Thursday 30 January 2014

Sally Cooper rants on Issues In IP Educational Programs

As someone whose CV includes being a Senior Lecturer at The College of Law (now the proudly-named University of Law), a publication with the title “IP education of non IP professionals” necessarily attracts 
Tailored Tuition

In its Final Thoughts (so at the end of the page) there’s the conclusion that “The importance of IP education cannot be stated enough” : so say all of us ! 

However, the (negative) issues that command attention for those of us involved in spreading the word about the benefits of IP (and is any one of us not so engaged ?) are (without alteration) as follows :

• the content material had not been adjusted to suit the particular audience, 
• too much attention had been given to one particular form of IP, and other forms of IP had been generally ignored, 
• the language used in the training material had not been adjusted to suit a non IP audience who generally have a poor understanding of IP specific words and phrases. 
• the legal aspects of IP dominated the training, 
• the focus was very on one IP particular process rather than explaining all of the key IP processes and how they are inter-related, 
• learnings from how the IP game is played in different industry sectors were not included, 
• all of the case studies or examples provided during the IP education were drawn from one particular industry sub-sector,
• the person providing the IP education lacked a holistic view of the IP world, 
• the course content lacked consistency when implemented across a large organisation or company, 
• the educational material and delivery was dry and un-atractive, and did not really engage the participants, 
• too much emphasis was given to how the IP game is played in one or two jurisdictions, 
• some admin or facilities issues adversely impacted the success of the IP education program, 
• there was no evaluation or follow-up conducted 

It seems to me that the dominant message coming from these (negative) issues is that old familiar : the person asked to provide the education had not been briefed adequately about the concerns of those he / she was being asked to educate. 

I know I can be “dry and un-atractive (sic)” when doing my best to explain “the legal aspects of IP” rather than “the IP game” : but that won’t stop me being involved in IP education and trying to get it right !

Tuesday 21 January 2014

Yet more help for SMEs -- but will we see any of the action?

According to the latest press release from the UK's Department for Business, Innovation & Skills:
Every mid-sized business in the country will be offered tailored trade advice and an intensive programme of support to help them start exporting or break into new markets, Trade Minister Lord Livingston announced today yesterday.
Lord Livingston will personally write to all the UK’s 8,900 mid-sized businesses by this summer to ask them if they would like trade support from UK Trade and Investment (UKTI). Evidence shows that exporters do better with UKTI’s help and on average mid-sized businesses can increase their sales by £1.8m.

Mid-sized businesses are vital to the government’s long-term economic plan to reduce the deficit and create more jobs. The CBI estimates that, if they reach their full potential, it would be worth £20 to £50bn to the UK economy. Currently mid-sized businesses make up just 0.5% of all businesses but contribute around a fifth of employment and turnover in the UK.

However only 17% of UK mid-sized businesses generate revenues outside of the EU compared to 25% in Germany and 30% in Italy.

Speaking ahead of the Meet the Mittelstand conference in Staffordshire, which is bringing successful German companies to Britain so UK companies can hear about their strategies for success, Lord Livingston said:
“Mid-sized businesses have the potential to be economic powerhouses for the UK economy, creating jobs and growth for all regions of the UK.
Their success is dependant on expanding beyond domestic markets so we will be making personal contact with all mid-sized businesses to find out what we can do to help them go up a gear and compete with the best the rest of the world has to offer.
Businesses excel with UKTI’s support and we want to make sure that they are not just trading abroad, but thriving there.”
UKTI market and sector experts are based both in the UK and overseas – across 160 locations in 111 countries.

A pilot study will be conducted in Yorkshire and the South East followed by a full national roll out.

Alexander Ehmann, Deputy Director of Policy at the Institute of Directors (IoD):
“Building a sustainable recovery means improving the UK’s export performance.
“Doing business abroad will always involve risk, particularly in developing markets, so companies want to have as much information as possible before diving in.
“IoD members who have used UKTI’s services give them a good rating and we welcome the decision to expand the support they provide to mid-sized firms.”
UKTI is also raising awareness of its services with smaller companies through a new national marketing campaign, Exporting is GREAT, which aims to generate 3,000 appointments for small firms with UK Trade and Investment (UKTI) advisers by April 2014 and drive £1.2 billion in export revenue from the leads it generates.

