a shameless bait-and-switch exercise, a sensible way of cultivating a professional relationship with a client, or anything else? Do let us know what you think!

Monday 14 October 2013

Webinars: welcome not warm enough?

"At last, the webinar
has finished ...!"
Following a survey of his clients and contacts, IP transactions guru Mark Anderson (Anderson Law LLP) has posted a note on the responses he received to his various promptings regarding the use of webinars for legal training (see "Is webinar legal training viable? The results are in…", on IP Draughts here). he concluded that, while there was some interest, it was not expressed with a degree of warmth and conviction that would tempt him to organise it himself.

Within solo and small IP practices, the need to collect points or hours for continuing professional development purposes can be a continuing worry.  Commercial conferences and seminars can be expensive in terms of registration fees and time spent away from one's practice. Even when they are reasonably priced and not too inconvenient, by the time they come round they may clash with urgent and deadline-facing client work that cannot be dropped. Many practitioners leave it till late in the year to clock up their entitlements, which can also induce extra stress.

Webinars would appear to address most of these issues pretty well. Why, then, are they not more popular? Is it because those who work in relative isolation from their colleagues really appreciate the chance to meet them socially at training events? Or is it that they spend quite enough time facing a computer monitor as it is, and need to get away from it from time to time?

Wednesday 9 October 2013

Freelancing, résumé writing and the Kiss of Death

Via the Media + Bloggers Twitter feed at @ps_bloggers (how did this end up in my Twitter account? I'm sure I don't follow it ...) came this link to "The pros and cons of freelancing" by Kevin Allen, on PR Daily. Apart from the misleading, if not downright heretical, suggestion that the word "freelance" is some sort of rebrand for "unemployed" rather than "self-employed", this piece also carries one of those tantalising infographics that contains all sorts of information except what you actually want to know, and which are designed to convince you that the world is contiguous with the borders of the United States of America.

While still on PR Daily, I next discovered this piece entitled "10 words and phrases that shouldn’t be on your résumé" by Amber Carucci. According to Amber one should never write, among other things, "References available upon request", "Dynamic / energetic / motivated / enthusiastic" or "Microsoft Office". I have always favoured "References available upon request" as a preferable alternative to the listing of names and addresses of people whose identities may be of no real interest to me; "Dynamic / energetic / motivated / enthusiastic" is a medley of cliches which an applicant for any position is entitled to assume to apply unless specifically disclaimed, and the third is rightly derided since, in the twenty-first century, it is about as meaningful as a statement that the author of the résumé knows how to read and write. A surprise omission from the list of ten no-nos is however the word "paralegal", which appears to be the kiss of death for most applications which require professional skill or responsibility.

Can readers add any favourite "no-nos" or "kiss of death" words to the list?

Sunday 6 October 2013

Is this a Sign?

As I walked the dog the day after the Court of Appeal had dashed the hopes of Cadbury's by rejecting its attempt to register the colour purple, I saw this discarded wrapper by the side of the path. The photo was taken with a camera phone. It deals with blues and purples badly. It is a genuine wrapper and yes, dear reader, I picked it up and attempted to  lodge it in the correct recycling bin.
I doubt that this failure will result in Cadbury or their new brand family in the mother ship, Mondelez abandoning the shade, though maybe this application is doomed if the Supreme Court are not interested in its rescue.
In my office drawer there are several purple wrapped chocolates that I purchased last year, at random from a supermarket, in order to try and explain to a lay client what the trademark registration:
“The colour purple (Pantone 2685C), as shown on the form of
application, applied to the whole visible surface, or being the
predominant colour applied to the whole visible surface, of the
packaging of the goods.”
might mean and whether these products were in or outside the scope of protection.

One is a marginally different shade, another was small and had another illustration that led to a debate about predominately. They kept us happily amused over a glass or two of wine and perhaps one client has decided that colour alone is too brave for their business.

Sir John Mummery felt that both Allan James of the IPO and Judge Birss had erred, was in failing to see the description as part of the sign. In his view: "There is wrapped up in the verbal description of the mark an unknown number of signs". The pun was probably intended but the emphasis is added. The description was also the root of the problem for Sir Timothy Lloyd, and Lord Justice Lewison agreed with both.

At first blush it might seem that the mark might fare better without a description. After all, when I file a word mark, I do not describe how or where I am going to use it. The product is my canvas. I might cover it predominantly with the mark in big letters or choose to use it small. No one has said (up to now) that that was not a sign.

Perhaps the problem with colour is that we avid consumers don't see it as a sign, unless we have been educated by use to recognise it as such. Everyone was agreed that as a matter of fact that colour meant Cadbury's chocolate and was an indication of origin. However if we give them an exclusive right to use a shade or anything similar confectionery wrapping even without any intention to pass off becomes fraught with difficulty.   But if the evidence is accepted, and that finding of fact was not challenged by Nestlé, it seems that Pantone 2685C is off limits. Fact.

The Court also said: "Speculation by this court about the future direction of trade mark law at this stage of development would not help anyone".Such a shame as the Commission has suggested that the Directive should be amended to clarify that a sign does not have to be represented graphically and can be a "colour as such". If we have good passing off/unfair competition rights, it might be better policy for colours as such to stay off the register.

It seems to me that the decision feels right, but that the Supreme Court might need to wonder about the reasoning. The decision was paired with the Mattel/Zynga case before the same panel with a more problematic concept mark : the Scrabble tile, which had been accepted as registrable by the IPO but had not survived the court challenge below. It suffered from its description covering too many signs.

If you need to describe your sign, your problems have begun. Leave drafting descriptions to patent agents is what I say

Wednesday 2 October 2013

The price of IP advice: is it ever right?

This blogger recently received one of those annoying emails entitled "Three Mistakes That Publishers Make". Mistake number three, the only one mentioned, runs like this:
"MISTAKE #3 Lowering Subscription Rates". 
Presumably MISTAKE #2 is Raising Subscription Rates and MISTAKE #1 is to leave them as they are.

This blogger is reminded of the legal practice of his father, this being a two-partner firm that operated with bargain-basement fee policy.  When the firm was eventually persuaded, against its better judgment, to hike its charge-out rates, it paradoxically prospered. Clients appeared to place a greater value on legal advice for which they paid higher sums, notwithstanding the intensive level of inter-firm competition.

SOLO IP is happy to hear from readers as to what their experiences of pricing their services have been.  Do let us know!

Tuesday 1 October 2013

Is a Registered Trade Mark a Defence?

Always good to have a shield. C info
Sally Cooper reminds us that here in the United Kingdom, we have a provision of the Trade Marks Act 1994 (section 11(1)) which says :

 "A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration)"
This contrasts sharply with the the position of a Community Trade Mark in the UK. The ruling of the Court of Justice in the European Union which, in C-561/11 of 21st February 2013 [Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza] which says :
"Article 9(1) of the [ Community Trade Mark ] Regulation must be interpreted as meaning that the exclusive right of the proprietor of a Community trade mark to prohibit all third parties from using, in the course of trade, signs identical with or similar to its trade mark extends to a third-party proprietor of a later registered Community trade mark, without the need for that latter mark to have been declared invalid beforehand".

Now we have Marques reporting on 27th September 2013 a decision from the Spanish Supreme Court delivered on 24 July 2013 (Editorial Prensa Canarias, S.A. v. Radio Pública de Canarias S.A.) declaring that no infringement of trade mark rights will be established against a defendant that is using a (later) valid trade mark registration. The UK and Spain singing in harmony – who else ?

Barbara Cookson adds: Such an attitude  in Spain keeps the opposition practise in the national office vibrant. Hopefully the Fast Track Opposition procedure in the UK with a reduced £100 fee and the new Form TM7F introduced today will save some trademark claimants the trouble of having to invalidate infringing trade marks on the national register.

It seems to me to be good advice for anyone concerned about possible infringement to file their UK trade mark to establish a first line of defence. Even though the CTM at only three times the cost, covers so much more territorial, it cannot provide a shield. However if the brand bully has a CTM the UK mark is no defence either.