As part of his visit to Staffordshire, Lord Livingston will visit the mid-sized business F Ball and Co Ltd in Cheddleton who specialise in floor preparation products and floor adhesive. With help from UKTI, they export to overseas markets including Belgium and Luxembourg.

Companies interested in learning more about exporting opportunities should contact UKTI at [this page appears to resolve to, which just about mentions IP at the very foot of the page, in connection with the much=trumpeted IP health check]
This blogger wonders whether any part of the tailor-made trade advice might perchance relate to intellectual property. Given that small and solo IP practitioners see a good deal of SMEs in the course of practice, it would be good to know whether any of the benefit of this latest BIS initiative will trickle down into the zone occupied by those IP practices on which small, developing innovation-based businesses so often depend.  One of the best ways to prepare a business to break into a foreign market is to enable it to secure a bit of decent IP protection there, whether for a brand, a device, a design or anything else.  Words like "break into", "expand", "compete" are vacuous if not backed by some legal right, yet the UK government seems woefully coy about spelling this out.

Saturday 18 January 2014

European Patent Institute Elections - where are the hustings?

Chris Mercer EPI veteran
A paper arrived on my desk inviting me to vote in the elections for the Council of the European Patent Institute. One must suppose that this august body has some influence with the European Patent Office. The electorate are European Patent Attorneys. One might imagine there would be hustings and opportunities to learn how the candidates would represent our opinions. Seems not. There was a plaintive call for candidates on the CIPA website on 26 November 2013 and I think the journal published some details but that's not available online so I cannot tell you much about who came forward.

Is it time we re-examined about how these bodies work. It seems to me that senior members of large firms who can be supported by their partners to take part continue to represent the interests of their organisations.

What do you think? Should Council Members hold open meetings in their constituencies to find out what are the real issues and opinions.  The EPI website is very glamorous  but has not got a lot to say about what Council is doing at its meetings

Does anyone want to buy my Vote?

Wednesday 15 January 2014


The Royal Society for the encouragement of Arts, Manufactures and Commerce (RSA) was founded in 1754 and occupies a house designed in the early 1770s by Robert Adam at 8 John Adam Street, London (just south of The Strand).

Adam Lent, Director of the RSA’s Action and Research poses the question : Is creativity the most important political concept of the 21st Century?

There are four parts to the answer being :
  1. Creativity is good for us: it is the best use of freedom
  2. Creativity is more economically important then ever: modern capitalism thrives on it 
  3. Creativity is necessary: it is the only solution to long-term austerity 
  4. Creativity is under threat: it needs protecting. 

Not even at (4) is there mention of the Intellectual Property Office or reference to any of the laws that might be relevant to protection of creativity here in the United Kingdom. I am a long-term supporter of the RSA (indeed, a Life Member). And I accept that I could simply let off steam by Comment on the RSA blog. I’m taking the alternative route of expressing frustration through the good offices of SOLO IP because I know my frustration will not only be shared but (more importantly) understood.

Friday 10 January 2014

Paying Professional Subscriptions

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

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

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

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

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

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

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

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

Tuesday 7 January 2014

UK Examination Deadlines - Don't be Fooled

I bet you barely read those standard letters from the UK IPO? It must be mortifying for those that draft them because they do care ( I know because I attended one of their consultations recently since small users count with the IPO if not with OHIM). Hopefully the unrepresented applicants do read them as they contain important information about what an applicant needs to do to become a patentee as opposed to merely an applicant.

The picture shows the new flyer that comes with your publication letter and look - the bit on the bottom is not the same.  It says they are not going to remind you again about the examination deadline any more. The practice change is described in full on the website here.  Hopefully there were not many professional representatives who relied on that second letter. I hardly ever got any because I am a big fan of the combined search and examination approach. Nevertheless there are 3000 of those letters posted annually to other people who are content that their patent applications should take years to mature.  I have one case on my docket that came from another agent. The Form 10 was filed on 20 December 2011 and it still has not been examined so  it sits on my docket looking just like a European Patent application except without the renewal fees.

Under the new regime if you don't request exam within 6 months of the publication (or 8 if you are prepared to pay the extra fee) your application will just die quietly - treated as withdrawn - not refused. You might never know if you have not got a decent docketing system and/or review those sleepy files regularly. I wonder when they will update IPSum.  This could be a good business opportunity for the increasingly ASA harassed invoice senders.

Monday 6 January 2014

WIPO and the New gTLDs : Determinations in 69 Cases Reviewed and Summarised

 Sally Cooper has been busy over her Christmas holidays

Whenever I’m reading anything to do with (ownership of) Domain Names, it’s not long before I’m reminded 
Communication before new gtld
of the military man who interrupted his talk on the role of combat aircraft with a rueful grin and “I’m afraid the RAF is an ARE – Acronym Rich Environment“. This happened again whilst I was reading (scrolling through) the Report of the WIPO Arbitration and Mediation Centre : End Report on Legal Rights Objections Procedure 2013.

Why was I doing this ? After all, my practice is still concerned with small businesses which (likely as not) will say
“I’ve got the Domain Name – why should I pay to register a trade mark ?"
What interest might I have in a Report that reviews the (success or otherwise) of formal objections to applications for New gTLDs ? I think the answer lies in the Introduction : this was not only a Report providing a historical and statistical overview, but also a Report
to help inform future domain name dispute resolution practices and determinations“ (emphasis supplied). 

In a nutshell, I was curious. The Report itself comprises 14 pages : there are then 9 Annexes covering 127 pages (and much can be gained from reading only Annexe 9 which puts forward and answers 24 Frequently Asked Questions).

What did I learn ? For me, a Trade Mark Attorney, the “pages to keep” are :
  • - FAQ 3 which puts forward the question “What criteria will [a WIPO panel] use to determine the outcome of a Legal Rights Objection ?“ then (i) a subdivision “For an objection based on trademark rights, the panel will consider the following non exclusive consideration factors“ and (ii) a list of 8 factors (with “bona fide” being appearing 5 times in the text of these 8 factors, and “registered trade mark” appearing not at all)
  • - Annexe 1 which lists the 69 gTLDs applied for / identifies the 59 cases in which Objections filed by third parties were rejected (and also lists (i) the six Applications for .axis .gcc .goo .mail and .zone terminated prior to determinations of WIPO panels, and (ii) the four Applications for .delmonte .direct .weibo and .[Chinese characters] upheld in determinations of WIPO panels)
  • - Paragraph 6.3 on Page 12 of the Report (titled “Evaluation“) which provides a summary of findings.

In paragraph 6.3 are findings (here taken out of order) that :
  • - “Although this remains a matter for speculation, it appears reasonable to presume that the existence itself of the pre-delegation Legal Rights Objection mechanism …… may have prevented a number of potentially improper gTLD applications from being made”
  •  - “A minority of applicants in Legal Rights Objection proceedings asserted and evidenced registered rights in support of their application and response” 
  • - “An overwhelming majority of legal rights objections were filed against applications for gTLD strings with descriptive or dictionary meaning” 
  • - “Especially in connection with dictionary terms, [WIPO panels] considered potential for infringement as such to be an insufficient basis to halt the application”
  •  - “In a number of cases, [WIPO panels] recorded their presumption that the objector would monitor activity within a new gTLD with a view to possible further action” 

At the end of the day, whilst there’s plenty for the Trade Mark Attorney to ponder in these findings, there are two further extracts that are more likely to justify the “pages to keep” remaining on my desk : these are (also paragraph 6.3):

(1) “where a trademark owner has adopted a common dictionary term as a trademark, a gTLD application intended to take advantage of such common meaning would not as such violate the dispute resolution standards for Legal Rights Objections”, and
 (2) [WIPO panels] in a number of their determinations noted “that asserted trademark registrations were primarily obtained for the purpose of supporting an application for a new gTLD application and / or legal rights objection, with little or no demonstrable prior use”.

Reminders, surely, for all Trade Mark Attorneys that the best investment when it comes to registering a trade mark is in (1) an invented word (i.e. not descriptive or with dictionary meaning) which (2) the Applicant is using or has a bona fide intention to use.

Overall, the conclusion I’ve come to is that WIPO might aspire “to help inform future domain name dispute resolution practices and determinations” but, in all probability, these practices and determinations will be those only of the New gTLDs. More background from WIPO here

Curiosity is now satisfied. If you disagree – there’s always the “Comment” box !